• Marinus Pharmaceuticals, Inc. v. Ovid Therapeutics, Inc.All claims unpatentable
  PTAB · Aug 1, 2024 · PGR2023-00020 · APJ Jeffrey N Fredman · PGR · Final written decision

  Claims 22 and 25–31 are unpatentable because the Board found them obvious over Zhang with Saporito P1 and Saporito P2, and not enabled.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “IV. LEVEL OF ORDINARY SKILL IN THE ART We consider the grounds of unpatentability in view of the” slip op. at 7

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

    “3. Analysis We start with the language of claim 22 that recites “the pharmaceutical composition provides improvement to the patient after administration for more than 8 hours.” Claim 22 does not indicate whether this is after the start of administration, after the completion of administration, or after some intermediate point. However, the plain language suggests that recited “improvement” occurs “after” the recited “administration” period. See, e.g., KEYnetik, Inc. v. Samsung Electronics Co., Ltd., 837 F. App’x 786, 792 (Fed. Cir. 2020) (“use of the word ‘after’ in the claim indicates a temporal relationship.”) We therefore turn to the ’817 patent specification for clarification. The ’817 patent repeats the claim language in a number of locations. See, e.g., Ex. 1001, 5:1–2, 5:9–11; 14:21–41; 15:18–19; 24:45–49. The ’817 patent provides definitions of “Improvement” and of “Improvement in next functioning,” but neither of these definitions addresses the timing issue. See id. at 29:57–30:5. The schematic drawing in Figure 2, however, addresses timing, and is reproduced below: “FIG. 2 is a schematic drawing depicting a timeline for an evaluation study of the ability of allopregnanolone, ganaxolone and gaboxadol to block benzodiazepine resistant status epilepticus in rats.” Ex. 1001, 3:48–51. Figure 2 differentiates between a 30 minute administration period, a 120 minute post-drug dosing period during which the animals are observed, and a 24 hour timepoint after which the animals are weighed, consistent with the ’817 patent disclosure that “[a]ll rats are observed and scored for seizure severity for 120 min post drug administration.” Ex. 1001, 35:64–65. This disclosure tends, on balance, to support Patent Owner’s proposed interpretation. Turning to the extrinsic evidence, Dr. Sankar similarly stated whether a patient with SE has sustained any improvement after administration of a drug is typically assessed at a point in time after a full dose is administered, rather than starting the clock after the first administration of only part of the dose. This is because the full dose of the drug is generally required to provide the expected effect.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “3. Analysis a. Claim 22 It is Petitioner’s burden to show by a preponderance of the evidence that claim 22 of the ’817 patent is unpatentable as anticipated by Zhang, and we find that Petitioner has failed to meet its burden. See 35 U.S.C. § 326(e). We agree with Petitioner, as discussed in our claim interpretation section above, that patients within the scope of claim 22 include animals such as rats, and also that Zhang teaches “[s]eizure disorders that may be treated with the substituted β-cyclodextrin-ganaxolone injectable formulation include status epilepticus.” Ex. 1009 ¶ 70. As to the intravenous administration requirement in claim 21, from which claim 22 depends, we also agree with Petitioner that Zhang teaches embodiments where the “substituted β-cyclodextrin-ganaxolone injectable formulation is administered as an intravenous infusion dose.” Id. ¶ 76. We therefore agree that Zhang teaches intravenous treatment using a ganaxolone formulation in patients with status epilepticus. See, e.g., id. ¶¶ 22, 70, 76. As discussed above, we agree with Patent Owner that claim 22 is properly interpreted to require improvement 8 hours after total administration of the ganaxolone dose. A preponderance of the evidence of record does not support Petitioner’s position that Zhang inherently, and therefore necessarily, provides improvement after administration for more than 8 hours. Even if claim 22 simply required improvement 8 hours after initiation of a ganaxolone dose, we would still conclude that a preponderance of evidence does not support Petitioner’s position. Zhang provides no evidence of improvement at an 8 hour timepoint” slip op. at 29

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “disclosure suggesting that treatment with ganaxolone will result in “improvement to the patient after administration for more than 8 hours.” Also, as we discussed above with regard to anticipation, a preponderance of the evidence does not show that Zhang alone would inherently and necessarily result in 8 hour improvement in any particular species of patient after administration of ganaxolone. That conclusion is supported by Petitioner’s own expert, Dr. Rogawski, who stated with regard to the claimed 8 hour improvement that “I think it’s possible that there could be improvement, there might not be improvement. When one is treating a medical condition, there’s always a degree of variability and one doesn’t expect a certain outcome.” Ex. 2015, 155:9–16. Dr. Rogawski therefore acknowledges that improvement at the 8 hour timepoint is not necessarily the natural result of ganaxolone treatment and may not necessarily occur.” slip op. at 41

  Patent outcomesUS 11,395,817 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,395,817
• Syngenta Crop Protection AG v. Upl Ltd.All claims unpatentable
  PTAB · Jul 26, 2024 · PGR2023-00017 · APJ Zhenyu Yang · PGR · Final written decision

  Claims 1–10 are unpatentable: claims 1, 3–5, 7, 9, and 10 are anticipated by Godoy; claims 1–10 are anticipated by Tobler; other grounds were not reached.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “record (Ex. 1022, Attachments 5, 6) and the ResearchGate page (id., Attachments 7–10), to further support her opinion that the Godoy report was publicly available before November 4, 2016. Id. ¶¶ 31–38, 42–48. She testifies that “ResearchGate contains many search features which would allow an interested POSA to find the Godoy report, e.g., key word searching.” Id. ¶ 48. Dr. Jacobsen, who has personally used the service, agrees that in ResearchGate, “you can start to search for publications using keywords and things like that, authors.” Ex. 1043, 66:1–67:10. For these reasons, we again find Dr. Hall-Ellis’s testimony credible.” slip op. at 32

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “record (Ex. 1022, Attachments 5, 6) and the ResearchGate page (id., Attachments 7–10), to further support her opinion that the Godoy report was publicly available before November 4, 2016. Id. ¶¶ 31–38, 42–48. She testifies that “ResearchGate contains many search features which would allow an interested POSA to find the Godoy report, e.g., key word searching.” Id. ¶ 48. Dr. Jacobsen, who has personally used the service, agrees that in ResearchGate, “you can start to search for publications using keywords and things like that, authors.” Ex. 1043, 66:1–67:10. For these reasons, we again find Dr. Hall-Ellis’s testimony credible.” slip op. at 32

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “several lists, Petitioner has met its burden in showing that an ordinarily skilled artisan would at once envisage the fungicidal combination of claim 1 from its disclosure. Accordingly, Tobler anticipates claim 1. We address Patent Owner’s arguments below.” slip op. at 44

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

    “28 Because Petitioner has shown that asserted prior art references anticipate claims 1 and 3–10, we do not address whether these claims would have been obvious over De Oliveira, either alone or in view of Wiglesworth, Tobler, and Godoy. 29 Having determined that Petitioner has shown all challenged claims are unpatentable under other grounds, we do not address this obvious ground. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding” and, thus, agreeing that the Board has “discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 81

  Patent outcomesUS 11,445,727 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,445,727
• Guardant Health, Inc. v. University Of WashingtonAll claims unpatentable
  PTAB · Jan 11, 2024 · IPR2022-01158 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–28 are unpatentable because Eltoukhy anticipates them; the Board found they were not entitled to a priority date before Eltoukhy’s publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, Petitioner asserts that an ordinarily skilled artisan “would typically have an advanced degree, such as a Ph.D., with research experience in genomics, molecular biology, bioinformatics, or a related field, or could have less education but significant professional experience in one or more of these fields.” Pet. 8–9 (citing Ex. 1002 ¶ 38). Patent Owner states that for the purposes of this proceeding, it does not dispute Petitioner’s definition of the skill level. PO Resp. 2 (citing Ex. 2023 ¶¶ 21, 22). After reviewing the record, we adopt Petitioner’s definition as it is consistent with the prior art’s demonstration of the level of ordinary skill in the art at the time of the invention.” slip op. at 7

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

    “1. “Sequence Reads” Petitioner argues that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 10–11. Petitioner, however, seeks to provide context for understanding the scope of the term “sequence reads.” Specifically, Petitioner contends that “sequence reads” are produced by sequencing at least some of the tagged strands, whereas “consensus sequences” are generated by collapsing sequence reads. Id. at 11 (citing Ex. 1001, 4:45–47, 20:50–22:25, 23:29–57, 24:46–48, claim 1, claim 6). In the Decision to Institute, we agreed with Petitioner that “[t]he claims of the ’951 patent as well as the specification make clear that a ‘sequence read’ is different and distinct from a ‘consensus sequence.’” DI 7 (quoting Pet. 11). Patent Owner does not dispute Petitioner’s assertion. PO Resp. 12. Based on the complete record, we see no reason to change our determination of the scope of the term “sequence reads.”” slip op. at 8

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

    “We disagree with Patent Owner’s proposed construction of the terms “paired sequence reads” and “unpaired sequence reads.” Even though the ’951 patent Specification discloses grouping sequence reads “sharing a unique set of SMI tags” into paired families,4 “[t]he written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.” Phillips, 415 F.3d at 1312 (“[T]he claims of a patent define the invention to which the patentee is entitled the right to exclude.”). Here, claim 1 explicitly defines the terms “paired sequence reads” and “unpaired sequence reads.” Indeed, in the context of paired versus unpaired sequence reads, claim 1 specifies that the complementarity is related to the “original parent polynucleotide molecule,” and not the duplex tags. For example, claim 1 recites that “each unpaired read represents a first tagged strand having no second differently tagged complementary strand derived from an original parent polynucleotide molecule represented among said sequence reads in said set of sequence reads.” Ex. 1001, 37:50–55 (emphasis added). Thus, the plain claim language contradicts Patent Owner’s argument” slip op. at 11

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

    “Claim 1 defines the terms “paired sequence reads” and “unpaired sequence reads” based on the complementarity of the target sequence strands derived from the “original parent polynucleotide molecule.” Ex. 1001, 37:46–55. As explained above, we reject Patent Owner’s contention that a sequence read is considered unpaired solely based on the complementarity of the SMI tags. See supra Section II.C.2. Due to the “errors introduced during sample preparation and sequencing” (Ex. 1029 ¶ 5), there are four outcomes when determining the complementarity of the sequence reads of two strands of SMI-linked target sequence: (1) the first SMI tag and the first strand target sequence are complementary to the second SMI tag and the second strand target sequence, respectively; (2) the first SMI tag is complementary to the second SMI tag but the first strand target sequence is not complementary to the second strand target sequence; (3) the first SMI tag is not complementary to the second SMI tag but the first strand target sequence is complementary to the second strand target sequence; and (4) the first SMI tag is not complementary to the second SMI tag, and the first strand target sequence is not complementary to the second strand target sequence. It is undisputed that Schmitt groups sequence reads into paired families based on the SMI tags, and Schmitt only considers sequences in which “information from both DNA strands was in perfect agreement.” Ex. 1029 ¶¶ 14, 96; PO Resp. 18. Thus, among the four outcomes, only scenario (1), in which both the SMI tags and the target sequences are complementary, represents a “paired sequence read,” which claim 1 defines as corresponding to “sequence reads generated from a first tagged strand and a second differently tagged complementary strand derived from an original parent polynucleotide molecule.” Ex. 1001, 37:46–50. Contrary to Patent Owner’s argument (see PO Resp. 26), in Schmitt,” slip op. at 18

  Patent outcomesUS 10,752,951 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,752,951
• Painteq, LLC v. Orthocision, Inc.All claims unpatentable
  PTAB · Dec 1, 2023 · IPR2023-00451 · APJ Michael A Valek · IPR · Final written decision

  Claims 1–23 are unpatentable as obvious over Vestgaarden-981, Vestgaarden-818, and Lins, with Paltzer additionally applied to claims 6, 7, and 10–23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s description of the level of ordinary skill in the art is sufficiently supported by the record. Therefore, we apply that understanding in our analysis herein.” slip op. at 9

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

    “Petitioner submits that the parties have submitted joint claim construction in the Florida litigation, and asserts that “[t]he grounds set forth in this [P]etition render the challenged claims obvious under either party’s construction.” Pet. 8 (citing Ex. 1002 ¶ 34; Ex. 1017). Nevertheless, Petitioner urges that “express construction is not necessary.” Id. at 7. We agree that no express construction is required for this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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).” slip op. at 9

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

    “We agree with Petitioner. Figures 30, 32A and 32B in the Specification depict a working channel with tangs 180a and 180b. See Ex. 1001, Figs. 30, 32A–B. These figures and all of the related description in the Specification describing a working channel with tangs appear in the Parent (Ex. 1006, Figs. 30, 32A–B, 3:17–21, 6:47–54, 15:25–51), but not in the Grandparent. See also Ex. 1002 ¶¶ 42–43 (explaining the same). Accordingly, the Grandparent application does not provide sufficient written description for the limitations requiring that the working channel have tangs in the independent claims. See Ex. 1001, 42:7 (limitation 1.b.4 “at least one tang on a distal end”), 43:9–11 (limitation 10.b.2 “two bilateral blunt tangs on a distal end”), 44:31–32 (limitation 18.b.2 “plurality of blunt tangs on a distal end”). For this reason, the challenged claims are not entitled to the benefit of the Grandparent’s filing date.” slip op. at 10

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

    “We find that Petitioner has articulated sufficient reasoning with rational underpinning for combining the asserted references. Vestgaarden- 818 expressly incorporates the teachings of Vestgaarden-981, providing a motivation to use the implant and related tools taught in Vestgaarden-981 in its method for fusing a SI joint. Ex. 1010, 4:10–16. Moreover, we credit Dr. Bovinet’s testimony describing additional reasons for combining Vestgaarden-981’s implant and surgical implants with Vestgaaren-818’s method. Ex. 1002 ¶¶ 67–74. Petitioner’s reasoning for combining Lins’s guidance slots and protrusions is also supported by the evidence of record. Ex. 1002 ¶¶ 77–84. In particular, Dr. Bovinet persuasively testifies that a POSA would have motivated to make this combination because it “enables a surgeon to visually align the guide protrusions on a shaft with the guidance slots of the working channel,” which is “a major improvement” over the flat portion depth stop taught in Vestgaarden-981. Id. ¶ 83; see also id. ¶ 84 (“As someone who has personally performed hundreds of SI joint fusion surgeries, I can attest that the guide protrusions and guidance slots taught in Lins would offer a surgeon a significantly better user experience” as compared to Vestgaarden- 981’s flat portions). Finally, Petitioner has demonstrated that the combination would have produced a “predictable result” and therefore that a (citing Ex. 1002 ¶¶ 76, 85).” slip op. at 21

  Patent outcomesUS 11,083,511 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 11,083,511
• Bausch & Lomb Incorporated v. Zeavision, LLCAll claims unpatentable
  PTAB · Apr 10, 2023 · IPR2022-00089 · APJ Tina E Hulse · IPR · Final written decision

  Claims 12–14, 16–21, 23, and 24 are unpatentable: Lang anticipates some claims, and the asserted Lang-based combinations render all challenged claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s definition (Dec. Inst. 6–7), which Patent Owner states that it “does not contest.” PO Resp. 17. Because the parties do not dispute the level of ordinary skill in the art, we adopt Petitioner’s definition as consistent with the prior art’s demonstration of the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Moreover, we find that Dr. Johnson and Dr. Dorey are both qualified to opine from the perspective of a skilled artisan as both are persons of at least ordinary skill in the art. See Ex. 1024 ¶¶ 2–11, App’x A; Ex. 2001 ¶¶ 4–14, App’x A; see also Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F. 4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “Similarly, here, the Specification consistently states that the invention relates to oral formulations for protecting eye health and that the benefits of carotenoids, such as zeaxanthin and lutein, include the ability to absorb UV and blue light. See, e.g., Ex. 1001, Abstract (“Oral formulations for promoting eye health”), 4:25–31 (stating carotenoids such as zeaxanthin are “very good at absorbing ultraviolet (UV) and blue light”), 15:45–47 (“one object of this invention is to disclose multi-component orally-ingestible formulations for protecting eye health in mammals”). Like the preamble in Proveris, the preamble in claim 12 is the only reference in any of the independent claims to the allegedly inventive concept of protecting eye health from the harmful effects of blue light. Proveris, 739 F.3d at 1373. Moreover, the preamble of claim 12 recites: “A nutrient formulation for oral ingestion for protecting a user’s eyes from the harmful effect of blue light, the formulation comprising:.” Ex. 1001, 37:13–15. The body of claim from the group consisting of capsules, tablets, liquids, and powders for oral ingestion.” Ex. 1001, 37:22–24 (emphasis added). Similarly, claim 22, which depends from claim 12, relies on the preamble of claim 12 for antecedent basis for the limitation “wherein the user has macular degeneration and a lens-related disorder.” Id. at 38:21 (emphasis added). Thus, “the nutrient formulation” and “the user” in the claim body derives antecedent basis from the “nutrient formulation” and “user” that is “defined in greater detail in the preamble.” See Proveris, 739 F.3d at 1373. Accordingly, reading the patent as a whole, because the inventor clearly relied on both the preamble and the body of claim 12 to define the claimed invention, the preamble of claim 12 should be construed as limiting. See id.” slip op. at 10

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

    “stereoisomers” should have its plain and ordinary meaning, and a person of ordinary skill in the art would understand this term to mean that the zeaxanthin that is present in the 3R-3R' stereoisomer form is “largely but not wholly free of meso-zeaxanthin stereoisomers.” Pet. 19 (citing Ex. 1024 ¶ 57, Ex. 1031, 3). Petitioner also contends the term “mixed tocopherols” should be construed to mean “a mixture of tocopherols such as alpha-, beta-, gamma-, and delta-tocopherols.” Pet. 22–24 (citing Ex. 1024 ¶¶ 65–66). Patent Owner does not address either of these claim terms in its Response. See generally PO Resp. Because there does not appear to be any dispute over the construction of these terms, we adopt Petitioner’s proposed constructions as they are consistent with the plain and ordinary meaning of the terms. See Wellman, 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))).” slip op. at 11

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

    “2. Analysis Anticipation requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art omitted). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). Moreover, to anticipate, a prior art reference must “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).” slip op. at 13

  Patent outcomesUS 10,307,384 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,307,384
• Butamax™ Advanced Biofuels LLC v. Gevo, Inc.All claims unpatentable
  PTAB · Aug 5, 2015 · IPR2014-00402 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–12 and 14–15 are unpatentable as obvious over Gruber and ASTM D7566-09; claim 13 is unpatentable as obvious over those references and Mossman.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “shown by a preponderance of the evidence that one of ordinary skill in the art4 would have had a reason to combine the teachings of Gruber and ASTM 4 The parties do not dispute the level of skill in the art. We also note that “[a] specific finding on the level of skill in the art is not . . . required where the prior art itself reflects an appropriate level and a need for testimony is D7566-09, and in doing so, would have had a reasonable expectation of success in arriving at the claimed invention.” slip op. at 6

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

    “As an initial matter, we reject Patent Owner’s position that to establish prima facie obviousness, “each claim limitation must be provided by the prior art or inherently be present in the applied references.” Id. at 4. As the Supreme Court instructed, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” but such reasoning “need not seek out precise teachings directed to the specific subject matter of the challenged claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Instead, the background knowledge possessed by a person having ordinary skill in the art is an integral part of an obviousness analysis. Id. In this case, whether Gruber inherently discloses ASTM D7566 is irrelevant to our analysis, because Petitioner does not rely on inherency to 5 We assign page numbers sequentially to Patent Owner’s Response as the document itself does not include any. establish obviousness. Indeed, Petitioner points to Gruber for suggesting that renewable jet fuel must meet ASTM specifications for jet fuels. Pet. 23. Petitioner also relies on the knowledge of a skilled artisan that U.S. government agencies would adopt ASTM D7566, which provides the requirements for jet fuels containing synthesized hydrocarbons, to regulate their sale and use. Id. at 26 (citing Ex. 1009 ¶ 21). After reviewing the complete record, we determine that one of ordinary skill in the art would have had a reason to modify the teachings of Gruber to make a renewable jet fuel blendstock that meets or exceeds the requirement of ASTM D7566-09, and would have had a reasonable expectation of success in doing so.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Claims 2–12, 14, and 15 Petitioner points out that claims 2–8 and 9–11 in Gruber recite the same limitations as those in challenged claims 2–8 and 10–12, respectively. Pet. 27–31. In addition, Petitioner refers to Gruber for teaching using Amberlyst-35 to trimerize olefins, which it argues it satisfies the limitations recited in challenged claim 9. Id. at 30 (citing Ex. 1003, 76:14–15). Furthermore, Petitioner contends that Gruber teaches blending the renewable jet fuel blendstock prepared according to its process with conventional jet fuels derived from petroleum and with aromatics, and thus, satisfies the requirements of challenged claims 14 and 15. Id. at 32 (citing Ex. 1003, 34:32–34, 47:7–8); see also Ex. 1003, 51:30–33 (teaching blending aliphatic and aromatic hydrocarbons, and blending biofuel with petroleum based components, both to produce a product that meets all jet fuel specifications); id. at claim 16 (reciting combining saturated alkanes “with one or more C10– C14 aromatic hydrocarbons, thereby forming a jet fuel”). Patent Owner does not dispute any of these assertions. Based on the evidence of record, we determine that Gruber teaches the additional limitations recited in dependent claims 2–12, 14, and 15.” slip op. at 12

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

    “In its Response, Patent Owner does not dispute the priority-date determination as set forth in the Decision to Institute. Having considered the complete record developed at trial, we see no reason to change our conclusion that the priority date of the challenged claims is May 9, 2011. Thus, Gruber, ASTM D7566-09, and Mossman all qualify as prior art under 35 U.S.C. § 102(b).” slip op. at 4

  Patent outcomesUS 8,373,012 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,373,012
• Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentable
  PTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision

  Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.

  RulingsFinal written decision

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

    “that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached

    “E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31

  Patent outcomesUS 6,857,022 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 6,857,022

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.