- PTAB · May 31, 2022 · IPR2022-00153 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petition grounds, finding a reasonable likelihood of prevailing on the Hunaidi Patent obviousness challenge to claims 1 and 8.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion On this record, and in the absence of argument to the contrary by Patent Owner, we find Petitioner’s contentions that the Hunaidi Patent renders claims 1 and 8 obvious well-supported. Petitioner has directed us to portions of the Hunaidi Patent that teach or suggest all of the limitations in claims 1 and 8, and has provided a sufficiently persuasive reason why a person of ordinary skill in the art would have had reason to modify the disclosed apparatus and method to arrive at the subject matter of both independent claims. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on this challenge with respect to both claim 1 and claim 8. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’596 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“in the art having a motivation to combine the teachings of the Hunaidi Patent and the Hunaidi Article. The clearest expression of a motivation to combine set forth in association with the ground, as applied to the independent claims, is that “a [person of ordinary skill in the art] would have been guided to look at leak detection systems, such as that disclosed in the Hunaidi Article,” because “[t]he Hunaidi Patent explains that ‘[t]he proposed method is easy to implement, for example, in conjunction with routine leak detection surveys.’” Pet. 38 (citing Ex. 1003, 3:35–36; Ex. 1004, Abstract, 7; Ex. 1002 ¶ 77). The difficulty with this is that the Hunaidi Patent itself already discloses what appears to be routine leak detection surveys, and it is thus not apparent what benefit would be obtained by this combination to motivate the skilled artisan to combine the teachings. Cf. Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). As to further reasons set forth for the combination, as applied to claims 1 and 8, these are grounded on shortcomings in “the Hunaidi Article . . . not disclos[ing] an equation for velocity” or go to the obviousness of modifications to the Hunaidi Patent itself independent of the Hunaidi Article’s teachings. Id. at 38–40 (citing Ex. 1001, 7:1–12; Ex. 1002 ¶¶ 63–71, 80–86; Ex. 1003, 2:57–3:11, 1:8–11, claims 1& 11).” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“1. Printed Publication Status of the Hunaidi Article In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings, including whether the reference was publicly accessible. Id.; see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility). Petitioner contends that the Hunaidi Article is prior art under 35 U.S.C. § 102(a) and (b). Pet. 35. Petitioner fails, however, to set forth any basis for the document to be a printed publication, that is, for its public accessibility. See Pet. Similarly, there is no testimony by Dr. Wilkens relevant to this issue. See Ex. 1002. Further, on this record, there is neither argument nor testimony as to the authenticity of what Petitioner has filed as the Hunaidi Article (Exhibit 1004).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “is a person with a degree in mechanical engineering, chemical engineering, or physics, and approximately three to five years of combined work experience and/or graduate work in fluid dynamics.” Pet. 10 (citing Ex. 1002 ¶¶ 24– 25). As Patent Owner has waived its preliminary response, Petitioner’s contended level of ordinary skill stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 8
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,475,596 - Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01286 · APJ Julia Heaney · IPR · Institution
Instituted IPR of claims 1, 5–7, 12, and 13 on all petitioned grounds; Moine anticipation of claims 1, 6, 7, 12, and 13 established the required likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction Petitioner contends the claim term “the location controller,” as recited in claim 1 of the ’321 patent, should be construed to mean “the local controller,” because the term “location controller” has no apparent antecedent basis in the claim and does not appear anywhere in the 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed before March 16, 2013, we apply the pre-AIA versions of the statutory bases for unpatentability. 4 FR Patent Application Publication No. 2894401 A1 to Moine, published June 8, 2007 (Ex. 1005). 5 US Patent No. 5,054,023 to Kronberg, issued October 1, 1991 (Ex. 1006). 6 US Patent No. 8,531,055 B2 to Adest et al., issued September 10, 2013 (Ex. 1007). specification of the ’321 patent, and further in light of the fact that claim 1 first recites “a local controller.” Pet. 10–11. Other than the aforementioned claim term, Petitioner states no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims. Id. at 9 (citing Ex. 1002 ¶ 35). Having considered Petitioner’s argument, we can reach a determination of the reasonable likelihood of proving unpatentability of the challenged claims without explicitly construing any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). For purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’321 patent and the asserted prior art, we determine that Petitioner’s definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’321 patent and prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having reviewed Petitioner’s undisputed evidence and argument regarding claim 1, we find that Petitioner has demonstrated sufficiently that Moine discloses all of the limitations of claim 1. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on its anticipation challenge with respect to claim 1.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,933,321 - PTAB · Nov 19, 2021 · IPR2021-00857 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR on claims 1–35 and all petitioned grounds, including anticipation by Birnboim and obviousness over the listed combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Burden of Proof “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that one of the challenged claims is unpatentable. Additionally, the Supreme Court held that a decision to institute under 35 U.S.C. § 314(b) may not institute review on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with USPTO Guidance, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” See Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner contends that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Ex. 1002, ¶¶37–38. Pet. 9. At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 7. For the purposes of this Decision on Institution, we agree with Petitioner’s proposed level of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to comport with the teachings of the ’399 patent and asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner contends that we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use.” Pet. 7. Patent Owner does not dispute Petitioner’s definition of “stock solution” nor request that we construe any other claim at this time, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock solution” as Petitioner proposes. We note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). Furthermore, where “the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Patent Owner does not at this time directly dispute Petitioner’s contention that Birnboim discloses a stock solution of an aqueous composition, but does dispute that Birnboim discloses the aqueous composition as claimed. See Prelim. Resp. 8. Based on the current record, which shows that the Birnboim discloses a “stock solution of an aqueous composition,” we are satisfied Petitioner has shown that Birnboim meets the preamble to the extent it is limiting. slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,212,399 - PTAB · Nov 18, 2021 · IPR2021-00854 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–35 and all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows that there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–35 of the ’240 patent on all grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A person of ordinary skill in the art . . . would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid 10 Koller, WO 91/02740, published Mar. 7, 1991. Ex. 1016. 11 Robert E. Farrell, Jr., Ph.D., “RNA Methodologies: A Laboratory Guide for Isolation and Characterization,” (3rd Ed., 2005). Ex. 1026. extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 7 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition at this stage. Prelim. Resp. 7. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’240 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner offer any position on the construction of any claim term. See Pet.; Prelim. Resp. 7. On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution. C. Principles of Law” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“and particularly claim 1. Petitioner provides a detailed analysis of where each element of claim 1 is found in Birnboim. Pet. 13–19. Specifically, Petitioner asserts that Birnboim’s Example 3 discloses an aqueous composition comprising the one or more chaotropes, one or more detergents, one or more reducing agents, one or more chelators, and one or more buffers, as recited in the claim. Id. at 13–18. Petitioner also asserts that “Birnboim’s reagents are present in an amount sufficient to perform the claimed functions.” Id. at 18–23 (heading capitalization normalized and underlining omitted).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,669,240 - PTAB · Nov 12, 2021 · IPR2021-00847 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–51 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–51 of the ’443 patent on all grounds.” slip op. at 2
- BurdenInstituted
“Thus, on this record, and for purposes of this Decision, we find Petitioner has met its burden in showing that Birnboim discloses “not degrad[ing] nucleic acid of a sample” under the term’s plain and ordinary meaning.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As an initial matter, a reference is prior art for all that it teaches. Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Thus, we decline to dismiss the express teachings of Birnboim merely because they are not the main focus of its disclosure. Patent Owner equates the claim language “kill pathogens” with complete sterilization of a sample “to prevent ‘dissemination of live infectio[u]s pathogens.” Prelim. Resp. 12 (citing Ex. 1001, 2:15, 6:34–37; Ex. 2001 ¶ 7). On their face, however, the claims do not require killing every potential pathogen in a sample. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (holding similar arguments fail because “they are not based on limitations appearing in the claims”). Birnboim expressly discloses isolating nucleic acid from bacteria and viruses. Ex. 1003 ¶¶ 18, 22, 27. It does not suggest such isolation as non-destructive, and we presume that at least some pathogens are “killed” in the extraction process according to the plain and ordinary meaning of the term.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. In an obviousness inquiry, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. On this record, we find Petitioner has not shown sufficiently “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. In asserting that claim 48 would have been obvious over Birnboim and Mori, Petitioner relies on Mori for the defoaming agent recited in limitation (e), and Birnboim for the other limitations. See Pet. 50–51. We focus on Petitioner’s reliance on Birnboim.” slip op. at 25
§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,084,443 - PTAB · Nov 12, 2021 · IPR2021-00850 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–42 and all asserted grounds after finding a reasonable likelihood that Birnboim anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–42 of the ’467 patent on all grounds.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties do not propose any claim construction. See Prelim. Resp. 5. On this record and for purposes of this Decision, we see no need to construe any term expressly.7 See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, and at this stage of the proceeding, Petitioner has shown sufficiently Birnboim discloses each limitation of claim 1. See Pet. 14–15 (showing Birnboim discloses the preamble); 18–19 (table showing “Birnboim Example 3 discloses using each of claim 1’s recited ingredients together in an aqueous composition”), 19–20, 23, 24 (relying on Birnboim’s Examples 4–6 for confirming the amounts of the compounds used in the composition in Example 3 perform the claimed functions, and disclosing the “contacting” and “detecting” steps). We address below Patent Owner’s counterarguments, which do not undermine the adequacy of Petitioner’s showing for purposes of trial institution.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“2. Analysis “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (internal quotation marks omitted). But “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. In an obviousness inquiry, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. On this record, we find Petitioner has not shown sufficiently “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,293,467 - Grünenthal GmbH v. Antecip Bioventures II LLCAll claims unpatentablePTAB · Jul 28, 2020 · PGR2019-00026 · APJ Grace Karaffa Obermann · PGR · Final written decision
Claims 1–30 are unpatentable as obvious over Harden and one or more of Varenna 2011, Gatti, and Muratore; the written-description challenge fails.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“INTRODUCTION A. Background Grünenthal GmbH (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting a post-grant review of claims 1–30 of U.S. Patent No. 9,931,352 B2 (Ex. 1001, “the ’352 patent”). Antecip Bioventures II LLC (“Patent Owner”) did not file a Preliminary Response. We instituted review of all challenged claims on each of the grounds asserted in the Petition. Paper 6 (“Dec. Inst.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“regardless of whether the preambles are limiting. Even if the preambles are limiting, their scope is so broad as to be hardly different from no limitation at all. The specification of the ’352 patent defines “treating” as “includ[ing] any kind of treatment activity, including the diagnosis, cure, mitigation, or prevention of disease in man or other animals, or any activity that otherwise affects the structure or any function of the body of man or other animals.” Ex. 1001, 7:43–47. This definition exhibits “reasonable clarity, deliberateness, and precision” and is “‘set out . . . within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). Accordingly, we give effect to this definition of “treating.” Under the definition of “treating” in the specification of the ’352 patent, “[a] method of treating” hyperalgesia (claim 1) or edema (claim 17) “associated with complex regional pain syndrome” means a method of diagnosing, curing, mitigating, or preventing that condition associated with complex regional pain syndrome, or otherwise affecting the structure or any function of the body of someone suffering from the condition associated with complex regional pain syndrome. To the extent that this requires carrying out the method on a patient suffering from hyperalgesia (claim 1) or edema (claim 17) associated with complex regional pain syndrome, this is already part of the method recited in the body of the claims, Ex. 1001, 90:39–43, 91:23–27, so the preambles provide no additional limitation. To the extent that the preambles require some particular result to be brought about, that result could be the diagnosis, cure, mitigation, or prevention of the symptom in question, or it could be any effect at all on the structure or any function of the patient’s body. Thus, even when construed as limiting, the preambles provide little, if any, further restriction on the scope of the challenged claims beyond that set forth in the body of the claims. Moreover, as discussed below with respect to the asserted grounds of obviousness, Petitioner directs us to evidence that the prior art teaches or suggests the subject matter of the preambles, even when those preambles are construed as limiting in accordance with the meaning of “treating” provided in the specification.8 Thus, whether or not we treat the preambles as limiting, the outcome does not change. Given this circumstance, we treat the preambles of the challenged claims as limiting, and assign them a meaning consistent with the specification’s definition of “treating.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner’s asserted references provides data showing that administering neridronic acid improves the symptoms of CRPS. PO Resp. 18–19. But “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988). It is sufficient that Varenna 2011, Gatti, and Muratore would have informed the ordinarily skilled artisan that successful treatment of CRPS and its symptoms was likely; there is no requirement that Petitioner show that the prior art taught that success was certain.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“qualifies as a printed publication under 35 U.S.C. § 102. PO Resp. 4–17; PO Sur-Reply 14–21. “To qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)) (internal quotation marks omitted). Thus, there are two ways to show that a reference was sufficiently accessible: show it was disseminated or show it was “otherwise made available to the extent that” interested people of ordinary skill in the art could have located it after exercising reasonable diligence. Id. Here, according to Petitioner, the asserted references “are articles published in periodical journals by an identified and reputable publisher.” Reply 3.11 Petitioner argues that the references were “disseminated on the[ir] stated publication date[s].” Id. at 5. We agree.” slip op. at 18
Patent outcomesUS 9,931,352 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 9,931,352
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.