- Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - PTAB · Apr 13, 2023 · PGR2023-00003 · APJ William A Capp · PGR · Institution
The Board instituted PGR on claims 1–5 after finding claim 1 more likely than not anticipated by Davison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“In view of the foregoing and for purposes of this preliminary stage of the proceeding, we will construe the “optimized” term as relating to a hole shape associated with a known liner design that most closely approximates the desired hole shape in some objectively discernable manner when compared to hole shapes that are associated with other liner designs that are maintained in a library. Converge toward the desired hole shape” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“1 QinetiQ has filed a motion to dismiss the Petition. Paper 6. Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to dismiss in a separate order issued substantially contemporaneously herewith.” slip op. at 2
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,215,039 - PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))). slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,266,028 - Thorne Research, Inc. v. Trustees Of Dartmouth CollegeAll claims unpatentablePTAB · May 31, 2022 · IPR2021-00268 · APJ John E Schneider · IPR · Final written decision
Claim 2 is unpatentable as anticipated by Stamler and, alternatively, obvious over Stamler.
RulingsFinal written decision- BurdenDecided for petitioner
“2. Anticipation2 “Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single prior art reference for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997). “[U]nless a reference discloses within the four corners of the document not only all of the 2 As noted above, the pre-AIA provisions of 35 U.S.C. apply to the ’086 patent. the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Under § 120, a patent is entitled to the priority date of an earlier filed application if (1) the written description of the earlier filed application discloses the invention claimed in the later filed application sufficient to satisfy the requirements of § 112; (2) the applications have at least one common inventor; (3) the later application is filed before the issuance or abandonment of the earlier filed application; and (4) the later application contains a reference to the earlier filed application. In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011); see also 35 U.S.C. § 120 . As discussed above and in our Decision to Institute, the ’086 patent meets this criterion. While we agree with Petitioner that the face of the ’086 patent does not include a citation of the ‘701 application, the specification does contain a clear claim of priority back to the ’701 application. Ex. 1001, col. 1. ll. 7–13; Ex. 1004 1.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art offered by Patent Owner in the ’1795 IPR, which, as noted above, also involved the ’086 patent, should apply to this proceeding, namely “someone with a Ph.D. in biochemistry or similar field in the pharmaceutical sciences, with familiarity and experience with pharmacokinetics.” Pet. 33. Patent Owner does not dispute Petitioner’s definition and, indeed, Patent Owner’s expert, Dr. Amiji, used the same definition in his analysis. Ex. 2014 ¶ 21. For purposes of this Decision, therefore, we adopt Petitioner’s description. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention and supports Petitioner’s definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We have considered the arguments presented by the parties, and find that our initial construction is proper for the reasons set forth in the ’1795 proceeding. Ex. 1018 12–14. We decline to adopt Patent Owner’s construction that calls for an isolation step separate from the process used to manufacture synthetic NR.” slip op. at 16
Patent outcomesUS 8,383,086 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,383,086 - Liquidia Technologies, Inc. v. United Therapeutics CorporationSome claims unpatentablePTAB · Oct 8, 2021 · IPR2020-00770 · APJ John E Schneider · IPR · Final written decision
Claims 1–5, 8, and 9 are unpatentable as obvious over Moriarty and Phares; claims 6 and 7 were not shown unpatentable over either asserted ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Here, we do not need to define the outer bounds of the term “pharmaceutical batch” because the parties’ dispute over this term centers on the issue of storage stability.7 Patent Owner argues “the correct construction 6 The parties use the terms “purification” and “isolation” interchangeably in the papers. We use the term “isolation” in this Decision. 7 The parties agree on the “pharmaceutical” aspect of the term. We note the ’901 patent defines “pharmaceutically acceptable” as “being useful in preparing a pharmaceutical composition that is generally safe, non-toxic and neither biologically nor otherwise undesirable and includes being useful for veterinary use as well as human pharmaceutical use.” Ex. 1001, 5:27–31.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“[A]n invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office.” Graham, 383 U.S. 1, 33. “The prosecution history of a related patent can be relevant if . . . it addresses a limitation in common with the patent in suit.” Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1305 (Fed. Cir. 2001); see also Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation.”). Here, the Specification of the ’901 patent includes the same language “crude treprostinil salts can be stored as raw material at ambient temperature” addressed in the prosecution of the parent ’623 application. Ex. 1001, 17:5–6. More importantly, challenged claim 6 recites the same limitation “preparing a pharmaceutical product . . . after storage” the applicant expressly interpreted there. See Ex. 2028, 193. Because “the same claim limitation is at issue, prosecution disclaimer made on the same limitation in an ancestor application will attach,” the applicant’s interpretation of “storing”/“storage” during the prosecution of the ’623 application applies here. See Omega Eng’g, Inc., v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003). slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir. 2013). Here, step (c) of challenged claim 1 requires “contacting the solution comprising treprostinil from step (b) with a base to form a salt of treprostinil.” Ex. 1001, 17:27–29 (emphasis added). The claim language itself, thus, dictates that the solution formed in step (b), and not treprostinil isolated from step (b), is the starting material for forming a salt in step (c). The Specification of the ’901 patent supports our determination. Indeed, the Specification touts that one of the advantages of the disclosed process is that “the treprostinil salts can be synthesized from the solution of treprostinil without isolation,” because “[t]he impurities carried over from intermediate steps (i.e. alkylation of triol and hydrolysis of benzindene nitrile) are removed during the carbon treatment and the salt formation step.” Ex. 1001, 17:1–11. As a result, we agree with the argument presented in the Patent Owner Response that “claim 1 requires the solution in which treprostinil is formed be used directly in the next salt-forming step without isolating treprostinil in between.” See PO Resp. 11.” slip op. at 27
- Skill levelSkill level board ownOther
“pharmaceutical manufacturing.” Id. at 23. We find Patent Owner’s definition of the skill level too narrow. Patent Owner relies on the declaration of Dr. Pinal, who testifies that the ’901 patent is “focused on the production of pharmaceutical compositions and products, on a commercial batch-size scale.” Ex. 2002 ¶ 91; see also id. ¶ 92 (opining that organic and medicinal chemists do not have the “requisite skill set for the large-scale manufacture” of drugs); PO Resp. 24 (arguing an ordinarily skilled artisan is aware of “problems encountered in preparing a commercial-scale pharmaceutical product”).” slip op. at 29
Patent outcomesUS 9,604,901 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,604,901 - Eis GmbH v. Novoluto GmbHNo claims unpatentablePTAB · Sep 23, 2021 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–3, 5, 7, 8, 11, 14, 15, and 17–26 were not shown unpatentable under the Taylor anticipation or Taylor-based obviousness grounds.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDenied
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
- ExcludeMotion to exclude, deniedDenied
“5. Conclusion For the reasons set forth above, we deny the portion of Petitioner’s” slip op. at 73
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“7 Petitioner presents argument that the term “pressure field generator” should be construed as a means-plus-function term limited to the following structure: at least one first chamber, at least one second chamber, and at least one connection element. Reply 25–26. As we find that it is not necessary to construe this term to resolve the issues before us, we do not address these arguments presented by Petitioner.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
Patent outcomesUS 9,849,061 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,849,061 - Ty Inc. v. Softbelly’S, Inc.All claims unpatentablePTAB · Sep 10, 2021 · IPR2020-00689 · APJ John E Schneider · IPR · Final written decision
Claims 15 and 16 are unpatentable: claim 15 as anticipated by Ogawa and obvious over Ogawa and Masahiro; claim 16 as obvious over Ogawa with Cherk, and with Masahiro and Cherk.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have considered the arguments presented by the parties and the evidence of record and are not persuaded that our original definition of a person of ordinary skill in the art was in error. While the claims at issue refer to an optical grade fabric, we note that the fabric is not the invention. Rather, as stated in the Specification, the field of the invention is “cleaning tools for electronic display screens, and more specifically to cleaning tools for computer display screens and the like.” Ex. 1001, col. 1, ll. 4–6. The claims further narrow the field of the invention to cleaning tools in the form of a doll-like structure. Id. at col. 6, l. 37. Based on the forgoing, we continue to apply the same definition of a person of ordinary skill in the art we used in our Decision on Institution. However, the findings and conclusions set forth below would have been the same had we instead adopted Patent Owner’s proposed definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We have considered the arguments presented by the parties and the evidence of record and conclude that Petitioner has the better position. The term “display screen,” as used in the challenged claims, refers to an intended use of the cleaning tool. As such, it does limit the scope of the claims. We begin by noting that the challenged claims are directed to a device or apparatus. Ex. 1002, col. 2, ll. 8–13. As such, the claims “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (1990). The preamble of both claims 6 and 11 read in part: “doll-like figure for cleaning or wiping the surface of a display screen.” Ex. 1001, col. 6, ll. 37–38; col. 7, ll. 1–2. Both claims end with the clause “providing a pliant cleaning tool for wiping a display screen.” Id. at col. 6, ll. 50–51; col. 7, ll. 13–14. These phrases are crafted in terms of a device for performing a specific function or use. This type of phrase has been found to recite an intended use and not a physical limitation. See Marrin v. Griffin, 599 F.3d 1290, 1294–96 (Fed. Cir. 2010). The recitation of the intended use in the body of the claim does not affect our analysis. The term for wiping a display screen still recites a use of the device that does not impart a structural limitation.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We have considered the testimony of both experts and the evidence of record and find Mrs. Ryan’s testimony to be more persuasive. Therefore, we agree with Petitioner that Ogawa discloses a wiping tool which has an inner chamber formed by a strip of optical grade fabric — the wipe portion — and a non-optical grade fabric — the gripping body. We give more weight to Mrs. Ryan’s testimony based on her extensive experience in designing plush toys. Ex. 1005 ¶¶ 3–5. Mrs. Ryan has worked in the area of plush toy design for over twenty-six years and has taught classes relating to plush toy design. Id. ¶¶ 3–4; page 40. In addition, Mrs. Ryan’s testimony regarding how one skilled in the art would envision the wiping tool of Ogawa is consistent with the evidence of record. For example, King4 teaches that teddy bears are formed by joining pieces of fabric creating an inner pocket into which stuffing is inserted. Ex. 1026, 7–12. Cockrill5 also teaches that teddy bears are traditionally made by cutting out the material, sewing the pieces together, and then stuffing the bears. Ex. 1025, 67.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We have considered the testimony of both experts and the evidence of record and find Mrs. Ryan’s testimony to be more persuasive. Therefore, we agree with Petitioner that Ogawa discloses a wiping tool which has an inner chamber formed by a strip of optical grade fabric — the wipe portion — and a non-optical grade fabric — the gripping body. We give more weight to Mrs. Ryan’s testimony based on her extensive experience in designing plush toys. Ex. 1005 ¶¶ 3–5. Mrs. Ryan has worked in the area of plush toy design for over twenty-six years and has taught classes relating to plush toy design. Id. ¶¶ 3–4; page 40. In addition, Mrs. Ryan’s testimony regarding how one skilled in the art would envision the wiping tool of Ogawa is consistent with the evidence of record. For example, King4 teaches that teddy bears are formed by joining pieces of fabric creating an inner pocket into which stuffing is inserted. Ex. 1026, 7–12. Cockrill5 also teaches that teddy bears are traditionally made by cutting out the material, sewing the pieces together, and then stuffing the bears. Ex. 1025, 67. Dr. Adanur’s experience and expertise appears to be primarily focused on textiles. Ex. 2005 ¶¶ 8–24. While Dr. Adanur testified that he has some experience in the area of plush toys, that experience appears to be limited to selection of fabric that could be used to manufacture plush toys and making several puppets at home to earn extra money. Ex. 1027, 52, 57–59, 78–79. In addition, Dr. Adanur does not cite to any evidence other than Ogawa to support his opinions as to what one skilled in the art would envision upon reading Ogawa. See Ex. 2005 ¶¶ 84–87. Patent Owner, however, contends that Ogawa is silent as to whether the tool has an inner chamber made from a piece of optical grade fabric and a piece of non-optical grade fabric. PO Resp. 1, 22. 4 King, Make Your Own Teddy Bears, 1985 (Ex. 1026) (“King”). 5 Cockrill, The Teddy Bear Encyclopedia, 1993 (Ex. 1025) (“Cockrill”).” slip op. at 17
Patent outcomesUS 6,195,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,195,831 - Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing deniedPTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7
Claim construction§ 112 disclosurePatents in suitUS 10,155,039 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Genome & Company v. The University Of ChicagoAll claims unpatentablePTAB · Apr 14, 2020 · PGR2019-00002 · APJ John E Schneider · PGR · Final written decision
Claims 1–29 are unpatentable: claims 1–17 and 19–28 for lack of enablement and obviousness; claims 18 and 29 for obviousness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Braun, Petitioner’s proffered expert, defines a person of ordinary skill in the art as having an advanced degree or its substantial equivalent in the biological sciences, including specifically in the fields of immunology, microbiology and the microbiome, and oncology, coupled with research experience in those fields. Ex. 1002 ¶ 40. Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. See generally, PO Resp. We determine that Petitioner’s description of the level of ordinary skill in the art is supported by the current record. For purposes of this Decision, therefore, we adopt Petitioner’s description. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“interprets claim terms in an unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 100(b) (2018);3 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest reasonable construction standard to trial proceeding before the USPTO.). Under that standard, and absent any special definitions, we generally give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine that it is unnecessary to expressly construe any claim terms for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We have considered the arguments presented by the parties and the evidence of record and conclude that the unpredictability of the art weighs in favor of finding non-enablement with respect to CPIs in general. While we agree with Patent Owner that CPIs can be effective in treating some cancers, the Specification and the evidence of record show that all of the effective CPIs are antibodies. For example, all of the CPIs listed in the chart of page 10 of Patent Owner’s Response are antibodies. Tr. 39. We find nothing in the record, other than attorney argument that one skilled in the art would know how to make of use other CPIs, such as an interfering nucleic acid molecule, in the claimed method. For example, as Petitioner points out, Patent Owner’s expert did not consider CPIs other than antibodies, in reaching his conclusions regarding enablement. Pet. Reply, 4; Ex. 1042, 19–29. The record also does not support the contention that one skilled in the art could predict the action of non-antibody CPIs based on the action of an antibody CPI. The art and the Specification identify one non-antibody CPI, and the Fe region of human IgG. Ex. 1001, col. 5, ll. 20–23; Ex. 2034, 206. At the time the ’302 patent was filed, studies of this potential CPI indicated that it acted differently than antibody CPIs and that efficacy was lacking compared to other CPIs. Id. This evidence supports Petitioner’s contention that the use of CPIs, especially non-antibody CPIs, was unpredictable at the time the ’302 patent was filed. We also agree with Petitioner that the selection of Bifidobacterium was unpredictable. The evidence of record supports Petitioner’s contention that the immunostimulatory activity of Bifidobacterium varies from strain to strain, even within the same species. Pet. 44–45. O’Mahony teaches that Bifidobacterium longum strain AH1714 is immunosuppressive while another stain of B. longum exhibits immunostimulatory activity. Ex. 1017 ¶¶ 103– 109. Similarly, Lopez evaluated 12 strains of four different species of Bifidobacterium and concluded that the properties exhibited by Bifidobacterium varied among the strains. Ex. 1038, Abstr. Patent Owner’s arguments regarding the credibility of O’Mahony and Lopez are unpersuasive. Patent Owner made specific representations to the Examiner on several occasions that strain AH1714 disclosed in O’Mahony was immunosuppressive to support Patent Owner’s argument that one would not combine an immunosuppressive agent with an immunostimulatory agent. See, e.g. Ex. 1014, 8–9. Patent Owner suggests that it was not asserting that the statements in O’Mahony were accurate, but merely argues that those statements would have led away from making the combination proposed by the Examiner. PO Sur-Reply 10. This argument fails in its logic. If one skilled in the art upon reading O’Mahony would have recognized the alleged errors in O’Mahony’s teachings and disregarded them as Patent Owner now combination advanced by the Examiner in prosecution as Patent Owner argued. With respect to Lopez, Lopez states unambiguously that the immune effects of Bifidobacteria are species and strain specific. Petitioner has advanced evidence that those skilled in the art accepted these conclusions, citing Lopez in subsequent articles. Pet. Reply 10–11 (citing Ex. 1044). Moreover, the present inventors found Lopez to be sufficiently credible to incorporate the teachings of Lopez in their entirety into the instant Specification of the ’302 patent. Ex. 1001, col. 37, l. 62–col. 38, l. 4.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledEnabledMixed
“evidence of record and conclude that applying the all the Wands factors, Petitioner has demonstrated by a preponderance of the evidence that claims 1–17 and 19–28 are not enabled. In reviewing the evidence of record, we find that the nature of the invention that involves very broad claims, the high level of skill required in such an unpredictable art, and the dearth of working examples and lack of specific guidance on the full range of CPIs and cancers challenged claims are not enabled. Because claims 18 and 29 require known CPIs, however, we find that Petitioner has failed to show that these claims are not enabled.” slip op. at 26
Patent outcomesUS 9,855,302 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,855,302
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.