- Illumina, Inc. v. Ravgen, Inc.InstitutedPTAB · Jan 26, 2022 · IPR2021-01271 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1, 3–9, 21, 22, and 24–30 after finding a reasonable likelihood of unpatentability on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–9, 21, 22, and 24–30 of the ’720 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“For the reasons above, we find that Factor 1 weighs against denial of Illumina’s Petition.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Overall, we consider Fintiv factor 6 to be neutral. 7. Balancing the Fintiv Factors We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. In our view, the facts weighing against exercising discretion to deny institution collectively outweigh those favoring denial and concerns about potential inefficiency or integrity of the system. For these reasons, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes the following POSA definition: [A POSA] would have had “a M.D. and/or Ph.D. in a related area such as genetics, biochemistry, molecular biology, cell biology, 36 or microbiology and at least one to two years of work in one of those related areas, [or] a Bachelor’s degree in one of the foregoing areas and at least three to four years of work in that area.” Pet. 12 (quoting Ex. 1020 ¶ 15). Petitioner additionally asserts that “[b]ased on this asserted level of skill, the POSA . . . would have had academic or industry experience collecting and analyzing cell-free nucleic acid, such as DNA, from blood samples.” Id. Patent Owner proposes substantially the same definition. Prelim. Resp. 11 (citing Ex. 2001 ¶ 32). To the extent there are minor differences in the proposals, Patent Owner’s declarant testifies that such differences are not material and his “opinions . . . would not change if Dr. Levy’s [i.e., Petitioner’s] proposed level of ordinary skill were adopted.” Ex. 2001 ¶ 34. The parties are in substantial agreement on the POSA level, and we adopt Petitioner’s proposal for this Decision. Our determinations below would not change if we adopted Patent Owner’s minimally different level.13” slip op. at 36
Claim construction§ 102 anticipationDiscretionary denialcites GrahamPatents in suitUS 7,727,720 - Illumina, Inc. v. Ravgen, Inc.InstitutedPTAB · Jan 26, 2022 · IPR2021-01272 · APJ Timothy G Majors · IPR · Institution
The Board instituted review of claims 55–63, 66–69, 80–91, 94–96, 126–130, 132, and 133 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We do not agree with Patent Owner that Factor 1 weighs in favor of discretionary denial here. To the extent there is any relationship between Illumina and the earlier challengers, we find that such relationship is not a “significant” one, such as contemplated by Valve. First, although Illumina, Natera, Quest, and Labcorp are each defendants accused of infringing the ’277 patent, unlike Valve, they are not co-defendants in the same case. Valve at 9–10. Nor were Illumina and the other parties sued at the same time—Patent Owner instead sued those parties in seriatim district court complaints filed over approximately six months starting in mid-2020. Exs. 2086, 2087, 2088, and 2089. Thus, the staggered nature of the alleged follow-on challenges by those parties can be reasonably explained by Patent Owner’s elected timetable for suing the defendants.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Balancing the Fintiv Factors Altogether, considering and balancing the Fintiv factors holistically, we decline to invoke our authority to deny the Petition on a discretionary basis under § 314(a).” slip op. at 38
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION On this preliminary record, Petitioner has established a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable based on grounds advanced in the Petition. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is granted, and we institute inter partes review of claims 55–63, 66–69, 80–91, 94–96, 126–130, 132, and 133 based on the grounds asserted in this Petition;” slip op. at 66
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Based on the current record, we find that Petitioner has met its institution burden in establishing that Landes is entitled to claim the priority benefit of the Landes Provisional and, thus, is prior art to the ’277 patent. On the matter of written description support under § 112, the claims of Landes (claims 1–4) appear unchanged in the Landes Provisional (claims 1– 4). Compare Ex. 1003, 22–23, with Ex. 1006, 21–22. Petitioner also provides citations to the specification of the Landes Provisional that, while broad, correspond to several disclosed alternative embodiments, and the various working examples (Materials and Methods and Experimental Examples 1–5) that describe and explain how to carry out the methods claimed. Pet. 17–19 (citing, e.g., Ex. 1006, 8:7–9:27, and 10:1–20:12). Patent Owner cites precedents for the proposition that, in some circumstances, the presence of the same claim language in an original disclosure may not be enough to satisfy the description requirement. Prelim. 49 Resp. 23–24. But Patent Owner provides neither specific argument nor evidence that this is one of those circumstances. If Patent Owner believes there is some particular deficiency with respect to Landes’s claims and the written description requirement, Patent Owner leaves it unsaid.” slip op. at 49
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,332,277 - PTAB · Jan 11, 2022 · IPR2021-01201 · APJ David Cotta · IPR · Institution
Instituted review of claims 1–3, 5–8, 10–18, and 20 on all three proposed grounds because the petition showed a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). In determining if non-institution under § 325(d) is proper, we follow the two-part framework set forth in Advanced Bionics, LLC v. MED- EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential, designated March 24, 2020). Specifically, the Board must determine: “(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 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.” Id. at 8.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Id. at 6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“CTPG”), 584). We address the Fintiv factors below.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine Petitioner has demonstrated there is a reasonable likelihood it would prevail in establishing the unpatentability of claims 1–3, 5–8, 10–18, and 20 as having been obvious over the teachings of ChloraPrep PAR alone or in combination with Degala. Accordingly, based on the Supreme Court’s holding that a decision under § 314 may not institute review on fewer than all claims challenged in the petition, we institute on all three proposed challenges. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Additionally, we decline to exercise our discretion under 35 U.S.C. § 325(d) or § 314 to deny the proposed challenges to patentability. Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, the Board has not made a final determination as to the patentability of any challenged claim. Our final decision will be based on the record as fully developed during trial.” slip op. at 45
- Skill levelSkill level board ownDecided for patent owner
“encountered in the art, the art’s solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have possessed “at least an undergraduate degree in the pharmaceutical sciences, pharmacy, biochemistry, microbiology, or a related field, and a Masters in a similar field and at least 6 years industry experience or a Ph.D in a similar field and at least 4 years industry experience in the field developing sterilization processes, sterile medical devices and/or formulations or tests for evaluating sterility.” Pet. 15. Patent Owner states that it “does not believe the particular definition of a POSA is determinative at this stage because the Petition can be denied under Petitioner’s own proposed skill level.” Prelim. Resp. 16. Patent Owner nonetheless challenges Petitioner’s proposal, stating:” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,398,642 - PTAB · Jan 11, 2022 · IPR2021-01202 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–3, 5–8, and 10–19 for all three grounds, finding a reasonable likelihood of obviousness over ChloraPrep PAR alone or with Degala.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We turn next to the second part of the Advanced Bionics framework and consider Becton factors (c), (e), and (f) in determining “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 10. As explained below in our patentability analysis, Petitioner has demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims would have been obvious over the cited art. In this regard, Petitioner has shown the materiality of Degala (as applied in combination with ChloraPrep PAR) to the patentability of the challenged claims. See infra §§ III. We find that the Examiner erred in overlooking the teachings of Degala, including specifically Degala’s express description of a “method for sterilizing an antiseptic solution.” Ex. 1007 ¶ 7. Furthermore, Petitioner has presented additional evidence and facts that were not before the Examiner, including support for why an ordinarily skilled artisan would have combined the teachings of Degala and ChloraPrep PAR. See Pet. 61– 63; Ex. 1003 ¶¶ 163–166. Thus, Becton factors (c), (e), and (f) weigh heavily in favor of finding error under the second part of the Advanced Bionics framework. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Based on the facts of the case as discussed below, we find that the merits of the case support institution. Our determination is preliminary, however, and we are not prepared on this preliminary record to characterize the merits of Petitioner’s challenge as especially “strong.” Accordingly, we find this factor to be neutral. 7. Summary We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Weighing the factors together, we determine that they weigh against exercising our discretion not to institute inter partes review. For the above reasons, we do not exercise our discretion under 35 U.S.C. § 314(a) to deny institution of a trial proceeding.” slip op. at 20
- Skill levelSkill level board ownOther
“Response, it “does not believe the particular definition of a POSA is determinative at this stage because the Petition can be denied under Petitioner’s own proposed skill level.” Prelim. Resp. 16. Patent Owner nonetheless challenges Petitioner’s proposal, stating: Petitioner’s proposal regarding the level of ordinary skill for a POSA is disconnected from the disclosure of the 067 Patent. (Pet. 15.) As a preliminary matter, even though the 067 Patent relates to sterilized chlorhexidine products, Petitioner’s proposed definition requires no experience with antiseptics or chlorhexidine. Thus, under Petitioner’s definition, the POSA who is generally aware of “sterilization processes, sterile medical devices and/or formulations or tests for evaluating sterility” may be unfamiliar with the unique challenges of sterilizing antiseptics such as CHG or creating antiseptic products and articles that are able to contain and deliver sterilized CHG compositions. Additionally, while not requiring knowledge in the relevant field (experience with sterilization processes for medical products and their components, as well as familiarity with antiseptics such as chlorhexidine), Petitioner artificially inflates the educational requirements without explanation to require a Master’s or PhD. Id. at 16–17 (emphasis and footnote omitted). At this stage of the proceeding, we determine that a person of ordinary skill in the art at the time of the invention would have possessed at least an undergraduate degree in the pharmaceutical sciences, pharmacy, biochemistry, microbiology, or a related field, with experience with sterilization processes for medical products and their components, as well as familiarity with antiseptics such as chlorhexidine. Such level of skill in the art is consistent with the ’067 patent and the asserted prior art of record.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionOther
“Moreover, Patent Owner’s proposed construction is consistent with the Specification, which discloses that “the terms the chlorhexidine article, or components and compositions thereof, may be referred to as the ‘sterilized’ component or composition upon being exposed to suitable processing where such sterility can be validated.” Ex. 1001, 3:58–65. Accordingly, on this preliminary record, we construe “sterilized” to mean that the “component or composition has been subjected to a suitable sterilization process such that sterility can be validated.” Additionally, based on our review of the Petition and Preliminary Response, we do not believe that any other claim terms require express construction at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,688,067 - Foundation Medicine, Inc. v. Caris Mpi, Inc.All claims unpatentablePTAB · May 28, 2020 · IPR2019-00170 · APJ Kristi L R Sawert · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over Lu and Illumina; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our consideration of the full record, we maintain our determination that a person with a Ph.D. in genetics, molecular biology, bioinformatics, or a related field, and at least five years of research experience in an academic or industry setting, including at least two to three years of research experience in the field of cancer genomics, would satisfy the definition of an ordinarily skilled artisan in this proceeding. We further instead of, or in addition to, a Ph.D., that artisan need not be a practicing oncologist with experience treating cancer patients. In determining the level of ordinary skill, various factors may be considered, including “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). These factors are “merely a guide,” and the weight or significance ascribed to each depends on the particular case. Id. In this particular case, we find that the factors, overall, support Petitioner’s definition of an ordinarily skilled artisan.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006) (“[C]laim construction must begin with the words of the claims themselves.”). As explained above, the parties dispute whether claim 1 requires that the system is a “cancer-lineage independent system”—that is, does not encompass the allegedly “cancer-lineage dependent” systems of the prior art. For the reasons provided below, we determine that the broadest reasonable interpretation of claim 1 does not require the system to be “cancer-lineage independent.” We see nothing explicit in the plain language of claim 1 that requires the claimed system to be a “cancer-lineage independent” system. See Ex. 1001, 17:2–33. The written description of the ’193 patent uses phrases such as “independent of disease lineage diagnosis,” id. at 2:34–35, 13:17– 18, and “not single disease restricted,” id. at 2:47–49, 13:18–19, to convey the concept of identifying a therapeutic agent independently of cancer lineage. But claim 1 fails to explicitly recite such language relating to cancer lineage. Instead, the plain words of the claim are broadly addressed to a system that determines the molecular profile for an individual with a based on that individual’s molecular profile. See Ex. 1001, 17:2–33.” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“modify Lu’s system with Illumina’s DASL assay. Inst. Dec. 17–18. Upon review of the complete record, we affirm our initial determination. We find that the preponderance of record evidence supports Petitioner’s argument that an ordinarily skilled artisan would have regarded RT-PCR assays as old technology, readily replaced by the more advanced DASL assay. Pet. 52– 53; Ex. 1002 ¶ 118–119. We also rely on and credit Dr. Spellman’s testimony that the DASL assay was “capable of investigating a substantially larger number of molecular targets simultaneously than RT-PCR.” Ex. 1002 ¶ 119; see also Ex. 1047, 2386; Ex. 1053, 586; Pet. 52–53. In view of this evidence, we find that a preponderance of the evidence supports that an ordinary artisan would have been motivated to modify Lu’s system with Illumina’s DASL assay. We note that, during oral hearing, counsel for Patent Owner conceded that an ordinarily skilled artisan would have been motivated to use Illumina’s DASL assay in Lu’s system: JUDGE: . . . [W]hy wouldn’t somebody skilled in the art just replace the chip, that Lu talks about, with a DASL assay chip? . . . MR. SINGER: . . . I think they have the better of the argument, there, to be perfectly blunt, that people would go to something that was a commercial product and use it. So, I will acknowledge that . . . . Tr. 54:15–55:8.” slip op. at 46
Patent outcomesUS 9,372,193 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,372,193 - Neptune Generics, LLC v. Corcept Therapeutics, Inc.No claims unpatentablePTAB · Feb 10, 2020 · IPR2018-01494 · APJ David Cotta · IPR · Final written decision
Claims 1–7 were not shown unpatentable under any asserted § 103 ground because the evidence did not establish the claimed serum-level testing and dose adjustment would have been obvious.
RulingsFinal written decision- BurdenDecided for patent owner
“In an inter partes review . . . , the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016). Petitioner has not met this burden here because the Petition does not clearly articulate why an optimization rationale would have led the skilled artisan to “adjust[] the daily dose of the patient to achieve mifepristone blood levels greater than 1300 ng/mL.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that the person of ordinary skill in the art (“POSA”) would have: either a Pharm. D. or a Ph.D. in organic chemistry, pharmacy, pharmacology, or a related discipline; or a Bachelor’s or Master’s degree in organic chemistry or a related field with at least four years of experience relating to the study of pharmacokinetics or dosing of drugs, their detection and quantification, or their metabolism. Pet. 12. Patent Owner does not challenge Petitioner’s definition. Accordingly, we accept Petitioner’s definition, which is consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although the parties propose constructions for several claim terms (Pet. 12–15; PO Resp. 17–18), we determine that no explicit construction of any claim term is necessary to resolve this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); 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’”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Finally, Petitioner asserts that it would have been obvious that “the daily dosing of the patient could be adjusted to optimize mifepristone blood level, whatever level that might be.” Pet. 30. This argument is not persuasive for several reasons. First, Petitioner must do more than show that the ordinary artisan could have done what was claimed. Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 15
Patent outcomesUS 8,921,348 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,921,348 - Rust-Oleum Corporation / RPM International, Inc.Rehearing grantedPTAB · Jul 23, 2019 · IPR2017-02158 · APJ Christopher G Paulraj · IPR · Rehearing
The Board accepted Patent Owners’ rehearing request as timely but denied rehearing, finding no overlooked or misapprehended issue requiring modification of the final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“layer is being removed (i.e., Example 1). Id. at 2–3. We are not persuaded that we misapprehended or overlooked the evidence of record regarding whether Baumgärtel requires the use of pigments for rejuvenation. As we noted in our Final Written Decision, Example 1 of Baumgärtel does not mention the use of any pigments yet discusses the removal of the yellowed/damaged surface layer of white siding using a composition containing 99% dichloromethane. Paper 29, 42. Although the amendment in the Proposed Substitute Claims required both color and luster to be restored, it did not otherwise modify our construction of “rejuvenating,” which encompasses either “remov[ing] or transform[ing] the chalky surface that develops on vinyl siding that is exposed to sunlight and other environmental conditions.” Id. at 15 (emphasis added). The teaching in Baumgärtel’s Example 1 of removing the surface layer using a 99% dichloromethane solution satisfies our construction of “rejuvenating.” We, therefore, did not misapprehend or overlook Patent Owners’ evidence and arguments in determining that Example 1 of Baumgärtel anticipates the Proposed Substitute Claims.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 37 C.F.R. § 42.5(c)(3), “[a] late action will be excused on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3) (emphasis added). Patent Owners have presented evidence tending to show that their counsel believed that the Request for Rehearing was timely filed on May 8, 2019. See Exs. 2011–2013. It does not appear, however, that they attached any document with their filing before clicking the submit button on PTAB E2E. In this regard, we note that the email generated by the PTAB E2E system and sent to counsel of record on May 8, 2019 clearly stated “THERE WERE NO DOCUMENTS SUBMITTED WITH THIS REQUEST.” Ex. 3001. Patent Owners have not explained why they did not take immediate action after receiving that email to determine whether the Request for Rehearing was actually filed.1 Indeed, Patent Owners remained” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDecided for petitioner
“http://www.uspto.gov/ip/boards/bpai/prps.jsp#heading-5 (emphasis added). 2 We are also not persuaded that the filing of a Notice of Appeal (Paper 33) by Patent Owners divested the Board of jurisdiction to decide the merits of the Request for Rehearing. The Federal Circuit’s decision in In re Graves, 69 F.3d 1147 (Fed. Cir. 1995), is instructive on this point. There, the applicant had filed a notice of appeal to the Federal Circuit after the Board entered its initial decision but before the Board’s decision on a request for reconsideration. Id. at 1150. Because the notice of appeal was filed too late if based on the initial decision, the court determined that the Board’s initial” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot reached
“misapprehended evidence and arguments showing that Dr. Storey’s experiment was not based on Example 1 of Baumgärtel, and thus insufficient for Petitioners to meet their burden of showing inherent anticipation. Ex. 2010, 4–6. But, as set forth in our Final Written Decision, we fully considered the evidence of record and determined that the experiments conducted by Dr. Storey further support a finding of inherent anticipation by Baumgärtel. Paper 29, 43 (citing Ex. 1022 ¶¶ 12–36). We recognized that the 99.5% pure dichloromethane used by Dr. Storey for his experiments did not include the 1% of additional ingredients identified in Example 1, but took into account Dr. Storey’s unrebutted testimony that those additional ingredients in such small proportions would not have materially affected the rejuvenation characteristics of dichloromethane. Id. at 43–44 (citing Ex. 1005 ¶¶ 81–82). As we noted, Patent Owners did not cross-examine Dr. Storey as to his declaration testimony in this proceeding; nor did Patent Owners’ expert Dr. Grulke address these points in his own declaration. Id. at 44. Thus, we are not persuaded that we misapprehended or overlooked the cited testimony of Dr. Storey regarding inherent anticipation.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,669,991 - Trans Ova Genetics, LC v. Xy, LLCNo claims unpatentablePTAB · Jun 26, 2019 · IPR2018-00250 · APJ David Cotta · IPR · Final written decision
Claims 1–16 were not proven unpatentable because Petitioner failed to establish that Lu, relied on in every asserted obviousness ground, was prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable
“Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); In re Katz, 687 F.2d 450, 454 (Fed. Cir. 1982). “The question of whether a reference is a work of others for the purposes of § 102(a) is, like that of inventorship, a question of law based on underlying facts.” Allergan, 754 F.3d at 969 (citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). In determining whether a reference is the work of the named inventor(s), the inquiry focuses on whether the relevant content of the reference – which includes “the design, trial, and analysis of results” – was solely the work of the inventor(s). See Allergan, 754 F.3d at 969; Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003) (“What is significant is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.”).” slip op. at 14
- Expert testimonyPatent owner expert creditedOther
“9 We acknowledge that Mr. Miles, as a former board member of XY, as well as XY’s long-time patent counsel and the filer of the ’769 priority provisional applications, may have some interest in the outcome of this IPR and that Mr. Miles is being compensated by XY for time spent relating to his testimony. Ex. 2003 ¶¶ 4–7; Ex. 1033, 21:7–14, 158:8–22. However, we note that Mr. Miles’ testimony was under oath and subject to cross-examination. We find Mr. Miles’ testimony to be credible as to the facts for which it is cited herein.” slip op. at 10
- ExcludeMotion to exclude, deniedMixed
“Exclude. Paragraph 12 of the Miles Declaration reads as follows: “Also[,] in the late 1990s, XY had a collaborative research agreement with a bull stud called Cogent in the United Kingdom.” Ex. 2003 ¶ 12.11 This statement is not itself hearsay because it was asserted by Mr. Miles while testifying in this proceeding, i.e., “at the current trial.” See Fed. R. Evid. 801(c). Petitioner contends that paragraph 12 is inadmissible because it is based, at least in part, on statements contained in Exhibits 2001 and 2002. We are not persuaded by this argument because paragraph 12 does not rely on Exhibits 2001 and 2002. See Ex. 2003 ¶ 12; Ex. 1033, 59:22–62:18 (Mr. Miles’ testimony on basis and meaning of paragraph 12 of his declaration). Petitioner also argues that paragraph 12 should be excluded as improper opinion testimony because it is based on Exhibits 2001 and 2002, to which, according to Petitioner, Mr. Miles is not competent to testify. Mot. 13–14. We are not persuaded by Petitioner’s argument because, as discussed, paragraph 12 does not rely on Exhibits 2001 and 2002.” slip op. at 22
Patent outcomesUS 8,652,769 not shown unpatentable§ 102 anticipationPatents in suitUS 8,652,769
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.