• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. 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))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person 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). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Dexcom, Inc. v. Waveform Technologies, Inc.Some claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-01051 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–12, and 15–19 were held unpatentable as obvious over Hagiwara; claims 2, 3, 13, and 14 were not shown unpatentable. The motion to amend was granted in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “j. Conclusion Regarding Obviousness Based on Hagiwara (Proposed Substitute Claims) We conclude that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara. We conclude that Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 21, 24 and 25 are unpatentable as obvious in view of Hagiwara. 2. Remaining Grounds of Unpatentability Asserted by Petitioner (Proposed Substitute Claims) In view of our determination that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara, we do not reach Petitioner’s remaining grounds of unpatentability as to these claims. Regarding proposed substitute claims 24 and 25, Petitioner’s contentions regarding the Handbook, Wilson, and Say do not remedy the deficiencies in Petitioner’s contentions regarding Hagiwara, as discussed above. Accordingly, we conclude that a preponderance of the evidence does not show that proposed substitute claims 24 and 25 are unpatentable as obvious based on Hagiwara in view of the Handbook, Wilson, or Say. H.” slip op. at 71

  • ExcludeOther

    “As discussed above, we do not reach the Wilson-Based Grounds with respect to claims 1, 4–12, and 15–19 of the ’574 patent. As for claims 2, 3, 13, and 14, we determine that Petitioner has not shown unpatentability based on the Wilson-Based Grounds, even if Exhibit 1037 and the corresponding portions of Petitioner’s Reply (Paper 37) are not excluded, because Petitioner does not offer Exhibit 1037 to cure the deficiency we noted in Wilson. See Section II.F, supra. For this reason, we dismiss as moot Patent Owner’s motion.” slip op. at 72

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner

    “sensor would not have been a motivation to combine Hagiwara’s embodiments” because Hagiwara’s catheter prevents damage to the sensor during insertion and because a sensor with a side sensor window creates a greater risk of damage and vascular injury and reduces exposure to blood, as compared with a sensor with an end sensor window. PO Resp. 20–25. We have considered Patent Owner’s arguments, but, for the reasons discussed above, we are persuaded that Petitioner has established a motivation to combine, notwithstanding the conflicting expert testimony regarding the disadvantages of a side sensor window versus an end sensor window. Neither of the expert opinions on this topic is supported by objective facts or data. Ex. 1006 ¶ 155;13 Ex. 2008 ¶¶ 54–57, 87–95; Ex. 2009, 92:8–97:12. For this reason, we give little or no weight to either side’s expert testimony 13 Dr. Vachon cites “WO 01/13102, Vadgama” (Ex. 1006 ¶ 155), however, this reference was not submitted as an exhibit in this proceeding. on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). As discussed above, however, there is no disagreement that a side sensor window was a known alternative to an end sensor window. Ex. 1006 ¶¶ 73, 155; Tr. 43:22–44:3. That undisputed fact, together with Petitioner’s other evidence, is sufficient to establish a motivation to combine.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art For purposes of our Institution Decision, we accepted the definition of a person of ordinary skill in the art (“POSITA”) provided by Petitioner’s declarant, Dr. Vachon. Dec. 11 (citing Ex. 1006 ¶ 28). That definition is: a person having a bachelor’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field and at least three years of experience relating to biosensor research and development, or a master’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field, and at least one year of experience relating to biosensor research and development. Id. Patent (https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_ to_amend_11_2017.pdf); Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017); Bosch Automotive Service Solutions, LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018). Owner’s declarant accepts and applies this definition of a POSITA for purposes of his opinions. Ex. 2008 ¶ 30. Neither party’s declarant indicates that any proffered opinion would change depending on the level of ordinary skill in the art. Therefore, consistent with our Institution Decision, we adopt Dr. Vachon’s definition of a POSITA. Ex. 1006 ¶ 28. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 20

  Patent outcomesUS 7,529,574 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,529,574
• Sumitomo Electric Industries, Ltd. v. United Technologies CorporationNo claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-00966 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–4, 8–13, 16, and 17 were not shown unpatentable under either § 103 ground because SEI did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

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

    “We disagree. As the Federal Circuit has observed, “[a] preamble is not a claim limitation if the claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a purpose or intended use for the invention.’” Georgetown Rail, 867 F.3d at 1236 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The fact that the claims were amended to include storage tanks and recirculation loops actually cuts against UTC’s position, as the claim as amended describes a structurally complete invention and reliance on the preamble for this structure is unnecessary. UTC also points to the fact that the Examiner amended the preamble during prosecution, from merely reciting a “flow battery” to a “redox flow battery.” PO Resp. 15. While “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art” (Catalina Mktg., 289 F.3d at 809) may be a reason to view the preamble as limiting, UTC directs us to no evidence here that the Examiner intended the amendment to distinguish the claims from the prior art. Indeed, as UTC acknowledges in its Response, a person of ordinary skill in the art would have understood the ’243 patent to use “‘redox flow battery’ and ‘flow battery’ to mean the same thing.” PO Resp. 13 (emphasis added). If, as UTC concedes, the Examiner’s amendment merely substituted one synonym for another, the amendment could not have changed the scope of the claim or distinguished over the prior art. For these reasons, we conclude that the preamble of the claims is not limiting, and, therefore, we need not construe the term redox flow battery.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SEI contends that the person of ordinary skill should not be limited to only a degree in chemistry or chemical engineering, because the claimed features of the flow batteries are not directed to chemistry. Pet. Reply 7. We agree, and adopt SEI’s definition of the relevant educational background. While the parties differ as to the number of years of experience in working with flow batteries, we do not consider the difference (one versus two years) to be significant. We find that a person of ordinary skill in the art at the time of invention would be a person with a degree in chemistry, physics, chemical engineering, electrical engineering, or mechanical engineering, who has at least one year of experience designing or testing flow batteries so as to obtain functional knowledge of their structure and operation. We have reviewed the level of skill reflected in the prior art and consider it consistent with this definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “evidence. Our Rule 42.64 provides that a motion to exclude is necessary to preserve any objection, and refers to those objections as “objections to the admissibility” of evidence. See 37 C.F.R. § 42.64(a), (c). The Board’s Trial Practice Guide further explains that a motion to exclude “must explain why the evidence is not admissible.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767. In other words, objections to the timing of late-arising evidence or procedural infirmities are not proper for a motion to exclude. For this reason, the objections raised in UTC’s motion to exclude are improper. First, UTC argues that Exhibit 1066 is untimely under 37 C.F.R. § 42.63(b), which requires a translation of a foreign-language document to be filed with the document. Mot. 5. By UTC’s reasoning, because the Supplemental Declaration revisits Mr. Yagaeshi’s prior translation, but was not submitted with the foreign-language document, it violates the Board’s rules. Id. As this is clearly a procedural objection to the timing of the evidence, as opposed to its admissibility, we deny the motion to exclude on this basis. In any event, even if it were procedurally proper, we would not exclude the Supplemental Declaration on this basis. The Board’s Rule requires only that the original foreign-language document be accompanied by a translation, and there is no dispute that is what happened here. We see nothing in Rule 42.63(b) that prohibits a party to revisit, or even modify, its translation at a later date, given sufficient notice and opportunity to respond by the opposing party. Here, we granted UTC the opportunity to submit its own responsive declaration and address the translation issue at the oral hearing, and UTC did so.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “character as a minus sign, which is consistent with Mr. Yagaeshi’s original translation, makes more grammatical sense in the context of the sentence. We take note of the fact that SEI only changed its position on the translation—and asked Mr. Yagaeshi to correct his prior translation—once UTC made arguments based on the original translation that might be detrimental to SEI’s case. While it is conceivable that SEI only became aware of the alleged error once UTC called attention to it in the Response, we consider it fair to hold SEI to its original interpretation, especially given that that original interpretation is in agreement with Mr. Baldwin’s translation, which has remained consistent since at least 2016. For these reasons, we will interpret the disputed passage of JP228 to read “the potential was negative 0.4V.”” slip op. at 19

  Patent outcomesUS 9,166,243 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,243
• Micron Technology, Inc. v. President And Fellows Of Harvard CollegeRehearing denied
  PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing

  The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner has not demonstrated an abuse of discretion. Accordingly, we deny the request for rehearing.” slip op. at 2

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

    “We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6

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

    “tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,969,539
• Oned Material LLC v. Nexeon LimitedInstitution denied
  PTAB · Jul 27, 2017 · IPR2017-00961 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 18–23 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In determining the broadest reasonable construction, we presume that claim terms carry their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee may define a claim term in a manner that differs from its ordinary meaning; however, any special definitions must be set forth in the specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner dispute the proper construction of the term “first dimension.” Pet. 13–14; Prelim. Resp. 24 n.6. Because the current Decision does not depend on the proper construction of the term “first dimension,” and because the parties do not dispute the construction of any other claim terms, we determine that no claim terms require construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to claims 18–23 of the ’437 patent. Accordingly, we do not institute inter partes review.” slip op. at 2

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

    “We are not persuaded by Petitioner’s argument. Farrell already provides a metallurgical grade powder. Thus, it is not evident why the general cost of metallurgical grade powders would have caused the ordinary artisan to pillar Farrell’s porous silicon particles using the technique of Peng. Moreover, Petitioner does not explain persuasively why pillared particles would otherwise be desirable in the applications identified in Farrell, or how Farrell’s particles could substitute for Peng’s expensive pillared silicon wafers in Peng’s photovoltaic applications. See Ex. 1005, 1064 (noting that the disclosed “SiNW arrays give promising results for possible applications in high-efficiency solar-cell manufacture”), 1066 (“The most interesting feature of the as-synthesized SiNW arrays is the significant suppression of reflection over the visible-light spectral range.”); Prelim. Resp. 21 (noting that Farrell’s materials are not “lithium-ion battery anode materials”); see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (noting that a proposed modification must not render a device unsuitable for its intended purpose). Thus, on this record, Petitioner has not explained sufficiently why cost concerns would have caused one of ordinary skill in the art to pillar Farrell’s particles using the metal–assisted etching technique of Peng.” slip op. at 12

  Claim construction§ 103 obviousness
  Patents in suitUS 8,940,437
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastics Engineering & Technical Services, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00431 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Moss and Erhart because the combination teaches their limitations and a skilled artisan would have had reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ dispute regarding the level of ordinary skill comes down to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot runners.” See id. at 25–26. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner argues that Dr. Slocum fails to adequately establish his familiarity with injection molding machines, molding processes, or computer controlled motion of injection molding equipment, and “tries to draw the Board’s focus away from injection molding machines to a more generic or academic subject matter that he deems himself qualified to give an opinion.” PO Resp. 20–21, 25–26. During the oral hearing, Patent Owner, referring to Dr. Slocum’s cross-examination testimony, argued that Dr. Slocum does not, in fact, have injection molding experience. Tr. 43:17– 44:1; see Mot. for Obs. 10–11 (citing Ex. 2006, 35:15–36:15, 121:10– 122:24). Dr. Slocum, however, expressly testified that he had designed injection molding devices, made molds used for injection molding, and run injection molding machines in the lab at the Massachusetts Institute of Technology (“MIT”). Ex. 1004 ¶ 5; Ex. 2006, 31:1–4, 36:1–5; see Pet. Resp. 14–15. Based on the evidence before us, we find that Dr. Slocum has sufficient familiarity with injection molding machines. Further, as discussed above, we are not persuaded that the level of ordinary skill requires any specific amount of experience with, or specialized knowledge of, injection molding machines.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “B. 35 U.S.C. § 325(d) Patent Owner argues that, because Moss and Erhart were considered during prosecution of the application leading to the ’436 patent, we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. PO Resp. 9–12. “In determining whether to institute or order a proceeding,” the Director “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). As we have already decided to institute a proceeding, Patent Owner’s § 325(d) argument is moot. See id. Even if we were to review the substance of the § 325(d) argument, however, for the reasons set forth in the Institution Decision we would not be persuaded to exercise our discretion in this case as there is insufficient evidence that the combination of Erhart and Moss was ever considered by the Examiner or applied in any rejection of the claims. Dec. on Inst. 8–9.” slip op. at 9

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

    “D. The Instituted Ground of Unpatentability We instituted trial based on the ground that claims 1–22 are unpatentable under 35 U.S.C. § 103(a) over Moss1 and Erhart.2 Dec. on Inst. 25.” slip op. at 8

  Patent outcomesUS 7,588,436 unpatentable
  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,588,436
• Old Republic General Insurance Group, Inc. / Old Republic Insurance Company et al. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Apr 12, 2017 · IPR2015-01992 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, 4–12, 14–24, and 34–48 are unpatentable over the stated grounds; claims 3 and 13 were not shown unpatentable, and claims 25–33 and 49 were disclaimed.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “On February 8, 2017, Patent Owner informed the Board that it had “disclaimed claims 25–33 and 49” of the ’002 patent, thereby “rendering the institution of claims 25–33 and 49 in the subject inter partes review proceeding moot.” Paper 18, 1; Ex. 2005 (disclaimer of claims 25–33 and 49 pursuant to 37 C.F.R. § 1.321(a)).” slip op. at 2

  • BurdenMixed

    “2. Analysis To anticipate a claim a “prior art reference must disclose each and every feature of the claimed invention, either explicitly or inherently.” Eli Lilly & Co. v. Zenith Goldline Pharm., 471 F.3d 1369, 1375–76 (Fed. Cir. 2006). An inherent disclosure may be found when an asserted prior art reference “necessarily” includes the unstated limitation. Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002).” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Upon review of Petitioner’s arguments and supporting evidence, we are persuaded that Petitioner has identified where each limitation of independent claim 1 is disclosed in Huang. Claims 11, 34, and 40 contain limitations similar to claim 1, Petitioner provides detailed arguments as to where each limitation of these claims is disclosed in Huang, and Patent Owner does not present any arguments for these claims separate from those 7 At oral argument, Patent Owner asserted that we should not consider Petitioner’s argument that the icons of Huang contain URL information because this argument was presented for the first time in Petitioner’s Reply. Tr. 32:19–35:5. Patent Owner did not file a motion to exclude this evidence, however, or request a sur-reply to address any allegedly new issues raised for the first time in Petitioner’s Reply. Id. at 34:18–23. Nor is it evident why Petitioner’s arguments are not appropriate rebuttal arguments addressing Patent Owner’s proposed construction of “pointer.” Accordingly, we decline to exclude Petitioner’s URL arguments and evidence.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “be used in conjunction with the mobile interface agent, including “a computer, cable set top box, cellular phone, or other device.” Ex. 1001, 4:44–45. Patent Owner does not explain why the description of a “pointer” in one “context,” i.e., on a computer or PDA, represents a clear and deliberate attempt to define the term in all contexts, such that all pointers must be a “reference” to “a type of menu item” and be “accessible on a computer, PDA, or server.” See In re Paulsen, 30 F.3d at 1480 (noting that an inventor is “free to define the specific terms used to describe his or her invention,” but “this must be done with reasonable clarity, deliberateness, and precision”). The broadest definition of the term “pointer” in the ’002 patent is “a link/shortcut to an item.” Ex. 1001, 10:8–10 (“As discussed above, a pointer is a link/shortcut to an item such as . . . .”); Dec. on Inst. 10. This definition is consistent with the description of “pointers” in the ’002 patent written description and claims. Ex. 1001, 20:4–6 (“wherein the pointers provide links to access the corresponding user specific resources and information.”). Accordingly, we construe “pointer” to mean “a link or shortcut to an item.”” slip op. at 9

  Patent outcomesUS 6,546,002 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,546,002
• Mexichem Amanco Holdings S.A De C.V. v. Honeywell International, Inc.Some claims unpatentable
  PTAB · Dec 9, 2016 · IPR2015-01309 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 3, 5, 6, 10–13, 16, and 19 are unpatentable as obvious; claims 7–9, 14, and 15 were not shown unpatentable.

  RulingsFinal written decision

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

    “Petitioner and Patent Owner propose constructions for all, or a portion of, the term “Formula I, XCF3(I), where X is a C2 unsaturated, substituted, alkyl radical.” Pet. 17–19 (proposing a construction for the term “C2 unsaturated, substituted, alkyl radical”); PO Resp. 12–15. Neither party contends, however, that express construction of this claim term, or any other term in the ’808 patent, would impact any of Petitioner’s or Patent Owner’s arguments in this proceeding. Accordingly, we determine that no claim terms require construction for purposes of this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “art. Patent Owner, relying upon the testimony of Dr. Bivens, asserts that one of ordinary skill in the art would have had either: “(1) a bachelor of science degree in a specialty area (such as chemical engineering or chemistry) and five years of work experience in developing/testing refrigerants, blowing agents, and propellants, or (2) a Ph.D. or masters of science degree and 2-3 years of work experience.” PO Resp. 12 (citing Ex. 2034 ¶¶ 21–24). Patent Owner’s identification of a person of ordinary skill in the art is uncontroverted and is consistent with the prior art of record. Accordingly, we adopt Patent Owner’s identification for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect the level of ordinary skill in the art).” slip op. at 8

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

    “Accordingly, we are persuaded that: (1) Petitioner has identified where every limitation of claim 1 is disclosed or suggested in the combination of Kruse, Inagaki, and Butler; (2) Petitioner has set forth reasoned explanations supported by factual underpinnings to explain why one of ordinary skill in the art, prior to the earliest filing date of the ’808 patent, would have sought to combine Kruse, Inagaki, and Butler to achieve the invention set forth in claim 1 of the ’808 patent; and (3) Petitioner has set forth reasoned arguments, supported by record evidence, to show why a person of ordinary skill in the art would have had a reasonable expectation of success in combining Kruse, Inagaki, and Butler to achieve the composition of claim 1.” slip op. at 17

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

    “patent met a long-felt but unresolved need or were commercially successful, we have been directed to no persuasive evidence to demonstrate these propositions. See Graham, 383 U.S. at 17–18 (noting that “long felt but unsolved needs” and commercial success may be utilized as indicia of nonobviousness). Indeed, we have been directed to no persuasive evidence that a mixture of CO2 and a fluoroalkene of claim 1 has ever been used commercially, or that such a mixture was considered by those of ordinary skill in the art to have met a long felt but previously unresolved need.9, 10 See Tr. 51:24–52:7; Pet. Reply 9 (asserting that Patent Owner “has provided no evidence, post- or pre- issuance of the ’808 patent, of the commercial advantages or uses of the claimed compositions”). With respect to Petitioner’s prior patent applications, although Patent Owner initially characterizes these applications as relating to CO2 and partially fluorinated hydrocarbons, Patent Owner later notes that these patents are directed to blends of HFO-1234yf, CO2, and R-134a. PO Resp. 44; Ex. 2024, 12 (arguing in support of patentability that “[t]he specific 9 To be relevant, Patent Owner must show that the asserted secondary considerations are attributable to “the merits of the claimed invention beyond what was readily available in the prior art.” Asyst Techs. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008). Here, Inagaki discloses using compounds within the scope of claim 1 of the ’808 patent as refrigerants. Patent Owner presents no persuasive evidence that the addition of CO2 to the compounds of Inagaki, or the particular ranges recited in claim 1, resulted in a product that met a long felt but unresolved need or resulted in a commercially successful product beyond what was provided in Inagaki. Thus, we are also not persuaded that there is any nexus between the asserted secondary considerations and the features of claim 1 that are not disclosed in Inagaki. 10 As Patent Owner has not demonstrated any commercial use of the claim 1 compounds for any purpose, or provided evidence that those of skill in the art considered the claimed compounds to have met an unresolved need in the art, this analysis applies equally to the dependent claims of the ’808 patent, which each depend, directly or indirectly, from claim 1. combination of trans-R1234ze and R134a and CO2 simply is not suggested in Singh, let alone in the amounts defined in claim 1”). Patent Owner does not explain sufficiently why Petitioner’s arguments directed to the patentability of a blend of three compounds, utilized in specific proportions, are necessarily applicable to the combination of Kruse, Inagaki, and Butler proposed by Petitioner, or why these arguments are otherwise strong evidence of the nonobviousness of claim 1 of the ’808 patent. Based on the foregoing, and upon review of Patent Owner’s arguments as a whole, we are not persuaded that Patent Owner’s proffered objective evidence of nonobviousness is strong or tends to refute Petitioner’s arguments and evidence with respect to the obviousness of claim 1 of the ’808 patent.” slip op. at 25

  Patent outcomesUS 8,623,808 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,623,808
• Aevoe Corp. v. Racing Optics, Inc.Institution denied
  PTAB · Nov 7, 2016 · IPR2016-01165 · APJ Michelle N Ankenbrand · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, or 3–4, 7–9 were unpatentable on the asserted grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 42.4(a). We may not institute an inter partes review “unless . . . 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). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we deny the Petition and do not institute an inter partes review.” slip op. at 2

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

    “A. Claim Construction The Board interprets claims in an unexpired patent using the “broadest reasonable construction in light of the specification of the patent.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The parties do not direct us to any claim terms that are in controversy. See Pet. 4; see generally Prelim. Resp. Upon review of the parties’ arguments and supporting evidence, we determine that no claim term requires construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “[I]nherency may supply a missing claim limitation in an obviousness analysis.” See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). To establish an inherent disclosure, a party must show that the limitation at issue is “necessarily present” or “the natural result of the combination of elements explicitly disclosed by the prior art.” Id. at 1195–96 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d at 581 (citations omitted). Petitioner contends that Wilson “teaches the same structural slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “When an anticipatory reference “is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). Here, Petitioner does not show sufficiently that the structure and configuration of Kitaguchi’s cover sheet necessarily, or inherently, traps air. Although Petitioner refers to the use of an adhesive along the outer periphery of Kitaguchi’s cover sheet as creating a seal that traps air between the cover sheet and the display, that argument is unsupported by sufficient objective evidence. Indeed, Petitioner directs us only to Dr. Cairns’s bare opinion testimony that the “continuous adhesive layer [illustrated in Kitaguchi’s Figure 1 embodiment] would act as a seal and trap air between the film and the display surface in the same way described in the ’545 Patent.” Ex. 1005 ¶ 20. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); see Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”). Accordingly, based on the record before us, Petitioner is not reasonably likely to prevail in showing that claims 1 and 5 are anticipated by Kitaguchi.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,545
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01818 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable as obvious over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over that …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the claims at issue here, we are not persuaded that the level of ordinary skill in the art is limited to the level of skill or interest of a pharmacist that dispenses FDA-approved drugs, such as one that “sits behind the counter at Walgreens.” Id. at 31:1–5. We adopt the level of ordinary skill in the art as described by Petitioner and its witness, Dr. Valuck, because it is consistent with the subject matter before us, the ’730 patent, and with prior art of record, such as Talk About Sleep (Ex.1033), Honigfeld (Ex. 1034), Elsayed (Ex. 1035), and Lilly (Ex. 1036). See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12

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

    “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 ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 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 18

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

    “For the reasons given above, we find Petitioner’s evidence sufficient to prove by a preponderance that Exhibits 1004–1006 were publicly accessible on the FDA’s website not later than July 1, 2001.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “of the ’730 patent (and claims 1, 4–9, and 12–15 of the ’988 patent) would have been obvious over the ACA (Exhibits 1003–1006), because the ACA is a public disclosure of the proposed risk management system for Xyrem—the same system covered by the ’730 and ’988 patents. Pet. 18–38; Reply 1. Petitioner relies on the Declaration testimony of Dr. Valuck in support of its argument that a POSA would have had “ample” reason to combine the ACA documents because the documents were prepared for the Advisory Committee Meeting and “relate to the same restricted distribution program, which the meeting was convened to discuss.” Pet. 19 (citing Ex. 1007 ¶ 51). Petitioner asserts, in particular, the Preliminary Clinical Safety Review (Ex. 1004), Briefing Booklet (Ex. 1005), and Xyrem Video and Transcript (Ex. 1006) were “all distributed together for a single meeting before the FDA seeking approval for prescription Xyrem®,” and the FDA Advisory Committee Transcript and Slides (Ex. 1003) was “a public transcript of and presentation given at the meeting itself.” Id. at 19 (citing Ex. 1007 ¶ 51) (emphasis added). In addition, according to Petitioner, all four ACA documents “clearly relate to the same restricted distribution program, which the meeting was convened to discuss,” and are “all linked from a single [web] page.” Id. Patent Owner does not address directly the cited evidence in the context of motivation to combine the ACA. Patent Owner challenges the motivation of a POSA to confirm that a patient has read the Xyrem educational material prior to shipping the drug product to the patient (step 1.4), an issue we address below. PO Resp. 37, 49–59. We agree with Petitioner’s analysis and determine that a POSA would have had ample motivation to combine the ACA documents, which were prepared at the same time, relate to the same drug product and the same restricted drug distribution system, were discussed together at the same Xyrem Advisory Committee Meeting, and were made available via file links from a single FDA web page.” slip op. at 39

  Patent outcomesUS 7,668,730 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,668,730

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.