• Coalition For Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc.No claims unpatentable
  PTAB · Mar 9, 2017 · IPR2015-01858 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–40 of the ’437 patent were not shown unpatentable under § 103 because S-1 was not prior art under § 102(a) or (b).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “1. Level of Skill Petitioner’s declarants, Drs. Pleasure and Polli, testify that a person of ordinary skill in connection with the ’703 patent would have had an M.D. or Ph.D. in neuroscience or a related field with an understanding of pharmacokinetics and at least some experience in providing drug therapy to MS patients. Ex. 1023 ¶ 16, Ex. 1044 ¶ 13. Additionally, Drs. Pleasure and Polli testify that a person of ordinary skill in the art would have had access to a person having an advanced degree in pharmaceutics or pharmaceutical formulation, specifically oral sustained release formulations, or at least five years of experience in formulating sustained oral release drug products and may work as part of a multi-disciplinary team. Ex. 1023 ¶¶ 16–17; Ex. 1044 ¶¶ 13–14. Patent Owner does not dispute this recitation of the level of ordinary skill in the art. See Ex. 2042 ¶ 68 n.5. We adopt the level of ordinary skill in the art identified by Drs. Pleasure and Polli as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating level of ordinary skill in the art may be reflected by the prior art of record); In re GPAC Inc.,” slip op. at 14

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

    “Petitioner asserts constructions for the following claim terms, “less than 15 milligrams,” “release profile,” “matrix,” “improving walking,” and “initiating treatment.” Pet. 18–19. Patent Owner contends that Petitioner has failed to provide an explanation as to why the identified claim terms require construction and why the Board should depart from the plain and ordinary meaning of the terms. Prelim. Resp. 17, n.4. In the Institution Decision, we agreed with Patent Owner and determined that it was unnecessary to construe explicitly the claim terms for purposes of the Institution Decision. See Dec. Instit. 6 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We also determine here that we need not construe expressly any claim term in order to issue a Final Written Decision regarding the patentability of the challenged claims.” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “We agree with Patent Owner that the Provisional provides adequate written description support for the challenged claims of the ’703 patent. We agree with Drs. Lublin and Peck and credit their testimony that one of skill in art reading the Study Design schematic for Example 11 would have understood that a patient in the 10 mg b.i.d. arm of the study would have received 10 mg b.i.d. throughout the two-week upward titration period. As 10 mg b.i.d. is the lowest dose except for placebo, we find that it necessarily 30 follows that those patients in the 10 mg b.i.d. arm of the study do not need upward titration to the treatment dose because they start and finish at the lower 10 mg dose.” slip op. at 30

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Although the burden of persuasion for unpatentability never shifts from Petitioner during the trial, the burden of production may shift. See Dynamic Drinkware, 800 F.2d at 1379. Petitioner adequately met its burden of production by presenting S-1 as prior art that on its face lists authors that differ from the inventors of the patents at issue. See Ex. 1003, 92. Patent Owner has responded with ample and persuasive evidence, however, that Drs. Blight and Cohen are the sole source of the disclosure of S-1. Thus, Patent Owner satisfies any burden of production to refute Petitioner’s case that S-1 is prior art under 35 U.S.C. § 102(a). See supra. Petitioner’s response to Patent Owner’s evidence does not persuade us that the portions of S-1 upon which they rely are not solely attributable to Drs. Blight and Cohen. Specifically, Petitioner offers evidence from the S-1 of a statement that the MS-F202 clinical trial was designed “after extensive consultation with a panel of expert MS neurologists and with the FDA,” arguing that statement indicates that Drs. Blight and Cohen may not be the sole authors 41 of the protocol for this clinical trial. Reply 2. Petitioner further argues that Drs. Blight and Cohen’s deposition testimony supports its contention that Drs. Blight and Cohen may not be the sole authors of the protocol for this clinical trial because they could not recall the details of that consultation. Id. at 3 (citing Ex. 1064, 64:18–65:14; Ex. 1063, 76:20–77:20, 80:9–81:14, 110:13–111:2). Petitioner also takes issue with another statement in S-1 indicating that in early 2002, Drs. Blight and Cohen drafted descriptions of the MS-F201 and MS-F202, although version 1.0 of the MS-F202 protocol is dated October 2002. Id. at 2 (citing Paper 28, 16; Ex. 2050, 6). Finally, Petitioner points to publications discussing MS-F201 and MS-F202 where Drs. Blight and Cohen are not consistently named as authors and other authors, such as Drs. Goodman and Katz, are listed. Id. at 3–4. We find that Petitioner’s evidence that allegedly casts doubt on the authorship of the relevant portions of S-1 is not sufficient to overcome the ample, unequivocal evidence presented by Patent Owner that supports our finding that the relevant portions of S-1 are the original work of Drs. Blight and Cohen alone. See In re Katz, 687 F.2d at 455. Both Drs. Cohen and Blight state that they alone are the inventors and sole originators of the work in S-1 upon which Petitioner relies. See Exs. 2044, 2045. Five other declarants, intimately involved in the development of S-1, two of which now work for entities other than Acorda, substantiate this testimony. See Exs. 2046–2048, 2052, 2056. Relying on statements that may, on their face,” slip op. at 41

  Patent outcomesUS 8,354,437 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,354,437
• Coalition For Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc.No claims unpatentable
  PTAB · Mar 9, 2017 · IPR2015-01857 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–8 of the ’685 patent were not shown unpatentable because S-1 was not prior art, alone or with Hayes or Juarez.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “filing date of the Provisional, the Provisional must provide written description support for those claims. See 35 U.S.C. § 120. To satisfy the written description requirement of 35 U.S.C. § 112, first paragraph, and provide support for the challenged claims of the ’703 patent under 35 U.S.C. § 120, the Provisional must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See In re Wertheim, 541 F.2d 257, 261, 262 (CCPA 1976); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563– 64 (Fed. Cir. 1991). The primary consideration in determining whether appropriate written description support exists “is factual and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure.” Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 996 (Fed. Cir. 2000).” slip op. at 27

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “Because the Provisional provides written description support for the challenged claims, S-1 potentially qualifies as prior art only under 35 U.S.C. § 102(a), but not § 102(b), because the S-1 publication date of September 26, 2003 is less than one year before the filing date of the Provisional of April 9, 2004. As discussed in more detail below, however, Patent Owner has provided evidence that S-1 is not prior art to the claims of the ’703 patent under § 102(a) either because the pertinent portions of the S-1 are the original work of inventors Drs. Blight and Cohen. See 35 U.S.C. § 102(a); Katz, 687 F.2d at 454 (stating “one’s own work is not prior art under sec. 102(a) even though it has been disclosed to the public in a manner or form which otherwise would fall under [sec.] 102(a)”).” slip op. at 37

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “We find that Petitioner’s evidence that allegedly casts doubt on the authorship of the relevant portions of S-1 is not sufficient to overcome the ample, unequivocal evidence presented by Patent Owner that supports our finding that the relevant portions of S-1 are the original work of Drs. Blight and Cohen alone. See In re Katz, 687 F.2d at 455. Both Drs. Cohen and Blight state that they alone are the inventors and sole originators of the work in S-1 upon which Petitioner relies. See Exs. 2044, 2045. Five other declarants, intimately involved in the development of S-1, two of which now work for entities other than Acorda, substantiate this testimony. See Exs. 2046–2048, 2052, 2056. Relying on statements that may, on their face, 42 indicate that others may have been involved without any evidence that others were, in fact, originators of the work in question or inventors is simply not enough to carry Petitioner’s burden to show that the S-1 is prior art under 35 U.S.C. § 102(a). For the reasons discussed above, we determine that S-1 does not qualify as prior art to the claims of the ’703 patent under 35 U.S.C. § 102(a) or (b). Thus, all of Petitioner’s challenges to the patentability of the claims of the ’703 patent, which depend on S-1 alone or in combination with Hayes or Juarez, fail. Petitioner, therefore, has not carried its burden to prove unpatentability of claims 1–52 of the ’703 patent by a preponderance of the evidence.9” slip op. at 42

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “For the reasons discussed above, we determine that S-1 does not qualify as prior art to the claims of the ’703 patent under 35 U.S.C. § 102(a) or (b). Thus, all of Petitioner’s challenges to the patentability of the claims of the ’703 patent, which depend on S-1 alone or in combination with Hayes or Juarez, fail. Petitioner, therefore, has not carried its burden to prove unpatentability of claims 1–52 of the ’703 patent by a preponderance of the evidence.9 D. IPR2015-01853; IPR2015-01857; and IPR2015-01858 Petitioner’s patentability challenges to the claims of U.S. Patent No. 8,354,437 B2 (“the ’437 patent”), U.S. Patent No. 8,007,826 B2 (“the ’826 patent”), and U.S. Patent No. 8,354,437 B2 (“the ’437 patent”), at issue in IPR2015-01853, IPR2015-01857, and IPR2015-01858, respectively, essentially raise the same issues presented in the patentability challenge to the claims of the ’703 patent in IPR2015-01850. Therefore, we chose to 9 Because we find that S-1 is not prior art under 35 U.S.C. § 102(a), we need not reach whether S-1 is a printed publication.” slip op. at 43

  Patent outcomesUS 8,663,685 not shown unpatentable
  § 102 anticipation§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,663,685
• Dr. Reddy’S Laboratories, Ltd. / Dr. Reddy’S Laboratory, Inc. v. Helsinn Healthcare S.A.Institution denied
  PTAB · Aug 17, 2016 · PGR2016-00008 · APJ Toni R Scheiner · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–19 lacked written-description support or violated the AIA on-sale bar.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard is set forth in § 324(a), which provides that a post-grant review shall not be instituted unless “the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate that it is more likely than” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “The written description requirement is satisfied when the specification “set[s] forth enough detail to allow a person of ordinary skill in the art to understand what is claimed and to recognize that the inventor invented what 7 Patent Owner additionally provides Appendix A to the Preliminary Response. Appendix A purportedly maps the requirements of claims 1–19 to the specification. 11 is claimed.” University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 928 (Fed. Cir. 2004). Here, it is undisputed that the specification describes formulations comprising the same ingredients, in the same amounts, concentrations, and combinations required by the challenged claims. Given this disclosure, one of ordinary skill in the art could hardly fail to recognize a description of the claimed formulations in the specification, whether or not the claims recite that the formulations are stable.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)Not shown unpatentableNot shown unpatentable

    “A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention . . . . As an AIA first-inventor-to-file patent, the ’942 patent is subject to AIA § 102(a)(1). Thus, the dispositive issue in this case is whether § 102(a)(1) requires a public sale or offer for sale of the claimed invention to trigger the on-sale bar.” slip op. at 18

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,173,942
• Nintendo Of America Inc. / Nintendo Co., Ltd. v. Ilife TechnologiesAll claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00106 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1–3, 21, and 22 are unpatentable: claims 2–3 as obvious over Yasushi and claims 1–3, 21, and 22 as obvious over Unuma.

  RulingsFinal written decision

  • Skill levelOther
  • Obviousness (§103) › Analogous artNot reached
  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed

    “[of Figure 1] also senses along a third axis.” Pet. Reply 5. We do not find this argument persuasive for the reasons discussed above in relation to claim construction. In view of how we have construed the claims at issue, Patent Owner does not need to show written description support in its priority documents for a system that measures acceleration along all three axes, but rather must show support for a sensor that senses accelerative phenomena with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined. As discussed above, in certain embodiments, such sensing can be accomplished by measuring acceleration along two axes. Petitioner also argues that “a third sensor would need to be added to a two axis accelerometer in order to sense relative to a 3D frame of reference.” Pet. Reply 5 (citing Ex. 1010, 9:25–10:22; 26:20–27:8). Although Dr. Sturges indicates that he “would have had to add another accelerometer orthogonal to the other two” in order “to establish a three-dimensional coordinate system” (Ex. 1010, 10:18–22), we do not find this testimony persuasive to support that a third sensor would be needed in order to sense relative to a three dimensional frame of reference. This portion of testimony relates to how three accelerometers can establish a three-dimensional coordinate system, not whether acceleration measurements in two dimensions provides information regarding a body relative to a 3D frame of reference. See id. at 9:25–10:22. As discussed above, the ’939 patent describes a system that specifically contemplates a fall detection application for a body, which contemplates the up/down (z axis), i.e., measures acceleration along two axes to obtain information about (sense acceleration phenomena of) a body relative to a 3D frame of reference. Ex. 1001, 8:21– 27. As to Dr. Sturges’ further testimony that a dual-axis accelerometer would not establish a three-dimensional coordinate system (Ex. 1010, 27:4– 8), we do not find this testimony persuasive to support a finding that a third sensor is needed in order to sense relative to a three dimensional frame of reference. A dual axis accelerometer alone, without additional information regarding the system/environment in which it will be operating, is different from a dual axis accelerometer defined to be in a particular orientation. For example, consistent with our discussion above regarding disclosures in the Specification, Dr. Sturges has testified that a third axis could be defined even if there was no sensing along that axis. See, e.g., Ex. 1010, 45:15–21 (“Q. So how is that Z axis—so it’s drawn in there as a third dimension, but what is defining that Z axis? A. That those axes are relative to the space in which the instrument exists, and the axes are attached so that we can see the – the frame of reference clearly in that figure.”). Accordingly, we determine that Patent Owner has shown sufficiently how the parent application (filed on September 15, 1999) describes sensing acceleration phenomena of a body relative to a 3D frame of reference, as recited in the challenged claims. Petitioner also argues that two inventors of the ’939 patent “confirmed that sensing acceleration relative to a 3D frame of reference requires sensing along three axes (‘up and down, front to back, and side to side’).” Pet. Reply 5 (citing Ex. 2007, 11; Ex. 2008, 19). We also are not persuaded by this argument, which essentially contends that disclosure of three acceleration measuring devices is required to establish written description support here. As discussed above, a sensor that comprises two acceleration” slip op. at 24

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedPriority date, deniedMixed

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the parent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claim as set forth above. Accordingly, we determine that claim 1 is entitled to a priority date of September 15, 1999. In the Decision on Institution, we also noted that “entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” Dec. Inst. 15 (quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)). Petitioner’s basis for asserting that dependent claims 2 and 3 lack written description support in the parent application filed on September 15, 1999 appears to be their dependence on independent claims 1 and 11. Pet. Reply 5 (citing Ex. 1011 ¶¶ 11–23). Patent Owner asserts that dependent claim 2 is also entitled to a priority date of at least September 15, 1999. Prelim. Resp. 13. Patent Owner makes no such assertion regarding dependent claim 3 being entitled to the September 15, 1999 priority date. See id. Petitioner bears the burden of going forward with evidence that there is art prior to the application date of the ’939 patent that either anticipates or renders obvious the claims of the ’939 patent, which it has. Patent Owner then has the burden of going forward with evidence (i) that the prior art does not actually anticipate or render obvious the claims, or (ii) that the alleged prior art is not actually prior art because the challenged claim is entitled to the benefit of a filing date prior to the date of the alleged prior art. The second item requires Patent Owner to show why the written description in the earlier application supports the claim. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Dependent claim 2 recites “wherein one of said plurality of different” slip op. at 28

  Patent outcomesUS 6,703,939 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 6,703,939
• Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.All claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00115 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1 and 11 are unpatentable as obvious over Unuma; the Yasushi ground fails because Yasushi is not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Yasushi was published on November 10, 1998. As described above, claims 1 and 11 of the ’890 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted).” slip op. at 27

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “[of Figure 1] also senses along a third axis.” Reply 5. We do not find this argument persuasive for the reasons discussed above in relation to claim construction. In view of how we have construed the claims at issue, Patent Owner does not need to show written description support in its priority documents for a system that measures acceleration along all three axes, but rather must show support for a sensor that senses accelerative phenomena with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined. As discussed above, in certain embodiments, such sensing can be accomplished by measuring acceleration along two axes. Petitioner also argues that “a third sensor would need to be added to a two axis accelerometer in order to sense relative to a 3D frame of reference.” Reply 5 (citing Ex. 1012, 9:25–10:22; 26:20–27:8). Although Dr. Sturges indicates that he “would have had to add another accelerometer orthogonal to the other two” in order “to establish a three-dimensional coordinate system” (Ex. 1012, 10:18–22), we do not find this testimony persuasive to support that a third sensor would be needed in order to sense relative to a three dimensional frame of reference. This portion of testimony relates to how three accelerometers can establish a three-dimensional coordinate system, not whether acceleration measurements in two dimensions provides information regarding a body relative to a 3D frame of reference. See id. at 9:25–10:22. As discussed above, the ’890 patent describes a system that specifically contemplates a fall detection application for a body, which contemplates the up/down (z axis) of interest, i.e., measures acceleration along two axes to obtain information about (sense acceleration phenomena of) a body relative to a 3D frame of reference. Ex. 1001, 8:64–9:17. As to Dr. Sturges’ further testimony that a dual-axis accelerometer would not establish a three-dimensional coordinate system (Ex. 1012, 27:4– 8), we do not find this testimony persuasive to support a finding that a third sensor is needed in order to sense relative to a three dimensional frame of reference. A dual axis accelerometer alone, without additional information regarding the system/environment in which it will be operating, is different from a dual axis accelerometer defined to be in a particular orientation. For example, consistent with our discussion above regarding disclosures in the specification, Dr. Sturges has testified that a third axis could be defined even if there was no sensing along that axis. See, e.g., Ex. 1012, 45:15–21 (“Q. So how is that Z axis—so it’s drawn in there as a third dimension, but what is defining that Z axis? A. That those axes are relative to the space in which the instrument exists, and the axes are attached so that we can see the – the frame of reference clearly in that figure.”). Accordingly, we determine that Patent Owner has shown sufficiently how the great-grandparent application (filed on September 15, 1999) describes sensing acceleration phenomena (claim 1), and measuring dynamic and static acceleration (claim 11), of a body relative to a 3D frame of reference, as recited in the challenged claims.” slip op. at 22

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the great-grandparent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena, as recited in claim 1 (or measured dynamic and static acceleration, as recited in claim 11), of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claims as set forth above. Accordingly, we determine that claims 1 and 11 are entitled to a priority date of September 15, 1999.” slip op. at 26

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference not prior artNot shown unpatentableNot shown unpatentable

    “Yasushi was published on November 10, 1998. As described above, claims 1 and 11 of the ’890 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted).” slip op. at 27

  Patent outcomesUS 7,479,890 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,479,890
• Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.All claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00112 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 2, 11, and 12 are unpatentable: claims 2 and 12 as obvious over Yasushi, and claims 1, 2, 11, and 12 as obvious over Unuma.

  RulingsFinal written decision

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

    “For the foregoing reasons, we construe “a sensor . . . that senses accelerative phenomena of said body relative to a three dimensional frame of reference in said environment” as “a sensor that senses accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined in the environment.” The recited “sensor” comprises a plurality of acceleration devices, i.e., at least two devices, that measure acceleration along at least two axes.” slip op. at 17

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

    “There is nothing in the Specification that indicates a deviation from this ordinary meaning. Accordingly, the plain language of the claim means that the sensor senses accelerative phenomena of said body with regard to a three dimensional frame of reference. We also interpret “three dimensional frame of reference” to refer to “a system of axes (in three dimensions) in relation to which position or motion can be defined.” (see The Oxford English Dictionary, available at http://www.oed.com/view/Entry/317084?redirectedFrom=frame+of+referen ce#eid (last visited Apr. 26, 2016) (Ex. 3006) (defining “frame of reference” as “[a] system of coordinate axes in relation to which size, position, or motion, can be defined;” see also Ex. 1001, 2:25–27 (“the present invention introduces systems, as well as methods of operating such systems, for evaluating movement of a body relative to an environment”), 2:53–56 (“the sensor may be a plural-axis sensor that senses accelerative phenomena and generates an output signal to the processor indicative of measurements of both dynamic and static acceleration of the body in plural axes”). In other words, the plain language of the claim refers to a sensor that senses accelerative phenomena of said body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed

    “For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the grandparent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claim as set forth above. Accordingly, we determine that claims 1 and 11 are entitled to a priority date of September 15, 1999. In the Decision on Institution, we also noted that “entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” Dec. on Inst. 16 (quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)). Petitioner’s basis for asserting that dependent claims 2 and 12 lack written description support in the parent application filed on September 15, 1999 appears to be their dependence on independent claims 1 and 11. Reply 6 (citing Ex. 1012 ¶¶ 13–25). Patent Owner makes no assertion that dependent claims 2 and 12 are entitled to the September 15, 1999 priority date. Prelim. Resp. 12–14. Petitioner bears the burden of going forward with evidence that there is art prior to the application date of the ’331 patent that either anticipates or renders obvious the claims of the ’331 patent, which it has. Patent Owner then has the burden of going forward with evidence (i) that the prior art does not actually anticipate or render obvious the claims, or (ii) that the alleged prior art is not actually prior art because the challenged claim is entitled to the benefit of a filing date prior to the date of the alleged prior art. The second item requires Patent Owner to show why the written description in the earlier application supports the claim. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Dependent claims 2 and 12 recite “wherein one of said plurality of” slip op. at 28

  Patent outcomesUS 7,095,331 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,095,331
• Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.No claims unpatentable
  PTAB · Apr 28, 2016 · IPR2015-00109 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–3, 9–12, and 18–20 were not shown unpatentable under § 103 over Yasushi because Yasushi was not prior art.

  RulingsFinal written decision

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

    “Turning first to the express language of independent claims 1 and 10, claim 1 recites a “system within a communications device capable of evaluating movement of a body relative to an environment . . . wherein said communication1 device transmits said tolerance indicia,” and claim 10 recites a “method for operating a system within a communications device . . . wherein said method comprises the steps of . . . transmitting said tolerance indicia through said communications device.” We, thus, agree with Patent Owner that claims 1 and 10 only require the “communications device” to transmit tolerance indicia. The ’796 patent also states that the “term ‘communication device’ is defined broadly to include, without limitation, cellular telephones, personal digital assistants, hand held computers, laptops, computers, wireless Internet access devices, and other similar types of communications equipment.” Ex. 1001, 2:46–50. Because of the qualifiers “broadly,” “without limitation,” and “other similar types of communications equipment,” we do not find that the ’796 patent’s purported definition of “communication device” limits the” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “describes that “[s]ystem 11 includes circuit boards 13 and 15 . . . associated with a housing (generally designated 17),” that “[h]ousing 17 may comprise . . . halves 19 and 21 that encase boards 13 and 15,” and that “[s]ystem 11 includes a processor . . . and a sensor 25.” Ex. 1007, 39:10–12, 39:16–19, 40:4–5; see also Ex. 1001, 5:25–28, 5:32–36, 5:45–46. Figure 2 illustrates system 11, “which includes processing circuitry 39, indicating means 41, . . . along with sensor 25” and shows sensor 25 on board 15 within housing 17. Ex. 1007, 42:18–21; see also Ex. 1001, 6:48–51. The grandparent application also describes that an “[e]xemplary indicating means 41 . . . [is] operable to . . . communicate such state, or tolerance, indicia to a monitoring controller,” that “[i]ndicating means 41 may take any number of forms,” and that “in system 11 of the present embodiment, stage 41 is an RF transmitter.” Ex. 1007, 43:14–20. Based on these descriptions of system 11 with an RF transmitter, we find that the grandparent application provides adequate written description support for the “communications device” recited by the challenged claims.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “In order to receive benefit of the filing date of an application previously filed in the United States, the subsequent application for patent must be for an invention disclosed in the manner provided in 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78; see Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (discussing requirements of claiming benefit of priority date of earlier application under 35 U.S.C. § 120).3 To satisfy 35 U.S.C. §112, first paragraph, the written description must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). One shows “possession” of the invention by describing the invention using such descriptive means as words, structures, figures, diagrams, formulas, etc. that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The issue of whether the written 3 The subsequent application must also be filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the previously filed application and contain or be amended to contain a specific reference to the previously filed application. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78. In this case, the application that matured into the ’796 patent was filed on December 30, 2002, which is before the patenting of the parent application on December 31, 2002, which was similarly entitled to the benefit of the filing date of the grandparent application. Ex. 1001, 1; Ex. 1007, 8. The application that matured into the ’796 patent contained a specific reference to the grandparent application. Ex. 1006, 38. description requirement has been satisfied is a question of fact. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference not prior artDecided for patent owner

    “overcome Yasushi’s publication date.4 See In re Facius, 408 F.2d 1396, 1403–04 (CCPA 1969) (holding, in a prosecution context, that an earlier filed reference was prima facie available as prior art and placing the burden on the party claiming prior invention to overcome that reference). Patent Owner may meet its burden by providing evidence that the publication date of the reference is not “before the invention thereof by the applicant for [a] patent,” 35 U.S.C. § 102(a), that is, antedating Yasushi. Yasushi was published on November 10, 1998. As described above, claims 1–3, 9–12, and 18–20 of the ’796 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an 4 Even though Patent Owner bears the burden of production in antedating a reference, the burden of persuasion to prove unpatentability of the challenged claims remains with Petitioner. See 35 U.S.C. § 316(e). earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted). Reduction to practice is a question of law predicated on subsidiary factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002). To establish an actual reduction to practice, the inventor must prove that: (1) an embodiment of the invention was constructed that meets all the limitations of the claims at issue; and (2) the inventor appreciated that the invention would work for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). The invention does not have to be at a commercially satisfactory stage of development for an actual reduction to practice, but must have been sufficiently tested to demonstrate that it will work for its intended purpose. See, e.g., Scott v. Finney, 34 F.3d 1058, 1062 (Fed. Cir. 1994) (citing numerous cases wherein the character of the testing necessary to support an actual reduction to practice varied with the complexity of the invention and the problem it solved). It is well settled that an inventor’s testimony alone is insufficient to” slip op. at 22

  Patent outcomesUS 6,864,796 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 6,864,796
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Jan 28, 2016 · IPR2014-01184 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 5–14 are unpatentable under § 103 as obvious over the prior art combinations addressed in the decision.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10

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

    “3. remaining claim terms Patent Owner also proposes constructions for the terms wireless telephone device, a signal representing at least a portion of a song, while, and portable electronic device. PO Resp. 5–6, 8–10, 11–12. Upon review of Petitioner’s and Patent Owner’s arguments, we determine that construction of these additional claim terms is not required for purposes of this decision.” slip op. at 13

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

    “We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17

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

    “Ipsis verbis disclosure is not necessary, however, to satisfy the written description requirement of section 112. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Thus, we must also determine whether, despite the lack of express disclosure, one of ordinary skill in the art would have understood that Patent Owner was in possession of the invention set forth in claim 8. Id. In conducting this analysis, we are cognizant that “a description which renders obvious a claimed invention is not sufficient to satisfy the written description requirement of that invention.” Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997). Dr. Wolf recites the same disclosures as Patent Owner and concludes that one of ordinary skill in the art would understand that the ’812 application demonstrates possession of an invention wherein a radio dial transmitted to a recipient device could be used to cause the transmission of selected information to the recipient device. Ex. 2005 ¶¶ 287, 290. Dr. Wolf does not address, however, the specific configuration set forth in claim 8 of the ’641 patent. In particular, Dr. Wolf does not explain why one of ordinary skill in the art would understand from the recited disclosures that the patentee was possession of a method of streaming a song from a portable electronic device to a recipient device in response to the selection of a selectable menu item “presented on a recipient device display.” In contrast, Dr. Quackenbush analyzes the disclosures of the ’641 patent in detail and concludes that one of ordinary skill in the art, upon review of the priority disclosures as a whole, would not understand the patentee to be in possession of the invention set forth in claim 8. Ex. 1025 ¶¶ 189–207. Specifically, Dr. Quackenbush concludes that the disclosures of the ’812 application and the ’641 Specification focus on the transmission of data from a storage device and digital engine to an electronic device, and not from a portable electronic device to a recipient device, in response to a selection of a selectable menu item presented on a recipient device display. Ex. 1025 ¶¶ 193–203. Upon careful review of both Dr. Wolf’s and Dr. Quackenbush’s” slip op. at 52

  Patent outcomesUS 8,532,641 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,532,641
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Jan 28, 2016 · IPR2014-01182 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 5–14 are unpatentable under § 103 over the prior-art combinations addressed in the decision.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10

  • Skill levelOther
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for patent owner

    “We agree with Patent Owner that Petitioner’s identification of corresponding structure and its argument that § 112 ¶ 6 does not apply to the term “means for recharging the internal battery” should have been in Petition, and not presented for the first time in reply. PO Resp. 69; Tr. 84:12–85:14; see 37 C.F.R. § 42.104(b)(3). Moreover, Petitioner does not provide adequate support for its broad identification of corresponding structure in the ’641 patent. For example, we are directed to no disclosure in the ’641 patent indicating that any “battery recharger” may recharge the battery of the device. Thus, we do not adopt Petitioner’s proposed constructions. Patent Owner does not propose a construction for the term “means for recharging the internal battery.” See PO Resp. 5–11, 69–70. The ’641 patent discloses, however, that interface 904 and mount 511 allow for recharging the electronic device using an interface that provides both recharging power and data communications. Ex. 1101, 13:15–32, 18:27–39, 20:52–57. As Petitioner provides persuasive evidence to explain why one of ordinary skill in the art would have sought to add both rechargeable batteries and a USB interface—which provides both recharging power and data connectivity—to the device of Abecassis, under either Petitioner’s proposed construction or the structure for recharging the internal battery set forth in the ’641 patent, the prior art discloses the limitations of claim 14. Thus, we are persuaded that claim 14 would have been obvious over Abecassis, Herrod, and Chennakeshu.” slip op. at 28

  Patent outcomesUS 8,532,641 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,532,641
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15

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

    “We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34

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

    “As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50

  Patent outcomesUS 6,430,332 mixed
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 6,430,332

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.