• General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentable
  PTAB · Jun 21, 2017 · IPR2016-00358 · APJ J John Lee · IPR · Final written decision

  Claims 141–146, 148, 151, 152, 159, 160, 242–246, 248, and 251 are unpatentable as anticipated; claims 141–152, 159, 160, and 242–251 are also unpatentable as obvious.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “address the applicable burdens of proof on the parties. As an initial matter, the overall burden of persuasion of proving unpatentability on the asserted grounds based on Mugler 2000 lies with GE, and that burden never shifts. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Therefore, GE bears the burden to establish that Mugler 2000 qualifies as prior art. The burden of production, however, may shift between the parties. See Magnum Oil Tools, 829 F.3d at 1375–76; Dynamic Drinkware, 800 F.3d at 1379–80. Here, GE satisfied the initial burden of production by asserting that Mugler 2000 is § 102(a) prior art, and presenting evidence that it was published and publicly available before the priority date of the ’644 Patent.9 See Pet. 11. The burden of production then shifted to UVAPF, and UVAPF met that burden by producing evidence to demonstrate that the relevant content of Mugler 2000 was solely the work of the inventors of the ’644 Patent, i.e., the declarations of Dr. Mugler and Dr. Kiefer.10 See PO Resp. 18–20; Magnum Oil Tools, 829 F.3d at 1376 (“[T]he shifting of the burden of production is warranted [when] the patentee affirmatively seeks to establish a proposition not relied on by the patent challenger and not a necessary predicate for the unpatentability claim asserted.”). Consequently, the burden returned to GE to prove that the evidence of record does not establish that Mugler 2000 was solely the work of the named inventors. See Dynamic Drinkware, 800 F.3d at 1380. GE did not carry this burden.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artNot shown unpatentable

    “An inventor’s own work is not prior art under § 102(a). See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); Katz, 687 F.2d at 454. In determining whether a reference is the work of the named inventor(s), the relevant inquiry is whether the relevant content of the reference—such as “the methods, detailed results, statistical analysis and discussion,” or “the design, trial, and analysis of results”—was solely the work of the inventor(s). See Allergan, 754 F.3d at 969. For example, an article may be solely the work of an inventor if the remaining co-authors were merely students performing tasks under the inventor’s direction and supervision. See Katz, 687 F.2d at 455–56. Before turning to the evidence to apply these precepts, we first address the applicable burdens of proof on the parties. As an initial matter, the overall burden of persuasion of proving unpatentability on the asserted grounds based on Mugler 2000 lies with GE, and that burden never shifts. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Therefore, GE bears the burden to establish that Mugler 2000 qualifies as prior art. The burden of production, however, may shift between the parties. See Magnum Oil Tools, 829 F.3d at 1375–76; Dynamic Drinkware, 800 F.3d at 1379–80.” slip op. at 10

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

    “For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 16

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner

    “Resp. 21–59. More specifically, UVAPF argues the ’182 Application provides sufficient written description support for the challenged claims such that they are entitled to the priority date of the ’182 Application, i.e., December 21, 2000. Id. Based on the full record, however, the challenged claims have not been shown to have sufficient support in the written description of the ’182 Application and, thus, priority has not been established earlier than December 21, 2001. As with § 102(a), GE bears the burden to prove that Mugler is prior art under § 102(b) as part of its overall burden of persuasion to prove unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. GE also bears the initial burden of production, but satisfied that burden by asserting that Mugler 2000 is prior art under § 102(b). See id. at 1379. The burden then shifted to UVAPF to produce evidence that the challenged claims of the ’644 Patent are entitled to an earlier priority date. See id. at 1380. UVAPF met that burden by producing arguments and evidence to attempt to prove that the disclosure of the ’182 Application provides sufficient written description support for the challenged claims. See PO Resp. 22–59. Thus, the burden shifted back to GE to prove that the ’182 Application does not support the claims. See Dynamic Drinkware, 800 F.3d at 1380. GE met that burden successfully, as explained below. For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 16

  Patent outcomesUS RE44,644 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham

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.