• CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentable
  PTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand

  Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.

  RulingsRemand decision

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

    “We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38

  Patent outcomesUS 10,647,861 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 10,647,861
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden 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). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

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

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Transgene / Bioinvent International AB v. Replimune LimitedNo claims unpatentable
  PTAB · May 25, 2023 · PGR2022-00014 · APJ Christopher G Paulraj · PGR · Final written decision

  The Board held claim 13 not unpatentable over Silvestre or Du, Choi, and Zitvogel, finding insufficient motivation to combine and reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “or “POSITA”) “would have had a Ph.D. in molecular biology, or a related field, with expertise in virology (including expertise growing, isolating, and rescuing viruses), immunology, and cancer biology with at least four years of post-Ph.D. experience in those areas.” Pet. 6 (citing Ex. 1007 ¶¶ 35, 96). Patent Owner does not argue otherwise. See PO Resp. 5. We adopt Petitioner’s uncontested definition as that definition is consistent with the level of skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “claim terms of the ’513 patent for purposes of determining whether to institute trial. For purposes of our analysis in this Final Written Decision, however, we find that it would be useful to clarify the scope of “oncolytic virus.” We agree with Petitioner that the Specification defines an “oncolytic virus” as “a virus that infects and replicates in tumor cells, such that tumor cells are killed.” Ex. 1001, 9:10–12. The Specification further clarifies that “the virus is replication competent,” and is preferably selectively replication competent in tumor tissue. Id. at 9:12–13. “A patentee is free to be his own lexicographer.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, consistent with its express definition in the Specification, to be a virus that infects and replicates in tumor cells, such that tumor cells are killed, wherein such a virus is replication competent.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “but contends that “oncolytic virus” should not be construed to encompass “viral vectors” such as those disclosed in Zitvogel. PO Resp. 5. Although Petitioner does not expressly contend otherwise, we agree with Patent Owner that “oncolytic virus” would not encompass Zitvogel’s “viral vectors,” which are defined in that reference to be “replication-defective” or “replication-impaired.” Ex. 1004, 19:26–29. We do not construe any other claim terms. See Vivid Techs., Inc. v.” slip op. at 13

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

    “Petitioner acknowledges that “while the bulk of Silvestre’s disclosure, including the working examples, is directed towards creating an oncolytic poxvirus, Silvestre discloses preparing modified oncolytic virus using other virus types, including HSV.” Pet. 44. It is undisputed, however, that Silvestre does not disclose a single embodiment of an oncolytic HSV that includes both a heterologous GM-CSF encoding gene and a heterologous CTLA-4 inhibitor encoding gene. Rather, Petitioner points to where each element could be found among broader lists of possible oncolytic virus classes, immune checkpoint targets, and therapeutic genes. Ex. 1002, 7:10– 15:49. As noted by Dr. Chiocca, if one were to randomly select any of the 11 We need not decide whether Silvestre anticipates independent claim 1, as the sole challenged claim 13 depends directly from claim 11. Thus, our determination that Petitioner has not shown that claim 11 is anticipated is sufficient to establish that Petitioner has not met its prerequisite burden for claim 13. Ex. 2009 ¶ 29. This type of picking and choosing is not anticipation. See Arkley, 455 F.2d at 587–88.” slip op. at 19

  Patent outcomesUS 10,947,513 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,947,513
• Dril-Quip, Inc. v. FMC Technologies, Inc.No claims unpatentable
  PTAB · Aug 1, 2022 · PGR2021-00049 · APJ George R Hoskins · PGR · Final written decision

  Claims 1–11, 14, and 15 were not shown unpatentable under § 103 over Maersk or Broussard, due to missing claim limitations and insufficient motivation to modify.

  RulingsFinal written decision

  • Skill levelOther

    “Patent Owner contends this person “would have had a Bachelor’s degree in mechanical or petroleum engineering or similar subject matter, and at least approximately two years of work or research experience in subsea oil and gas completion systems related to the analysis, design, development, and/or manufacturing of equipment for subsea completion systems for use in subsea oil and gas wells.” PO Resp. 16; Ex. 2002 ¶ 11. Thus, the parties essentially agree on the level of ordinary skill in the art to be applied in this proceeding. Their agreement is consistent with the level of skill reflected in the ’921 patent and the prior art of record. Further, we would reach the same decision regardless of whether we adopt Petitioner’s or Patent Owner’s formulation. We therefore do not need to delve into any fine distinctions between the two formulations.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “However, Maersk’s other two seal barriers—a ring seal, and a production packer—both appear to be passive barriers. See Ex. 2002 ¶ 60 (annotating Ex. 1019 to identify the ring seal); Ex. 1031 ¶ 33 (stating that passive barriers “include, inter alia . . . packers”). Dr. Hilbert does not explain persuasively why adding a third passive barrier would materially improve the sealing versus Maersk’s three existing barriers, so as to justify the extensive modifications required to re-route the annular fluid through the bore stab. See Ex. 1031 ¶¶ 33–35; id. ¶¶ 13–44 (discussing some of the modifications required). Further, Mr. Parks persuasively testifies, in opposition to Dr. Hilbert’s motivation testimony, that “deeper wells and increased annulus fluid pressure would not have led a [person of ordinary skill in the art] to modify Maersk to provide additional protective barriers.” Ex. 2002 ¶¶ 58, 60–63 (emphasis added). Some of this testimony has already been cited above. Additionally, Mr. Parks notably served on the editorial committee for API 17D. See id. ¶¶ 6, 63. He testifies that a person of ordinary skill in the art would have “recognized that API 17D does not support” Dr. Hilbert’s testimony, “because API 17D’s two-barrier requirement is not dependent on depth or pressure.” Id. ¶ 62 (citing Ex. 1022, 158 (§ 9.2.7)) (emphasis added). In particular: “there are practical considerations underlying the API 17D requirement for two barriers, and the lack of any specification for more than two barriers.” Id. ¶ 63. This testimony is supported by API 17D, which requires a minimum of two seal barriers for any system with a rated working pressure falling within the entire 5000–15000 psi range contemplated by API 17D. See Ex. 1022, 158 (§§ 9.2.7–9.2.8). Mr. Parks further testifies: “Two barriers, appropriately specified for” slip op. at 43

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “1. “production/annulus bore stab” In the Institution Decision, we determined the preamble of claim 1 (“A production/annulus bore stab”) is a limitation to the claim, which was a disputed issue at the time. See Inst. Dec. 16–20. Neither party has objected to our preliminary determination in their post-institution briefs. See, e.g., PO Resp. 15–16; Pet. Reply; Tr. 8:24–9:13. We, therefore, again conclude here that the preamble of claim 1 is a limitation to the claim, for the reasons provided in the Institution Decision.” slip op. at 9

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

    “We start our analysis with the claim language. The claim term in dispute is simply a “cylindrical” outer surface. The parties do not cite, and we do not discern, any other contextual claim language that might elucidate or limit the plain and ordinary meaning of “cylindrical.” Petitioner’s gloss on this term as connoting “an overall cylinder-like shape” is an unpersuasive attempt to broaden the meaning of the plain term “cylindrical.” It also would unhelpfully replace our present inquiry (What is a “cylindrical outer surface”?) with yet another inquiry (What is “an overall cylinder-like shape”?). Turning to the ’921 patent specification, we find that it discloses three different and distinct cylindrical outer surfaces: outermost cylindrical surface 102S, first cylindrical outer surface 102X, and second cylindrical outer surface 102Y. See Ex. 1001, Fig. 6, 3:47–51, 3:65–4:5. The distinctness of these three surfaces can be seen in Figures 5, 6, 8, 9, and 10. Petitioner’s attempt to combine these three distinct outer cylindrical surfaces, into one allegedly cylindrical outer surface (see Petitioner’s yellow annotations to Figure 6, supra), is not supported by the ’921 patent specification, which never describes the entire axial extent of the outer surface of bore stab body 102 as being “cylindrical.”” slip op. at 12

  Patent outcomesUS 10,689,921 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,689,921
• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11

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

    “C. Claim Construction We construe claims using the same 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. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Bluecatbio Ma Inc. v. Yantai Ausbio Laboratories Co., Ltd.No claims unpatentable
  PTAB · Dec 9, 2021 · PGR2020-00051 · APJ Elizabeth M Roesel · PGR · Final written decision

  Petitioner failed to prove claims 1, 3–5, 7, 10–12, and 14–20 unpatentable because the Gyro Washer was not shown to drive all or nearly all expelled liquid to the drain.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that Patent Owner’s additions are supported by the ’063 Patent. Patent Owner directs us to portions of the Specification that discuss immunoassays, magnetic bead assays, and cellular assays, as well as the need to avoid cross-contamination for these types of reactions. PO Resp. 14; Ex. 1001, 1:24–28, 3:43–45; 3:63–66, 4:25–32, 13:25–50, 15:52– 16:2, 19:41–59. We find that these disclosures support Patent Owner’s contention that a POSA would have been aware of the operational requirements of reaction vessel unit washing devices, methods used to cross-contamination. For these reasons, we apply Petitioner’s definition of a POSA as modified by Patent Owner’s additions. Pet. 16; PO Resp. 15.4” slip op. at 11

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

    “We agree with Patent Owner that its proposed construction stays true to the claim language. PO Sur-reply 5. As just discussed, “the expelled liquid on the inner surface of the housing” refers back to an earlier part of the claim that recites that rotating the rotor (referred to in claim 12 as inner surface of the housing. Ex. 1001, 24:5–8, 25:5–7. Claims 1 and 12 recite “the expelled liquid” without any modifier, such as “at least some.” In our view, Patent Owner’s proposed construction is consistent with the claim language because the antecedent for “the expelled liquid” is the liquid that is expelled from the reaction vessel onto the inner surface of the housing, not merely some portion of that liquid. Nothing in the claim language suggests that “the expelled liquid on the inner surface of the housing” is divisible, with some of the liquid being driven by the wind to the drain and some of the liquid not being driven by the wind to the drain. For example, we see no support in the claim language for Petitioner’s argument that “the first expelled milliliter qualifies as ‘liquid . . . expelled,’ and the second milliliter also qualifies as ‘liquid . . . expelled,’ and so on.” Pet. 20 (citing Ex. 1006 ¶ 65). Although “all or nearly all” is not expressly recited in the claim, neither is “some.” As between these two constructions, “all or nearly all” more closely aligns with the language and structure of claims 1 and 12, including the antecedent for “the expelled liquid on the inner surface of the housing,” which in our view refers to the undivided whole of the liquid.6” slip op. at 15

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

    “5. Weighing the Evidence For all of the foregoing reasons, we determine that Petitioner has not shown persuasively that the Gyro Washer generates a wind that drives to the drain “all or nearly all of the liquid expelled from the reaction vessel onto the inner surface of the housing,” as required by our claim construction. More particularly, we find that the photos and observations of the Gyro Washer and microplates after completion of a wash cycle, as discussed in subsection 2 above, show that a substantial amount of the liquid expelled from a microplate onto the inner surface of the housing is not driven by the wind to the drain of the Gyro Washer. We find that this evidence outweighs the other evidence relied upon by Petitioner to show that the wind limitation is met, including the videos and observations of the Gyro Washer in operation, as discussed in subsection 1 above, Petitioner’s droplet experiments, as discussed in subsection 3 above, and Petitioner’s bucket experiments, as discussed in subsection 4 above.” slip op. at 48

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

    “dependent claim 10, Petitioner contends that it would have been obvious to use an aspiration pump with the Gyro Washer. Pet. 104–105 (relying on evidence that a Gyro Washer was sold with an aspiration pump). For dependent claims 7 and 17, Petitioner contends that it would have been obvious to modify the Gyro Washer so that the rotor is rotated in a second rotational direction. Pet. 105–108, 114. For method claims 12 and 14–17, Petitioner contends that, even in the absence of Mr. Yagi’s demonstrations of the Gyro Washer at the 2009 and 2010 trade shows, the method of using the Gyro Washer would have been obvious in view of the device itself and that the limitations claims 12 and 14–16 are satisfied by the natural, ordinary, and intended use of the Gyro Washer. Pet. 108–114. Petitioner’s contentions do not remedy the deficiencies in Petitioner’s arguments and evidence addressing the wind limitation, as discussed above. Accordingly, we determine that Petitioner has not met its burden to show that claims 7, 10, 12 and 14–17 would have been obvious in view of the Gyro Washer.” slip op. at 51

  Patent outcomesUS 10,338,063 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,338,063
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCNo claims unpatentable
  PTAB · Oct 8, 2021 · PGR2020-00055 · APJ Robert L Kinder · PGR · Final written decision

  Claim 1 was not shown unpatentable as anticipated by the Leopaard or obvious over the Leopaard alone or with the Equinox.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “designer of ordinary skill analysis whereas the overall claimed design cannot be accurately compared to the Leopaard vehicle. As we discuss in more detail below, there are simply too many aspects of the claimed design that are not adequately disclosed by the images of the Leopard. Although LKQ’s experts project what is likely to be in these evidentiary voids, we do not find estimations of design features on par with an actual showing. LKQ’s anticipation and obviousness theories are based too much on speculation and conjecture about what features might be present in the Leopaard’s skid bar (see, e.g., Pet. Reply 22 (“most likely”)), or that various features can be discounted as “likely barely noticeable” or “unlikely to be noticeable.” Id. at 25, 28. With this understanding, we compare the design claim to the Leopaard, noting both the similarities and difference and also the shortcomings in evidence.” slip op. at 43

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “individual who has at least an undergraduate degree in transportation or automotive design and experience in the field of transportation design, or someone who has several years’ work experience in the field of transportation or automotive design. Pet. 37 (citing Ex. 1003 ¶¶ 41–42; Ex. 1004 ¶ 39). GM originally argued for a slightly different standard for the ordinary designer in its Preliminary Response, but for purposes of its Response, GM has acquiesced in LKQ’s definition. See PO Resp. 8. Mr. Peters contends that “I do not discern any relevant differences between these proposals, nor do I have any substantive disagreement with Mr. Gandy’s proposal. My opinion is the same, regardless of which definition is applied.” Ex. 2004 ¶ 27. Based on the final record, we adopt Petitioner’s proposed definition of the ordinary designer.” slip op. at 16

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

    “contentions. As we analyze in detail below, LKQ’s case is not persuasive for several reasons, including its failure to provide sufficient evidence. LKQ has not produced images of the Leopaard that would enable a persuasive comparison with corresponding views of the claimed invention. The evidence produced by LKQ related to the Leopaard simply fails to clearly show several claimed aspects of the design. Because the Petition omits sufficient views of any complete single skid bar (Ex. 2004 ¶ 51), the evidence produced by LKQ related to the Leopaard simply fails to clearly show several claimed aspects of the design. For example, Exhibits 1006– 1009 include front or perspective views that show, at most, only an upper portion of a skid bar. Exhibit 1010 shows slightly more of the skid bar of its vehicle, but also omits a significant portion of the bottom of the skid bar. Ex. 2004 ¶ 51; Ex. 2006, 77:2–21. The exhibits do not show a sufficient bottom view to allow comparison and the exhibits also have obscured side views due to other trim features covering the outsides of the skid bar. For these and other reasons such as the differences between the designs discussed below, LKQ has failed to meet its burden of proof.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petition does propose any other modifications to the Leopaard. LKQ’s obviousness analysis failed to address the differences that contribute to the overall appearance of the ’508 patent’s design. As discussed above, the evidence shows multiple readily apparent differences between the claimed design and the Leopaard. We agree with Mr. Peters that “[t]he differences I discussed above in the context of the ordinary observer are just as significant to the ordinary designer, who would likewise have recognized these readily visible features.” Ex. 2004 ¶ 86. These same differences in the aggregate create an overall ornamental design that is not basically the same between the claimed design of the ’508 patent and the Leopaard. Accordingly, the Leopaard is not a proper Rosen reference. Even before modifications may be considered, LKQ has the burden to show that the Leopaard, as it currently is “in existence,” has design characteristics of which are basically the same as the claimed design. High Point Design, 730 F.3d at 1311. Considering the Leopaard before any proposed modifications, it is not a proper Rosen reference. Ex. 2004 ¶ 84. The Leopaard does not give basically the same visual impression as the patented design because the Leopaard does not teach a substantial vertical front face, bottom surface and edge (continuous surface below the recesses), outwardly projecting top and side surfaces, curvature from side-to-side, deep recesses entirely visible from the front, and outer perimeter shape. See id. ¶¶ 49, 52–85. As Mr. Peters testifies, the Leopaard does not have substantially the same overall appearance because “the respective designs include numerous fundamentally different design characteristics,” which “[t]he Petition does not specifically address.” Id. ¶¶ 83, 84. Without accounting for these differences—and particularly, the significance of these differences to the designer of ordinary skill in the art—the Petition lacks sufficient evidence that the Leopaard is “a single reference that creates basically the same visual impression” as the claimed design. Indeed, the differences described above in the context of the ordinary observer are just as significant to the ordinary designer, who is aware of readily apparent differences when assessing the visual impression of designs. Ex. 2004 ¶¶ 25, 84–86. Thus, we are not persuaded that a designer of ordinary skill would have viewed the Leopaard to give basically the same visual impression as the ’508 patent.” slip op. at 58

  Patent outcomesUS D855,508 not shown unpatentable
  § 102 anticipation§ 103 obviousness

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.