- Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,577,359 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16
Claim construction§ 103 obviousnessPatents in suitUS 8,577,358 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,504,007 - Apple Inc. v. Voip-Pal.Com, Inc.Rehearing deniedPTAB · May 24, 2019 · IPR2016-01201 · APJ Scott R Boalick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving intact the finding that the challenged claims were not shown obvious over the asserted Chu and Chen combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At the outset, we note that in a request for rehearing we do not review the merits of the Final Written Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked in the Final Written Decision. 37 C.F.R. § 42.71(d) (“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Expert testimonyPatent owner expert creditedDecided for patent owner
“evidence that, in Chu ’684, users would dial according to the dialing conventions of their geographic area. Reh’g Opp’n 8 (citing Ex. 2016 ¶ 66). Patent Owner’s expert witness, Dr. Mangione-Smith, testified that “in Chu ’684, the users would dial PSTN ‘public numbers’ based on the location of the customer premises.” Ex. 2016 ¶ 66 (citing Ex. 1006, Fig. 2). Figure 2 of Chu ’684 supports Dr. Mangione-Smith’s testimony, in that Figure 2 of Chu ’684 illustrates customer premises 105 (which includes IP phones) as connected to a service provider central office 205. See Ex. 1006, Fig. 2; Reh’g Opp’n 9 (contrasting Petitioner’s assertion” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,542,815 - Apple Inc. v. Voip-Pal.Com, Inc.Rehearing deniedPTAB · May 24, 2019 · IPR2016-01198 · APJ Scott R Boalick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving intact the finding that challenged claims of the ’005 and ’815 patents were not shown obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At the outset, we note that in a request for rehearing we do not review the merits of the Final Written Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked in the Final Written Decision. 37 C.F.R. § 42.71(d) (“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- Expert testimonyPatent owner expert creditedDecided for patent owner
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“testimony by Dr. Mangione-Smith—when rejecting Petitioner’s view of the prior art and reason for the combination. See FWD 19 (citing Ex. 2016 ¶¶ 65–67); Reh’g Opp’n 6. Thus, when the panel concluded that Petitioner had not shown that Chu ’684’s method would apply to a number reformatted by the secondary references (see FWD 22–23), it relied on record evidence supporting its conclusion. We determine that the panel did not misapprehend the nature of the proposed combination; rather, based on the record, it resolved a factual dispute and concluded that Petitioner failed to show the proposed combination would operate as asserted.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,179,005 - PTAB · Aug 3, 2018 · IPR2017-00198 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied rehearing, finding no misapprehension or overlooked evidence supporting its determination that claims 1, 2, 5–10, 8–11, 12, and 18–23 were unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“process disclosed by Haims. Req. Reh’g 3.1 Patent Owner’s challenge does not meet the standard set forth for a Request for Rehearing, which requires a party to “identify . . . the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). As Patent Owner did not address this issue in a motion, an opposition, or a reply, the Board could not have misapprehended Patent Owner’s argument.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“disclaimed the selection process disclosed by Haims, we find this contention unpersuasive. “[T]he PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Assuming arguendo that the doctrine of prosecution history disclaimer applies to this inter partes review, the purported disavowal of claim scope must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). On the record before us, we conclude that the prosecution history does not evidence such an unambiguous, clear, and unmistakable disavowal. We read the cited portion of the prosecution history as presenting arguments to the Examiner to distinguish the claim from Haims based on the claim’s recited limitations. At most, applicant’s arguments during prosecution merely shed light on the claim limitations that applicant alleged Haims did not teach. We determine that one of ordinary skill in the art would not have understood applicant to have made a clear and unmistakable” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Hamberg and Lamb. See Reh’g Req. 3–4. Therefore, Patent Owner’s allegation that Haims teaches the same selection process as Hamberg, even if true, improperly shifts focus from the combination of Hamberg and Lamb. Patent Owner alleges Petitioner does not provide proper reasoning to combine Hamberg and Lamb. Reh’g Req. 3–4 (arguing “Petitioner parsed” and “Petitioner argued”). These allegations fail to address what the FWD overlooks or misapprehends. In any event, the FWD addresses motivation and the combination. See, e.g., FWD 15–23.” slip op. at 4
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Q. And you – do you agree or disagree that Max is participating in the chat session with the conference call requester? Mr. McDole: Objection, leading. A. I think it is – could kind of go either way. I certainly think that it could be considered participating in the sense that he’s receiving messages, not participating in the sense of sending. So I mean I think it is reasonable to say that it is participating, but – it is arguably the other way, too. It is not clear. Ex. 1017, 253 5–16. As an initial matter, Patent Owner, in the Request for Rehearing, does not identify where this purportedly ignored testimony was brought to our attention by Patent Owner. Nonetheless, Dr. DiEuliis, at best, testified that Max “could be considered participating,” but, in the same sentence, Dr. DiEuliis testified that Max is “not participating in the sense of sending.” Dr. DiEuliis continued, “I think it is reasonable to say that it is participating, but -- it is arguably the other way, too.” Although we did not cite to this testimony, such testimony is cumulative, because Dr. DiEuliis testified here, as in the cited testimony, that Max is not participating. Further, in our Decision, we evaluated the testimony of Dr. DiEuliis in light of Hamberg’s teaching that Max is listed as “absent” and noted as “sleep” to determine that Max is not participating. FWD 29.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 7,853,000 - Unified Patents, Inc. v. Harry Heslop & Sportbrain Holdings LLCRehearing deniedPTAB · Apr 18, 2018 · IPR2016-01464 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–16 unpatentable based on Vock and Smith and the failure to establish conception of periodic transmission.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Patent Owner’s contention that Vock teaches away from using the pedometer of system 620 shown in Figure 21 with the system shown in Figure 1 is inconsistent with Vock’s disclosure that “system 620 [shown in Figure 21] is useful to joggers who can gate it to serve as a pedometer” and that “[d]ata may also be acquired by the accelerometer and telemetered to the electronics 626 via an RF link 631 back to a remote base 632 for storage and processing (e.g., such as the base station 70, FIG. 1).” Ex. 1006, 50:5, 49:21–23, and Fig. 21. We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4
- BurdenDecided for petitioner
“periodically transmitting the personal data from the wireless communication device to a network server over a wireless network.” We determined that the cited disclosure of a user telephoning a workstation to transfer data does not show conception of “periodically transmitting the personal data from the wireless communication device to a network server over a wireless network” as claimed. Dec. 31–32. Accordingly, the Decision did not misapprehend or overlook any slip op. at 7
§ 103 obviousnessPatents in suitUS 7,454,002 - Swiss Pharma International AG v. Biogen IdecRehearing deniedPTAB · Feb 3, 2017 · IPR2016-00912 · APJ Lora M Green · IPR · Rehearing
The Board denied Swiss Pharma’s rehearing request, leaving institution denied for claims 1–16, 21, and 22 because the petition did not show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Patent Owner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“however, that the variable to be optimized had to be recognized as a result effective variable. Id. at 620. In the instant case, Petitioner only suggests changing the concentration of the antibody to allow it to be stored in known vials. Petitioner does not explain, however, how merely adding a sufficient concentration of natalizumab to a known vial is a result effective variable. As noted by Patent Owner (Prelim. Resp. 40), Dr. Brod testified that “the concentration of natalizumab is not important from the stand-point of administration as partial, single or multiple vials can be added to an intravenous bag in order to provide the proper dose.” Ex. 1011 ¶ 27. Thus, although the testimony may be read as demonstrating that the concentration is not critical, it also demonstrates that the concentration of the antibody in terms of its storage was not recognized as a result effective variable.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“however, that the variable to be optimized had to be recognized as a result effective variable. Id. at 620. In the instant case, Petitioner only suggests changing the concentration of the antibody to allow it to be stored in known vials. Petitioner does not explain, however, how merely adding a sufficient concentration of natalizumab to a known vial is a result effective variable. As noted by Patent Owner (Prelim. Resp. 40), Dr. Brod testified that “the concentration of natalizumab is not important from the stand-point of administration as partial, single or multiple vials can be added to an intravenous bag in order to provide the proper dose.” Ex. 1011 ¶ 27. Thus, although the testimony may be read as demonstrating that the concentration is not critical, it also demonstrates that the concentration of the antibody in terms of its storage was not recognized as a result effective variable.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We disagree. We noted in our decision that similarly to Soberra, Gordon also taught a 3 mg/ml infusion, and used a 5 mg/ml formulation. Dec. 12‒13. We then looked at the references relied upon by Dr. Schöneich in establishing that formulations were available in stoppered vials in a number of different volumes. Id. at 13. We noted that only one antibody solution was referenced by Dr. Schöneich, and that antibody solution contained 5 mg/ml of antibody. Id. The other references were directed to small molecule drugs, and we noted that Dr. Schöneich did not explain why the ordinary artisan would look to those references when formulating an antibody solution. Id. The fact that Petitioner may not agree with our consideration of the evidence does not mean that we overlooked that evidence, or that we misapprehended it.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,815,236 - Swiss Pharma International AG v. Biogen IdecRehearing deniedPTAB · Feb 3, 2017 · IPR2016-00915 · APJ Lora M Green · IPR · Rehearing
The Board denied Swiss Pharma’s rehearing request, leaving institution denied for claims 1–4 because the petition did not show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Patent Owner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As noted in our Decision, however, Petitioner failed to demonstrate that the adjustment of the concentration of natalizumab would have been only routine optimization. Dec. 11. Gordon teaches a 5 mg/ml formulation of natalizumab. Id. The other references relied upon by Petitioner to establish that “IgG formulations containing between 5 and 50 mg/ml were known in the art” do not relate to natalizumab, nor are they limited to the claimed excipient, and Petitioner does not address our concern as to how the concentrations of those antibodies could be extrapolated to natalizumab in the claimed excipient. Id. at 10‒12 (quoting Pet. 27). In fact, the references relied upon by Petitioner to teach the claimed excipient, contained 10 mg/ml (van Oosten) or 5 mg/ml (Zenepax) of antibody. Id. at 10. Moreover, Petitioner does not address our concern that two of the three references relied upon by Dr. Schöneich to establish that stoppered vials in different sizes were known related to small molecule drugs, and the one that related to antibodies, Zenepax, contained 5 mg/ml of antibody. See Dec. 12‒13.” slip op. at 7
- Obviousness (§103) › KSR rationalesMotivation not foundDecided for patent owner
“The court held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Id. at 456. The court noted, however, that “changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.” Id. In concluding that the patentability of the claims was not demonstrated, the court noted that “[a]ny chemist reading the article could logically assume that higher yields might be obtainable, and by experimentally varying the conditions of temperature and acidity could find the most productive conditions.” Id. at 458. In In re Antonie, 559 F.2d 618 (CCPA 1977), the court noted, however, that the variable to be optimized had to be recognized as a result effective variable. Id. at 620. In the instant case, Petitioner only suggests changing the concentration of the antibody to allow it to be stored in known vials. Petitioner does not explain, however, how merely adding a sufficient concentration of natalizumab to a known vial is a result effective variable. As noted by Patent Owner (Prelim. Resp. 40), Dr. Brod testified that “the concentration of natalizumab is not important from the stand-point of administration as partial, single or multiple vials can be added to an intravenous bag in order to provide the proper dose.” Ex. 1011 ¶ 27. Thus, although the testimony may be read as demonstrating that the concentration is not critical, it also demonstrates that the concentration of the antibody in terms of its storage was not recognized as a result effective variable.” slip op. at 7
- BurdenDecided for patent owner
“37 C.F.R. § 42.108 relates to institution of inter partes review. 37 C.F.R. § 42.108(c) states: Sufficient grounds. Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause. 37 C.F.R. § 42.108(c), therefore, applies to those situations in which patent owner submits testimonial evidence to support its preliminary response. In those situations where that testimonial evidence creates an issue of material fact, the evidence will be considered in the light most favorable to the petitioner. Patent Owner did not submit any such testimonial evidence in support of its Preliminary Response in the instant proceeding. Moreover, the rule does not relieve Petitioner of its burden of demonstrating in its Petition a reasonable likelihood that at least one of the challenged claims is unpatentable, such that inter partes review may be instituted. In the instant proceeding, for the reasons discussed in the Decision, we determined that the Petition failed to make such a showing.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,349,321 - Swiss Pharma International AG v. Biogen IdecRehearing deniedPTAB · Feb 3, 2017 · IPR2016-00916 · APJ Lora M Green · IPR · Rehearing
The Board denied rehearing of its denial of institution because Petitioner did not show an abuse of discretion in finding the obviousness showing insufficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Patent Owner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As noted in our Decision, however, Petitioner failed to demonstrate that the adjustment of the concentration of natalizumab would have been only routine optimization. Dec. 11. Gordon teaches a 5 mg/ml formulation of natalizumab. Id. The other references relied upon by Petitioner to establish that “IgG formulations containing between 5 and 50 mg/ml were known in the art” do not relate to natalizumab, nor are they limited to the claimed excipient, and Petitioner does not address our concern as to how the concentrations of those antibodies could be extrapolated to natalizumab in the claimed excipient. Id. at 11‒12 (quoting Pet. 27‒28). In fact, the references relied upon by Petitioner to teach the claimed excipient, contained 10 mg/ml (van Oosten) or 5 mg/ml (Zenepax) of antibody. Id. at 11. Moreover, Petitioner does not address our concern that two of the three references relied upon by Dr. Schöneich to establish that stoppered vials in different sizes were known related to small molecule drugs, and the one that related to antibodies, Zenepax, contained 5 mg/ml of antibody. See Dec. 13.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“that the adjustment of the concentration of natalizumab would have been only routine optimization. Dec. 11. Gordon teaches a 5 mg/ml formulation of natalizumab. Id. The other references relied upon by Petitioner to establish that “IgG formulations containing between 5 and 50 mg/ml were known in the art” do not relate to natalizumab, nor are they limited to the claimed excipient, and Petitioner does not address our concern as to how the concentrations of those antibodies could be extrapolated to natalizumab in the claimed excipient. Id. at 11‒12 (quoting Pet. 27‒28). In fact, the references relied upon by Petitioner to teach the claimed excipient, contained 10 mg/ml (van Oosten) or 5 mg/ml (Zenepax) of antibody. Id. at 11. Moreover, Petitioner does not address our concern that two of the three references relied upon by Dr. Schöneich to establish that stoppered vials in different sizes were known related to small molecule drugs, and the one that related to antibodies, Zenepax, contained 5 mg/ml of antibody. See Dec. 13.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,900,577
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.