- PTAB · Apr 15, 2024 · IPR2023-01409 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–30 and all eight asserted obviousness grounds, finding a reasonable likelihood that Stafford and Cote render at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“that if “the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Advanced Bionics, IPR2019-01469, Paper 6 at 10. Although Petitioner did not specifically state that the Examiner erred in not rejecting the claims over the prior art asserted here, under the second part of the Advanced Bionics framework, based on our analysis of the current record as a whole, we find that Petitioner has “ma[d]e a showing of material error,” in fact, the Petition is premised on it. Advanced Bionics, IPR2019-01469, Paper 6 at 8–9. In particular, Petitioner shows that the Office erred by overlooking something persuasive, namely, the teachings of at least Stafford and Cote, as highlighted in Petitioner’s unpatentability grounds. See Pet. 5 (arguing that each of Cote and Brenneman “provides express teachings on inserters for on-body units that were not considered by the Examiner”), 20–84 (Ground 1). In the Reasons for Allowance, the Examiner stated that “[w]hile Brister (US 2006/0016700) teaches the bulk of the claimed limitations, it fails to teach a housing . . . and an inserter with a sharp” that extends through the housing as claimed. Ex. 1002, 977. Petitioner, however, sufficiently demonstrates for purposes of institution that Stafford and Cote disclose these limitations. See Pet. 33–84 (explaining why Stafford and Cote teach or suggest the limitations of the challenged claims); see also infra Section III.E (determining that, on the current record, Petitioner establishes a reasonable likelihood that the claims challenged in Ground 1 are unpatentable as obvious over Stafford and Cote). Based on the circumstances elucidated by the current record, we find that Petitioner adequately shows that the Examiner “misapprehend[ed] or overlook[ed] specific teachings” of at least Stafford and Cote that “impact patentability of the challenged claims.” Advanced Bionics, IPR2019-01469, Paper 6 at 8 n.9. That is, Petitioner shows that the Examiner materially erred by not applying at least Stafford and Cote in the manner Petitioner argues and as supported by Dr. Fletcher.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the arguments and cited evidence of record, we find that for purposes of institution, Petitioner has demonstrated a reasonable likelihood that Stafford and Cote would have rendered claim 1 obvious. We have reviewed the arguments and evidence of record for claims 2–6, 9–14, 16–24, 27, 29, and 30 in Ground 1, and similarly find that for purposes of institution, Petitioner has demonstrated a reasonable likelihood that Stafford and Cote would have rendered these claims obvious. See Pet. 20–84; Ex. 1003 (Fletcher Decl.) ¶¶ 44–155. On this basis, we institute inter partes review of all challenged claims on all grounds in the Petition. See SAS Institute Inc., 138 S. Ct. at 1358; 37 C.F.R. § 42.108(a).” slip op. at 30
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time the invention was made.11 See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art would have had: a bachelor’s degree in bioengineering, mechanical engineering, electrical engineering, or a related subject, and one or more years of experience researching, developing, and/or designing insertable medical devices, including, e.g., systems for implanting wearable medical devices such as cannulas, infusion sets, and analyte sensors, or equivalent experience. Less work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 10–11 (citing Ex. 1003 (Fletcher Decl.) ¶ 28). Patent Owner does not presently dispute Petitioner’s proposal or offer an alternative definition. See generally Prelim. Resp. 10 The record does not presently include any objective indicia of obviousness or nonobviousness. See generally Pet.; Prelim. Resp. 11 For purposes of this Decision, we apply a priority date of February 3, 2009. See supra 8 n.2. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes that any claim term requires an express construction. See Pet. 19; see generally Prelim. Resp. We find it unnecessary to construe any claim term to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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))). Any final written decision entered in this case may include express claim constructions, or may include discussion of claim scope that differs from that provided in our analysis below. Any final claim constructions will be based on the full trial record.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,202,591 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations LLCInstitution deniedPTAB · Feb 22, 2024 · IPR2023-01325 · APJ Timothy G Majors · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, and 4–6 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “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.” For reasons discussed below, we do not institute review of claims 1, 4, and 4–6 of the ’033 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“concerning the ’834 patent, the intrinsic evidence is minimally helpful in revealing an affirmative meaning for the claims’ “spacing(s)” terms. IPR2023-01151, Paper 12, 39–41. The Specification does not use the term “spacings” in relation to the positioning of adjacent fibers; the drawings might be helpful, but neither party proposes a specific construction that is reliant on them. And, portions of the prosecution record are arguably confounding. For example, the applicant distinguished claimed “spacings” from “tightly knitted fibers.” Ex. 2140, 1001 (suggesting a more “loosely defined fiber structure” may be covered); see also Ex. 1002, 29–30 (asserting the claimed design has “a lesser [fiber] density construction” compared to Walther). This begs the question, at what point does a cloth of “tightly knitted fibers” convert to a cloth having a “loosely defined” fiber structure that would come within the scope of the claimed “spacings?” The record does not answer. Applicant’s suggestion during prosecution that the claimed spacings between fibers are “intentionally placed” about the frame and not simply “the spacing that may be inherent” in fibrous cloths is also unavailing on this record in clearly defining the metes and bounds of the term. Ex. 1002, 28–29. Whether the alleged absence of “objective boundaries” for the term “spacings” supports a conclusion that the claims are invalid as indefinite would be a question for the court. Paper 11, 5 (arguing There is insufficient technical detail available to determine whether the SAPIEN 3 Ultra does or does not include “spacings” as claimed and we take no position on whether such device infringes any claim of the ’033 patent. that a conclusion that the claims are indefinite is “outside the Board’s [IPR] jurisdiction”).12 Notwithstanding the lack of any express claim construction for the “spacings” term from either party, claim 1 of the ’033 patent requires something more than just “spacings.” Claim 1 requires “spacings extending through a thickness of the sealing assembly that allow fluid to pass therethrough when the prosthetic heart valve assembly is in an undeployed state.” Ex. 1001, 22:11–15 (emphasis added). In other words, the spacings must allow fluid to pass through the sealing assembly’s thickness when the valve is undeployed. For reasons discussed below, we are not persuaded on this record that Petitioner is reasonably likely to prevail in showing that this limitation is met—particularly the fluid-passing element—in the proposed combinations of Spenser or Levi with Spenser II.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We, thus, find Dr. Brecker’s testimony more credible that “[i]t would, accordingly, be counterintuitive for a [POSA] to look to a device designed to occlude a blood vessel when designing a TAVR.” Id. ¶¶ 119–120 (testifying “[n]o [POSA] would look to this [occluder] design when considering a TAVR valve and . . . would further have concerns about the pro-thrombotic potential of the arrangement of fibers in Chuter”). Where a proposed combination would run counter to the primary reference’s stated purpose, the POSA would not generally be motivated to make that combination. Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069–70 (Fed. Cir. 2018).” slip op. at 43
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“Grounds 1 and 2 is based on the combination of either Levi and Spenser II, or Spenser and Spenser II. Yet Petitioner purports to modify Spenser II’s compressible material, or supplant it with something else, based on “porous” fabrics allegedly known elsewhere in the art, which art is not identified in the Petition itself as part of any asserted combination. Pet. 49. To see what specific modifications or combinations Petitioner might be suggesting, requires we look to three paragraphs of Dr. Buller’s Declaration, cited but not discussed by Petitioner, where eight additional references are mentioned. Ex. 1003 ¶¶ 157–159 (identifying Exs. 1106–1112, and 1129). This format is an improper incorporation-by-reference of argument and evidence that, had Petitioner wanted to pursue some other combination of asserted art beyond Levi, Spenser, and Spenser II, needed to be set forth explicitly in the Petition. 37 C.F.R. § 42.6(a)(3). Moreover, it leaves the record unclear and forces Patent Owner, the Board, and the public to guess at what combination(s) are, in fact, being urged. We also find that Petitioner’s position reveals a hindsight bias insofar as it suggests, with the aim of arriving at the claimed subject matter, removing Spenser II’s “sufficiently dense” and fluid impermeable compressible material (Ex. 2128 ¶ 222) in favor of some other sufficiently “porous” and fluid permeable material. Hindsight is further evidenced because Spenser II’s cited material is already described as being compressible and adapted to allow coagulation and tissue ingrowth—factors cited by Patent Owner as allegedly motivating a change to some other material. Ex. 1011 ¶ 145. Altogether, we find unpersuasive Petitioner’s position based on unspecified combinations of unasserted prior art to achieve benefits that Spenser II’s existing compressible material already provides.” slip op. at 36
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,491,033 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations LLCInstitution deniedPTAB · Feb 7, 2024 · IPR2023-01232 · APJ Timothy G Majors · IPR · Institution
The Board denied institution because Petitioner had not shown a reasonable likelihood that claims 11–13 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “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.” For reasons discussed below, we do not institute review of claims 11–13 of the ’310 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that the person of ordinary skill in the art (“POSA”) in November 2012 “would have been an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses. This [POSA] would, where necessary, work with a medical device engineer to experiment with or manufacture a prosthetic heart valve.” Pet. 21 (citing Ex. 1003 ¶ 50). Patent Owner does not expressly contest Petitioner’s proposed definition or offer an alternative. See generally Prelim. Resp. For this Decision, we apply Petitioner’s proposed POSA level, which appears to be consistent with the level of skill shown in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). This POSA level is also consistent with the level the Board applied in earlier decisions involving the same parties and related patents. See, e.g., Ex. 2124, 11; Ex. 1120, 11–12.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construction standard used to construe claims in a civil action before the courts under 35 U.S.C. § 282(b), including construing claims’ language in accordance with its ordinary and customary meaning as understood by the POSA, in view of the patent’s specification and considering the patent’s prosecution history. 37 C.F.R. § 42.100(b). We need only construe terms that are in controversy and only as needed to resolve the matters in dispute. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Petitioner contends that “[n]o terms of the ’310 patent require construction to resolve the patentability issues herein.” Pet. 19. Also, Petitioner contends, its “grounds are based on [Patent Owner’s] allegations that the ’310 patent covers Petitioner’s SAPIEN 3 Ultra valve and the scope of the claims asserted by [Patent Owner] in litigation.” Id. (citing Ex. 1122 (Complaint); Ex. 1123 (Infringement Contentions), 2, 262–476).11 Patent Owner does not propose any express claim construction. Instead, Patent Owner contends that the claims should be interpreted according to their ordinary and customary meaning. See, e.g., Prelim. Resp. 18–19, 35–36 (asserting that Petitioner’s mapping of the claims is, in respects, contrary to the “plain language” of the claims). 11 Petitioner identifies a claim construction order in related litigation where the district court construed an “outer frame” as a “self-expanding frame.” Pet. 19 (citing Ex. 1140, 17). We need not further construe the “outer frame” term here because Petitioner contends, without dispute, that the prior art discloses self-expanding frames. Id. at 19–20, 26. Moreover, Patent Owner states that it has disclaimed those claims reciting the term “outer frame” to reduce the number of issues before the Board. Prelim. Resp. 75. about the scope of the claims, we address those arguments below in our discussion of the mapping of claims to the asserted prior art.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We are unpersuaded. The language of claim 11 states the “sealing material is attached to the frame,” but also that it is the plurality of outwardly-extending “fibers” that maintain “contact with the frame along the height of the sealing material” whether the valve assembly is compressed or expanded. Supra Section II(D). Thus, according to this plain language, Petitioner must demonstrate that Spenser II’s identified fibers contact with the frame in its modification of Spenser or Levi—not just that some portion of Spenser II’s compressible material be attached to and contact the frame. On this record, we agree with Patent Owner that Petitioner’s contrary interpretation is “at-odds with the plain language of the claims.” Prelim. Resp. 18, 35. The cited excerpt from the prosecution history does not support Petitioner’s position that the “in contact” limitation is met if the sealing material—but not necessarily the fibers—contacts the frame. Petitioner cites an assertion by applicant during prosecution that modifying Levi’s valve so that the “sealing material” is in contact with the frame would not show that the claimed subject matter is obvious. Pet. 44 (citing Ex. 1002, 147–148). In its more complete context, however, applicant’s prosecution argument was made in furtherance of applicant’s repeated assertion that replacing Levi’s loosely-fit, “billowing” skirt with a tightly-held and bulky sleeve would change Levi’s principle of operation and make it too large and Resp. 35–36 (arguing applicant’s position is also “consistent” with claims’ plain language because, if Levi’s billowing skirt included outwardly-extending fibers, such fibers could not contact the frame along the skirt’s height when it billows out from the frame).15 Applicant’s argument does not rise to a concession that the “fibers in contact with the frame” limitation can be met so long as the sealing material contacts the frame. At best for Petitioner, the relevant prosecution history could be characterized as ambiguous; it does not justify rewriting claim 11’s plain language. See, e.g., Ex. 1002, 127–128 (earlier version of proposed amendment to application claim 31, reciting “the sealing material is in contact with the outer frame”), 138–139 (later version of the proposed and as-entered amendment, expressly changing the language to require “the plurality of fibers is in contact with the outer frame”).” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,389,310 - PTAB · Feb 5, 2024 · IPR2023-01251 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all asserted grounds challenging claims 1–12, 14–28, and 30, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims of the ’056 patent is unpatentable. At this preliminary stage, we have not made a final determination regarding the patentability of any challenged claim or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Any final decision in this proceeding will be based on the full trial record.” slip op. at 48
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 13 (citing Ex. 1008 (Gross Decl.) ¶ 51). Patent Owner indicates that it does not dispute this portion of Petitioner’s proposal. See Prelim. Resp. 24. Petitioner also posits that “[t]he POSITA may be part of an interdisciplinary team with others having relevant experience and/or with clinicians involved in diagnosis, treatment, and patient management relevant to the use of medical devices for monitoring physiological signals” and “would have been aware of commercially available glucose monitoring systems (e.g., the Medtronic Paradigm® REAL-Time) through scientific journals and magazines,” “would have known the importance of data reliability to glucose monitoring, including anticipating that errors (e.g., communication or calibration failures) would result in missing or inaccurate glucose data,” and would have accounted for missing data using technical concepts known at the time, including programming glucose monitoring systems to detect failures that result in data being unavailable for display (e.g., due to a calibration error or loss of communication), preserving this data in memory, regenerating it once the system recovered, and displaying regenerated data. Pet. 13–14 (citing Ex. 1008 (Gross Decl.) ¶¶ 52, 54–61). Patent Owner does not specifically comment on or dispute this portion of Petitioner’s proposal. See generally Prelim. Resp. Because Petitioner’s full proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes that any claim term requires an express construction. See Pet. 14; Prelim. Resp. 24. We find it unnecessary to construe any claim term to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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))). Any final written decision entered in this case may include express claim constructions, or may include discussion of claim scope that differs from that provided in our analysis below. Any final claim constructions will be based on the full trial record.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Petitioner’s proffered reason to combine is sufficient for purposes of institution. Petitioner does not merely rely on the fact that Patel-2008, Mastrototaro, Shahmirian, and Causey are from same field of study or address the same problem. Instead, Petitioner points to Patel-2008’s express discussion of the utility of Mastrototaro, Shahmirian, and Causey’s teachings, together with the fact that all of the references apparently discuss different components of the same system (i.e., the Medtronic MiniMed continuous glucose monitoring system). See, e.g., Pet. 83–84; Ex. 1008 (Gross Decl.) ¶¶ 55, 70–71. On this record, we find for purposes of institution that Dr. Gross sufficiently establishes that “POSITAs would have been motivated to combine the sensor and transmitter of Mastrototaro, the communications of Shahmirian, and the monitor control programs of Causey to effectuate a diabetes management system with the monitoring, communication, and display functionalities disclosed in Patel-2008,” and “to convey as much accurate glucose information to a user as possible without providing inaccurate information.” Ex. 1008 (Gross Decl.) ¶¶ 190–93. Patent Owner’s argument that “nothing in Patel-2008 teaches or suggests incorporating these disparate teachings into a single system” (Prelim. Resp. 47–48) is unavailing. First, as noted above, Patel-2008 expressly teaches using in its system components described in Mastrototaro, Shahmirian, and Causey. Second, even if Patent Owner were correct that Patel-2008 lacks a teaching or suggestion to incorporate Mastrototaro, Shahmirian, and Causey’s teachings into Patel-2008’s system, Patel-2008 itself need not express a reason to combine. Rather, “[a]ny motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed [invention].” Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017). As noted above, we find that Petitioner’s rationales are sufficiently supported by Dr. Gross and the cited references for purposes of institution.” slip op. at 43
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,298,056 - PTAB · Feb 1, 2024 · IPR2023-01254 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, and 5–18 on all six asserted grounds, finding a reasonable likelihood of unpatentability under at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the preliminary record, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’332 patent is unpatentable under the presented grounds. See Pet.; Prelim. Resp.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ORDINARY LEVEL OF SKILL IN THE ART Petitioner contends: A POSITA,[11] on or before August 17, 2007, or alternatively on or before April 11, 2008, would have had a minimum of a Bachelor’s degree in Industrial Design, Mechanical Engineering, or related field and approximately 5 years of professional experience in the field of consumer product design and manufacturing. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 4 (citing Ex. 1008 ¶ 44).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION Petitioner asserts that the claim language “angled capsule retaining elements” is a means-plus-function limitation under 35 U.S.C. § 112(6), where the function is “retaining an oral care capsule in a capsule receiving zone,” and the Specification’s corresponding structure is “angled bristles.” Pet. 8–11 (citing Ex. 1001, Abstract, 2:59–61, 2:65–67, 3:20–22, 4:64–5:13, 6:23–24, 6:26–30, 6:34–37, 7:19–23, 7:33–42, 9:61–10:1, 10:5–8, Figs. 1, 4, 5, 6; Ex. 1002, 224; Ex. 1008 ¶¶ 96–97). Petitioner argues that “angled capsule retaining elements” is non- structural and includes the generic placeholder nonce word “elements,” modified by functional language, and the claim does not further recite sufficiently definite structure for the elements. Id. at 8–9. Thus, it is Petitioner’s position that this limitation, although not using the presumptive word “means,” should be interpreted to be a means-plus-function limitation. Further, Petitioner argues that the only structure disclosed in the ’332 patent’s Specification that performs the claimed function is “angled bristles,” and that the Specification’s express mentioning of the term “retaining element” relates to a non-claimed feature having a different function, i.e., a movable back cover on the toothbrush to contain rear-loaded capsules in the head. Id. at 11 (discussing Ex. 1001, 5:10–19, 6:8–25; Ex. 1002, 228, 353–355). Patent Owner does not directly address Petitioner’s claim construction position. See generally Prelim. Resp. However, even if not addressing whether the claim language is a means-plus-function limitation, Patent Owner appears to agree with Petitioner that the claims’ scope includes angled bristles as the recited retaining elements, as disclosed in the Specification, although not expressly conceding at this point that the claims are limited to the disclosed angled bristles structure and equivalents under 35 U.S.C. § 112(6). See id. at 3–4 (citing paragraph 36 and Figure 1 of the application that issued as the ’332 patent). For the purposes of this institution decision, we find it unnecessary to construe any claim language because there is no dispute that the “angled capsule retaining elements” limitation recited by the claims includes angled bristles, even if it may not be limited to only such a structure (and its equivalents), and we find that angled bristles appear to be taught in the prior art, as discussed below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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)). Thus, whether or not the disputed claim language constitutes a means-plus-function limitation is not determinative at this stage of the proceeding.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundReasonable expectation foundInstituted
“2. Analysis We find that, on the current record, Petitioner has sufficiently mapped the limitations of the claims to the disclosures of Wolcott, Davidson, and Fitz-Gibbon, identified a reason with rational underpinnings why the ordinarily skilled artisan would have combined the teachings of the 15 Although we note that Patent Owner submits no supporting evidence, we do so with the understanding that Patent Owner was not required to do so, as the burden here is upon, and remains with, Petitioner. references, and identified that there would have been a reasonable expectation of success.” slip op. at 26
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,881,332 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01151 · APJ Timothy G Majors · IPR · Institution
The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood that any challenged, undisclaimed claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “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.” For reasons discussed below, we do not institute review of claims 2, 9, 17, and 18 of the ’834 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that the person of ordinary skill in the art (“POSA”) in November 2012 “would have been an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses. This [POSA] would, where necessary, work with a medical device engineer to experiment with or manufacture a prosthetic heart valve.” Pet. 21 (citing Ex. 1003 ¶ 49). Patent Owner does not expressly contest Petitioner’s proposed definition. For this Decision, we apply Petitioner’s proposed POSA level, which appears to be consistent with the level of skill shown in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). This POSA level is also consistent with the level the Board applied in earlier decisions involving the same parties and related patents. See, e.g., Ex. 2124, 11; Ex. 1120, 11–12.” slip op. at 16
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“during prosecution. Pet. 18, 99. According to Petitioner, Spenser II never describes its compressible material as including “tightly knitted fibers” and a POSA would, instead, have understood Spenser II’s compressible material as comprising “loose, porous materials.” Pet. 18, 99. We agree with Petitioner that the phrases “tightly knitted” and “tightly knitted fibers” do not appear in Spenser II. At the same time, neither does Spenser II describe its compressible material as being “loose” and “porous.” Notably, in prior proceedings before the Board, Petitioner’s declarant Dr. Buller testified that Spenser II’s compressible material “includes a plurality of PET fibers on the inward-facing surface of the compressible material” (i.e., the “base layer” and alleged “second plurality” of fibers here; Paper 9, 5), that is “sufficiently dense to prevent blood from leaking through the cloth/fabric.” Ex. 2128 ¶ 222; see also Ex. 2122, 20:2–22:18 (testifying that “nonporous” as used in the Specification means “that fluid would not pass through it” and such fluid includes “all components of blood”). We find that Dr. Buller’s description of Spenser II as having a dense, blood impermeable base layer is, on balance, more consistent with applicant’s characterization of Spenser II as having an arrangement of “tightly-knitted fibers”—even if some imagined or microscopic spaces between fibers might still exist in a base layer. Ex. 2128 ¶ 222; see also Ex. 2002 (Brecker testimony) ¶¶ 42–45 (testifying, inter alia, that the description of a “tight fitted outer seal is . . . consistent with Spenser II’s Figure 22” and “knitted” is consistent with Buller’s testimony describing Spenser II’s compressible material as “velour-like woven or knitted” PET (citing Ex. 1003 ¶ 162; Ex. 2134 ¶ 56). We are, thus, unpersuaded on this record that applicant mischaracterized Spenser II.” slip op. at 38
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Altogether, the parties’ alleged “plain meaning” yet otherwise undefined interpretation of the “spacing” limitations leaves the Board with insufficient clarity about what the claimed “spacing” means in the affirmative. Paper 9, 3 (arguing “plain meaning”); Paper 11, 3 (arguing applicant’s arguments are in “full harmony with the plain meaning”). The intrinsic evidence is minimally helpful: the Specification does not use the term “spacing” in relation to the positioning of adjacent fibers; the drawings might be helpful but neither party proposes a specific construction that is reliant on them.15 The prosecution history provides clues, but portions of the prosecution record are arguably confounding. The applicant distinguished 15 For example, Dr. Brecker, in support of Patent Owner’s argument, identifies several of the patent drawings and testifies that, “as is particularly clear in Figure 13 (but also present elsewhere), there are gaps and spaces between the fibers that extend to the frame” and then proceeds to testify that prior art, like Spenser II’s compressible material, “bears no resemblance” to the “exemplary” spacings identified in prosecution. See, e.g., Ex. 2002 ¶¶ 42–43. Dr. Brecker’s articulation of a “spacing” does not seem to add anything meaningful beyond the language of the claim as written. And, simply comparing the patent drawings to the prior art drawings presumes a sort of “know-it when you see it” interpretation—it is not an affirmative construction for a “spacing” as claimed. the claimed “spacings” from “tightly knitted fibers.” Ex. 1002, 1001. At what point, however, does a cloth of “tightly knitted fibers” qualify as more “loosely defined” and come within the scope of the claimed “spacing?”16 Id. The applicant also described the “spacing” in semi-functional terms based on “advantages” provided by the claim feature. See, e.g., id. (asserting, e.g., that the spacing permits “expansion and contraction” with “lesser rigidity”); see also id. at 1133, 1140 (asserting, e.g., “reduce[d] restrictions” and avoidance of “restrained valve foreshortening” with the then-claimed “openings”). It is not, however, evident where the Specification supports such “advantages”—no citations were given in prosecution. And, in prosecution of related applications, applicant argued, for example, that “[w]hile all fibers have some degree of being spaced-apart, the construction from Applicant’s claimed invention clearly requires some level more spacing.” Ex. 1149, 13–14 (assertion differences over “Dehdashtian” (alias to Spenser II)) (emphasis added). On this record, what would suffice as “some level more spacing” is unclear. Id.” slip op. at 39
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,337,834 - Unified Patents, LLC v. Ak Meeting IP LLCAll claims unpatentablePTAB · Jan 5, 2024 · IPR2022-01142 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1 and 8 are anticipated by and obvious over Roy; claims 1–14 are obvious over Simonoff and Naef; and the listed claims are anticipated by and obvious over Chang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) would have been a person having, as of the priority date of the ’124 Patent: (1) at least an undergraduate degree in computer science or closely-related field, or similar advanced post-graduate education; and (2) 1–2 years of experience related to multi-user collaboration software. Pet. 7 (citing Ex. 1003 ¶¶ 28–30).10 Patent Owner does not address the level of ordinary skill in the art in its Response, but Patent Owner previously stated in its Preliminary Response that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” See generally Resp.; Prelim. Resp. 5. We accept Petitioner’s proposed and unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We conclude, in agreement with Petitioner, that Mr. Landers is not evidenced to have ordinary skill in the art, as such has been defined above in Section II.B of this Decision, because he appears to have neither the requisite education (he is not evidenced to have a degree in computer science or a closely related field) nor experience (he is not evidenced to have experience in multi-user collaboration software). See Ex. 2002 ¶¶ 5–7, Attachment A; see also Hr’g Tr. 23:5–25:2 (Patent Owner, given the opportunity to identify any evidence of record supporting that Mr. Landers has ordinary skill in the art, identified none). There is no argument by Patent Owner to the contrary. For the reasons above, we give no weight to the testimony presented in the Declarations of Mr. Sunatori and Mr. Landers as to the claim construction, anticipation, and obviousness issues discussed below. D.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states, “no construction is necessary, as the claims are obvious under any reasonable construction.” Pet. 7. This statement aligns with the testimony of Dr. Terveen. Ex. 1003 ¶ 24 (“Counsel has not instructed me to apply a construction of the claims notwithstanding their ordinary meaning. Therefore, I have applied the meaning of the claim terms of the Challenged Claims that is generally consistent with their ordinary and customary meaning, as a person having ordinary skill in the art would have understood them in the context of the ’124 Patent at the time of the alleged invention.”). Moreover, Petitioner again stated at the final hearing that, “there are no claim construction disputes, at least none explicitly.” Hr’g Tr. 11:21–24. Similarly, Patent Owner states that “[n]o formal claim constructions are necessary because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Resp. 4 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Therefore, we also do not expressly construe any claim language. slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the evidence of record, we find that the annotated Roy Figure 4B, above, shows how Roy teaches: (1) user input at a client computer, the user input representing content to be shared, such as game plays, and generating messages defining that content, (2) the content being sent to a server, (3) and the server then outputting related messages to all the networked client computers (including the originating computer) so that (4) shared content (e.g., the game play) is displayed over common content (e.g., a game field) at all networked computers (including the originating computer). The above cited portions of Roy, as explained by Dr. Terveen, disclose a central server architecture for the networking of, and sharing common and user-generated content amongst, client computers, and the inherent latency involved in transmission of messages over such an architecture. See Pet. 10–23; Ex. 1001, 1:60–67, 47:44–48, 49:2–7; Ex. 1003 ¶¶ 47–60; Ex. 1005, Abstract, 1:26–48, 1:53–56, 2:1–6, 3:16–56, 3:66–4:1, 4:6–29, 4:44–54, 5:17–6:14, 7:50–52, Figs. 1, 4B, 5A, 5B; Ex. 1020; Ex. 1021. Moreover, to the extent any claim element is not expressly disclosed in Roy, Petitioner has shown that it would have been obvious because one of ordinary skill in the art would understand that displaying shared content over common content on networked computers, where users are collaborating or playing a game, where changes are made to the common view efficiently so that only changes are messaged as rendering commands rather than re-rendering the entire “game world” would provide the benefit of preserving bandwidth consumption. Pet. 20–21; Ex. 1003 ¶ 58.” slip op. at 47
Patent outcomesUS 10,963,124 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,963,124 - PTAB · Dec 20, 2023 · IPR2023-01069 · APJ Robert A Pollock · IPR · Institution
The Board instituted review of claims 1–8 on all three §103 grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and accompanying evidence under 35 U.S.C. § 314. An inter partes review may not be instituted unless “the information presented in the petition . . . and any 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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We integrate the above considerations into the Advanced Bionics two- part framework in deciding discretionary denial under § 325(d), first considering Becton, Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art or arguments were previously presented to the Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 7–11.” slip op. at 58
- Other 314aDenied
“Patent Owner points to § 314(a)27 as a basis for denying institution but provides no substantive argument or evidence on this point. See Prelim. Resp. 2 (citation), 4 (citation), 15 (section heading), 31 (citation in parenthetical). At best, Patent Owner asserts that if we find “that fewer than all three Grounds meet the standard for Section 325(d), institution of Samsung’s petition should still be denied in full, because institution on all three Grounds ‘would not be an efficient use of the Board’s time and 27 Under certain circumstances, the Board may apply its discretion under § 314(a) to deny institution in light of a parallel district court proceeding involving the same patent. See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). But as noted by Petitioner, the patent at issue here “has never been asserted in any litigation.” Pet. 63. 66 resources.’” Prelim. Resp. 31 (citing Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative)). Because we decline to exercise our discretion with respect to any of the Grounds under § 325(d), the Board’s Deeper decision is inapposite.” slip op. at 66
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not presently dispute this definition “except to clarify that the POSA would have at least two years of experience in engineering monoclonal antibodies for human therapeutic use, either in the laboratory or industry.” Prelim. Resp. 44–48 (emphasis omitted); see also id. at 48–49 (arguing that Petitioner cannot prove unpatentability of the challenged claims under either party’s definition). At this stage in the proceeding, we accept and apply Petitioner’s proposed definition of the skilled artisan, as being both unopposed by Patent Owner and inclusive of Patent Owner’s additional qualification. In this respect, it appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” encompasses Patent Owner’s proposed modification, and is consistent with the level of skill in the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,590,189 - PTAB · Dec 19, 2023 · IPR2023-01070 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR of claims 1–29 on all twelve asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage in the proceedings, we accept and use Petitioner’s proposed definition of the ordinarily skilled artisan, as being both generally unopposed by Patent Owner and inclusive of Patent Owner’s supplemental definition. It appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” includes Patent Owner’s proposed level of experience. Pet. 17–18. We also take into account the level of skill in the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this institution decision, we find it unnecessary to construe any claim language because it is readily understandable on its face and there is no dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). As the case continues, we may determine that certain claim language should be interpreted.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Petitioner, supported by the testimony of Dr. Ravetch, contends that Bowdish is analogous art. Pet. 36–37 (citing Ex. 1003 ¶ 128). In this respect, Dr. Ravetch testifies: A POSA looking for the amino acid sequences encoding eculizumab would have easily found Bowdish, and considered it to be analogous art to Bell and Evans for at least three reasons: (1) it provides express disclosures about the structure of the antibody “5G1.1,” (2) it identifies “Alexion Pharmaceuticals” as the inventors’ addressee that is the same as the assignee for Evans, and (3) it cites to the same Evans patent as does Bell for the structure of 5G1.1. Thus, a POSA would have been motivated to combine the teachings of Bowdish and Evans in view of Bell to arrive at the claimed sequence. Ex. 1003 ¶ 128. On the present record before us, it appears that Bowdish is both reasonably pertinent and within the same field of endeavor as the ’809 patent for the reasons identified by Dr. Ravetch, because it is directed to the construction of a humanized monoclonal antibody comprising a TPO mimetic peptide graft into the heavy chain CDR3 of antibody framework 5G1, and because it uses “the parental 5G1.1” sequence as a control for FACs analysis of the TPO mimetic antibody. See Ex. 1004 ¶¶ 191–193. Moreover, it is reasonable that an ordinarily skilled artisan seeking to understand the Alexion anti-C5 antibody disclosed in, for example, Bell or Hillmen or Hill as a treatment for PNH, would look to other Alexion prior art for guidance.” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“overarching argument that Petitioner’s positions are fatally flawed by hindsight or that “[a] POSA as of March 15, 2007[,] would have understood that Alexion had developed a humanized antibody named ‘eculizumab,’ . . . [b]ut a POSA at that time would not have known that “eculizumab” had the sequence claimed in the ʼ809 patent.” See Prelim. Resp. 4, 7, 9. It appears that Petitioner’s positions here consider only the disclosures of the prior art and how the person of ordinary skill in the art would have read prior art references in view of one another. Regarding Patent Owner’s foundational preliminary argument that all prior art pointed exclusively to Thomas for the structure of eculizumab, rather than to Evans or Tacken or Mueller PCT, for example, we are unconvinced. We find Patent Owner’s position mischaracterizes Bell’s incorporation of Thomas by wholly ignoring that, in the very same sentence, and preceding the cite to Thomas, Bell also incorporates Evans by reference. Ex. 1007 ¶ 52. Bell incorporates Evans as disclosing “[p]articularly useful anti-C5 antibodies . . . h5G1.1-mAb, h5G1.1-scFv and other functional fragments of h5G1.1,” and “[m]ethods for the preparation” of these. Id. It appears that the ordinarily skilled artisan, like Bell’s inventors, would not have looked solely to Thomas for eculizumab’s structure. Moreover, the ’809 patent itself states that Evans, which is a part of Bell, discloses “a preferred whole antibody (now named eculizumab),” and how to produce it. See, e.g., Ex. 1001 12:34–37. Thus, even the ’809 patent, like Bell, acknowledges that Evans is an important reference regarding eculizumab, its structure, and how to make it.” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,703,809 - PTAB · Dec 8, 2023 · IPR2023-00999 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–10 on all five grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and accompanying evidence under 35 U.S.C. § 314. An inter partes review may not be instituted unless “the information presented in the petition . . . and any 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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As such, we find it error for the Examiner to have not expressly considered Tacken in the context of the other references Alexion pointed to as allegedly demonstrating the “consistent teachings as of March 15, 2007 that ‘eculizumab was the IgG4 antibody of Thomas.” Ex. 2102, 14840– 14843, 14854. But for this error, the Examiner would have better appreciated the disclosure of Mueller PCT. See Ex. 1003 ¶¶ 178, 180–182 (Dr. Ravetch’s testimony that “most critically, Alexion failed to provide its own 2005 publication, the Tacken article, that teaches that “eculizumab” contains an IgG2/G4 constant domain”).” slip op. at 62
- Other 314aDenied
“IV. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Patent Owner points to § 314(a)27 as a basis for denying institution but provides no substantive argument or evidence on this point. See Prelim. Resp. 2 (citation), 4 (citation), 17 (section heading), 32 (citation in parenthetical). At best, Patent Owner asserts that if we find “that fewer than all five Grounds meet the standard for Section 325(d), institution of Samsung’s petition should still be denied in full, because institution on all five Grounds ‘would not be an efficient use of the Board’s time and resources.’” Prelim. Resp. 32 (citing Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative)). Because we decline to exercise our discretion with respect to any of the Grounds under § 325(d), the Board’s Deeper decision is inapposite.” slip op. at 65
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not presently dispute this definition “except to clarify that the POSA would have at least two years of experience in engineering monoclonal antibodies for human therapeutic use, either in the laboratory or industry.” Prelim. Resp. 51 (further arguing that Petitioner cannot prove unpatentability of the challenged claims under either party’s definition). At this stage in the proceeding, we accept and use Petitioner’s proposed definition of the skilled artisan, as being both unopposed by Patent Owner and inclusive of Patent Owner’s additional qualification. In this respect, it appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” encompasses Patent Owner’s proposed modification, and is consistent with the level of skill in the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,725,504
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.