• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-00548 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over the Advisory Committee Art under § 103(a), which the Board found publicly accessible and sufficient to teach or suggest the claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420–21 (2007). As the title, field of the invention, and background discussion in the ’059 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title, 1:10– 27. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year before the ’059 patent priority date. Pet. 3–7; see also Ex. 1001, Related Application, 1:6–9 (indicating earliest priority date for the ’059 patent).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We are not persuaded by Patent Owner’s arguments or the testimony of Dr. DiPiro and Dr. Bergeron in support thereof. Patent Owner does not explain adequately why generating a report for a particular purpose or “ad hoc” precludes it from being a report generated periodically. See, e.g., PO Resp. 28 (citing Ex. 2046 ¶ 34 (testimony by Dr. DiPiro stating that “POSA would not consider ‘ad hoc’ reports to be ‘periodic’ because they are not generated with any regular frequency.”); Ex. 2047 ¶ 32 (testimony by Dr. Bergeron stating same). As noted above, the specification does not limit “periodic reports” to those generated with “regular frequency.” Moreover, to the extent that Figure 4B in the ’059 patent illustrates generating “ad hoc” reports, as Patent Owner contends, such disclosure supports a construction that the recited “periodic reports” include such “ad hoc” reports. Ex. 1001, 6:13–7:3; Reply 13–14 (citing Ex. 1047, 6; Ex. 1048, 9:12–19, Fig. 4, 436). Patent Owner also points us to a Merriam-Webster’s Collegiate Dictionary definition of the term “periodic,” which defines the term as “occurring or recurring at regular intervals,” or something that is “repeated.” PO Resp. 27 (quoting Ex. 2043, 3). Petitioner points us to several other dictionary definitions, which define “periodic” as also including “intermittent.” Reply 15 (citing Ex. 1049, 3 (defining “periodic” as including “occurring repeatedly from time to time”); Ex. 1050, 3 (defining “periodic” as including “[t]aking place now and then” or “INTERMITTENT”); Ex. 1051, 3 (defining “periodic” as including “[h]appening or appearing now and then” or “intermittent, occasional”). Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’059 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 25–28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 17

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

    “1. “exclusive central pharmacy,” “exclusive computer database” and “the central pharmacy authorizing the prescription drug to be dispensed to the patient by another pharmacy” In our Decision on Institution, we construed “exclusive central pharmacy” to mean “single or sole pharmacy,” and we construed “exclusive computer database” to mean “single or sole computer database.” Dec. on Inst. 20. We also construed the phrase “the central pharmacy authorizing the prescription drug to be dispensed to the patient by another pharmacy” in dependent claims 7, 10, and 15 to mean “the exclusive central pharmacy may authorize another pharmacy to prepare and give the prescription drug to a patient.” Id. at 22–23. Our constructions are consistent with those proposed by Petitioner, and Patent Owner takes no position regarding Petitioner’s arguments in this regard. Pet. 9–11; PO Resp. 24 n.8. Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from those interpretation.” slip op. at 14

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

    “but proposes that the construction is incomplete in relation to the term “periodic reports.” PO Resp. 25. Patent Owner contends that “periodic reports” should be construed to mean “at regular frequencies or intervals, as opposed to intermittently or upon request.” Id. at 26–27 (citing Ex. 2046 ¶¶ 31–39; Ex. 2047 ¶¶ 29–36). In support, Patent Owner points to the specification of the ’059 patent, such as Figures 13A–C, and where the specification states “[e]ach report has an associated frequency or frequencies.” Id. at 26–27; Ex. 1001, 8:22–29. The cited portions of the specification, however, describe Figures 13A–C as “descriptions of sample reports obtained by querying a central database having fields represented in Fig. 7.” Ex. 1001, 8:22–24 (emphasis added); see also id. at 2:55–57 (also describing Figs. 13A–C as describing “sample reports”); Reply 13. Thus, we do not agree that the specification indicates that “periodic reports” as recited in the claims refers only to reports obtained at regular frequencies or intervals, even if the term includes such reports. Patent Owner also responds to testimony by Petitioner’s expert, Dr. Valuck, who states that “periodic reports” can be generated on either “an ad hoc basis or on a regular basis.” PO Resp. 27 (quoting Ex. 2044, 184:8–16). Patent Owner argues that a POSA “would understand that ad hoc reports are done for a particular purpose,” and, therefore, a “POSA would not consider ‘ad hoc’ reports to be ‘periodic.’” Id. at 27 (citing Ex. 2046 ¶¶ 34, 38; Ex. 2047 ¶¶ 32, 35, Ex. 1001, Figs. 4B, 13A–C)). Patent Owner also argues that Figure 4B illustrates generating “ad hoc” reports prepared for the particular purpose of investigating specific early refill requests, and not “periodic” reports as recited in the challenged claims. PO Resp. 27–28 (citing Ex. 2046 ¶ 37; Ex. 2047 ¶ 34). We are not persuaded by Patent Owner’s arguments or the testimony of Dr. DiPiro and Dr. Bergeron in support thereof. Patent Owner does not explain adequately why generating a report for a particular purpose or “ad hoc” precludes it from being a report generated periodically. See, e.g., PO Resp. 28 (citing Ex. 2046 ¶ 34 (testimony by Dr. DiPiro stating that “POSA would not consider ‘ad hoc’ reports to be ‘periodic’ because they are not generated with any regular frequency.”); Ex. 2047 ¶ 32 (testimony by Dr. Bergeron stating same). As noted above, the specification does not limit “periodic reports” to those generated with “regular frequency.” Moreover, to the extent that Figure 4B in the ’059 patent illustrates generating “ad hoc” reports, as Patent Owner contends, such disclosure supports a construction that the recited “periodic reports” include such “ad hoc” reports. Ex. 1001, 6:13–7:3; Reply 13–14 (citing Ex. 1047, 6; Ex. 1048, 9:12–19, Fig. 4, 436).” slip op. at 16

  Patent outcomesUS 7,895,059 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,895,059
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-00547 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over the Advisory Committee Art under 35 U.S.C. § 103(a).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420–21 (2007). As the title, field of the invention, and background discussion in the ’107 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title, 1:11– 27. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year before the ’107 patent priority date. Pet. 3–6; see also Ex. 1001, Related Application, 1:6–9 (indicating earliest priority date for the ’107 patent).” slip op. at 11

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

    “1. “exclusive central pharmacy” In our Decision on Institution, we construed the term “exclusive central pharmacy” to mean “single or sole pharmacy.” Dec. on Inst. 20–21. Our constructions are consistent with those proposed by Petitioner, and Patent Owner takes no position regarding Petitioner’s arguments in this regard. Pet. 8; PO Resp. 24 n.8. Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from that interpretation.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The key inquiry is whether a reference was made “sufficiently accessible to the public interested in the art” before the critical date, here December 17, 2001. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing of a reference is not “a necessary condition for a reference to be publicly accessible,” but it is one among various factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the ‘facts and circumstances surrounding the reference’s disclosure to members of the public.’” Voter Verified, Inc., v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012) (quoting In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)). With these principles in mind, we consider the parties’ arguments below.” slip op. at 22

  Patent outcomesUS 7,765,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,765,107
• Amneal Pharmaceuticals, LLC / Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-00545 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–26 are unpatentable as obvious over the Advisory Committee Art under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420-21 (2007). As the title, field of the invention, and background discussion in the ’182 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title (54), 1:15–31. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “First, we agree with Petitioner that the preamble language “[a] method of treatment of a narcoleptic patient” in the independent claims is not “necessary to give life, meaning, and vitality” to the claims of the ’182 patent. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The claims recite method steps for controlling distribution of a prescription drug prone to abuse, misuse, or diversion; the claims do not recite treating a patient, administering a compound or drug product for therapeutic effect, or other treatment-related method steps. See, Ex. 1007 ¶ 37. Therefore, we determine the preamble language “[a] method of treatment of a narcoleptic patient” to be non-limiting.” slip op. at 14

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

    “Second, the wherein clause at issue does not recite a method step. Independent claims 1, 8, and 19 consistently recite method steps using the present participle verb form, “receiving,” “entering,” “checking,” and “authorizing.” The wherein clause, however, recites the GHB drug product “treats” cataplexy, rather than reciting a method step of “treating” cataplexy. The absence of the present participle verb form and the use of a wherein clause indicate an intended use or inherent property of the GHB drug product to treat cataplexy, not a method step. See Credle v. Bond, 25 F.3d 1566, 1572 (Fed. Cir. 1994) (“[B]efore each clause containing an undisputed present participle designating the method steps—‘providing an insert;’ ‘joining two opposed webs’ . . . there is a comma, indicating the beginning of a new, distinct step . . . . There is no such comma preceding ‘flexibly securing.’ This suggests that ‘securing’ is not a present participle signifying a distinct method step.”).” slip op. at 15

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

    “Briefing Information 3754b1.htm” was posted on the FDA’s website not later than June 17, 2001. Ex. 1018, 5. Petitioner’s Internet Archive evidence further indicates this link led to file links for Orphan Medical’s “Briefing Information” (Ex. 1005 Briefing Booklet) and Xyrem “Video Script 2/2/01” (Ex. 1006) and for the FDA’s “Safety Review” (Ex. 1004 Preliminary Clinical Safety Review), which were posted on the FDA’s website not later than July 1, 2001. Ex. 1019. We also note the URL for the FDA website address in Exhibit 1019 concludes with the code “briefing/3754b1.htm,” which matches the Briefing Information code linked in Exhibit 1018.15 Thus, the Internet Archive evidence supports Petitioner’s contention that the documents of Exhibits 1004–1006 were publicly accessible on the FDA’s website for the Xyrem Advisory Committee not later than July 1, 2001, in accordance with the Federal Advisory Committee Act. slip op. at 28

  Patent outcomesUS 8,589,182 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,589,182
• Dukane Corporation v. Herrmann Ultraschalltechnik GmbH & Co., KGRehearing denied
  PTAB · May 26, 2016 · IPR2016-00066 · APJ Michelle N Ankenbrand · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution for claims 4, 5, and 7–9 because Petitioner did not show the Board misapprehended or overlooked its arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “Regarding the asserted grounds that Klinstein ’158 anticipates claim 8 and the DPC Manual anticipates claims 6–9, we determined that Petitioner “fail[ed] to address the limitations reciting different target variables for the machining intervals,” which was “fatal to [those] unpatentability assertions.” Dec. 9–10. Likewise, we determined that Petitioner’s failure to address the additional “target variable[s] differ” limitation of claim 8 was fatal to the asserted ground that the subject matter of claim 9 (which depends from claim 8) would have been obvious over the combination of Klinstein ’158 and the iQManual. Id. at 10. Regarding Petitioner’s assertion that Klinstein ’158 anticipates claim 6, we determined that, although Petitioner addressed the “target variable[s] differ” limitation, Petitioner failed to explain adequately how the reference discloses that limitation. Id. at 12–13. With respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816, we determined that Petitioner did not provide “adequate reasoning based on rational underpinnings to persuade us, in the absence of hindsight, that one of ordinary skill would have modified the welding method of Klinstein ’816 to achieve the claimed subject matter [i.e., the specific features that claims 4 and 5 add to the subject matter of claim 1].” Id. at 16.” slip op. at 3

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

    “Reh’g Req. 5 (citing Pet. 43–53). Petitioner does not direct us to the particular page of the Petition on which it advanced that argument, but, rather, cites ten pages of analysis. After reviewing the cited pages, it appears that Petitioner made the argument in a claim chart to show how the DPC Manual discloses welding variables and target variables, not how the DPC Manual discloses the “target variable[s] differ” limitation. See Pet. 45– 46. Indeed, Petitioner’s claim chart does not address the “target variable[s] differ” limitation. Like the Petition, the claim chart focuses on whether the target values of the target variable differ. Id. at 46. In any event, Petitioner fails to explain how the identification of exemplary target variables set forth in the DPC Manual is an anticipating disclosure of different target variables for each machining interval. In fact, the analysis in the Petition contradicts Petitioner’s argument in this regard because, as explained previously, Petitioner identifies the same variable as corresponding to the first, second, and fifth target variables disclosed in the DPC Manual. Dec. 9 (citing Pet. 57). Petitioner further admits that the DPC Manual discloses “the ‘[c]ontrol parameters [i.e., target variables] for P2 are the same as those used for P1, however the limits set for the parameters are specific to each pressure.’ Thus, the user-specified target values for the first and second control parameters may differ.” Pet. 52 (citing Ex. 1005, 81) (emphasis added). Consistent with that description, Figure 7-16 of the DPC Manual illustrates how to set the dual pressure control and depicts the same control parameter (i.e., target variable) for P2 and P1 (i.e., weld time). Ex. 1005, 82. Accordingly, we are not persuaded that we overlooked or misapprehended Petitioner’s arguments as to what each of Klinstein ’158, Klinstein ’816, and the DPC Manual discloses.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “detecting a third target variable during the first machining interval and selecting the second target variable depending on the result of the detection. Ex. 1001, 4:52–55. Claim 5 depends from claim 4 and narrows the third target variable to welding time. Id. at 4:56–57. As to these claims, we determined that Petitioner’s argument, which was devoid of discussion and citations to Klinstein ’816, “fails to link the hypothetical detection and selection criteria [that a skilled artisan ‘could have’ used] to any particular teaching, preference, suggestion, or other reasoning derived from Klinstein ’816 and the level of skill in the art.” Dec. 16. We also determined that the Klinstein Declaration “adds no further detail; it merely mirrors the Petition.” Id. Petitioner contends that the entire discussion on pages 31–41 of the Petition relates to the obviousness of claims 4 and 5 from the disclosure of Klinstein ’816. Reh’g Req. 6. As Petitioner concedes in the Rehearing Request, however, “[t]hose pages make it clear, in graphic detail including reproduction of drawings from the [Klinstein] ’816 patent, how claim 1 is anticipated by the [Klinstein] ’816 patent.” Id. (emphasis added). In other words, the analysis on pages 31–41 does not set forth how the additional features of claims 4 and 5 would have been obvious from the disclosure of Klinstein ’816 and the level of skill in the art. Petitioner also repeats in the Rehearing Request essentially the same argument that was raised in the Petition, purporting to establish the link between Petitioner’s hypothetical detection criteria and the disclosure of Klinstein ’816 we found missing from its argument and the Klinstein Declaration. Compare Reh’g Req. 6–7, with Pet. 42 and Ex. 1007 ¶ 55. Petitioner’s argument is no more persuasive on the second telling. That is, Petitioner reargues a case it attempted to make out in the Petition, but fails to point out how we misunderstood its arguments or Mr. Klinstein’s testimony. Accordingly, we are not persuaded we misapprehended or overlooked Petitioner’s arguments with respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816.” slip op. at 9

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,702,883
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Some claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00083 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 3, 4, 9, 11–15, 17, and 20 are unpatentable as anticipated by JPAP ’213; claims 1–20 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237.

  RulingsFinal written decision

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

    “In our Institution Decision, we construed the “translating stage is configured to vertically move the gripper portion” limitation as follows: Claim 1 merely requires a translating stage configured to vertically move the gripper to a position near (“proximate”) one of two locations, a load port and a storage location. The translating stage need not be configured to move the gripper to a location proximate both because the claim uses the phrase “at least one of” those two locations. Dec. on Inst. 12. After further development of the record and consideration of the arguments presented and evidence relied upon by both parties, we determine that the above construction is appropriate with respect to this Final Written Decision. Accordingly, we construe “at least one of [a] and [b]” to mean “at least one of the listed items but not necessarily both.”” slip op. at 15

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

    “construction for the “at least one of” phrase, “there is no anticipation because JPAP ’213 cannot move the gripper proximate to the claimed positions.” PO Resp. 22. This argument is not persuasive because, for the reasons set forth above, the properly construed claims are not as narrow as Patent Owner proposes. See Section II.A. Even were we to conclude that Patent Owner’s proposed construction, where “at least one of” modifies both “[a]” and “[b],” Patent Owner’s arguments are not on point. Claim 1, for example, recites “the translating stage is configured to vertically move the gripper portion . . . to at least one of a second position proximate to a load port [beneath the rail] and a third position proximate to a storage location [disposed lateral to the rail].” There is no dispute that the system of JPAP ’213 is capable of moving to a location proximate a location under the rail. As to the storage location, it is not readily apparent how the above-quoted claim language requires, as Patent Owner argues, a vehicle “capable of moving the gripper/hoist mechanism laterally.” PO Resp. 23; see also Ex. 2016 ¶ 102 (Dr. Bottom’s offering the conclusory opinion that “[A] vehicle capable of moving the gripper to a position proximate to the storage location/conveyer lateral to the overhead rail must be capable of moving the gripper/hoist mechanism laterally.”). A vertically-moving system would be configured to move a gripper proximate (near, next to) an adjacent storage location even if lacking the ability to move laterally so as to place a unit on a storage shelf. Cf. Dec. on Inst. 12 (indicating our understanding of “proximate” as meaning “near”); see, e.g., Ex. 1003, col. 8, ll. 12–16 (“[The overhead hoist transport vehicle is moved along a track, as depicted in step 904, to a position adjacent the selected storage bin.”), and Figs. 3, 5b. Accordingly, we find the system of JPAP ’213 has the capability of moving to a position proximate a laterally disposed storage location as well as a positon beneath the rail. Ex. 1005, 20 (Fig. 1). Based on the argument and evidence presented in the Petition, and the insufficiency of the responsive argument and evidence presented in the Patent Owner Response, as discussed above, we are persuaded that Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 4, 9, 11–15, 17 and 20 are anticipated by JPAP ’213.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 162–165. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; see also Mot. Observ. 4–5 (quoting Ex. 2041, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 48–58 (citing Ex. 1028 ¶¶ 57, 157– 196); Reply 12–13 (citing Ex. 1028 ¶¶ 162–65, and 169); Mot. Observ., 2–3 (quoting Ex. 2041, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).10” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “D. Patent Owner’s Motion to Exclude Evidence Patent Owner seeks to exclude Exhibit 1038 and ¶¶ 3–4 of Exhibit 1040 filed by Petitioner with Petitioner’s Reply. Mot. Excl. 1 (Paper 47). Petitioner opposes the motion to exclude. Pet. Excl. Opp. 4–14 (Paper 56). Exhibit 1038 is a confidential product development plan dated September 25, 2002, and produced by Petitioner in this proceeding. Exhibit 1040 is a Second Declaration of Dr. Sturges, and paragraphs 3–4 contain his testimony explaining aspects of the confidential product development plan of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’172 patent. Reply 20, 22, and 25. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. 11 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 46–60; see also Reply 18–25. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 1–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 36

  Patent outcomesUS 8,197,172 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,197,172
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.

  RulingsFinal written decision

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14

  Patent outcomesUS 7,165,927 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,165,927
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00085 · APJ Brian P Murphy · IPR · Final written decision

  Claims 6–11 and 14 were not shown unpatentable as obvious over JPAP 213 and JPAP 237 because the petitioner did not establish a reasoned motivation to combine.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “A conclusion of obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined the prior art elements in the normal course of their work to yield the claimed invention. Id. We have rejected Petitioner’s interpretation of JPAP Paragraph 7 that underpins its motivation to combine argument and Dr. Sturges’ corresponding testimony. See Section II.B.3–4 above. Although Petitioner and Dr. Sturges do provide evidence of known alternatives for laterally transferring semiconductor cassette pods in overhead rail conveyance systems (Pet. 41 (citing Ex. 1028 ¶ 162)), their analysis of a reason or motivation to combine the systems in the manner claimed in the ’153 patent is lacking. The insufficiency of the evidence and analysis is particularly acute when the assertion that JPAP 213 paragraph 7 “expressly contemplates” such a combination is removed from the analysis. Petitioner’s remaining argument, that it would have been obvious for a person of ordinary skill to make the asserted modification because it was one of a “finite number of identified, predictable solutions” and “an arrangement of old elements . . . yielding no more than one would expect from such an arrangement,” is little more than a conclusory summary of KSR without the incumbent analysis based on the facts and evidence of the present case. Pet. 41–42 (citing Ex. 1028 ¶ 164); Reply 6–7, 11–13 (citing Ex. 1028 ¶¶ 162–165). For example, Petitioner argues that “any mechanical engineer would have understood that the number of moving mechanisms should always be reduced when possible” in support of its motivation to combine argument. Reply 11 (citing Ex. 1005 ¶ 7; Ex. 1028 ¶ 165). Petitioner’s cited evidence does not support the statement; rather it relies on an incorrect interpretation of JPAP 213 paragraph 7. Dr. Sturges also acknowledges in his deposition that paragraph 165 of his Declaration relies only on Petitioner’s incorrect interpretation of JPAP 213 paragraph 7. Ex. 1034, 165:9–17 (“Q. [L]ooking at paragraph 165, I don’t see any reference to anything besides paragraph 7 of the ’213 reference. Right? A. No. 165 doesn’t have any other cite.”). Neither Petitioner nor Dr. Sturges, moreover, provides a meaningful mechanical analysis or explanation beyond citing JPAP 213 paragraph 7 in support of Petitioner’s motivation to combine argument. In short, Petitioner’s conclusory paraphrasing of KSR is insufficient to satisfy its burden, particularly without the support of Petitioner’s interpretation of JPAP 213 paragraph 7. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoted with approval in KSR, 550 U.S. at 418). Therefore, for the reasons given above, we determine that Petitioner has not satisfied its burden of proving the asserted obviousness of claims 6–11 and 14 over JPAP 213 and JPAP 237 by a preponderance of the evidence.14” slip op. at 28

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP 213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not . . . that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP 213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Contrary to Petitioner’s argument, Dr. Bottoms’ deposition testimony is not inconsistent with his declaration testimony clarifying the interpretation of JPAP 213 paragraph 7, as discussed above. Reply 9 (citing Ex. 1043, 109:7–14). His deposition testimony is consistent with the disclosure of the retaining unit transfer means as a vertical hoist, not a lateral transfer mechanism. Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 9), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP 213. Rather, it mimics the error of the Petition in asserting that JPAP 213 “already contemplates modifying the Fig. 1 system . . . to do the work of moving [articles] B to and from the overhead locations BS, 11.” Ex. 1028 ¶ 165.11 Therefore, for the reasons given above, we find that JPAP 213” slip op. at 19

  • ExcludeMotion to exclude, deniedDenied

    “14 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 30–45; Reply 17–24. of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’153 patent. Reply 18–19, 21, 23. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 2–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

  Patent outcomesUS 7,771,153 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 7,771,153
• Nissan North America, Inc. / Hitachi Automotive Systems, Ltd. et al. v. Diamond Coating Technologies, LLCAll claims unpatentable
  PTAB · Apr 20, 2016 · IPR2014-01548 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 3 and 5 are unpatentable as anticipated by Hirano I; claim 4 is unpatentable as obvious over Hirano I and Noda.

  RulingsFinal written decision

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

    “Claim Interpretation We interpret claims of an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b). The Board, however, may not “construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles. . . . ‘[T]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.’” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citation omitted). “Rather, ‘claims should always be read in light of the specification and teaching in the underlying patent’” and “[e]ven under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence.’” Id. (citations omitted). In the Decision on Institution, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. B.” slip op. at 7

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

    “magnetic head makes sliding contact with the magnetic recording medium. In support of its argument to the contrary, Patent Owner and Dr. Kaner cite to Hirano I’s statement that “[w]hen the operation of the magnetic recording medium is stopped, the slider surface of the thin film magnetic head comes into direct contact with the magnetic recording medium.” PO Resp. 42; Ex. 2026 ¶ 73 (citing Ex. 1004 ¶ 3). Considered in its entirety, however, Hirano I teaches sliding contact between the thin film magnetic head and the magnetic recording medium during the starting and stopping operations, as well as contact between the thin film magnetic head and the recording medium when the recording operation is completely stopped. See Reply 18 (citing Ex. 1004 ¶¶ 3, 21; Ex. 1002 ¶¶ 23, 63). Specifically, Petitioners cite the following disclosures in Hirano I with respect to the “sliding surface for sliding contact with a cooperative member” limitation of claim 3: When a magnetic recording medium is activated and rotated, such a thin film magnetic head rises upward slightly from the magnetic recording medium so that a lubricating air film is formed between the slider surface of the thin film magnetic head and the magnetic recording medium. However, when the operation of the magnetic recording medium is stopped, the slider surface of the thin film magnetic head comes into direct contact with the magnetic recording medium. Therefore, the slider surface of the thin film magnetic head must have abrasion resistance. Ex. 1004 ¶ 3. As described above, when the magnetic recording medium is activated and rotated, the thin film magnetic head rises upward slightly from the surface of the magnetic recording medium, and when the operation stops, the thin film magnetic head comes into contact with the magnetic recording medium. At this time, the thin film magnetic head is slightly inclined with respect to the magnetic recording medium, so one of the edge portions of the slider surface of the thin film magnetic head comes into contact with the magnetic recording medium. Id. ¶ 21.” slip op. at 12

  • Obviousness (§103) › KSR rationalesUnpatentableMotivation foundUnpatentable

    “We agree with Petitioner’s arguments regarding obviousness. As Petitioners note, Noda’s diamond films having a hardness of 8000 Hv or more are “encompassed in the range recited in claim 4 as there is no upper end limit claimed.” Reply 25. Noda also teaches that film hardness above 5000 Hv is preferred for reliable protection against wear and deformation as a result of the sliding motion. Because claim 4 only requires a hardness of “not less than 1000 Hv,” there is substantial overlap between the claimed range and the range of wear-resistant film hardness disclosed by Noda. In cases involving overlapping ranges, the Federal Circuit and its predecessor court have consistently determined that overlapping ranges establish a prima facie case of obviousness. See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (citing, for example, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (concluding that a claimed invention was rendered obvious by a prior art reference whose disclosed range (“about 1–5% carbon monoxide”) abutted the claimed range (more than 5% to about 25% carbon monoxide”)); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (acknowledging that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (50–100 Angstroms) overlapped the claimed range (100–600 Angstroms)); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (concluding a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (0.020–0.035% carbon) overlapped the claimed range (0.030–0.070% carbon))). Patent Owner has not provided a persuasive justification for its contention that the hardness range of diamond films disclosed in Noda do not significantly overlap with the claimed range. For example, Patent Owner argues that “a gap in the range from 1000 Hv to 8000 Hv would have been considered significant to the skilled artisan, because the increase in hardness between these two values is substantial, and produces distinct and divergent physical effects in application,” and “the skilled artisan would have regarded Noda’s requirement of hardness in excess of 8000 Hv to contradict the claimed tolerance for hardness of not less than 1000 Hv.” PO Resp. 51 (citing Ex. 2026 ¶ 121). Patent Owner cites Dr. Kaner’s testimony in support of this contention, but Dr. Kaner’s statements regarding what a person having ordinary skill in the art would have considered to be significant are not supported by any objective evidence or analysis. Neither Patent Owner nor Dr. Kaner points to anything in the ’008 patent that supports Patent Owner’s contention that using a diamond film with a hardness of 8000 Hv or greater contradicts the claimed tolerance for hardness of not less than 1000 Hv. Claim 4, moreover, does not recite an express upper limit on film hardness.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “As an initial matter, demonstrating there are differences between the prior art references is insufficient, by itself, to conclude the references teach away from Petitioners’ proposed combination. See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992). “Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosure are unlikely to produce the objective of the [patented] invention.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). A prior art reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). We do not agree that a person having ordinary skill in the art, upon reading Hirano I, would be discouraged from combining it with the teachings of Noda. Patent Owner cites Dr. Kaner’s testimony in support of its contention that a person having ordinary skill in the art would not have looked to Noda for its hardness teaching because film properties can vary depending on the application. Dr. Kaner’s statements regarding what a person having ordinary skill in the art would have understood, however, are not supported by any objective evidence or analysis. See Ex. 2026 ¶ 123. Moreover, as Petitioners note, Dr. Kaner testified at deposition that the hardness of a crystalline diamond film does not vary with thickness, only that it may be more difficult to measure hardness as the film gets thinner. Reply 25 (citing Ex. 1024, 71:19–72:23). Given the inconsistency in Dr. Kaner’s testimony, we do not credit Dr. Kaner’s opinion that a person having ordinary skill in the art would not have looked to Noda for its hardness teaching.” slip op. at 25

  Patent outcomesUS 6,354,008 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,354,008
• Nissan North America, Inc. / Hitachi Automotive Systems, Ltd. v. Diamond Coating Technologies, LLCAll claims unpatentable
  PTAB · Apr 20, 2016 · IPR2014-01546 · APJ Christopher L Crumbley · IPR · Final written decision

  Claim 1 is unpatentable under § 102 as anticipated separately by Menu and Hirochi.

  RulingsFinal written decision

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

    “For these reasons, we determine that the broadest reasonable interpretation of hard carbon thin film in light of the specification is “film containing a significant fraction of sp3-hybridized carbon.” This construction is not inconsistent with that adopted by the District Court,9 and we agree with the court that it excludes graphitic carbon films. While it is unnecessary to determine the exact boundary of the hard carbon film domain, we note that “a significant fraction of sp3” encompasses a wide range of sp3/sp2 ratios that may even be a majority sp2-bonding, extending to at least 75% sp2. 9 We decline to adopt the District Court’s reliance on a 68:30 ratio of sp3/sp2 bonding as indicative of “a significant fraction,” as the Koidl reference upon which that ratio is based is not in the record of this proceeding, nor does it appear to have been cited during the prosecution history of the ’399 patent. Ex. 1001, References Cited.” slip op. at 12

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

    “as anticipated by Menu. Pet. 11–24. To establish anticipation, Petitioner must prove that each and every element in a claim may be found in Menu, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). For the following reasons, Petitioner has established by a preponderance of the evidence that Menu anticipates claim 1.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Upon review of the reference, the expert testimony, and the parties’ arguments, we find that the amorphous carbon structures of Menu are hard carbon thin films. While we agree with Dr. Kaner’s testimony that the general usage of “amorphous carbon films” may encompass both diamond-like and graphitic carbon, we also agree with Dr. Hersam that Menu is using the term in a more limited way, as synonymous with “diamond-like carbon.” See Ex. 2022, 62. Menu discusses “the need for an improved method for fabricating DLC [diamond-like carbon] superlattice structures” (Ex. 1002, 1:38–40), and it is reasonable to conclude that the method disclosed is directed to addressing this need. In addition, as Petitioner points out, Menu refers initially to “amorphous carbon, or ‘diamond-like carbon’ (DLC)” (id. at 1:25–28), implying that the terms are being used synonymously. The reference to Menu’s first-phase outer layers as “rich in sp2 bonds” (id. at 53–56) does not persuade us otherwise. As Petitioner notes, the ’399 patent uses the same terminology when referring to hard carbon films, suggesting that “rich in sp2” does not imply graphitic. Furthermore, as discussed above, there is a wide range of carbon films within the scope of hard carbon thin films, including films having at least 75% sp2 bonding. Such films can reasonably be termed “rich in sp2” bonds, yet still fall within the domain of diamond-like carbon.” slip op. at 16

  • Skill levelNot reached

    “UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NISSAN NORTH AMERICA, INC. and HITACHI AUTOMOTIVE SYSTEMS, LTD., Petitioner,” slip op. at 1

  Patent outcomesUS 6,066,399 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,066,399
• Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals Ireland Ltd. And Jazz Pharmaceuticals, Inc.Institution denied
  PTAB · Apr 12, 2016 · IPR2016-00002 · APJ Christopher G Paulraj · IPR · Institution

  The Board denied institution for claims 1–34 because the asserted combinations did not show a reasonable likelihood of obviousness.

  RulingsInstitution decision

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

    “We determine that Petitioner has not demonstrated a reasonable” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable

    “teaching away of the co-administration of GHB and valproate. A reference teaches away from a claimed invention if it “criticizes, discredits, or otherwise discourages” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.”). Here, we find it particularly relevant that Petitioner does not address the explicit black box warning that GHB should not be taken with other CNS depressants, despite Petitioner’s acknowledgement that valproate is a CNS depressant. Ex. 1006, 1; Pet. 5. Nor does Petitioner address the Xyrem Label’s contraindication of GHB in patients with SSADH deficiency, despite Petitioner’s acknowledgement that valproate was known to inhibit SSADH activity. Ex. 1006, 8; Pet. 9–10. Likewise, although Petitioner relies upon Cagnin’s suggestion that an interaction between valproate and GHB may have triggered seizures in a single patient who was not part of a clinical trial or other controlled study (Pet. 20), Petitioner fails to address the ultimate conclusion in Cagnin that “[o]nly GHB discontinuation restored the neurotransmitter balance and caused seizures to stop.” Ex. 1008, 205 (emphasis added). Both the Xyrem 2005 Label and Cagnin therefore both teach away from the co-administration of any amount of GHB with valproate.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundNot shown unpatentable

    “Moreover, even if the prior art did not teach away from reducing the effective dosage of GHB by at least 5% when valproate is co-administered, Petitioner has not demonstrated sufficiently that a skilled artisan would have had a reasonable expectation of success in treating the claimed sleep disorders with such a reduced dosage of GHB. Petitioner relies upon an “obvious to try” rationale based on prior art studies showing that valproate can decrease GHB metabolism. Pet. 27. We recognize that the prior art may have suggested to a person of ordinary skill in the art that valproate can increase endogenous GHB levels in the brain, and thereby intensify the effect of GHB. See, e.g., Ex. 1014 (Hechler); Ex. 1015 (Kaufman). Patent Owner, however, points to evidence of record showing that GHB is eliminated from the body through alternate pathways that are not inhibited by valproate, and these alternate elimination pathways may actually decrease GHB levels. Prelim. Resp. 9–12. Petitioner does not account for these other pathways by which GHB may be eliminated. Petitioner, therefore, has not identified a sufficient basis on this record to conclude that any increased brain levels of endogenous GHB caused by valproate could have been predictably compensated for by a corresponding decrease of at least 5% in the amount of GHB orally administered to patients. See In re Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litigation, 676 F.3d 1063, 1073 (Fed. Cir. 2012) (“[W]here the prior art, at best gives only general guidance as to the particular form of the claimed invention or how to achieve it, relying on an obvious-to-try theory to support an obviousness finding is impermissible.”) (citations omitted).” slip op. at 13

  § 103 obviousnesscites KSR
  Patents in suitUS 8,772,306

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.