• Charles River Laboratories, Inc. v. Seikagaku CorporationAll claims unpatentable
  PTAB · Sep 8, 2026 · IPR2025-00440 · APJ Tawen Chang · IPR · Final written decision

  Claim 21 is unpatentable as obvious over Mizumura with either the ’498 PCT or McClymont; the Revised Contingent Motion to Amend proposing claim 22 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “overlap to a significant degree, i.e., a person with a Ph.D. in a discipline related to biological sciences and having had at least two years of work experience. However, the parties’ proposals differ slightly in the specific subjects in which a POSA would have had a doctoral degree, and whether the person’s work experience must have been directly related to horseshoe crab Factor C. As an initial matter, we find that a rigid requirement as to the subject of a POSA’s doctoral degree (e.g., biochemical engineering, enzymology), or experience working specifically with horseshoe crab proteins, is not consistent with the evidence of record. See, e.g., Ex. 1067, 20:23–21:2 (Dr. Schaefer testifying that the fact the “name of [his] Ph.D. is immunology . . . does not change the fact that the core of [his] thesis training was really in molecular biology”), 22:3–15 (explaining “the fact that the production of proteins recombinantly is mostly species agnostic”); Ex. 1069, 45:20–47:17 (Dr. Morris testifying that whether a person is a POSA depends on the person’s “experience, [ ] publications,” and work done for the Ph.D. rather than the name of the Ph.D. program). We also find that evidence of record supports Petitioner’s assertion that, for purposes of defining a POSA, “[m]ore education could substitute for experience, and vice versa.” See, e.g., Pet. 19; Ex. 1065, 99:14–100:3. with respect to the claims of the ’318 patent would have had a Ph.D. in molecular biology, biochemistry, or a related discipline, and about two years of experience with cloning genes, expressing cloned genes as proteins, and/or characterizing such cloned genes and proteins, with more education being able to substitute for experience, and vice versa. A POSA may also have collaborated with others, including those with specific experience in utilizing or assessing horseshoe crab Factor C for endotoxin detection and quantitation.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction The parties agree that “the terms in claim 21 can be afforded their plain and ordinary meaning for purposes of this proceeding” without further construction. Pet. 19–20; PO Resp. 11. Because express claim construction is not needed to resolve the issues in this case, we need not, and do not, construe expressly any claim term for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “Carrying Out the Invention section, that “[t]he Factor C of the present invention is a Factor C derived from a horseshoe crab,” and states later in the same section that “[e]xamples of the horseshoe crab include . . . Limulus polyphemus.” Ex. 1006, 40. However, none of the remaining portions of ’767 application cited by Patent Owner relate directly to L. polyphemus; instead, the remaining portions of ’767 application cited by Patent Owner are directed to other species, in particular the Japanese horseshoe crab T. tridentatus. Further, Patent Owner’s witness, Dr. Schaefer, conceded that the ’767 application does not contain Factor C sequence information for L. polyphemus. See, e.g., Ex. 1067, 44:25–45:23. Although “[n]o length requirement exists for a disclosure to adequately describe an invention,” Falko-Gunter, 448 F.3d at 1365–1366, we are persuaded that a POSA would not, based on the totality of the above disclosures, reasonably understand that the inventors were in possession of the claimed HEK-293 recombinant L. polyphemus Factor C protein, in view of the state of the art as of December 10, 2013. In this regard, we note that adequate written description of a biological molecule, such as a HEK293 recombinant L. polyphemus Factor C protein, requires “more than a mere statement that it is part of the invention and reference to a potential method for isolating it”; instead, what is required is “‘a precise definition, such as by structure, formula, chemical name, or physical properties,’ not a mere wish or plan for obtaining the claimed chemical invention.” The Regents of the” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Neither do we see Petitioner’s arguments regarding the December 10, 2013 priority date to be “mutually opposed” as Dr. Schaefer testified. Ex. 1067, 216:4– 24. Instead, we credit evidence of record, including Dr. Jain’s testimony and the February 22, 2018 Mizumura Declaration, that existence of the full sequence would permit a more complete analysis and that such an analysis would provide a POSA with a reasonable expectation that the claimed L. polyphemus recombinant protein would have a residual activity within the claimed range. See, e.g., Ex. 1029, 2–5; Ex. 1010, 48; Ex. 1065, 117:14– 130:24 (explaining that comparison of partial sequences in the Tokunaga 1991 publication showed “difference around the cleavage site” between T. tridentatus and L. polyphemus but comparison of the full sequence revealed that “the catalytic triad of histidine, serine, aspartate . . . to be more similar between Tachypleus and Limulus”). Patent Owner asserts that “Petitioner’s reliance on a statement made by Dr. Mizumura in a declaration submitted during prosecution of the ’767 Application fails to fill the gap in the analysis” regarding reasonable expectation of success, because the declaration “offers no evidence of the percentage of conserved amino acid substitutions that exist to support the conclusion that a POSA would have expected residual activity to be maintained between Tachypleus tridentatus and Limulus polyphemus” PO Resp. 47. However, as noted above, Dr. Mizumura provides an alignment of Factor C proteins from the two different species of horseshoe crab, determines that the similarity between the amino acid sequence is 99.5%, states that the amino acid residues that can undergo N-type sugar chain that L. polyphemus, like T. tridentatus, would also be less susceptible to inhibition by ions. Ex. 1029, 4–5. For the reasons discussed above, we also disagree with Patent Owner’s assertion that Petitioner’s reasonable expectation of success argument is “nothing more than conclusory assertions with no support.” PO Resp. 46. Rather, we find Petitioner has shown, by a preponderance of the evidence, that a POSA would have had reason to combine the teachings of Mizumura and the ’498 PCT, with a reasonable expectation of success in arriving at the Factor C protein recited in claim 21.” slip op. at 38

  Patent outcomesUS 11,236,318 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,236,318
• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed

    “Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42

  Patent outcomesUS 11,318,227 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR
  Patents in suitUS 11,318,227
• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthAll claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00248 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3 and 5–12 are unpatentable as anticipated by Huang2; claim 4 is unpatentable as obvious over Huang2 and Kumbar. Lee grounds failed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 18– 19 (citing Ex. 1003 § II.C5). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 5–6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “A patentee “may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)); see Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“[A]ny special definition given to a word must be clearly defined in the specification.”), aff'd, 517 U.S. 370 (1996); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). “[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.” Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). Among the criteria to consider in whether the patentee acted as a lexicographer to define a claim term include (a) whether the patent specification included the statement in question under a section for marks, (c) whether the sentence uses the term “refer to,” which generally “conveys an intent for [that sentence] to be definitional,” and (d) whether there are other non-limiting terms (e.g., “for example,” or “include”) that contradict a definitional intent. Alnylam Pharms., Inc. v. Moderna, Inc., 138 F.4th 1326, 1333 (Fed. Cir. 2025) (alteration in original). At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:6–7. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at issue sets out “major peaks” in quotation marks, and then uses the term “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “As discussed above, we agree with Patent Owner that the sentence it cites from the Specification of the ’223 patent bears sufficient hallmarks of lexicography. However, the Specification nonetheless lacks any indication that so-called “minor peaks” are a necessary component of the claimed invention. “Although it is firmly settled that an applicant may act as a 9 Figure 8B does not contain “major peaks” despite clearly depicting two “peaks higher than the average of the [three or possibly four] peaks in the result” because none of the peaks is a reflection of fiber alignment. 10 After presenting claim construction arguments based on Ayres 2008, Patent Owner confusingly states: “Finally, whether Ayres-2008 supports [Patent Owner’s] construction is irrelevant.” PO Sur-Reply 5 (emphasis added). definition that is contrary to the ordinary meaning of a claim term unless it communicates a deliberate and clear preference for this alternative definition.” Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003). There is no indication that the patentee sought to require “minor peaks” within the scope of the claimed invention. Nor are we persuaded that a person of ordinary skill in the art would readily understand the scope of the term “major peaks” to require non-major peaks. We interpret the Specification’s statement that “‘major peaks’ herein refer to peaks higher than the average of the peaks in the result” (Ex. 1001, 13:6–7) to be teaching a person of ordinary skill in the art how to identify or discern “major peaks,” which indicate a principal axis of alignment, from any non-major peaks, which would be caused by something else. We conclude that a person of ordinary skill in the art would consider “major peaks” as used in the ’223 patent as referring to peaks that reflect the sole axis or primary axis of fiber alignment. See, e.g., id. at code (54) (“ALIGNED FIBER AND METHOD OF USE THEREOF”), code (57) (“A scaffold comprising an aligned fiber.”), 1:6–7 (“The invention relates to an aligned fiber and method of use thereof.”), 1:11–12 (“The invention relates to a scaffold comprising an aligned fiber.”), 13:16–17 (“Alignment of the fibers in the scaffold may be measured by a fast Fourier transform (FFT) analysis.”). This would certainly include peaks materially higher than the average of the peaks in the result, but it would not be limited to situations involving peaks of different heights or require so-called minor peaks. Based on the totality of the evidence before us, we do not construe the claims to require non-major peaks.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Petitioner argues that, for the aligned sample, a major peak occurs at about 90° as identified by Petitioner’s annotation (red arrow). Pet. 30–31. As support, Petitioner directs us to Huang2’s explicit description of what the peak indicates, namely that “[t]he narrow peak of the normalized intensity values in anisotropic [aligned] matrices (Figure 1C) indicated that PCL/Coll nanofibers aligned along a single axis (Fig. 1B).” Id. at 31 (alterations in original) (quoting Ex. 1005, 1794). Patent Owner disputes that the illustrated peak is a major peak solely based on the lack of any lesser peaks. See PO Resp. 13 (“[T]he height of the sole peak is identical to—not higher than—the average height of the peaks in the result.”). As discussed above, however, we do not construe “major peaks” as requiring the existence of non-major peaks. We find that the illustrated peak in the Aniso plot of the FFT analysis results (Figure 1C) is a major peak within the meaning of the claim. The evidence in support of this finding is overwhelming. First, the term “Aniso” as used in Huang2 refers to fibers “with alignment.” Ex. 1005, 1792. Huang2 describes fabricating such matrices of aligned fibers with electrospinning, the same method used to impart alignment in the ’223 patent. Id. at 1791–92. Huang2 visually confirms that the fibers in fact are aligned via scanning electron microscopy. Id. at Fig. 1B. Further, Huang2 explicitly states that the peak illustrated in the Aniso plot of the FFT analysis results (Figure 1C) is caused by the fact that the “PCL/Coll nanofibers aligned along a single axis (Fig. 1B).” Id. at 1794. This is precisely what electrospinning may yield aligned fibers and images of aligned fibers will yield FFT results with major peaks. Ex. 1001, 2:18–19, 4:46–60, 13:16–26. Additionally, Huang2 itself considers the peak illustrated in the Aniso plot of the FFT analysis to be significant, stating: “In contrast [to the Aniso plot], the lack of a significant peak for the fibers collected on a stationary surface [(i.e., without electrospinning)] demonstrated no preferred fiber orientation in the isotropic matrices” (i.e., the Iso plot). Ex. 1005, 1794. Indeed, the asserted major peak in the Aniso plot shown in Huang2’s Figure 1C is higher than any other data point on the plot. For these reasons, we find the peak to be a major peak.15 Petitioner acknowledges that Figure 1C only reports its results” slip op. at 32

  Patent outcomesUS 10,137,223 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman
  Patents in suitUS 10,137,223
• Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentable
  PTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  Patent outcomesUS 7,324,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,324,802
• Unified Patents Inc. v. Digital Stream IP, LLCSome claims unpatentable
  PTAB · Mar 9, 2018 · IPR2016-01749 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 4, 6–13, 20, and 22 are unpatentable as obvious; claims 2 and 3 were not shown unpatentable because the cited art did not establish portability or handheld use.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We agree with Petitioner. Although Petitioner bears the burden of correctly identifying the real parties-in-interest, “[w]e generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition.” See Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at 6 (PTAB Mar. 3, 2015) (Paper 35) (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)). Here, Petitioner identifies in its Petition the real party-in-interest: “Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (‘Unified’ or ‘Petitioner’) certifies that Unified is the real party-in-interest.” Pet. 1. Such identification gives rise to a rebuttable presumption that Petitioner has complied with its obligation to identify all real parties-in-interest. See Zerto at 6–7. Patent Owner recognizes that “it [is] incumbent on the patent owner to come forward with some rebuttal evidence.” PO Resp. 52. In response to Petitioner’s identification of the real party-in-interest, Patent Owner contends that “this is not an instance where a petitioner’s certification in a petition can be taken at face value” because “evidence proffered by [Petitioner] in support of its position was withdrawn deliberately.” Id. at 53. We do not, however, require evidence beyond a petitioner’s identification of real parties-in-interest in the absence of rebuttal evidence that such identification is erroneous or incomplete. Petitioner’s withdrawal of Exhibit 1012 from the record does not constitute such rebuttal evidence. In view of the foregoing, we find that the circumstances here do not raise sufficient doubt about whether Petitioner has satisfied its obligation to name all real parties-in-interest. Therefore, we determine that the Petition should not be dismissed on this basis.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “by applying the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under that standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Petitioner proposes an express construction for the claim term “transceiver.” Pet. 10. Patent Owner does not propose an express construction for any claim term. See generally PO Resp. In light of the parties’ arguments, we determine that no term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Rovira teaches each of the recited claim limitations, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, Petitioner directs us to Rovira’s teaching that “it is highly desirable to communicate program content information” because “having such information as music title, composer, artist and record label is vital” to music lovers. Pet. 16 (citing Ex. 1003, 1:30–32, 2:5–10); see also Ex. 1003, 1:32–35 (“Frustration of customers, and possible loss of revenue due to subscription cancellation can occur if a subscriber has no method of knowing the title, composer or artist of the particular selection of music.”). Petitioner argues it, thus, would have been obvious to modify Schotz’s system to incorporate a signal that includes both audio data and program data, as taught by Rovira. Pet. 17; see also, e.g., id. at 21 (“[O]ne would have been motivated to (1) modify Schotz’s transmitter 4 to transmit the digital audio signal of Rovira . . . and (2) modify Schotz’s receiver 6 to receive this digital audio signal.”); id. at 23 (“[T]his modification would result in Schotz’s user interface switch 18 selecting the digital audio data . . . within the digital audio signal [of Rovira].”); id. at 25 (“It would have been obvious to utilize the tuner 110 of Rovira in Schotz for [tuning] to frequencies that Schotz is receiving based on its use of Rovira’s digital audio signal. . . . Schotz is essentially doing this already, i.e., tuning to a frequency associated with audio data.”); id. at 27 (“[I]t would have been obvious to modify Schotz to utilize Rovira’s disclosed demodulator 125 to extract the selected digital audio data and the audio program information from the carrier wave, as taught by Rovira.”); id. at 28–29 (“It would have been obvious to modify Schotz to include the digital to analog converter 160 disclosed in Rovira. . . . The receiver 6 of Schotz would necessarily need a digital to analog converter when using the digital signals disclosed in Rovira so that the user can hear the selected music.”). We are persuaded by Petitioner’s reasoning, including specifically the quoted material in the preceding string citation to the Petition, for modifying Schotz’s system to include Rovira’s signal as well as various components for processing such a signal. See Kahn, 441 F.3d at 988. We note that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and, in modifying Schotz’s system to include Rovira’s signal, would have made any necessary additional modifications such that Schotz’s system could process appropriately Rovira’s signal. See KSR, 550 U.S. at 421.” slip op. at 13

  Patent outcomesUS 6,757,913 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,757,913
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16

  Patent outcomesUS 8,041,873 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,041,873
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.Some claims unpatentable
  PTAB · Oct 26, 2015 · IPR2014-00727 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 are unpatentable as obvious over Betts; claims 8, 20, 30, and 38 were not shown unpatentable over Betts and the Orange Book.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The term “enclosure unit” encompasses lavatories, aircraft closets, and aircraft galleys. Given the grounds of unpatentability that Petitioner raises, there is no need to further construe this term. 2. “lavatory stall unit” Whereas independent claim 1 recites “enclosure unit,” independent claim 9 recites “lavatory stall unit.” Patent Owner proposes the latter be construed as “a single room, enclosed on all sides, having a toilet and washbasin and large enough to fit a person inside.” PO Resp. 12. For reasons similar to those with respect to “enclosure unit,” we reject Patent Owner’s proposed construction of “lavatory stall unit.” Further, given the grounds of unpatentability that Petitioner raises, there is no need to provide an express construction for this term. More specifically, Petitioner does not rely on any particular prior art lavatory. Indeed, Petitioner does not rely on either of the asserted references to teach a “lavatory stall unit,” instead relying on the knowledge and skill of a person of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “These proposed constructions would render the claim language “in a vertical plane” meaningless because tilting a seatback between an upright position and another position would have no effect on the shape of the aft surface of the seatback. Therefore, we do not adopt them. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002) (proposed construction that rendered a portion of the claim language meaningless held improper). Rather, we construe “in a vertical plane” according to its ordinary and customary meaning and consistent with the specification, which contrasts a forward wall in a vertical plane (see Fig. 1—the prior art) against a recessed forward wall (see Fig. 2—an embodiment of the claimed invention). In sum, the full limitation at issue encompasses an aft portion (in the case of claim 1) and an aft portion with an exterior aft surface (in the case of claims 9, 21, and 31) that has a flat shape but which is not within a vertical plane. This is within the broadest reasonable construction in light of the Specification, which discloses a substantially conforming recessed forward wall positioned behind the seat (see Ex. 1001, Fig. 2), as opposed to a wall that is flat in a vertical plane (see id. at Fig. 1). 4. “forward wall portion is shaped to substantially conform to the shape of the” slip op. at 10

  • BurdenFwd mixedMixed

    “As discussed below, Petitioner has shown by a preponderance of the evidence that claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 of the ’838 patent are unpatentable as obvious over Betts. But, Petitioner has not shown by a preponderance of the evidence that claims 8, 20, 30, and 38 are unpatentable as obvious in view of Betts and the Orange Book, as Petitioner has not established that the evidence relied upon within the Orange Book is a printed publication.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “motivated to efficiently use space on an aircraft, as evidenced by Betts, “to provide more room for passengers.” Id. ¶ 65 (quoting Ex. 1003, 1:6–7). Mr. Anderson further testifies that Betts teaches the person of ordinary skill in the art a recessed forward wall configuration that uses space more efficiently than a flat configuration, and that a person of ordinary skill in the art would have been motivated to apply the recessed configuration to other aircraft enclosures, including lavatories. Patent Owner argues that a person of ordinary skill in the art “would have been discouraged from attempting to tailor Betts’ divided space design to any lavatory stall unit (or any other enclosure unit) because Betts required separate enclosures divided both functionally and spatially.” PO Resp. 29. But, Petitioner’s ground of unpatentability is not premised on whether it would have been practical or possible to convert Bett’s “divided space” (i.e., its overhead coat compartment and floor luggage space) into a lavatory. Rather, Petitioner argues that it would have been obvious to apply Bett’s recessed forward wall design to other aircraft enclosures, including a lavatory. Pet. 19 (“One of ordinary skill in the art would recognize that the teachings of the McDonnell Douglas patent [i.e., Betts] are equally applicable to the forward walls of other enclosure units, such as lavatories or galleys.”) (citing Ex. 1009 ¶¶ 65–68); cf. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the 15 features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”).” slip op. at 15

  Patent outcomesUS 8,590,838 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,590,838
• Scentair Technologies, Inc. v. Prolitec, Inc.All claims unpatentable
  PTAB · Jul 18, 2014 · IPR2013-00180 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 are unpatentable as obvious over Le Pesant and Privas.

  RulingsFinal written decision

  • BurdenMixed

    “Dr. Shedd, ScentAir has not carried its burden of proving that Le Pesant would have suggested to one with ordinary skill in the art selecting a control scheme based on the volume of the space to be treated. Le Pesant’s only discussion of volume is in the context of diffused droplet size. The reference discusses the use of a droplet size that results in a “dry fog,” and states that “[m]eans of diffusing very small droplets in high numbers like this are well suited to the volume of 16 residential rooms and meeting rooms, typically containing air volumes of between 30 and 100 cubic meters.” Ex. 1005, 10:5-10. Contrary to ScentAir’s interpretation, however, this statement does not disclose that the device of Le Pesant may be used in 30-100 cubic meter rooms. Rather, Le Pesant is stating diffusion means which result in a “dry fog” droplet size are suitable for such volumes. Nor does Le Pesant disclose that the programming of its device should be adjusted according to the volume of the room; Le Pesant merely suggests that its device is suitable for various volumes. The reference is silent as to whether adjustments to the programming of the device are necessary for the device to operate in these various volumes.5 Le Pesant, therefore, does not suggest selecting a control scheme based on volume. Nor does Dr. Garris’ testimony that it is “common sense” that concentration of diffused liquid is affected by volume (Ex. 1004 ¶ 22) provide the necessary reason to modify Le Pesant. A known relationship between concentration and volume does not provide a reason to modify the device to take advantage of that relationship, especially when at least one interpretation of Le Pesant suggests that no modification is necessary. ScentAir has not articulated a persuasive reason” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Prolitec asks that we construe control schemes as “a set of operational parameters for the appliance.” PO Resp. 6. ScentAir does not proffer a particular construction, but Prolitec notes that, in related district court litigation, ScentAir defined the term as “systematic plan of control.” Id. (citing Ex. 1015, 3). We decline to adopt either construction as the broadest reasonable interpretation of the claim language. Prolitec’s construction, “a set of operational parameters for the 8 appliance,” merely repeats language used in the claim immediately following control schemes, and therefore, adds nothing to the understanding of the term. See, e.g., Ex. 1001, 9:27-29 (“each of the control schemes specifying operational parameters for the appliance”). In addition, by focusing on the “operational parameters” aspect of the control scheme, Prolitec’s construction ignores that the control schemes are relationships between inputs and those operational parameters, which may be selected by the user according to some other criteria. This feature was repeatedly emphasized by Prolitec’s counsel at oral argument. Tr. 34 (“adjusting all of these other variables automatically according to that easy to estimate variable . . . in our view that's the whole point of the ’068 control schemes.”). ScentAir’s district court claim construction, by focusing on a “systematic plan of control,” similarly errs by focusing only on the output of the control scheme, and not also on the input. Based on the foregoing, we consider the broadest reasonable interpretation of a plurality of control schemes to be a system of correlations between particular inputs and particular outputs for controlling the diffusion means, which permits a user to select a particular correlation based on user criteria.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “Prolitec argues that this rationale fails to provide a reason to combine the references, contending that Le Pesant does not express a “desire” to treat various volumes and that Privas does not disclose volume-based control. PO Resp. 36. We disagree with the latter argument, as we have already found that Privas discloses selecting a “set point” based—at least in part—on the volume of the space to be treated. With respect to the former argument, we find that Le Pesant discloses treating rooms of varying volumes, at least ranging between 30 and 100 cubic meters. Ex. 1005, 10:8-10. As discussed above, this does not provide a reason to modify Le Pesant to include volume-based control, but we conclude that it provides sufficient reason to combine Le Pesant with Privas, which discusses volume-based control. A person of ordinary skill in the art seeking to use the liquid diffusion device of Le Pesant in rooms of varying volumes would have reason to incorporate the volume based-control of Privas’ liquid diffusion device.” slip op. at 21

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A prior art reference is considered to be analogous if it is either: 1) from the same field of endeavor, regardless of the problem addressed; or 2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “A 21 reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. The determination of whether a prior art reference is analogous is a factual one. Id. at 658. We find that Privas is analogous art, as it is from the “same field of endeavor” as the ’068 patent. Prolitec argues that Privas is directed to fumigation devices, whereas the ’068 patent is directed to atomizers. PO Resp. 30-31. Prolitec cites the testimony of Dr. Shedd, who notes that the two devices operate under different principles of diffusion. Id. (“In an atomizer like the ’068 patent device, fluid is diffused in a liquid state but in Privas it is diffused in a gaseous state.”) (citing Ex. 2001, ¶¶ 44, 82). ScentAir asserts that Privas is from the same field of endeavor as the ’068 patent, noting that the Privas fumigation device contains both an atomizer and an evaporator. Pet. Reply 10. ScentAir cites Dr. Garris’ testimony that the Privas device is “structurally and functionally akin to the subject matter of the ’068 patent—but with an additional diffusion means.” Id. (citing Ex. 1019 ¶ 35). We do not consider the additional evaporator of Privas as somehow removing Privas from the same field of endeavor as the ’068 patent. Both devices are used treat the air within a space using diffusion means that comprise an atomizer. Prolitec has not pointed us to any functional difference that would distinguish the devices in a meaningful way. Tr. 48 (“JUDGE CRUMBLEY: At least some portion of [Privas’] operation is the same as ScentAir’s. MR. BAISH: That’s true, yes.”). Indeed, the devices of Privas and the ’068 patent have 22 significant structural similarities, including the reservoir of liquid and the atomizer/venturi. These structural and functional similarities would have led one of ordinary skill in the art working in the field of atomizing devices, such as those of the ’068 patent, to consider similar devices, such as the fumigator of Privas. See In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004).” slip op. at 21

  Patent outcomesUS 7,930,068 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,930,068
• International Flavors & Fragrances Inc. v. The United States Of America, As Represented By The Secretary Of AgricultureOther
  PTAB · May 20, 2014 · IPR2013-00124 · APJ Lora M Green · IPR · Final written decision

  The Board granted cancellation of claims 1-26 and allowed substitute claims 27-44, but denied substitute claim 45 as unpatentable over Behan.

  RulingsFinal written decision

  • ScopeMotion to amend, grantedGranted

    “patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundMixed

    “In order to establish a prima facie case of obviousness based on structural similarity, the prior art must provide a reason to make the claimed compound, and there must also be “„adequate support in the prior art‟ for the 7 P.E.A. Teal et al., (Z)-11-Hexadecen-1-ol: A Behavioral Modifying Chemical Present in the Pheromone Gland of Female Heliothis Zea (Lepidoptera:Noctuidae), 116 CAN. ENTOMOLOGY 777-79 (1984). Ex. 2003. 8 Yih-Shen Hwang et al., Structure-Activity Relationship of Unsaturated Fatty Acids as Mosquito Ovipositional Repellents, 10 J. OF CHEM. ECOLOGY 145-51 (1984). Ex. 2004. change in structure.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (quoting In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). The United States Court of Appeals for the Federal Circuit noted that the test for obviousness of a compound based on structural similarity is in accordance with the legal principles enunciated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), specifically, that it is important to identify “„a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does‟ in an obviousness determination.” Takeda, 492 F.3d at 1356-57 (quoting KSR, 550 U.S. at 418). Thus, “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda, 492 F.3d at 1357.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner

    “We acknowledge that McMahon and the Zhang Declaration are evidence that the ordinary artisan would not have had a reasonable expectation that, because a compound is known to repel mosquitoes, such as Aedes aegypti, the compound would also repel ticks, such as Amblyomma variegatum. Claim 45, however, encompasses the use of isolongifolanone when R1 is a hydrogen atom and R2 is an oxygen atom, which is the same compound specifically taught by Behan. See Pet. 7-8 (showing the structure of isolongifolanone, and discussing how it is encompassed by the chemical formula set forth in claim 1). As discussed above, Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites. “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) (noting that the realization of a new benefit of an old process does not render that process patentable); Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was drawn to the same use comprising the same steps of the prior art, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”). We, therefore, conclude that the preponderance of the evidence does not support the patentability of proposed claim 45.” slip op. at 17

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,579,016

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.