- PTAB · Feb 1, 2024 · IPR2023-01298 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Chell anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have possessed a strong understanding in the use and development of genetics and genomics approaches for detecting or monitoring human diseases, such as spatial detection of a target analyte (e.g., mRNA or DNA) in a tissue, and would typically have a Ph.D. in a relevant field (e.g., molecular biology, genetics, and bioinformatics) with two years of experience. Pet. 14 (citing Ex. 1002 ¶¶ 24–25). For the purposes of its Preliminary Response, Patent Owner does not provide its own proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s unchallenged definition as it is consistent with the cited prior art and disclosure of the ’689 patent.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“a) contacting the tissue sample with a plurality of nucleic acid probes, wherein each of the nucleic acid probes comprise a target binding domain that binds to the at least one target analyte, wherein the tissue sample [has been] is treated to facilitate binding of the nucleic acid probes to the target analyte b/c) collecting the nucleic acid probes, or portions thereof, bound to the at least one target analyte in a first/second location of the tissue sample under conditions that release the nucleic acid probes, or portions thereof, from the first/second location of the tissue sample d/e) performing an extension reaction that incorporates at least one nucleic acid sequence that identifies the first/second location of the tissue sample into each of the nucleic acid probes, or portions thereof, collected in step (b), thereby forming a first plurality of extension products that comprise the nucleic acid probes, or portions thereof, collected in step (b) and the at least one nucleic acid sequence that identifies the first/second location of the tissue sample Ex. 1001, 145:51–147:11 (emphasis added). Thus, according to claim 1, the “nucleic acid probe” must 1) comprise a target binding domain that binds to the at least one target analyte, 2) be bound to the at least one target analyte; 3) be released in whole or as a portion, and 4) have a location-identifying nucleic acid sequence incorporated into it through an extension reaction. Steps a), b), and c) occur in relation to the target analyte, while steps d) and e) occur after the probe is” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We further interpret “collecting the nucleic acid probes” to mean “releasing all or a portion of the nucleic acid probe bound to the at least one target analyte through application of a force followed by retrieval of the released probe or portion of the probe.” The question then becomes whether So-465, which teaches replication of a probe that was bound and then at least partially released to make genomic amplicons, followed by collection of those genomic amplicons, anticipates collection of probes as recited in claims 1 and 16. On this record, we do not see sufficient evidence that the genomic amplicons disclosed in So-456 that Petitioner identifies as “captured” were ever “bound to the analyte” in part or in whole as required by the claim language, but rather were amplified in situ from the probe or partial probe that was released. Ex. 1005 ¶¶ 181–183. In particular, the process of So-456 differs from the ’689 patent claims in that the extension reaction to incorporate the tissue-identifying nucleic acid sequence in So-465 occurs after the identifier nucleotide is cleaved from the tissue sample. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Petitioner has not demonstrated that So-456 teaches this claim limitation or otherwise demonstrates that this limitation would have been inherent in the disclosure of So-456 for claims 1 and 16. For these reasons, on this record we determine that Petitioner has not shown a reasonable likelihood that So-456 anticipates either of independent claims 1 or 16.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,377,689 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 18, 2023 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would be obvious, including a reasonable expectation of success in adding a distinguishing second tag.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16
§ 103 obviousnesscites GrahamPatents in suitUS 10,240,197 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 13, 2023 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16
§ 103 obviousnesscites GrahamPatents in suitUS 10,697,013 - PTAB · Dec 12, 2023 · IPR2023-00910 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 1–6 over all petitioned grounds after finding a reasonable likelihood of prevailing; denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues the Petition should be denied under 35 U.S.C. § 314(a) because (1) “Petitioner’s inability to commit to non-duplicative efforts between the District Court Litigation and this proceeding weighs in favor of discretionary den[ial]” (Prelim. Resp. 59), and (2) Petitioner failed to request a conference call prior to filing its Motion for Joinder (Prelim. Resp. 59–60). Petitioner asserts that no trial date has been set in the parallel district court litigation, which Patent Owner does not dispute. Pet. 55; Prelim. Resp. 59–60. Additionally, the Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) states that “[a] party who files a motion for joinder should arrange a conference call . . . within five business days of filing the motion.” CTPG 76 (Nov. 2019) (emphasis added).8 In light of the termination of the earlier proceeding, Petitioner’s failure to request a conference call is harmless error. Thus, we find Patent Owner’s arguments unpersuasive and decline to exercise our discretion to deny the Petition under § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Pet.”) requesting inter partes review of claims 1–6 of U.S. Patent No. 9,445,041 B2 (Ex. 1001, “the ’041 patent”). Petitioner also filed a Motion for Joinder requesting joinder with IPR2022-01548 (Paper 2), but IPR2022- 01548 has since terminated due to settlement (IPR2022-01548, Paper 18). Therefore, we deny the Motion as moot. Patent Owner Advanced Coding Technologies, LLC filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 29. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, with the exclusion of “at least” in defining the education 6 US 2011/0097059 A1, published Apr. 28, 2011. Ex. 1008. Petitioner refers to “Sekiguchi” as “Seikiguchi.” See, e.g., Pet. 3. level, which would render the definition open-ended and inclusive of persons of expert-level skill.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,445,041 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00993 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 6, 7, 10–14, 19, 20, 23–30, and 32 are unpatentable under § 103 based on Sullivan995, Sullivan460, and Matthews.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzing the breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’994 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzing the breathing patterns” in our consideration of the issues before us.18” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“D. Other Claim Terms The Parties do not dispute the construction of any other claim terms, and we find that no other terms require express construction to resolve the controversy between the Parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 31
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Kirkness’s testimony, proposes that a” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“19, 20, 23–26, 28–30, and 32 and supported on the complete record before us, and, therefore, we adopt them as our own findings. See Pet. 66– 77. Accordingly, for the reasons explained by Petitioner, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the elements of claims 6, 7, 10–14, 19, 20, 23–26, 28–30, and 32.” slip op. at 49
Patent outcomesUS 6,988,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,988,994 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00992 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–14 are unpatentable as obvious: claims 1–5 and 7–14 over Sullivan995 and Sullivan460, and claim 6 over those references and Matthews.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A. “troubled wakefulness” Petitioner proposes that we construe “troubled wakefulness” to mean” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzes the data to determine the patient’s breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’024 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzes the data to determine the patient’s breathing patterns” in our consideration of the issues before us.” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, for the reasons explained above, we find Petitioner has” slip op. at 53
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“because it too is based on Patent Owner’s proposed construction of “analyzes the data to determine the patient’s breathing patterns,” which we do not adopt for the reasons explained above. Patent Owner’s additional arguments in response to Ground 2 are directed to motivation to combine, reasonable expectation of success, and objective indicia of nonobviousness, which we address below. For the reasons discussed above, we find Petitioner’s arguments persuasive as to claim 6 and supported on the complete record before us. Accordingly, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the subject matter of claim 6.” slip op. at 70
Patent outcomesUS 10,384,024 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,384,024 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00994 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1, 3, 7, 9, 11, and 13 are unpatentable as obvious over Sullivan995, Sullivan460, and Matthews; the Board did not reach the other grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F.3d at 1044.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and that “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 23 (citing Ex. 1003 ¶ 89). Petitioner further contends that the “Petition does not turn on this precise definition, and the challenged claim[s] would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 90). Patent Owner does not object to Petitioner’s definition for the level of ordinary skill in the art. PO Resp. 11. Petitioner’s definition for the level of ordinary skill in the art is consistent with the problems addressed in the ’344 patent and the prior art. We, therefore, apply Petitioner’s level of ordinary skill in the art in this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“At the outset, we agree with Petitioner that “enablement ‘is not a requirement to prove invalidity under § 103.’” Pet. Reply 23 (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003)). Moreover, we also agree with Petitioner that a person of ordinary skill in the art would have understood a preset level is established from previously-acquired data, such as an average level, as Sullivan995 discloses. Id. at 22 (citing Ex. 1005, 17:3–27, Fig. 12; Ex. 2015, 38:2–16). Sullivan995 discloses the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22.” slip op. at 48
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“The Board uses a two-step analysis in evaluating nexus between the claimed invention and objective evidence. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 32–33 (PTAB Jan. 24, 2020) (precedential), aff’d sub nom. Zaxcom, Inc. v. Lectrosonics, Inc., 2022 WL 499848 (Fed. Cir. Feb. 18, 2022). We first consider whether the patent owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 32. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 33 (quoting Fox Factory, 944 F.3d at 1373–75). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Id. (citing In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011)). There is no requirement that the objective evidence of non-obviousness be tied exclusively to claim elements that are not disclosed in the prior art, and the claimed combination as a whole may serve as a nexus for the objective evidence. Id. (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016)).” slip op. at 56
Patent outcomesUS 9,168,344 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,168,344 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50
Patent outcomesUS 9,427,539 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00988 · APJ James A Tartal · IPR · Final written decision
The Board held claims 1–30 unpatentable by a preponderance of the evidence, based on the asserted obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“ORDER21 Upon consideration of the record before us, it is: ORDERED that Patent Owner’s Motion to Exclude (Paper 45) is denied; FURTHER ORDERED that Petitioner’s Motion to Exclude (Paper 46) is denied;” slip op. at 82
- Skill levelOther
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“1. “troubled wakefulness” Dependent claims 12 and 22 each recite, “wherein the awake state is a” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“not implicitly define the phrase “analyzes the data to determine the patient’s breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’009 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzes the data to determine the patient’s breathing patterns” in our consideration of the issues before us.” slip op. at 32
Patent outcomesUS 9,108,009 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,108,009 - PTAB · Nov 21, 2023 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition grounds, finding a reasonable likelihood that Peloton would show at least one claim obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Mr. Rawl’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “is a person having: (i) a bachelor’s degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” Pet. 12 (citing Ex. 1002 ¶¶ 31–34).6 Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. (citing Ex. 1002 ¶¶ 31–34). Patent Owner has not taken a position as to the level of ordinary skill in the art at this stage of the proceeding. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’340 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner “does not believe construction of any term is necessary to resolve the invalidity challenges in this Petition.” Pet. 11 (citing Ex. 1002 ¶¶ 29–30). Petitioner explains that, as of the filing of the Petition, none of the claim terms recited in the ’340 patent have been construed in a prior proceeding. Id. Patent Owner has not taken a position as to claim construction at this stage of the proceeding. On the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Motivation to Combine and Reasonable Expectation of Success Petitioner contends Morris and Ray describe exercise equipment (e.g., treadmills) that detect a user’s presence while using the equipment and present the user’s exercise data on a display while a user is exercising to motivate the user to exercise and improve the user’s exercise experience. Pet. 12. Petitioner asserts one of ordinary skill in the art would have been motivated to combine the complementary teachings of Morris and Ray by incorporating Ray’s camera and software instructions for validating user exercise data in Morris’ treadmill apparatus with a reasonable expectation of success. Id. at 13. In particular, Petitioner contends Morris provides an express motivation to install and use Ray’s camera for user detection by teaching that “its exercise equipment could be fitted with optical sensor(s).” Id. (citing Ex. 1006 ¶ 33). Additionally, Petitioner asserts Morris’ treadmill includes an information processing system that processes sensor signals and includes virtual reality content on a screen displayed to the user. Id. (citing Ex. 1006 ¶¶ 32, 34–36, 50, 56–58, Figs. 6, 11–12C, claims 29–37). Thus, Petitioner contends “the signal processing and display system of Morris had the necessary capabilities to accommodate Ray’s user detection/validation software and implement, with a reasonable expectation of success, its functionalities that included producing and presenting the motivational image of the user exercising.” Id. at 13–14. Additionally, Petitioner contends one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray because of “Ray’s express teachings that its user validation/motivation technology could be ‘easily and affordably merged’ into a treadmill.” Pet. 14 (quoting Ex. 1004, 9:55–57). Petitioner asserts incorporating these features into Morris’ treadmill “would have been obvious and produced predictable results with a reasonable expectation of success.” Id. (citing Ex. 1002 ¶¶ 142–143).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340
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.