• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236
• Aylo Freesites Ltd v. Wellcomemat, LLCInstituted
  PTAB · Dec 6, 2024 · IPR2024-01101 · APJ Brian P Murphy · IPR · Institution

  The Board instituted IPR of claim 17 on all five grounds, finding a reasonable likelihood of prevailing based on Gupta and Vasilevsky with Logan.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have jurisdiction under 35 U.S.C. § 314, which provides that an 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to challenged claim 17 in the ’286 patent. Accordingly, we institute an inter partes review of claim 17 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied

    “The USPTO Director has issued “binding agency guidance” for application of the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”), 3.12 Pursuant to the Guidance Memo, “the PTAB will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Id. (citing Sotera). Petitioner has filed a Sotera stipulation providing that: Petitioner and its real parties-in-interest will not pursue in the related district court proceeding where Petitioner is a defendant (WellcomeMat, LLC v. Aylo Holdings Sarl et al., No. 2:23-cv-00483-JRG (E.D. Tex.)) an invalidity challenge of claim 17 based on “any ground that [Petitioner] raised or” slip op. at 12

  • Skill levelSkill level board ownOther

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. Claim Construction For purposes of this proceeding, Petitioner and Patent Owner both advocate for the “plain and ordinary meaning” of the claim terms without further analysis. Pet. 15 (citing Ex. 1002 ¶¶ 72–73); Prelim. Resp. 14–15. On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are invited to address claim construction in their briefs. III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) - FINTIV Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a)” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,307,286
• Aylo Freesites Ltd v. Wellcomemat, LLCInstituted
  PTAB · Sep 5, 2024 · IPR2024-00710 · APJ Brian P Murphy · IPR · Institution

  The Board instituted review of claims 13–15 and 18–20 on all five asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have jurisdiction under 35 U.S.C. § 314, which provides that an 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’286 patent. Accordingly, we institute an inter partes review of claims 13–15 and 18–20 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “demonstrated so-called “compelling merits” in its Grounds of challenge. Pet. 5; Prelim. Resp. 47; Reply 5; Sur-Reply 4–5. The Director has clarified her Guidance Memo, such that “in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techns. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23, 4–5 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Because we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution, we do not reach the question of whether Petitioner has demonstrated “compelling merits” in support of its unpatentability challenges. Conclusion Regarding Discretionary Denial On balance, we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution. Therefore, we decline to exercise our discretion to deny institution of inter partes review under Section 314(a).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “On the present record, we determine Petitioner’s argument and evidence show a reasonable likelihood it would prevail in showing the unpatentability of independent claim 13 as anticipated by Gupta.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “On the present record, Patent Owner’s arguments do not address Dr. Houh’s detailed testimony or Petitioner’s proposed substitution of the Internet as taught by Logan, in place of the HAN in Vasilevsky’s system. For example, the substitution of the Internet for the HAN in Vasilevsky would appear to provide the centralized media server as a server-side “video editing environment” recited in claim Limitation 13.1. See Ex. 1002 ¶¶ 318 (“processor and memory [] at the server-side such that the centralized media server executes software for serving clients”), 319 (“computer-readable media of Vasilevsky comprises a video editing environment in the form of software for both editing bookmarks and streaming video, executed by the centralized media server and storages”), 321 (“Logan . . . teaches implementing a television program bookmarking system using a public network, i.e., the Internet”), 322 (“Logan discloses the desirability of implementing its bookmarking system over a public network such as the Internet”), 323 (proposed “modification would have beneficially allowed more users access via a wider public network to participate in the system to add, modify and playback video bookmarks”). On the present record, Dr. Houh’s declaration testimony stands unrebutted and provides a motivation for a POSITA to combine references with a reasonable likelihood of success.” slip op. at 38

  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,307,286
• Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GmbHRehearing denied
  PTAB · Aug 1, 2017 · IPR2016-01565 · APJ Toni R Scheiner · IPR · Rehearing

  The Board denied Mylan’s rehearing request, leaving claims 6–8, 10–18, 24, and 25 uninstituted because the Petition did not show the Januvia Label and Huettner were printed publications.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “a trial is based on “the information presented in the petition.” 35 U.S.C. § 314(a). Under 35 U.S.C. § 311(b), in an inter partes review, a petitioner may only challenge the claims of a patent based on “prior art consisting of patents or printed publications,” and the petitioner has the initial burden of production to show that an asserted reference is prior art to the challenged claims under a relevant subsection of 35 U.S.C. § 102. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015); Dec. 16. As explained in our Decision, we have often required a petitioner to make a threshold showing that the reference relied upon was publicly accessible as a printed publication prior to the effective filing date of a challenged patent to satisfy the initial burden of production. See, e.g., Apple Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 5 (PTAB Aug. 12, 2015) (Paper 14) (noting that petitioner has the burden to make a threshold showing that a reference is “printed publication” prior art under 35 U.S.C. §§ 102 and 311(b)); Frontier Therapeutics, LLC v. Medac Gesellschaft Für Klinische Spezialpräparate MBH, Case IPR2016-00649, slip op. at 22 (PTAB September 1, 2016) (Paper 10). We further explained that “[a] given reference is ‘publicly accessible’ ‘upon a satisfactory showing that such document has been 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.’” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)); Dec. 17.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To the extent Petitioner now argues that “the declaration testimony of Dr. Davidson and the facial indicia on Huettner are sufficient” to make a threshold showing that Huettner was publically accessible as of the relevant date (Reh’g Req. 13), we are not persuaded. We note that Dr. Davidson testifies, without elaboration, that “Huettner was published in June 2007.’” Ex. 1002 ¶ 56. Petitioner, however, did not rely on Dr. Davidson’s testimony on this issue in the Petition. Moreover, even if Dr. Davidson’s testimony had been relied on, Petitioner does not point to any evidence—nor can we discern any in Dr. Davidson’s Declaration—that would reasonably suggest that Dr. Davidson has personal knowledge as to when and how Huettner was made available to the public. Accordingly, Dr. Davidson’s conclusory declaration of Huettner’s publication date is entitled to little or no weight. See Dell, Inc. v. Selene Commc’n Techs., LLC, Case IPR2014- 01411, slip op. at 22–23 (PTAB Feb. 26, 2015) (Paper 23) (explaining that an expert declaration is not enough to prove a prior art reference’s publication date where the expert declaration merely repeats assertions made by the petitioner).” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied merits

    “Decision on Institution, and Petitioner’s Request for Rehearing, we are not persuaded that we erred in declining to institute trial on claims 6–8, 10–18, 24, and 25. Petitioner, having failed to meet its burden of providing a threshold showing that the Januvia Label and Huettner are printed publications under 35 U.S.C. §§ 102 and 311(b), did not demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claims 6–8, 10–18, 24, and 25 of the ’156 patent would have been obvious over the Januvia Label, Huettner, and Mikhail or the Knowledge of one of ordinary skill in the art..” slip op. at 8

  § 102 anticipation
  Patents in suitUS 8,853,156
• Institut Straumann AG / Dental Wings Inc. v. Sirona Dental Systems GmbHSome claims unpatentable
  PTAB · Nov 15, 2016 · IPR2015-01190 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–8 were held unpatentable as obvious over Bannuscher and Truppe; claims 9–10 were not shown unpatentable; the motion to amend was denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “interpretation of the language used in claim 1 and the additional limitations of dependent claims 9 and 10. Patent Owner’s proposed construction also impermissibly reads limitations from the preferred embodiment of Figure 5 into claim 1. Patent Owner would limit the pilot hole location exclusively to a position directly over the implant position and require the drill bit to pass through the pilot hole while drilling a bore hole into the patient’s jaw. The language recited in claim 1, in the context of the ’006 specification, does not so-limit the “determinating a pilot hole” step. First, Patent Owner fails to consider the present participle form “determinating”5 at the beginning of the recited method step at issue. As a result, Patent Owner conflates the recited device production step with a specific process for drilling a bore hole into a patient’s jaw during tooth implant surgery. PO Resp. 14–15. For example, Patent Owner relies on Dr. Erickson’s Declaration testimony (and Dr. Benjamin’s deposition testimony) for the proposition that “pilot hole” is a term of art referring to “an initial hole through which a pilot drill passes during an operation.” Ex. 2002 ¶ 37 (cited at PO Resp. 16–17); see also PO Resp. 16–17 (citing Ex. 2023, 24:3– 22, 25:18–27:2, 52:2–9). The ’006 patent does not describe or reference any such “pilot drill” or “initial hole” being made during a tooth implant operation. Regardless, the claim limitation at issue is a step in a method of producing a drill template. It recites defining a pilot hole in a drill template with reference to the surfaces of neighboring teeth, nothing more. The function of actually passing a drill through a pilot hole in a drill template” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioner argues that the term “pseudo-x-ray picture” is not a term that has a commonly understood meaning to a POSA. Pet. 19 (citing Ex. 1002 ¶ 45 [47]). Patent Owner does not comment on the construction of “pseudo-x-ray picture.” PO Resp. 15–19. Having reviewed the complete record, we adopt Petitioner’s argument and evidence in support of Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture.” Therefore, we adopt Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture” as “any representation of measured data records of the three-dimensional optical measuring that can be superimposed on an x-ray image.” Pet. 19 (citing Ex. 1002 ¶ 49).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInherency not foundNot shown unpatentable

    “stylus is used to penetrate the surface of the gum repeatedly to measure the structure of the jaw bone displayed in Figure 25. PO Resp. 30–31 (citing Ex. 1007, 24:53–65 (“[S]tylus member 52 is provided with a sharp stylus 574 (FIG. 1) having a length sufficient[ly] long to penetrate gum tissue and contact the bone surface. . . . [P]ractitioner repeats the procedure of piercing the gum tissue in a region about the desired implantation site and taking point data until enough data has been collected . . . to map . . . the entire surface of bone 558 [Fig. 25] about the implantation site.”)). We agree with Patent Owner and find that the use of a sharp stylus to pierce the gum and take multiple data points via contact digitization of the jaw bone beneath the skin surface is not a 3-D optical measuring of the visible surfaces of a patient’s jaw.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “would have been motivated to combine their teachings with respect to correlating X-ray imaging data of the jaw and 3-D surface data of the jaw and teeth. Reply 22–23 (citing Ex. 1002 ¶¶ 89, 92; Ex. 1008, 1:10–11 (“precise planning of the surgical operation is necessary”); Ex. 1010, 5:19– 25 (“it is possible to carry out the entire implantological, treatment and operation planning on a scientific basis . . . to implement holistic planning results in a precisely clinical manner”)). More particularly, Bannuscher discloses the desire to obtain “all the necessary [clinical] parameters” relevant to pre-surgical implant planning, which can be “combined together” (“correlated” in the language of claim 1) using planning simulation software, for transfer to a drill template. Ex. 1010, 5:44–6:13, 6:24–40, 7:38–8:4. As Dr. Erickson testified, it would have been desirable for a POSA to have as much diagnostic information as possible when planning for dental implant surgery. Ex. 1029, 31:12–21. Truppe discloses the advantage of correlating three-dimensional X-ray imaging data of the jaw and optical imaging data of the jaw and teeth, using simulation software, to obtain a “vivid” representation. Ex. 1008, 2:7–16, 3:19–28, 3:56–58; 4:1–5. Truppe, therefore, discloses a similar process to that disclosed in Bannuscher with respect to correlating 3-D X-ray imaging data and 3-D optical data representing the surfaces of the jaw and teeth, to generate the best possible representation of the patient’s jaw and teeth. Ex. 1002 ¶¶ 89–92. A POSA would have been motivated to use Truppe’s optical measurement system to generate 3-D surface data of the jaw and teeth for use in Bannuscher’s planning simulation software, in order to produce an enhanced image for determining the optimal bore hole and pilot hole in the drill template. Id.; Ex. 2023, 186:8–187:13 (“the optical imaging [of Truppe] would basically just enhance the diagnostic data [of Bannuscher]”). For example, a POSA would have optically measured the plaster model of the jaw and teeth referenced in Bannuscher and the patient’s actual jaw and teeth, as in Truppe, to produce a “vivid” image for correlation with the X-ray imaging data. Ex. 1002 ¶¶ 89, 92.20 Bannuscher’s determination of the optimized bore hole and corresponding pilot hole in the drill template would be based on the enhanced imagery generated from the correlated 3-D data sets. In short, we are persuaded that a POSA would have had reason to incorporate the teaching of Truppe’s enhanced 3-D optical measurement technique into Bannuscher’s method for correlating 3–D X-ray image and model geometry data sets, to determine an optimal bore hole and corresponding pilot hole in the drill template. For the reasons given above, we are persuaded that Petitioner has established a sufficient motivation for a POSA to combine the relevant teachings of Bannuscher and Truppe, with a reasonable expectation of success, by a preponderance of the evidence.” slip op. at 40

  Patent outcomesUS 6,319,006 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,319,006
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01818 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable as obvious over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over that …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the claims at issue here, we are not persuaded that the level of ordinary skill in the art is limited to the level of skill or interest of a pharmacist that dispenses FDA-approved drugs, such as one that “sits behind the counter at Walgreens.” Id. at 31:1–5. We adopt the level of ordinary skill in the art as described by Petitioner and its witness, Dr. Valuck, because it is consistent with the subject matter before us, the ’730 patent, and with prior art of record, such as Talk About Sleep (Ex.1033), Honigfeld (Ex. 1034), Elsayed (Ex. 1035), and Lilly (Ex. 1036). See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionTerm construed board ownMixed

    “Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “For the reasons given above, we find Petitioner’s evidence sufficient to prove by a preponderance that Exhibits 1004–1006 were publicly accessible on the FDA’s website not later than July 1, 2001.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “of the ’730 patent (and claims 1, 4–9, and 12–15 of the ’988 patent) would have been obvious over the ACA (Exhibits 1003–1006), because the ACA is a public disclosure of the proposed risk management system for Xyrem—the same system covered by the ’730 and ’988 patents. Pet. 18–38; Reply 1. Petitioner relies on the Declaration testimony of Dr. Valuck in support of its argument that a POSA would have had “ample” reason to combine the ACA documents because the documents were prepared for the Advisory Committee Meeting and “relate to the same restricted distribution program, which the meeting was convened to discuss.” Pet. 19 (citing Ex. 1007 ¶ 51). Petitioner asserts, in particular, the Preliminary Clinical Safety Review (Ex. 1004), Briefing Booklet (Ex. 1005), and Xyrem Video and Transcript (Ex. 1006) were “all distributed together for a single meeting before the FDA seeking approval for prescription Xyrem®,” and the FDA Advisory Committee Transcript and Slides (Ex. 1003) was “a public transcript of and presentation given at the meeting itself.” Id. at 19 (citing Ex. 1007 ¶ 51) (emphasis added). In addition, according to Petitioner, all four ACA documents “clearly relate to the same restricted distribution program, which the meeting was convened to discuss,” and are “all linked from a single [web] page.” Id. Patent Owner does not address directly the cited evidence in the context of motivation to combine the ACA. Patent Owner challenges the motivation of a POSA to confirm that a patient has read the Xyrem educational material prior to shipping the drug product to the patient (step 1.4), an issue we address below. PO Resp. 37, 49–59. We agree with Petitioner’s analysis and determine that a POSA would have had ample motivation to combine the ACA documents, which were prepared at the same time, relate to the same drug product and the same restricted drug distribution system, were discussed together at the same Xyrem Advisory Committee Meeting, and were made available via file links from a single FDA web page.” slip op. at 39

  Patent outcomesUS 7,668,730 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,668,730
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01816 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over the Advisory Committee Art under § 103(a).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420–21 (2007). As the title, field of the invention, and background discussion in the ’059 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title, 1:10– 27. Petitioner provides substantial evidence of the state of the art of such” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “1. “exclusive central pharmacy,” “exclusive computer database” and “the central pharmacy authorizing the prescription drug to be dispensed to the patient by another pharmacy” In our Decision on Institution, we construed “exclusive central pharmacy” to mean “single or sole pharmacy,” and we construed “exclusive computer database” to mean “single or sole computer database.” Dec. on Inst. 20.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are not persuaded by Patent Owner’s arguments or the testimony of Dr. DiPiro and Dr. Bergeron in support thereof. Patent Owner does not explain adequately why generating a report for a particular purpose or “ad hoc” precludes it from being a report generated periodically. See, e.g., PO Resp. 28 (citing Ex. 2046 ¶ 34 (testimony by Dr. DiPiro stating that “POSA would not consider ‘ad hoc’ reports to be ‘periodic’ because they are not generated with any regular frequency.”); Ex. 2047 ¶ 32 (testimony by Dr. Bergeron stating same). As noted above, the specification does not limit “periodic reports” to those generated with “regular frequency.” Moreover, to the extent that Figure 4B in the ’059 patent illustrates generating “ad hoc” reports, as Patent Owner contends, such disclosure supports a construction that the recited “periodic reports” include such “ad hoc” reports. Ex. 1001, 6:13–7:3; Reply 13–14 (citing Ex. 1047, 6; Ex. 1048, 9:12–19, Fig. 4, 436).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “presentation slides, thus confirming the description of the Internet Archive file links as containing 381 pages. Compare Ex. 1003, with Ex. 1020, 8. We are persuaded that the Federal Register Notice is evidence of the FDA’s general practice under the Federal Advisory Committee Act and tends to indicate an approximate timeframe when background information and advisory committee meeting minutes, transcripts, and presentation slides are posted on the FDA’s website. Case IPR2014-00059, slip op. at 34 (PTAB Apr. 15, 2014) (Paper 9) (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)); 5 U.S.C. App 2 § 10(b) (2001) (“[T]he records, reports, transcripts, minutes, appendixes, working papers, drafts, studies, agenda, or other documents which were made available to or prepared for or by each advisory committee shall be available for public inspection.”). The Federal Register Notice states that the minutes, transcript, and slides of the Xyrem Advisory Committee Meeting are “generally posted about 3 weeks after the meeting.” Ex. 1015. The Internet Archive evidence indicates the meeting transcript, presentation slides, and meeting minutes were not posted on the FDA’s website as of June 17, 2001, less than two weeks after the meeting, but were posted no later than October 4, 2001. Ex. 1018; Ex. 1020; Ex. 1028. Thus, the Federal Register Notice is consistent with the Internet Archive evidence. Petitioner further emphasizes that Patent Owner does not contest the sufficiency of the evidence establishing the public accessibility of Exhibit 1003 on the FDA’s website as of October 4, 2001. Reply 2 n.2; Tr. 6:1–9; see PO Resp. 3–15. Thus, for the reasons given above, we find that Petitioner has established by a preponderance of the evidence that the Xyrem Advisory Committee Meeting transcript and presentation slides (Exhibit 1003) were publicly accessible on the FDA’s website not later than October 4, 2001.” slip op. at 26

  Patent outcomesUS 7,895,059 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,895,059
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01817 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable as obvious over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over that …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the claims at issue here, we are not persuaded that the level of ordinary skill in the art is limited to the level of skill or interest of a pharmacist that dispenses FDA-approved drugs, such as one that “sits behind the counter at Walgreens.” Id. at 31:1–5. We adopt the level of ordinary skill in the art as described by Petitioner and its witness, Dr. Valuck, because it is consistent with the subject matter before us, the ’730 patent, and with prior art of record, such as Talk About Sleep (Ex.1033), Honigfeld (Ex. 1034), Elsayed (Ex. 1035), and Lilly (Ex. 1036). See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionTerm construed board ownOther

    “Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “24. Patent Owner’s attack emphasizes Petitioner’s lack of such direct evidence, but does not address persuasively the cumulative effect of Petitioner’s circumstantial evidence. As discussed above, it is undisputed that Exhibit 1003 was available as a file link on the FDA’s website no later than October 4, 2001. It is also undisputed that Exhibits 1004–1006 were prepared and submitted to the Xyrem Advisory Committee just over one month prior to the June 6, 2001, meeting. The Safety Review (Ex. 1004) has a few redactions that tend to indicate the document was prepared for public dissemination, and the Briefing Booklet (Ex. 1005) contains the statutory legend indicating it is available for public disclosure without redaction. Reply 2–3 (citing Ex. 1057, 417). Thus, the evidence indicates Exhibits 1004–1006 were prepared, distributed to the Xyrem Advisory Committee, and available for posting to the FDA’s website 24 hours prior to the meeting, as stated in the Federal Register Notice (Ex. 1015). The Federal Register Notice even provided instructions on how to locate materials from the FDA’s website – “Click on the year 2001 and scroll down to the Peripheral and Central Nervous Systems Drugs meetings.” Reply 5 (quoting Ex. 1015). As Petitioner points out, Patent Owner has not adduced evidence to indicate the FDA failed to follow the public inspection requirements of the Federal Advisory Committee Act and FDA’s own guidance document in effect at the time. Reply 2–4 (citing Ex. 1057, 2, 4, 6, 8). FDA’s guidance document states that seven business days prior to an advisory committee meeting “the sponsor package and CDER’s [Center for Drug Evaluation and Research] redacted package will be submitted . . . for posting on the FDA 17 Our citations are to the internal numbering of the document, consistent with Petitioner’s citations. website.” Ex. 1057, 8 ¶ 9. The guidance document further states that 24 hours prior to the meeting “FDA will post on its website the sponsor package and CDER’s redacted package.” Id. at 8 ¶ 10. If for some reason the FDA is unable to post the documentation prior to a meeting, “the two packages will be made publicly available at the location of the advisory committee meeting, and the two packages will be posted on the Agency website after the meeting.” Id. The transcript of the Xyrem Advisory Committee Meeting contains internal references to the briefing material made available to the committee members and discussed at the meeting, thus tending to corroborate the availability of Exhibits 1004–1006 as of the June 6, 2001, meeting date. Reply 4 (citing Ex. 1003, 12, 179, 284, 330, 342).” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “In addition, even assuming the Advisory Committee indicated a preference for one course of action over another, that disclosure does not dictate that a less “preferred” option is not obvious. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (stating that a “reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed” (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004))); Reply 24. We are not persuaded that testimony of Advisory Committee members, as cited by Patent Owner (PO Resp. 51–55 (citing Ex. 1003)), criticizes, discredits, or otherwise discourages providing educational materials regarding Xyrem before shipping the drug to a patient. We agree with Petitioner that by asking questions on this point, the Advisory Committee suggested at least some value in taking that course of action. Reply 24. Contrary to Patent Owner’s arguments, the FDA Advisory Committee expressly considered the alternative of confirming that the patient has read the Xyrem educational material prior to shipping the first prescription. The FDA reviewers specifically listed as an additional “Risk Management Recommendation[]” to the drug sponsor to include: “Obtaining the patient’s signed confirmation that he/she fully understands how GHB is to be used prior to the first prescription being mailed.” Ex. 1004, 115 (14.4); see also Ex. 1007 ¶ 71 (quoting the same passage). We are satisfied that the ACA discloses a process step to a POSA for confirming that a patient has read the Xyrem educational material prior to shipping the first dose of a potentially dangerous drug. Ex. 1007 ¶ 71. We also find the portions of the ACA identified by Petitioner and discussed by Dr. Valuck suggest, if not teach expressly, the step of confirming with a patient that educational materials were received and/or read prior to shipping Xyrem. Pet. 30 (citing (Ex. 1003, Tr., 371:10–12. 374:7–20; Ex. 1004, 115; Ex. 1007 ¶ 71). Both parties agree that the ACA teaches sending the Xyrem educational material (“Xyrem Patient Success Program”) with their first shipment of Xyrem, consistent with the “preferred” course of action noted by Patent Owner. Pet. 30 (citing Ex. 1003, 182:3–8); PO Resp. 49 (citing Ex. 1003 at 182:3–8, slide 157; Ex. 1006, 8–9 n.34–n.37, V10 at 00:05-00:40), id. at 53–55 (addressing what some Committee members indicated was “preferred”). Disclosures in the Preliminary Clinical Safety Review (Ex. 1004, 115), as discussed above, especially in view of the questions raised by the Advisory Committee, sufficiently suggest or teach as an alternative, and establish that a POSA would have had reason, to confirm with a patient that educational material had been received and/or read prior to shipping Xyrem. See, e.g., Ex. 1003, 374:7–20 (raising the idea of patients signing a form confirming that they “read the materials” “before they even get the first dose”).” slip op. at 50

  Patent outcomesUS 8,457,988 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,457,988
• Dukane Corporation v. Herrmann Ultraschalltechnik GmbH & Co., KGRehearing denied
  PTAB · May 26, 2016 · IPR2016-00066 · APJ Michelle N Ankenbrand · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution for claims 4, 5, and 7–9 because Petitioner did not show the Board misapprehended or overlooked its arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Regarding the asserted grounds that Klinstein ’158 anticipates claim 8 and the DPC Manual anticipates claims 6–9, we determined that Petitioner “fail[ed] to address the limitations reciting different target variables for the machining intervals,” which was “fatal to [those] unpatentability assertions.” Dec. 9–10. Likewise, we determined that Petitioner’s failure to address the additional “target variable[s] differ” limitation of claim 8 was fatal to the asserted ground that the subject matter of claim 9 (which depends from claim 8) would have been obvious over the combination of Klinstein ’158 and the iQManual. Id. at 10. Regarding Petitioner’s assertion that Klinstein ’158 anticipates claim 6, we determined that, although Petitioner addressed the “target variable[s] differ” limitation, Petitioner failed to explain adequately how the reference discloses that limitation. Id. at 12–13. With respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816, we determined that Petitioner did not provide “adequate reasoning based on rational underpinnings to persuade us, in the absence of hindsight, that one of ordinary skill would have modified the welding method of Klinstein ’816 to achieve the claimed subject matter [i.e., the specific features that claims 4 and 5 add to the subject matter of claim 1].” Id. at 16.” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Reh’g Req. 5 (citing Pet. 43–53). Petitioner does not direct us to the particular page of the Petition on which it advanced that argument, but, rather, cites ten pages of analysis. After reviewing the cited pages, it appears that Petitioner made the argument in a claim chart to show how the DPC Manual discloses welding variables and target variables, not how the DPC Manual discloses the “target variable[s] differ” limitation. See Pet. 45– 46. Indeed, Petitioner’s claim chart does not address the “target variable[s] differ” limitation. Like the Petition, the claim chart focuses on whether the target values of the target variable differ. Id. at 46. In any event, Petitioner fails to explain how the identification of exemplary target variables set forth in the DPC Manual is an anticipating disclosure of different target variables for each machining interval. In fact, the analysis in the Petition contradicts Petitioner’s argument in this regard because, as explained previously, Petitioner identifies the same variable as corresponding to the first, second, and fifth target variables disclosed in the DPC Manual. Dec. 9 (citing Pet. 57). Petitioner further admits that the DPC Manual discloses “the ‘[c]ontrol parameters [i.e., target variables] for P2 are the same as those used for P1, however the limits set for the parameters are specific to each pressure.’ Thus, the user-specified target values for the first and second control parameters may differ.” Pet. 52 (citing Ex. 1005, 81) (emphasis added). Consistent with that description, Figure 7-16 of the DPC Manual illustrates how to set the dual pressure control and depicts the same control parameter (i.e., target variable) for P2 and P1 (i.e., weld time). Ex. 1005, 82. Accordingly, we are not persuaded that we overlooked or misapprehended Petitioner’s arguments as to what each of Klinstein ’158, Klinstein ’816, and the DPC Manual discloses.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “detecting a third target variable during the first machining interval and selecting the second target variable depending on the result of the detection. Ex. 1001, 4:52–55. Claim 5 depends from claim 4 and narrows the third target variable to welding time. Id. at 4:56–57. As to these claims, we determined that Petitioner’s argument, which was devoid of discussion and citations to Klinstein ’816, “fails to link the hypothetical detection and selection criteria [that a skilled artisan ‘could have’ used] to any particular teaching, preference, suggestion, or other reasoning derived from Klinstein ’816 and the level of skill in the art.” Dec. 16. We also determined that the Klinstein Declaration “adds no further detail; it merely mirrors the Petition.” Id. Petitioner contends that the entire discussion on pages 31–41 of the Petition relates to the obviousness of claims 4 and 5 from the disclosure of Klinstein ’816. Reh’g Req. 6. As Petitioner concedes in the Rehearing Request, however, “[t]hose pages make it clear, in graphic detail including reproduction of drawings from the [Klinstein] ’816 patent, how claim 1 is anticipated by the [Klinstein] ’816 patent.” Id. (emphasis added). In other words, the analysis on pages 31–41 does not set forth how the additional features of claims 4 and 5 would have been obvious from the disclosure of Klinstein ’816 and the level of skill in the art. Petitioner also repeats in the Rehearing Request essentially the same argument that was raised in the Petition, purporting to establish the link between Petitioner’s hypothetical detection criteria and the disclosure of Klinstein ’816 we found missing from its argument and the Klinstein Declaration. Compare Reh’g Req. 6–7, with Pet. 42 and Ex. 1007 ¶ 55. Petitioner’s argument is no more persuasive on the second telling. That is, Petitioner reargues a case it attempted to make out in the Petition, but fails to point out how we misunderstood its arguments or Mr. Klinstein’s testimony. Accordingly, we are not persuaded we misapprehended or overlooked Petitioner’s arguments with respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816.” slip op. at 9

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,702,883
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Some claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00083 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 3, 4, 9, 11–15, 17, and 20 are unpatentable as anticipated by JPAP ’213; claims 1–20 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In our Institution Decision, we construed the “translating stage is configured to vertically move the gripper portion” limitation as follows: Claim 1 merely requires a translating stage configured to vertically move the gripper to a position near (“proximate”) one of two locations, a load port and a storage location. The translating stage need not be configured to move the gripper to a location proximate both because the claim uses the phrase “at least one of” those two locations. Dec. on Inst. 12. After further development of the record and consideration of the arguments presented and evidence relied upon by both parties, we determine that the above construction is appropriate with respect to this Final Written Decision. Accordingly, we construe “at least one of [a] and [b]” to mean “at least one of the listed items but not necessarily both.”” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “construction for the “at least one of” phrase, “there is no anticipation because JPAP ’213 cannot move the gripper proximate to the claimed positions.” PO Resp. 22. This argument is not persuasive because, for the reasons set forth above, the properly construed claims are not as narrow as Patent Owner proposes. See Section II.A. Even were we to conclude that Patent Owner’s proposed construction, where “at least one of” modifies both “[a]” and “[b],” Patent Owner’s arguments are not on point. Claim 1, for example, recites “the translating stage is configured to vertically move the gripper portion . . . to at least one of a second position proximate to a load port [beneath the rail] and a third position proximate to a storage location [disposed lateral to the rail].” There is no dispute that the system of JPAP ’213 is capable of moving to a location proximate a location under the rail. As to the storage location, it is not readily apparent how the above-quoted claim language requires, as Patent Owner argues, a vehicle “capable of moving the gripper/hoist mechanism laterally.” PO Resp. 23; see also Ex. 2016 ¶ 102 (Dr. Bottom’s offering the conclusory opinion that “[A] vehicle capable of moving the gripper to a position proximate to the storage location/conveyer lateral to the overhead rail must be capable of moving the gripper/hoist mechanism laterally.”). A vertically-moving system would be configured to move a gripper proximate (near, next to) an adjacent storage location even if lacking the ability to move laterally so as to place a unit on a storage shelf. Cf. Dec. on Inst. 12 (indicating our understanding of “proximate” as meaning “near”); see, e.g., Ex. 1003, col. 8, ll. 12–16 (“[The overhead hoist transport vehicle is moved along a track, as depicted in step 904, to a position adjacent the selected storage bin.”), and Figs. 3, 5b. Accordingly, we find the system of JPAP ’213 has the capability of moving to a position proximate a laterally disposed storage location as well as a positon beneath the rail. Ex. 1005, 20 (Fig. 1). Based on the argument and evidence presented in the Petition, and the insufficiency of the responsive argument and evidence presented in the Patent Owner Response, as discussed above, we are persuaded that Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 4, 9, 11–15, 17 and 20 are anticipated by JPAP ’213.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 162–165. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; see also Mot. Observ. 4–5 (quoting Ex. 2041, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 48–58 (citing Ex. 1028 ¶¶ 57, 157– 196); Reply 12–13 (citing Ex. 1028 ¶¶ 162–65, and 169); Mot. Observ., 2–3 (quoting Ex. 2041, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).10” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “D. Patent Owner’s Motion to Exclude Evidence Patent Owner seeks to exclude Exhibit 1038 and ¶¶ 3–4 of Exhibit 1040 filed by Petitioner with Petitioner’s Reply. Mot. Excl. 1 (Paper 47). Petitioner opposes the motion to exclude. Pet. Excl. Opp. 4–14 (Paper 56). Exhibit 1038 is a confidential product development plan dated September 25, 2002, and produced by Petitioner in this proceeding. Exhibit 1040 is a Second Declaration of Dr. Sturges, and paragraphs 3–4 contain his testimony explaining aspects of the confidential product development plan of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’172 patent. Reply 20, 22, and 25. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. 11 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 46–60; see also Reply 18–25. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 1–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 36

  Patent outcomesUS 8,197,172 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,197,172

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.