- PTAB · Dec 30, 2014 · IPR2013-00403 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–27 and granted substitute claims 28 and 30, but denied substitute claims 29 and 31–33 for failure to meet amendment requirements or show patentability.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 28 as a substitute for claim 2, claim 29 as a substitute for claim 11, claim 30 as a substitute for claim 13, claim 31 as a substitute for claim 22, claim 32 as a substitute for claim 24, and claim 33 as a substitute for claim 27. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’583 patent. See Mot. 8. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Term Proposed Interpretation “sync point” “a location in a data flow having data meeting a specified criteri[on]” “fine sync point” “a location in a data flow having data meeting a specified fine criteri[on] that is less restrictive than a coarse criteri[on]” “coarse sync point” “a location in a data flow having data meeting a specified coarse criteri[on] more restrictive than a fine criteri[on]” Mot. 6–7 (citing Ex. 1001, col. 9, ll. 20–57). Petitioner in its Opposition does not argue that Patent Owner’s proposed interpretations are incorrect. We agree that Patent Owner’s proposed interpretations represent the broadest reasonable interpretation of the claims in light of the Specification of the ’583 patent. The Specification discloses fine filter 560 and coarse filter 565, where “[t]he appliance designates the locations in the data flow which meet the fine and coarse filter criteria as fine and coarse sync-points, respectively,” and the filter criteria for coarse filter 565 are “more restrictive” than the filter criteria for fine filter 560. Ex. 1001, col. 9, ll. 20–38. The Specification also describes an example where “the filter criteri[on] declares a fine sync-point when the top five bits of the hashes are all zeros and a coarse filter criteri[on] which stores or compares hashes when the top ten bits of the hashes are all zeros” (i.e., the filter criterion for the coarse filter is more restrictive). Id. at col. 9, ll. 30–34. Accordingly, we interpret “sync point,” “fine sync point,” and “coarse sync point” as set forth above.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“Also, in the Decision on Institution, we interpreted various claim terms of the independent claims of the ’583 patent as follows: Term Interpretation “network memory” (claims 1, 12, device(s) in a network for and 23) storing information “appliance” (claims 1, 12, and 23) hardware and/or software elements applied to a particular use “instruction” (claims 1, 12, and a message or signal that 23) indicates, explicitly or implicitly, an action to perform See Dec. on Inst. 6–10. Patent Owner’s proposed substitute claims depend from the original independent claims of the ’583 patent, and the parties do not dispute these interpretations in their papers. We do not perceive any reason or evidence that now compels any deviation from these interpretations. Accordingly, for purposes of assessing the proposed substitute claims, we incorporate our previous analysis of the three terms above. See id.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 8,370,583 - PTAB · Dec 30, 2014 · IPR2013-00402 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–12 and granted the motion to amend for substitute claims 13 and 15, but denied it for claims 14 and 16–18 based on unmet amendment and eligibility requirements.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“In a motion to amend, the patent owner bears the burden of proof to demonstrate patentability of its proposed substitute claims over the prior art and, thus, entitlement to the claims. Idle Free at 7. This does not mean that the patent owner is assumed to be aware of every item of prior art known to a person of ordinary skill in the art. However, the patent owner should explain in its motion why the proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record but known to the patent owner: A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims. Id. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art even without reliance on any particular item of prior art. Id. at 7–8; Toyota at 4–5. The petitioner then has the opportunity, in its opposition, to argue any deficiency in the patent owner’s motion and “come forward with specific evidence and reasoning, including citation and submission of any applicable prior art,” to rebut the patent owner’s position on patentability. Idle Free at 8.” slip op. at 16
- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 13 as a substitute for claim 4, claim 14 as a substitute for claim 3, claim 15 as a substitute for claim 8, claim 16 as a substitute for claim 7, claim 17 as a substitute for claim 12, and claim 18 as a substitute for claim 11. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’226 patent. See Mot. 8–9. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 11
- 112 supportGranted
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundDecided for patent owner
“Patent Owner argues that it would not have been obvious to incorporate the technique of Spring into a network data de-duplication system, as recited in the proposed substitute claims, because Spring “had very limited practical application in the network memory context.” Mot. 12. Patent Owner’s position is supported by the statement in McCanne ’376 that due to Spring’s small cache and first-in first-out replacement policy, “the efficacy of [Spring’s] approach is limited to detecting and exploiting communication redundancies that are fairly localized in time.” Ex. 1003 ¶ 20; see Mot. 12. The proposed substitute claims, which identify sync points from which forward and backward memory comparisons are performed, are not limited to only recently transmitted data. Patent Owner also asserts that the specific combination of “fine and coarse filtering of hash values” and “forward and backward memory comparison” limitations recited in the proposed substitute claims represents a practical solution to the “tradeoff” that exists with data de-duplication systems, and is not solved by any of the prior art of record. Mot. 12–13. Specifically, Patent Owner states that there is a “tradeoff” between the size of an index and the likelihood that an indexed segment will be matched. Id. Spring uses a small fixed-size cache and small packets, and, thus, works best for only recently transmitted data. Id. By contrast, according to Patent Owner, the proposed substitute claims provide a practical solution to the tradeoff by operating at the byte-level and using a combination of fine and coarse filters to identify sync points from which forward and backward memory comparisons are performed. Id. Patent Owner’s explanations regarding the prior art and why the proposed substitute claims allegedly would not have been obvious are supported by the record and are persuasive. We also note that although Petitioner addresses the “fine and coarse filtering of hash values” limitations in its Opposition (arguing that they are taught by Hsu), Petitioner does not argue that Hsu—or any other reference— teaches or suggests the “forward and backward memory comparison” limitations. Nor does Petitioner propose any specific combination of references that allegedly would have rendered obvious the proposed substitute claims as a whole. Thus, Patent Owner’s assertions regarding key aspects of the prior art, such as Spring, essentially are unrebutted.” slip op. at 23
§ 101 eligibility§ 103 obviousnessPatents in suitUS 8,312,226 - PTAB · Oct 28, 2014 · IPR2013-00266 · APJ Christopher L Crumbley · IPR · Final written decision
The Board denied entry of substitute claims 20–26 as obvious, and granted cancellation of challenged claims 1, 2, 4, 11, 12, 17, 18, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“1. the cleavable linker and the protecting group are cleavable under identical conditions Proposed substitute claim 20 recites, inter alia, “a base that is linked to a detectable label via a cleavable linker,” a “protecting group attached via the 3' oxygen atom” of the nucleotide, and a step of “removing the label and the protecting group of the nucleotide . . . under a single set of chemical cleavage conditions.” Mot. 2 (emphasis added). These limitations are similar to those present in original claim 1, which we construed in our Decision on Institution. Specifically, we construed removal of the label and the protecting group under a single set of conditions “to mean what its plain language indicates: removal of the label and the protecting group under a single set of conditions.” Dec. 6. Neither of the parties contested this construction subsequent to institution, and we discern no reason to modify our initial construction for the purposes of this decision. Proposed claim 20 also requires that the cleavable linker comprise a disulfide linkage, but does not specify the protecting group. Thus, “a single set of chemical cleavage conditions,” under the broadest reasonable interpretation standard, limits the structure of the protecting group to one which can be cleaved under the same conditions as a disulfide linkage, but does not require a specific structure, such as a disulfide linkage.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2004 ¶ 84. There is no testimony, however, that the stated results were due to the claimed nucleotide rather than the reducing agent. While Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, he does not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir. 2013). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable over the prior art considered in this Decision. The Motion to Amend is DENIED to the extent that it requests entry of substitute claims 20–26.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,346 - PTAB · Aug 29, 2014 · IPR2013-00178 · APJ Jon B Tornquist · IPR · Final written decision
The Board canceled claims 1–20 and denied substitution of claims 21–30 because the proposed claims lacked written-description support and were not shown patentable over prior art.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“2. Written Description Support Patent Owner bears the burden to show written description support in the original disclosure for each proposed substitute claim. 37 C.F.R. § 42.121(b)(1); 37 C.F.R. § 42.20(c). The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“Dr. Sughrue testifies that one of ordinary skill in the art would have understood that the “different reactor configurations and catalysts” used in Jakkula “could and would lead to differing optimal temperatures from those reported in Craig.” Ex. 1040 ¶ 36 (emphasis added). For example, Dr. Sughrue testifies that one of ordinary skill in the art would have understood that reduced temperatures, as well as dilution—which was used in Jakkula but was not studied as an operating variable in Craig—could “greatly reduce the rate of dimerization and oligomerization of free fatty acids” and would lead to lower levels of high molecular weight hydrocarbons. Ex. 1040 ¶¶ 42, 60, 90; Ex. 1013, 4:11–13. Dr. Sughrue also provides evidence that in the years after the publication of Craig “the activity of hydroprocessing catalysts increased dramatically,” permitting lower reaction temperatures in the HDO step. Id. ¶¶ 31, 33. In light of these differences, Dr. Sughrue concludes that one of ordinary skill in the art “would not have been dissuaded from considering HDO reaction temperatures at or near the low end of the preferred temperature range taught in [Jakkula], e.g., 300 °C, or even lower temperatures within the more broadly taught range of 200-500 °C.” Ex. 1040 ¶ 37. We find Dr. Sughrue’s testimony persuasive. In particular, in light of Jakkula’s disclosed successful results, we are persuaded that one of ordinary skill in the art would not have viewed Craig’s 350 °C minimum temperature for “trouble-free operation” as a line not to be crossed, but would have understood that the optimal and minimum temperatures for the HDO step would vary depending on the particular reactor configuration and operating conditions used. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“Discovery of an optimum value of a results effective variable in a known process is ordinarily within the skill in the art.”). Although Dr. Klein presents an opposing view from that of Dr. Sughrue, upon review of both expert declarations and their corresponding depositions, on balance, we find that Dr. Sughrue’s testimony more persuasively considers not only the express teachings of Craig and Jakkula, but also the timing of the two disclosures, the differences in reactor configuration and operating conditions, and the knowledge, skill, and reasoning ability of one of ordinary skill in the art. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan.”)” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Sughrue testifies that one of ordinary skill in the art would have understood that the “different reactor configurations and catalysts” used in Jakkula “could and would lead to differing optimal temperatures from those reported in Craig.” Ex. 1040 ¶ 36 (emphasis added). For example, Dr. Sughrue testifies that one of ordinary skill in the art would have understood that reduced temperatures, as well as dilution—which was used in Jakkula but was not studied as an operating variable in Craig—could “greatly reduce the rate of dimerization and oligomerization of free fatty acids” and would lead to lower levels of high molecular weight hydrocarbons. Ex. 1040 ¶¶ 42, 60, 90; Ex. 1013, 4:11–13. Dr. Sughrue also provides evidence that in the years after the publication of Craig “the activity of hydroprocessing catalysts increased dramatically,” permitting lower reaction temperatures in the HDO step. Id. ¶¶ 31, 33. In light of these differences, Dr. Sughrue concludes that one of ordinary skill in the art “would not have been dissuaded from considering HDO reaction temperatures at or near the low end of the preferred temperature range taught in [Jakkula], e.g., 300 °C, or even lower temperatures within the more broadly taught range of 200-500 °C.” Ex. 1040 ¶ 37. We find Dr. Sughrue’s testimony persuasive. In particular, in light of Jakkula’s disclosed successful results, we are persuaded that one of ordinary skill in the art would not have viewed Craig’s 350 °C minimum temperature for “trouble-free operation” as a line not to be crossed, but would have understood that the optimal and minimum temperatures for the HDO step would vary depending on the particular reactor configuration and operating conditions used. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“Discovery of an optimum value of a results effective variable in a known process is ordinarily within the skill in the art.”). Although Dr. Klein presents an opposing view from that of Dr. Sughrue, upon review of both expert declarations and their corresponding depositions, on balance, we find that Dr. Sughrue’s testimony more persuasively considers not only the express teachings of Craig and Jakkula, but also the timing of the two disclosures, the differences in reactor configuration and operating conditions, and the knowledge, skill, and reasoning ability of one of ordinary skill in the art. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan.”)” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill in the art, upon reading a reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[I]n weighing the suggestive power of each reference, [the Board] must consider the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). When two references do not use directly comparable techniques or operating conditions, the impact of an allegedly discrediting reference may be significantly reduced. See id. at 592. slip op. at 14
§ 103 obviousnessPatents in suitUS 8,212,094 - PTAB · Jul 25, 2014 · IPR2013-00128 · APJ Richard M Lebovitz · IPR · Final written decision
The Board granted cancellation of claims 1–8 but denied entry of substitute claims 9–12 because Illumina did not show they were patentable over the prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“[l]abeling moieties are favorably in communication with or coupled to nucleotides via a linker of sufficient length to ensure that the presence of said labeling moieties on said nucleotides will not interfere with the action of a polymerase enzyme on said nucleotides.” Ex. 2015, p. 32, ll. 10-13. Rabani specifically mentions disulfide linkages as useful when a cleavable linker is desired: Linkages comprising disulfide bonds within their length have been developed to provide for cleavability24; reagents comprising such linkages are commercially available25 and have been used to modify nucleotides26 in a manner which may be conveniently reversed by treatment with mild reducing agents such as dithiothreitol. Id. at p. 32, ll. 29-33. Footnotes 24 and 26 of the above quoted passage cite to Ruby, S.W. et al. (1990), Methods in Enzymology, 181:97, which is Exhibit 2016. Id. at 49. Footnote 25 references “for example, from Pierce Chemical Co., [ ] of Rockford, IL., U.S.A.” Id. Rabani, therefore, would have given a skilled worker reason to have used a cleavable linker with a disulfide bond to ensure that the labeling moieties on the nucleotides will not interfere with the action of a polymerase enzyme during the synthesis reaction. Church IBS cited Church as evidence of the obviousness of using a disulfide linker in a sequencing reaction. Paper 53, 2. Church provides another example of the use of a disulfide linker to attach a label to base of a nucleotide, further establishing its conventionality at the time of the invention. Ex. 1031, 17:10-18, 68:12-21. Church describes a working example in which a label was attached to a nucleotide base using a disulfide linker and then cleaving it off with DTT. Id. at 86:6-30. slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for petitioner
“Secondly, the cleavage agents are different. The cleavage agent used in Ruby is DTT (Ex. 2016, 10, “Elution buffer” A and B) and in Herman, the cleavage agent is described as “a reducing agent such as DTT” (Ex. 2017, col. 7, ll. 47-48) with DTT being used in its example (id. at col. 10, ll. 47-54, col. 11, ll. 11-22; col. 12, ll. 3-8). Mr. Vermaas describes an experiment that utilized another cleavage agent, 2 mM tris- (hydroxymethyl)phosphine. Ex. 2028 ¶ 10. Illumina did not offer an explanation as to why the phosphine compound was used instead of DTT as used by both Ruby and Herman. Indeed, Church used DTT in a DNA sequencing reaction, similar to the sequencing carried out in the Vermaas experiments, providing an additional reason to have used DTT in Dr. Varmaas’s comparison to the prior art. Ex. 1031, Fig. 5; 68, ll. 12-13; 86, ll. 20-23. There is no testimony that the stated results were due to the claimed nucleotide rather than the reducing agent. Dr. Romesberg testified: “Therefore, the disulfide cleavage yield achieved by Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2009 ¶ 74. Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, but he did not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir, 2013).” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Patent Owner bears the burden of proof to establish that it is entitled to the relief requested in the Motion to Amend. 37 C.F.R. § 42.20(c). Patent Owner, therefore, bears the burden of showing the patentability of the amended claims. Patent Owner must show that the conditions for novelty and non- obviousness are met for the prior art available to one of ordinary skill in the art at the time the invention was filed, not just the prior art cited in the Petition. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR 2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). Also, a motion to amend “must include a claim listing, show the changes clearly, and set forth: (1) The support in the original disclosure of the patent for each claim that is added or amended.” 37 C.F.R. § 42.121(b)(1).” slip op. at 6
- ExcludeMotion to exclude, deniedMixed
“characterizations of Figure 6 from Ex. 1031, and all arguments based on it be excluded as evidence from this inter partes review. Illumina argues that the Figure should be excluded “because it includes poor quality black and white reproductions of images that do not accurately reflect the original underlying data.” Paper 70, 1. We agreed with Illumina that the figure of Church is of poor quality and gave it no weight. We, therefore, did not rely on Figure 6 of Church in reaching our decision. Accordingly, Illumina’s motion is dismissed as moot.” slip op. at 29
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,057,026 - PTAB · May 20, 2014 · IPR2013-00124 · APJ Lora M Green · IPR · Final written decision
The Board granted cancellation of claims 1-26 and allowed substitute claims 27-44, but denied substitute claim 45 as unpatentable over Behan.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundMixed
“In order to establish a prima facie case of obviousness based on structural similarity, the prior art must provide a reason to make the claimed compound, and there must also be “„adequate support in the prior art‟ for the 7 P.E.A. Teal et al., (Z)-11-Hexadecen-1-ol: A Behavioral Modifying Chemical Present in the Pheromone Gland of Female Heliothis Zea (Lepidoptera:Noctuidae), 116 CAN. ENTOMOLOGY 777-79 (1984). Ex. 2003. 8 Yih-Shen Hwang et al., Structure-Activity Relationship of Unsaturated Fatty Acids as Mosquito Ovipositional Repellents, 10 J. OF CHEM. ECOLOGY 145-51 (1984). Ex. 2004. change in structure.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (quoting In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). The United States Court of Appeals for the Federal Circuit noted that the test for obviousness of a compound based on structural similarity is in accordance with the legal principles enunciated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), specifically, that it is important to identify “„a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does‟ in an obviousness determination.” Takeda, 492 F.3d at 1356-57 (quoting KSR, 550 U.S. at 418). Thus, “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda, 492 F.3d at 1357.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“We acknowledge that McMahon and the Zhang Declaration are evidence that the ordinary artisan would not have had a reasonable expectation that, because a compound is known to repel mosquitoes, such as Aedes aegypti, the compound would also repel ticks, such as Amblyomma variegatum. Claim 45, however, encompasses the use of isolongifolanone when R1 is a hydrogen atom and R2 is an oxygen atom, which is the same compound specifically taught by Behan. See Pet. 7-8 (showing the structure of isolongifolanone, and discussing how it is encompassed by the chemical formula set forth in claim 1). As discussed above, Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites. “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) (noting that the realization of a new benefit of an old process does not render that process patentable); Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was drawn to the same use comprising the same steps of the prior art, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”). We, therefore, conclude that the preponderance of the evidence does not support the patentability of proposed claim 45.” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,579,016 - PTAB · Apr 28, 2014 · IPR2013-00067 · APJ James B Arpin · IPR · Final written decision
The Board granted cancellation of claims 1–46 and denied entry of substitute claims 47–50 because Nike did not establish their patentability and they would have been obvious over Nishida and Schuessler I and II.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“a patent reexamination proceeding. The substitute claims proposed in a motion to amend are not entered automatically and then subjected to examination. Rather, the proposed substitute claims will be added directly to the patent, without examination, if the patent owner’s motion to amend claims is granted. In a motion to amend, the patent owner is not rebutting a rejection in an office action, as though this proceeding were a patent examination or a reexamination. Instead, the patent owner, as the movant, bears the burden of establishing the patentability of the proposed substitute claims over the prior art of record and also other prior art known to Patent Owner. We deny the motion to amend because (1) Patent Owner has not met this burden and (2) Petitioner has shown that the substitute claims would have been rendered obvious over the combination of the teachings of Nishida and Schuessler I and II.” slip op. at 34
- ExcludeOther
“The current situation does not require us to assess the merits of Petitioner’s motion to exclude. As discussed above, even without relying upon the aforementioned portions of the cross-examination testimony of Dr. Frederick, we have concluded that Patent Owner has demonstrated that the term “flat knit edges” of substitute claims 47-50 is supported by the disclosure of the ’289 Application. Accordingly, Petitioner’s motion to exclude evidence is dismissed as moot.” slip op. at 41
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In construing the term “flat knitting,” we apply the broadest reasonable interpretation of the words in their ordinary usage, as those words would be understood by one of ordinary skill in the art, taking into account any definitions supplied by the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The Specification of the ’011 Patent expressly describes flat knitting as a sub-type of weft knitting. Ex. 1002, col. 7, ll. 5-8. Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be . . . the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Further, Patent Owner presents evidence that a person of ordinary skill in the art would understand flat knitting to describe a sub-type of weft knitting. Paper 44, 1 (quoting a textile dictionary (Ex. 2011, 6) to state that “the trade uses the term flat knit fabric to refer to weft knit fabrics made on a flat machine, rather than warp-knit fabrics”); see also Ex 2017, 5; Ex. 2018, 6. Despite its argument, Petitioner identifies no portion of the Specification of the ’011 Patent that describes flat knitting with respect to warp knitting or any other type of knitting, beyond weft-knitting. See Paper 37, 2-3. In addition, before the filing date of the motion to amend, Dr. Frederick, Petitioner’s expert, testified that “[f]lat knitting would be another type of weft knitting that would involve an end result that was . . . on a curved 15 surface, but more or less flat.” Ex. 2009, 89, ll. 6-11. Therefore, we determine that the term “weft knitting” describes a type of knitting in which a continuous yarn is carried in crosswise rows, and we construe the term “flat knit” to recite a sub-type of weft knitting, in which the weft knit textile is produced as a sheet of more or less flat material.5” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Petitioner contends that Nishida and Schuessler I are in similar fields and address the same problem, namely the formation of two-dimensional textile elements having edges that are joined to form three-dimensional, wearable items. Paper 37, 11; cf. Ex. 1005, figs. 1 (two-dimensional layout 2) and 3 (three-dimensional, shoe upper 3); Ex. 1020, figs. 1 (two-dimensional helmet swatch) and 2 (three-dimensional helmet). Further, Schuessler II teaches that the two-dimensional helmet swatch of Figure 1 of Schuessler I may be knit to shape on a flat knitting machine. Paper 37, 11 (citing Ex. 1023 ¶ 15). Petitioner contends, therefore, that a person of ordinary skill in the art would have reason to combine the teachings of these three references to achieve the invention recited in substitute claim 47. Id. Patent Owner does not argue Petitioner’s assessment of the teachings of these references. Patent Owner also does not dispute that all of the limitations of the claims are taught in the prior art. Instead, Patent Owner argues that Petitioner’s contention that a person of ordinary skill in the art would combine Nishida’s teaching regarding the reduction of waste by placing layouts in adjoining positions and Schuessler I’s teaching regarding knitting textile elements to shape is illogical. Paper 44, 5. Specifically, Patent Owner argues that Petitioner’s reason for combining these teachings is somehow flawed because “after they are combined the elements of each reference serve the same purpose.” Id. As the U.S. Supreme Court explained, however, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious 38 unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 555 U.S. 398, 417 (2007). In this case, that the elements of the prior art references would “serve the same purpose” when combined is a factor in favor of an obviousness determination, and not a suggestion of nonobviousness, as urged by Patent Owner. Because we are persuaded that Petitioner has demonstrated that the teachings of Nishida and Schuessler I and II teach or suggest all of the limitations of substitute claim 47 and that a person of ordinary skill in the art would have had reason to combine the teachings of these references to achieve the recited article of footwear, we determine that Patent Owner fails to meet its burden of showing that it is entitled to the relief requested in its motion to amend. Because we group substitute claims 48-50 with claim 47 for purposes of assessing patentability, we also determine that Patent Owner fails to meet its burden of showing that it is entitled to the relief requested in its motion to amend with respect to substitute claims 48-50. Consequently, the portion of Patent Owner’s motion to amend requesting entry of substitute claims 47-50 also is denied for failing to demonstrate that the substitute claims are patentable over Nishida and Schuessler I and II.” slip op. at 38
Claim construction§ 103 obviousnessPatents in suitUS 7,347,011 - PTAB · Apr 24, 2014 · IPR2014-00107 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable over Goda or the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that Petitioner’s arguments and supporting evidence do not demonstrate sufficiently that Goda describes a contact hole dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit. To the extent that Petitioner asserts that a “DOF margin” is synonymous with a “DOF limit,” Petitioner’s arguments remain unavailing. Petitioner’s assertion that the DOF margin discussed in the ’922 Patent is a type of processing margin discussed in Goda (Pet. 18) (i.e., Goda’s processing margin describes a DOF margin) is not supported by a sufficient underlying factual basis. Ex. 1002 ¶ 48; 37 C.F.R. § 42.65(a). Thus, on the record before us, Petitioner does not demonstrate a reasonable likelihood of prevailing on its assertion that Goda anticipates independent claim 1, and claims 6 and 7 dependent therefrom. 2. 35 U.S.C. § 103 Grounds of Unpatentability for Claims 1–7 We are persuaded that, as applied by Petitioner, none of the An, Kim, Toshiba, or Lee references remedies Goda’s deficiency in teaching “the contact hole is dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit.” Prelim. Resp. 30–31; see Pet. 30–58. Petitioner does not rely on any reference other than Goda for this limitation. Therefore, Petitioner does not establish a reasonable likelihood of prevailing on its assertions that claim 1, and claims 2–7, dependent therefrom, would have been obvious over the following combinations of references: (1) Goda and An; (2) Goda, An, and/or Kim; (3) Goda, An, and/or Kim, and Lee; (4) Goda and Toshiba; and (5) Goda, Toshiba, and Lee.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We are not persuaded by Patent Owner’s assertions that the broadest reasonable interpretation of “depth of focus” or “DOF” requires the exposed photoresist to generate line widths within specifications and adequate profiles, or otherwise requires maintaining focus throughout the entire depth of the photoresist. The ’922 Patent does not provide a sufficient factual basis to support Patent Owner’s assertions, because the ’922 Patent is silent regarding exposed photoresist and maintaining focus throughout the entire depth of the photoresist. We are persuaded that the definition in the Specification cited by Petitioner applies. Accordingly, applying the broadest reasonable interpretation, “depth of focus” and “DOF” means “the range of lens-wafer distances over which line widths are maintained within specifications and resist profiles are adequate.” Ex. 1001, col. 2, ll. 20–22.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. “DOF Limit” Petitioner and Patent Owner do not provide a proposed construction for “DOF limit,” as recited in claim 1. Consistent with the broadest reasonable interpretation of “depth of focus” and “DOF,” “DOF limit” means “a limit associated with the range of lens-wafer distances over which line widths are maintained within specifications and resist profiles are adequate.” See id.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are persuaded that Petitioner’s arguments and supporting evidence do not demonstrate sufficiently that Goda describes a contact hole dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit. To the extent that Petitioner asserts that a “DOF margin” is synonymous with a “DOF limit,” Petitioner’s arguments remain unavailing. Petitioner’s assertion that the DOF margin discussed in the ’922 Patent is a type of processing margin discussed in Goda (Pet. 18) (i.e., Goda’s processing margin describes a DOF margin) is not supported by a sufficient underlying factual basis. Ex. 1002 ¶ 48; 37 C.F.R. § 42.65(a). Thus, on the record before us, Petitioner does not demonstrate a reasonable likelihood of prevailing on its assertion that Goda anticipates independent claim 1, and claims 6 and 7 dependent therefrom.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,018,922 - PTAB · Mar 18, 2014 · IPR2013-00626 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all challenged claims because Superior did not show a reasonable likelihood that the cited references taught layers permanently affixed together.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the written description define the term. In the absence of an express definition, it is reasonable to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). “Permanent” is commonly understood to mean “continuing or enduring without fundamental or marked change; stable.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 922 (11th ed. 2005). To “affix” means “to attach physically.” Id. at 21. Based on these definitions, the ordinary meaning of the phrase permanently affixed would be “attached physically such that the attachment continues or endures without fundamental or marked change.” Thus, a flexible inner layer and an exterior hard layer are permanently affixed when they cannot be separated without “fundamental[ly] or marked[ly] chang[ing]” – i.e., damaging – the layers or the bond between the layers. For purposes of this decision, therefore, permanently affixed, in the context of claim 1, requires that the flexible inner layer and the outer hard layer cannot be separated without damaging the layers or the bond between the layers.1” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The above images depict perspective and front views of the Cozip case. Ex. 1003 at 8, 10. Superior asserts that Cozip discloses a case with “an exterior hard layer ha[ving] four corner joints with cut-away portions.” Pet. 28. Superior argues that “it would have been obvious to one of ordinary skill in the art to fill the shell and corners of Cozip . . . with the flexible layer of Seo.” Id. at 33. Superior, therefore, is proposing that a person of ordinary skill would attach Seo’s soft silicone layer to Cozip’s polycarbonate case, with Cozip’s cut-away portions serving as the “dispensing portions” as taught by Seo. Superior reasons that it would be obvious to fill permanently the cut away portion of Cozip with the flexible inner layer 20 of Seo to attach tightly and integrally the inner layer 20 to Cozip’s outer layer as taught by Seo. Pet. 39 (citing Ex. 1002, 5:9-16). But Superior does not explain how attaching Seo’s inner silicone layer to Cozip’s case would result in “permanently affix[ing]” the two layers together, given that Seo teaches that it is “impossible to apply different material to the surface of the body case.” Ex. 1002, 2:7-9. Accordingly, as with the grounds based on Seo as the primary reference, we are not persuaded that Superior is reasonably likely to show that a person of ordinary skill in the art at the time of the invention would “permanently affix” Seo’s soft silicone layer to Cozip’s polycarbonate case. Therefore, we do not institute an inter partes review on any of the grounds based on Cozip as the primary reference.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,204,561
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.