- PTAB · Jan 31, 2023 · IPR2022-01235 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Buckley and Bates render the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine that the Petitioner adequately shows that a skilled artisan would be motivated to combine the relevant teachings of Buckley and Bates as recited in claim 51 with a reasonable expectation of success. Summary as to Claim 51 Petitioner’s showing as to claim 51 is supported and reasonable. The cited passages of Buckley and Bates support Petitioner’s argument that all the limitations of claim 51 of the ’721 patent are taught by the cited art. And, Petitioner shows a motivation to combine the relevant teachings of Buckley and Bates with a reasonable expectation of success. Petitioner has established a reasonable likelihood of showing that claim 51 of the ’721 patent would have been obvious in view of the cited references.14 2.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes that we construe several claim terms but does not contend that construction of any claim term is necessary to determine whether to institute inter partes review. See Pet. 13–15. Patent Owner disputes the constructions proffered by Petitioner but does not contend or establish that construction of any term is necessary to determine whether to institute inter partes review. See Prelim. Resp. 10–13. We determine that, as shown below, it is not necessary to explicitly construe any claim terms in order to make this institution decision.9 9 If either party contends that explicit claim construction is necessary in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, it should clearly explain why during trial and provide a clear and unambiguous construction with supporting evidence including specifically identifying the challenges, claims, and limitations to which the construction is necessary.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a “POSITA[6] at the time of the ’721 patent would have had a Bachelor’s degree in Computer Science or Electrical Engineering, or an equivalent field, and approximately two years of experience with networks. Additional education might compensate for less experience, and vice-versa.” Pet. 12 (citing Ex. 1003 ¶¶ 46–48). Petitioner’s proposal is consistent with the technology described in the Specification of the ’721 patent and the cited prior art. Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp.7 Based on this unopposed contention in the Petition, our preliminary, non-binding determination8 is to adopt Petitioner’s proposed level of skill in the art in order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Id. at 24–25 (footnote omitted). Patent Owner acknowledges that Dr. Madisetti testifies on behalf of Petitioner that “Buckley teaches transmitting the mobile telephone’s IP address (as the hostname) when transmitting the location identifier in the SIP Invite message,” but argues that this is an unwarranted conclusion. Prelim. Resp. 29 (citing Ex. 1003 ¶ 92).12 However, while Patent Owner’s argument is highly critical of Dr. Madisetti’s testimony, Patent Owner relies primarily on unsupported attorney argument as to what a POSITA would have known from Buckley’s disclosure of the “wireless UE” sending a “calling party’s SIP URI” to contradict Dr. Madisetti’s testimony. See id. at 29–31. Based on this record, we credit Dr. Madisetti’s testimony.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,880,721 - PTAB · Jan 31, 2023 · IPR2022-01234 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on the Buckley–Bates obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (permitting the Board to institute trial on behalf of the Director). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we institute an inter partes review as to the challenged claims of the ’721 patent on the grounds presented.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Patent Owner attacks Petitioner’s showing as to motivation to combine because “Buckley says nothing about enabling a local call to be made.” Prelim. Resp. 55. However, this argument appears misdirected as Petitioner relies on Bates’s teachings relating to making a local call to a PSAP (Public Safety Answering Point). Bates states: A communications service provider handling the call for emergency services determines a location of the user and assigns a temporary, geographically-correct telephone number (e.g., a telephone number including a 202 area code for a call that was determined to have been made by a user located in the Washington, D.C. area, where the 202 area code indicates that the user placed the call from the Washington, D.C. area) to the user who placed the call for emergency services. The communications service provider routes the call with call information including the temporary, geographically-correct telephone number. Ex. 1009, 3:42–53. And, in the following passage from the Preliminary Response, Patent Owner acknowledges that Bates enables a local call to the local PSAP: The way Bates’ system does this is, first, it determines the emergency services zone that corresponds to the current location of the user communication device and retrieves an available temporary telephone number corresponding to that emergency services zone from a telephone number database store.[] Next, the temporary telephone number is used to determine the location of the user communication device and to route the call to the appropriate public safety answering point (“PSAP”) for the location of the device. Prelim. Resp. 56. Patent Owner’s argument is misdirected and only relates to some of the reasons provided in the Petition as to why a skilled artisan would have been motivated to combine the relevant teachings of Buckley and Bates. With regard to a reasonable expectation of success in combining the teachings of Buckley and Bates, the Petition states: “The similarities between references is substantial, and A POSITA therefore would have had a reasonable expectation of success in combining Buckley with Bates.” Pet. 63. “A POSITA also would have had a reasonable expectation of success in combing the references because Buckley expressly contemplates routing emergency calls, and Bates seeks to improve on such routing.” Id. “A POSITA also would have had a reasonable expectation of success in combining . . . Buckley and Bates because the both teach techniques for establishing channels for bi-directional communication.” Id. at 64.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner proposes that we construe a number of claim terms but does not contend that construction of any claim term is necessary to determine whether to institute inter partes review. See Pet. 13– 16. Patent Owner disputes the constructions proffered by Petitioner but does not contend or establish that construction of any term is necessary to determine whether to institute inter partes review. See Prelim. Resp. 10–15. We determine that, as shown below, it is not necessary to explicitly construe any claim terms in order to make this institution decision.9 9 If either party contends that explicit claim construction is necessary in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, it should clearly explain why during trial and provide a clear and unambiguous construction with supporting evidence including specifically identifying the challenges, claims, and limitations to which the construction is necessary.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution of inter partes review under § 314(a) based on the factors established in Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495, *2–3. (PTAB Mar. 20, 2020) (precedential). Prelim. Resp. 5–10. Patent Owner points to the parallel district court litigation. See Section I.A. (Related Matters). We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_202206 21_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 7. Here, the Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 7; Reply 3. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,880,721 - PTAB · Jan 27, 2023 · IPR2022-01168 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that claims 1, 5, 7, 11, 13, and 17 are obvious over Xu and Ferris, and claims 2–4, 6, 8–10, 12, 14–16, and 18 …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the contentions and the evidence of record at this juncture, we conclude Petitioner establishes a reasonable likelihood of prevailing in demonstrating the unpatentability of claims 1–18 of the ’134 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’134 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“We find that the phrase “at least” in Petitioner's proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and before the effective date of the applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and 103. Our analysis would not change under the AIA versions of §§ 102, 103. 3 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’134 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’134 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner contends that, as to the phrase “determining a consumption rate of cloud resources by one or more virtual machines (VMs),” recited in claim 1 and “analogous limitations” in claims 7 and 13, a person of ordinary skill in the art “reading the claims in light of the specification would have understood that the claims’ use of ‘by one or more [VMs]’ refers to consumption rates of cloud resources by the VMs (i.e., the rate at which the VMs are consuming the cloud resources), not determination performed by the VMs.” Pet. 8 (citing Ex. 1002 ¶¶ 111–113). Petitioner argues that its proposal is consistent with the ’134 patent Specification. Id. (citing, e.g., Ex. 1001, 4:62–66, 5:15–17, 5:37–43, 5:51–53, Fig. 1). We preliminarily find Petitioner’s unopposed proposal consistent with the intrinsic record based on the record before us at this early juncture.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“environment and triggering external migration when a threshold value is reached. Id. (citing, e.g., Ex. 1006 ¶¶ 12, 51–52, 65). Petitioner asserts that extending Xu’s teachings of analysis and monitoring “for the cloud environment as a whole” would have been a “predictable, straightforward application of Ferris teachings” and “would have allowed Xu to migrate VMs to a separate cloud environment when it encounters cloud-wise resource scarcity.” Id. at 37 (citing, e.g., Ex. 1002 ¶¶ 207–219). Petitioner also asserts a person having ordinary skill in the art “would have recognized that the ability to move VMs to other cloud environments was advantageous, as it would provide a safety valve ensuring that VMs still have access to sufficient resources even if the current cloud environment becomes overloaded.” Id. at 38 (citing, e.g., Ex. 1002 ¶ 213). Petitioner further asserts that its proposed combination would have been viewed as a reasonable way to achieve balancing objectives. Id. at 38–39 (citing, e.g., Ex. 1002 ¶ 214; Ex. 1005, 1). We preliminarily find that Petitioner’s contentions are supported sufficiently by the cited portions of the asserted art. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have combined the teachings of Xu and Ferris in the manner proposed by Petitioner. After consideration of the contentions and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently that Xu alone or with Ferris teaches element 1.4 of claim 1 for purposes of institution.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,635,134 - Neuroderm Ltd. v. Abbvie Inc.InstitutedPTAB · Nov 14, 2022 · PGR2022-00040 · APJ Cynthia M Hardman · PGR · Institution
The Board instituted PGR on claims 1–17 based on all asserted grounds, finding the petition showed they more likely than not lacked written description support and enablement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons explained below, we find that Petitioner has met the threshold showing for post-grant review of claims 1–17 with respect to the first challenge (written description support for the claimed genus). On that basis, we institute post-grant review of all challenged claims. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018); 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims . . . .”). We address this challenge first, then provide the parties guidance on Petitioner’s second written description challenge (support for carbidopa itself).” slip op. at 19
- Skill levelSkill level board ownOther
“Ex. 1006, 1 (citations omitted). Accordingly, when considering the ’507 patent’s purpose, the type of problems encountered in the art, and prior art solutions to those problems, it is clear that with respect to levodopa/carbidopa treatments for Parkinson’s Disease, the pharmaceutical formulation and its resulting pharmacokinetics and patient experience are intertwined, thus supporting a requirement that a person of ordinary skill in the art have knowledge or experience in each of these areas. See, e.g., Indivior Inc. v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1345 (Fed. Cir. 2019) (finding no clear error in district court’s compromise measure of level of ordinary skill in the art as a team comprising different skill sets). In view of the above considerations, we preliminarily find that a person of ordinary skill in the art would be a member of a team that includes person(s) with (a) a Ph.D. in a field related to the development of pharmaceuticals (for example, pharmacology, pharmacokinetics, pharmaceutics, pharmaceutical chemistry, organic chemistry, biochemistry, molecular biology, medicinal chemistry, formulation development, or a related field), or equivalent degree, and 2–4 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, or a B.S. or M.S. degree in a field related to the development of pharmaceuticals, or equivalent degree, and 4–6 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, and (b) a medical degree or equivalent degree with experience in treating patients with Parkinson’s disease. In subsequent briefing, should the parties propose any differences from the team approach articulated above, they should support their proposal and address the impact, if any, of the differences on the pertinent disputes in this proceeding. Any final determination on the level of ordinary skill in the art will be made on the full trial record.” slip op. at 15
- Expert testimonyPetitioner expert creditedOther
“Additionally, based on their statements of qualifications and curricula vitae, for purposes of this Decision we find Drs. LeWitt and Sloan qualified to provide technical opinions from the perspective of a person of ordinary skill in the art. Ex. 1003 ¶¶ 1–10, pp. 87–119 (Dr. LeWitt’s statement of qualifications and curriculum vitae); Ex. 1004 ¶¶ 1–11, pp. 45–71 (Dr. Sloan’s statement of qualifications).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with the parties that the express definition provided during prosecution should be adopted. See, e.g., Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341, 1346–47 (Fed. Cir. 2001) (construing claims in accordance with definition provided in declarations submitted during prosecution). Accordingly, we preliminarily construe the term “a compound comprising levodopa” in accordance with the full definition Dr. Okun provided during prosecution, i.e., “any molecule with a levodopa core moiety including levodopa itself, as well as prodrugs, salts, and hydrates of levodopa.”” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,091,507 - Atlassian, Inc. v. Phoji, Inc.InstitutedPTAB · Jun 1, 2022 · IPR2022-00210 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on all grounds challenging claims 1–13, finding a reasonable likelihood that Atlassian would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and approximately three years of work experience in the field of mobile communication networks and applications, or (ii) an advanced degree (or equivalent) in electrical engineering, computer science, or a comparable subject and approximately one year of postgraduate research or work experience in the field.” Pet. 8 (citing Ex. 1003 ¶¶ 99–102). At this stage, Patent Owner does not provide a description of the level of ordinary skill. 1 WO 2007/080570 A1, Pub. July 19, 2007 (Ex. 1004, “Gura”). 2 Jensen, et al., “Multidimensional Databases and Data Warehousing” 2010 (Ex. 1005, “Jensen”). 3 US 2007/0033212 A1, Pub. Feb. 8, 2007 (Ex. 1006, “Fifield”). 4 Le Bodic, “Mobile Messaging Technologies and Services: SMS, EMS and MMS” 2d ed. 2005, (Ex. 1007, “Le Bodic”). Petitioner’s description is supported by credible expert testimony. For the purpose of our decision, we adopt Petitioner’s description.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Citing support from the ’149 patent and its expert, Petitioner asserts “media messaging platform,” as recited in claims 1 and 10, means “a cloudbased platform for modifying messaging or texting services by personalizing messages or texts with multimedia inserts.” Pet. 9–11 (citing Ex. 1001, 1:38–46, 4:18–28, 12:37–40, 11:47; Ex. 1003 ¶ 107). Petitioner further asserts, with relevant support from extrinsic sources and its expert, that “semantic model,” means “a manner of organizing a database based, at least in part, on the meaning of objects in the database.” Id. at 11–13 (citing Ex. 1001, 9:28–10:60, Figs. 3, 10, 14; Ex. 1003 ¶¶ 110, 111; Ex. 1017, 6; Ex. 1006 ¶ 40; Ex. 1018, 607; Ex. 1019, 962). For purposes of this decision, we agree with and adopt Petitioner’s constructions. To the extent that Patent Owner disagrees with these constructions, we will consider Patent Owner’s proposed alternative constructions and any supporting evidence at trial.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its obviousness challenge to claim 1 based on Gura. 2. Obviousness of Claims 2–13 Based on Gura” slip op. at 10
Claim constructionPatents in suitUS 9,565,149 - Restem, LLC. v. Jadi Cell, LLCInstitutedPTAB · Apr 20, 2022 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–15 over all asserted grounds, finding a reasonable likelihood that Petitioner would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’176 patent on the grounds raised in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as to patentability of claims for which inter partes review is instituted. Any final decision will be based on the record, as fully developed during trial.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15 (citing Ex. 1007 ¶¶ 19–24). Patent Owner does not comment on the characterization offered by Petitioner or offer one of its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’176 patent and the cited prior art. 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))).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Prelim. Resp. 16. Patent Owner cites Ex. 1001 6:32–34, noting that the patent specification “expressly defines ‘isolated cell’ as ‘[referring] to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.’” Id. As neither party references any prosecution history related to interpretation of this claim term, we look only to the claim itself and the specification as intrinsic evidence. DePuy Spine, 469 F.3d at 1014. Claim 1 recites “an isolated cell prepared by a process comprising . . . ” Ex. 1001 at 19:6. As Patent Owner notes, the patent specification states “the term ‘isolated cell’ refers to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.” Id. at 6:32–34. The remainder of the citations Petitioner cites relate to additional steps for isolating the cell, or characteristics of the cell, such as the markers expressed or not expressed, but do not further elucidate the meaning of “an isolated cell” itself. Dr. Olsen’s testimony reiterates the content of these citations but does not add any additional information or explanation. Ex. 1007 ¶¶ 67–68. Given the definition provided in the specification, we interpret “an isolated cell,” consistent with Patent Owner’s definition, to mean “one or more cells isolated from the subepithelial layer of a mammalian umbilical cord.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“the Wharton’s Jelly, epithelium, etc.” and that, without evidence that the recited markers are expressed/not expressed as recited, there is no inherent disclosure. Prelim. Resp. 22, 25, 28–29 (citing Ex. 2022 ¶ 162). Patent Owner is correct that an ultimate finding of anticipation requires such confirmation, but, for purposes of institution, our standard is a reasonable likelihood. 35 U.S.C. § 314(a). Due to the breadth of claim 1, Majore’s method must produce only one cell having the recited limitations to anticipate. Petitioner’s expert testifies that production of such cells would be inherent by Majore. See Ex. 1007 ¶ 97 (“Majore’s protocol would produce a population of adherent cells that necessarily and inevitably comprise the cells of the subepithelial layer.”). And, although we recognize that the burden of persuasion does not rest on Patent Owner, Dr. Burger’s testimony, which focuses heavily on the differences in methodology between Majore and the ’176 patent disclosure and Petitioner’s alleged failure of proof, is not persuasive at this stage to overcome the evidence presented by Petitioner. See Ex. 2002 ¶¶ 137–163. Indeed, both Majore and the ’176 patent disclose umbilical cord tissue cut into sections and placed into environments fostering cell culture and replication. Ex. 1011 at 18, Ex. 1001 at 13:57–14:5. Both methods encourage and result in adherent cells growing on a plastic growth surface awash in culture media. Id. On this record, Petitioner has provided sufficient factual basis to establish a reasonable likelihood that Majore’s explant method of dissecting umbilical cord, culturing cells, and growing adherent cells would have produced (or did produce) at least one cell with the recited limitations. In this regard, we credit the testimony of Dr. Olsen that the isolated cells disclosed in Majore are MSCs cultured from umbilical cord tissues including the subepithelial layer, which have migrated to the periphery of the cut tissue and adhered to the tissue culture vessel. Ex. 1007 ¶¶ 95–97. That Majore discloses genetic markers with similar expression/non-expression to the markers recited in claim 1 is further evidence that at least some cells were cultured from the subepithelial layer. Id. ¶ 99. Moreover, even if we gave weight to the process limitations construed as requested by Patent Owner (Prelim. Resp. 13–20), the limitations are sufficiently broad as to read on Majore with the exception of the express/non-expressed markers. With regard to markers not examined by Majore, we credit Dr. Olson’s statement that “the cells obtained by Majore’s protocol necessarily and inevitably comprise the same cells produced by the process steps of claim 1[A] and 1[B]” and that the skilled artisan would have understood that the marker expression pattern would be identical for those cells. Id. ¶ 101.16 The evidence on this issue is subject to final determination on a more complete record developed through trial.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,803,176 - PTAB · Apr 15, 2022 · IPR2022-00122 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1, 3–11, and 14–18, finding a reasonable likelihood they would be shown obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“sufficiently at this juncture by the cited portions of Sharp, Morgan, and Tracy. Also, we are persuaded that Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Sharp, Morgan, and Tracy in the manner recited in claim 1 sufficient for purposes of institution.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“We find that the phrase “at least” in Petitioner's proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’774 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’774 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’774 patent Specification describes “by using a hidden process incorporated in a virtual machine’s kernel and a trusted wireless and/or wired positioning service, a cloud provider and/or cloud user may be alerted about possible virtual machine hijacking/theft.” Ex. 1001, 2:10–14; see also id. at 8:20–22 (describing that “hidden process 507 may be configured to prevent execution of a virtual machine in situations in which a hacker has obtained an unauthorized copy of a virtual machine” and is attempting to run the virtual machine). Consistent with Petitioner’s assertion, the ’774 patent Specification consistently refers to the hidden process in connection with it being a kernel-level process. See, e.g., id. at 8:18–20 (“Hidden process 507 may be a virtual machine kernel level process which may be used to assist the target host verification process.”), code (57) (describing “a hidden process incorporated in a virtual machine’s kernel”), 2:9–10 (describing “a hidden process incorporated in a virtual machine’s kernel”), Fig. 5 (illustrating “Hidden Process 507” within “506 VM Kernel”); 10:40–45 (describing a hidden process configured to verify a hardware configuration of a target host that may be incorporated in a kernel of the virtual machine). process is executable by the virtual machine.” The portion of Petitioner’s construction indicating that a “hidden process” is “executable by the virtual machine” appears to be redundant to that claim recitation. At this early juncture, we preliminarily agree with Petitioner that “the scope of hidden process encompasses ‘a process incorporated in a virtual machine’s kernel.’” Pet. 14 (citing Weissman ¶¶ 50–56). At this juncture, we omit “and executable by the virtual machine” to avoid redundancy with the “wherein” clause reciting the same requirement.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner’s contentions for the recitation “via a hidden process . . . wherein the hidden process is executable by the virtual machine” in element 1.2 appear to be sufficiently supported. In summary, Petitioner’s contentions for element 1.2 are supported sufficiently at this juncture by the cited portions of Sharp, Morgan, and Tracy. Also, we are persuaded that Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Sharp, Morgan, and Tracy in the manner recited in claim 1 sufficient for purposes of institution. Accordingly, after consideration of the contentions and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently that the combination of Sharp, Morgan, and Tracy teaches element 1.2 of claim 1 for purposes of institution.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,678,774 - PTAB · Apr 6, 2022 · IPR2021-01458 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 1, 4, 6, 7, 9–12, 15, 17, and 18 on all petition grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on these factors, we conclude that Twitter has made a sufficient showing that claim 12 would have been obvious over PALLAS in view of Yau (Ground 2) or in view of the teachings of both Yau and Kim (Ground 4). Thus, for the reasons below, we determine that Twitter is reasonably likely to prevail on claim 12.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“As PARC recognizes, the first factor examines whether the same petitioner or a related petitioner previously filed a petition directed to the same claims of the same patent, and can also apply in some circumstances when “when different petitioners submit multiple petitions to challenge the same patent.” Prelim. Resp. 12 (citing Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve I”); see also Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00064, Paper 10 (PTAB May 1, 2019) (precedential) (“Valve II”). Valve II held that “when different petitioners challenge the same patent, [the Board] consider[s] any relationship between those petitioners while weighing the General Plastic factors.” Valve II at 10. In weighing this factor against the second petitioner Valve in Valve II, the Board noted that “Valve and HTC were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on the same product, namely HTC’s VIVE devices that incorporate technology licensed from Valve.” Id. at 11. Also, Valve joined the previous petition as a party and the later-filed petitions challenged the same claims as the previous petition. See id. (noting a “complete overlap in the challenged claims”). Similar considerations do not exist here. Twitter did not previously file a petition challenging the ’599 patent,11 nor did Twitter seek to join the 11 Concurrently with this Petition, Twitter filed another petition on the same grounds, challenging claims of the ’599 patent that Twitter thought might be indefinite and thus not amenable to an inter partes review. See IPR2021- 01459, Paper 3; Paper 2, 2. Because Twitter ranks this Petition above that in IPR2021-01459 (see Paper 2, 3), we address the parallel-petition issue in the decision instituting trial in the other proceeding. earlier Snap or Facebook petitions. See generally IPR2021-00987, IPR2021- 01294, IPR2021-01536. There is also no evidence in the record that Twitter coordinated with Snap or Facebook in their respective petitions: Twitter represents that they “are unrelated companies; if anything, they are direct competitors.” Pet. 102. Twitter also represents that “Twitter has not coordinated its IPR with Snap or Facebook; and the attorneys substantively preparing Twitter’s IPR did not use Snap’s or Facebook’s petitions as a roadmap or even consult them.” Id.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Twitter argues, for the purpose of its Petition, that all of the terms in the challenged claims have their ordinary and customary meaning, except that the ’599 patent defines contextual information to mean “input data that is gathered by a computing device from a number of input sources, and reflects basic information associated with the user and/or the operating environment of the computer device.” Pet. 13 (emphasis omitted) (quoting Ex. 1001, 6:15–19). Twitter also argues that the ’599 patent defines context to mean “a set of data that describes an event or environmental factor associated with a user or the operational environment of content management system.” Id. (emphasis omitted) (quoting Ex. 1001, 7:36–39). Twitter provides little analysis for its proposed constructions apart from citing the location of the alleged definitions in the ’599 patent. PARC does not agree that the terms contextual information or context need explicit constructions, but does not offer any evidence that Twitter’s proposed constructions are incorrect. See Prelim. Resp. 11. PARC also contends that Twitter incorrectly applies its proposed constructions to the asserted prior art by failing to recognize the distinction between those two terms. See id. at 11, 25. We address this argument below. See infra part III.D.1(d). Based on the parties’ arguments at this stage, our application of the claim limitations to the asserted prior art does not rely on Twitter’s proposed constructions, and no explicit construction is necessary for our decision to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that the parties’ arguments touch on these or other particular claim terms, we discuss them below in the context of the asserted prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the preliminary record, we disagree. Although Yau teaches that students engage with the learning content at a time when they “would like to undertake some learning activities” (Ex. 1005, 4), Yau also states that it takes a “context-triggered approach” based on “IF-THEN rules, which are previously specified,” so that actions are “invoked automatically when a contextual element or a mixture of contextual elements are fulfilled.” Ex. 10 PARC also addresses Twitter’s argument (for Ground 1) that PALLAS alone teaches a trigger condition that triggers presentation of a content piece to the user. See Prelim. Resp. 18–22. As we discuss below, we do not need to reach this issue for our determination to institute an inter partes review. See infra part III.D.2. 1005, 5. Thus, we find Twitter’s arguments sufficiently persuasive that Yau teaches a trigger condition that triggers the presentation of a content piece such as a formal assessment. PARC also contends that Twitter’s arguments in this regard are insufficiently cited and thus conclusory, and that Twitter improperly incorporates Dr. Turnbull’s declaration by reference. See Prelim. Resp. 23– 24. We disagree, based on the present record, that Twitter’s arguments in the Petition lack sufficient support. A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). Although many of the quotations in Twitter’s claim charts are abbreviated and lack specific citations, Twitter adequately directs our attention to the passage in Yau with those quotations that indicate that context-triggered actions are automatic when a contextual element is fulfilled. See Pet. 37. Twitter also articulates specific reasoning, based on the disclosures in PALLAS and Yau, that would support the conclusion obviousness, including a motivation to combine the two references. See Pet. 43–44. We find these arguments sufficiently specific and persuasive, at this stage, to support Twitter’s contention that the combination of PALLAS and Yau teaches limitation 12.1.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,489,599 - PTAB · Mar 24, 2022 · IPR2021-01461 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–5, 7–11, 13–17, 19, and 20 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“GROUNDS OF THE PETITION For the reasons below, we determine that there is a reasonable likelihood that Facebook would prevail in showing that at least one of claims 1–5, 7–11, 13–17, 19, and 20 of the ’439 patent is unpatentable under the grounds raised in the Petition. Before analyzing those grounds in detail, we first address the level of ordinary skill in the art, and whether we need to construe any claim terms explicitly for our analysis.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Next, Facebook argues that an ordinarily skilled artisan would have recognized in Falchuk “a clear benefit to the system of Cheng, e.g., timely notifying its recommender about changes to the context graph that are meaningful to the user.” Pet. 34 (citing Ex. 1002 ¶ 94). Specifically, Facebook points to a teaching in Cheng that, “[a]t a particular moment, what a user needs or likes and what is appropriate to suggest to the user can be highly variable based upon the user’s situation,” which suggests a motivation for using a recommender like in Falchuk that would allow such recommendations to be made in a timely manner as soon as the context graph changes. Pet. 35 (alteration in original) (quoting Ex. 1003 ¶ 10) (citing Ex. 1002 ¶ 94). Also, Facebook argues that incorporating Falchuk’s recommender into Cheng’s system would obviate any need for the user to request a recommendation explicitly, and allow the system to make recommendations at a time when “the user may not even realize . . . that they should request a recommendation.” Pet. 35 (citing Ex. 1002 ¶¶ 94–96; Ex. 1004, 3:23–28).” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Similar considerations do not exist here. Facebook did not previously file a petition challenging the ’439 patent, nor did Facebook seek to join the earlier Snap or Twitter petitions. See generally IPR2021-00986, IPR2021- 01430. There is also no evidence in the record that Facebook coordinated with Snap or Twitter in their respective petitions: Facebook represents that it “played no role in [the] preparation or filing” of the Snap or Twitter petitions. Pet. 4. And, as Facebook persuasively argues, the grounds in its Petition are different from those in the Snap and Twitter petitions, except that the Twitter petition also cited Cheng as a secondary reference. Pet. 4–5. And we agree with Facebook that “the present Petition presents Cheng in a different light.” Pet. 5. Therefore, this factor favors not exercising discretionary denial. B. FACTORS 2, 4, AND 5 PARC contends that “Twitter, Snap, and Facebook knew, or should” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Mr. Schmandt’s testimony, Facebook argues that a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of context-based computer systems, such as the collection, processing and use of context data in computer systems capable of adapting their operation based on context.” Pet. 6 (citing Ex. 1002 ¶¶ 15– 18). Facebook also contends that a person might qualify as an ordinarily skilled artisan “with more formal education and less technical experience, or vice versa.” Id. PARC does not dispute this proposed level of ordinary skill in its Preliminary Response. We adopt Facebook’s proposed articulation for this decision because it is supported by testimonial evidence and appears reasonable in light of the subject matter of the ’439 patent. If PARC proposes a different articulation at trial, we will consider that proposal and any supporting evidence in light of the full trial record.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - PTAB · Mar 24, 2022 · PGR2021-00112 · APJ Bryan F Moore · PGR · Institution
Instituted PGR on claims 1–20 because Petitioner showed a reasonable likelihood that claim 1 lacks written description support; all petition grounds were included.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“content for output.” Id. at 89. We determine, however, that Petitioner’s argument under Step 2A Prong One that claim 1 is directed to the “obtaining content for output” is not substantially different from the Examiner’s determination that claims 1‒20 recite “collecting information, analyzing it, and displaying certain results of the collection and analysis.” Compare Pet. 37–88 (citing e.g. Electric Power), with Ex. 2001, 193–194 (also citing Electric Power). In both cases, the argument is the same or substantially the same, i.e., that similarly identified subject matter of the claim is obtaining (collecting) data and displaying (outputting) it. Nevertheless, as to Step 2A Prong Two, we determine that the claims at issue in the ’096 prosecution differ in material ways from the ’903 patent claims at issue in this PGR. Specifically, the ’096 patent claims recite a touchscreen interface not recited in the ’903 patent claims. Additionally, the ’903 claims focus on the “output device” as performing the patented steps but in the ’096 prosecution history the “‘information apparatus performs the patented steps and “is integral to the claims” (as the Applicant argued). See Ex. 2008 [comparison of ’096 prosecution claims and ’903 claims]; Ex. 2001, 150; see also Pet. 89 (“the claims at issue in the ’067 application were different than the claims of the ’903 patent addressed here.”). rejection and arguments in the ’096 prosecution history turns on whether the claims in this PGR recite different elements that must be determined to integrate the judicial exception into a practical application (i.e., Prong Two of Step 2A). Petitioner argues that an essential element different than the ’096 claims, i.e. the output device, does not integrate the judicial exception into a practical application because the claims do not amount to an improvement to computer functionality. Pet. 37–72. We find this a close case. Nevertheless, due to the differences in the claims, we determine that the Examiner’s withdrawal of the § 101 rejection in light of the applicant’s arguments regarding the claim being directed to a specific technical solution is not substantially the same argument that Petitioner’s presents in the Petition as to Prong Two of Step 2A.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“C. Lack of Written Description Support Petitioner contends that the challenged claims are unpatentable for lack of written description for the same reasons it contends the ’903 patent is PGR eligible. Pet. 13–36. The Specification of the ’903 patent has substantially the same disclosures as the Specification of the ’413 application relied on by Patent Owner (see Prelim. Resp. 20) to which the ’903 patent claims priority. Having determined that the disclosures in the ’903 patent Specification and the ’413 application is insufficient to provide written description support for the at least claim 1, we also determine that Petitioner has demonstrated a reasonable likelihood that at least claim 1 is unpatentable for the same reasons. Thus, we exercise our discretion and institute post grant review of claims 1–20 challenged under this ground. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018).” slip op. at 33
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateInstituted
“in the art at the time of the invention] would have understood that an output system/device could be (or include) an information apparatus. Prelim. Resp. 24. We determine that Patent Owner’s argument has a logical flaw––i.e., the fact that a particular device could be used alternately as an information apparatus or an output device does not necessarily mean that it was known by one of ordinary skill in the art to use a combined information apparatus/output device and have the new combined device perform all the additional functions required by the claims. “The knowledge of ordinary artisans may be used to inform what is actually in the specification, but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) (“Rivera”). “The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification . . . . It extends only to that which is 1997). Patent Owner has not pointed to any disclosure in the ’413 application teaching that an “output device” can perform the functions of the “information apparatus” including its interactions with the “output device.” For example, claim 1 recites “wirelessly receiving, by the output system . . . output data from at least one server of the one or more servers over the Internet.” Ex. 1001, 37:28–32. At this stage, we find sufficiently persuasive Petitioner’s argument, which we discuss above, that the only written description support for an “output device” that performs the claimed functions by accessing the Internet provided by Patent Owner is not an “output device” but an “information apparatus.” Prelim. Resp. at 27–29.” slip op. at 29
§ 112 disclosureDiscretionary denialcites Mayo · Bilski · Electric PowerPatents in suitUS 11,029,903
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.