- PTAB · Apr 18, 2023 · IPR2022-00123 · APJ Zhenyu Yang · IPR · Final written decision
The Board cancelled original claim 1 and denied substitute claim 2 for lack of written-description support; it did not reach the obviousness or enablement grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill is inappropriate because it “requires qualifications that exclude even the sole inventor of the ’190 Patent, Dr. Edward Neuwelt.” MTA Opp. 1. According to Petitioner, Dr. Neuwelt is “a neurosurgeon,” not a pediatric oncologist, and lacks the requisite “at least 2 years” experience in platinum-based therapies. Id. (citing Ex. 1003, 18; Ex. 1038, 98:9–17, 100:15–101, 4). We agree with Petitioner. It is well settled that inventors are typically persons skilled in the field of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner presents persuasive evidence to show that under Patent Owner’s proposed definition of the level of ordinary skill, Dr. Neuwelt, the sole inventor, would not qualify as an ordinarily skilled artisan, because he is not a pediatric oncologist, even though he is considered “one of the world leading experts on this compound [STS] and otoprotection” and “an expert in the area of [STS] as a . . . drug to use in children with medulloblastoma.” Ex. 1038, 98:9–17, 99:17–18, 101:18–102:13.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Paragraph 102 of Dr. Rassekh’s Declaration, however, does not support Patent Owner’s assertion. Instead, Dr. Rassekh testifies that [t]he stratum of previous craniospinal radiation therapy contained 8 participants: 2 of the 4 (50%) participants receiving STS had hearing loss compared to 4 of the 4 (100%) participants not receiving STS, and none of the hearing loss assessments were changed at the 1 year follow up period. (Ex. 1001 at 20: 28-32, 47-50.) Ex. 2024 ¶ 102. Dr. Rassekh offers no opinion on how many osteosarcoma patients with prior cranial irradiation and how many medulloblastoma patients with prior cranial irradiation had hearing loss.” slip op. at 20
- 112 supportMotion to amend, deniedDenied
“In sum, we find the disclosures of the ’243 application that Patent Owner relies on do not provide sufficient written-description support for the ototoxicity efficacy limitation.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“F. Petitioner’s Asserted Unpatentability Grounds In light of our determination above that Patent Owner has not shown sufficient written-description support for proposed substitute claim 2 in the ’243 application, we do not reach the grounds of unpatentability set forth in Petitioner’s Opposition. See Revised MTA Opp. 17–25 (alleging non-enablement and obviousness).” slip op. at 26
§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,596,190 - PTAB · Oct 1, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Final written decision
The Board canceled claims 11, 74, and 81 and denied substitute claims 154–156 because they broadened claim scope, lacked written-description support, and were not shown patentable over Mostov.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“A petition for inter partes review must identify “all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Generally, a party does not become a “real party-in-interest” merely through association with another party in an unrelated endeavor. Id. A party also is not considered a real party in interest in an inter partes review solely because it is a joint defendant with a petitioner in a patent infringement suit or is part of a joint defense group with a petitioner in the suit. Id. Whether a party who is not a named participant in a given proceeding is a “real party-in-interest” to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term “real party-in-interest” to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. Here, even assuming this contention is timely, Patent Owner has failed to provide any evidence, besides the mere fact that the other parties are co-defendants in a lawsuit or alleged infringers, to support the contention that Petitioner has failed to name all of the real parties in interest. That one fact, without any further proof of control or involvement by these parties in this proceeding, is insufficient to establish that Petitioner has failed to name” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“ii. Petitioner’s Expert Patent Owner asks that we “dismiss [Petitioner’s] Expert Declaration and disqualify [Petitioner’s Declarant] for making and using a false writing.” PO Resp. 9. Patent Owner contends that Petitioner’s Declarant falsely claimed that certain patent applications were patents by listing them under the heading “Patents” in his Resume. Id. at 8–9. A Patent Owner Response is not the proper vehicle to seek to exclude testimony. See 37 C.F.R. § 42.64(c). Moreover, even if it were the proper vehicle, we are not persuaded that the alleged “falsehood” that Patent Owner identified—listing patent applications, which are clearly identified as such, under a heading titled “Patents”—is, in any way, misleading. Thus, we decline Patent Owner’s request that we dismiss Dr. Vishwanath’s testimony.3 C. Motion to Amend As discussed above, in the Motion to Amend, Patent Owner requests” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“i. Level of Ordinary Skill in the Art Neither party puts forward a succinct definition of the level of ordinary skill in the art. Petitioner’s declarant, however, has put forward a detailed discussion of various references dated before April 20064 (the date Patent Owner now alleges is the priority date) related to subject matter of the ’990 patent. See Ex. 1005 ¶¶ 20–74, 94–99. We have reviewed that discussion and the references cited in those paragraphs. We have found it accurately reflects the teachings of the references. Moreover, we agree with Petitioner’s declarant that the references are analogous to the claimed invention, and, as such, represent the level of skill in the relevant art at the time of the invention. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board did not err in concluding that the level of ordinary skill was best determined by the references of record); In re Oelrich, 579 F.2d 86, 91(CCPA 1978) (“[T]he PTO usually must evaluate . . . the level of ordinary skill solely on the cold words of the literature.”); see 4 We accept this date as the priority date only for the sake of argument. also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.”’).” slip op. at 13
- ScopeMotion to amend, deniedDenied
“We agree with Petitioner and find, based on the Patent Owner’s own arguments, that these terms improperly broaden the scope of the claims. As Patent Owner explains, the added language is broad enough to include the removed items, and is intended to reflect the entire genus of “monitoring equipment” and “communications devices” that “are capable of communication and capable of receiving signals.” Mot. to Amend 4, 5. Thus, the claim has been broadened to not only include the listed species that have been removed, but anything falling within the claimed genus. Accordingly, we find that this amendment impermissibly broadens the claim. As for the second change in the claim language, we find that Patent Owner has failed to show why removal of the entire passage “wherein, the communication device receives a signal via any of one or more products listed in any of the plurality of product grouping categories,” would not impermissibly broaden the scope of claim 154. The deletion of this limitation necessarily broadens the claim in that limitation’s aspect. See In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997) (“For example, a reissue claim that deletes a limitation or element from the patent claims is broader in that limitation’s aspect.”). Given that Patent Owner has entirely deleted this limitation and Patent Owner bears the burden of showing entitlement to the amendment, it was incumbent on Patent Owner to explain why removing this entire passage from claim 154 would not broaden the scope of the claim. See In re Bennett, 766 F.2d 524, 526 (Fed. Cir. 1985) (en banc) (“[A] claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects.”).” slip op. at 17
§ 102 anticipation
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.