• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCNo claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00239 · APJ Patrick R Scanlon · IPR · Final written decision

  The Board held that claims 1, 2, 5, 7–11, 13, 14, and 18–23 were not shown unpatentable because the combinations did not establish the claimed carrier-length limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner submits that a person having ordinary skill in the art “would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants,” and “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 21–22 (citing Ex. 1002 ¶¶ 31–34). We adopted Petitioner’s proposed level of ordinary skill in the art in the Decision on Institution, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9–10. In its Response, Patent Owner notes that it and its expert, Dr. Vesely, apply Petitioner’s level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 20. Based on our review of the record before us, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Beyond addressing this new argument, we determine that we need not expressly construe any other claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)).” slip op. at 13

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

    “Instead, we agree with Patent Owner that Leonhardt’s cylindrical end portions change in shape and length, at least to some degree, when stent 26 is expanded or collapsed. See PO Resp. 26–28. We also credit Dr. Vesely’s uncontroverted and well-reasoned testimony on this point. See Ex. 2004 ¶¶ 83–85. Furthermore, we agree that the Petition and Dr. Drasler rely 8 Patent Owner actually cites to Exhibit 2013, but this is an apparent typographical error because the quoted language appears in lines 20–22 on page 195 of Exhibit 2027. We note that the quoted testimony reiterates Dr. Drasler’s other testimony that “[t]he length of the Leonhardt device would be the length of the connecting bar plus the length of the stent components at each end of the connecting bar.” Ex. 2027, 195:11–14. solely on connecting bar 29 holding the cylindrical end portions a predetermined distance apart to support the assertion that the stent’s length is substantially equal in each configuration. See Pet. 46–47; Ex. 1002 ¶¶ 134– 137. As such, Petitioner has failed to explain the effect that the changes in Leonhardt’s cylindrical end portions have on the overall length of stent 26. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that Leonhardt discloses “a length of the carrier element in the moveable configuration being substantially equal to or less than a length of the carrier element in the first expanded configuration.”” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “In view of the above, we are not persuaded on the complete record before us that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 1 is unpatentable over the combination of Leonhardt and Gabbay. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Leonhardt and Gabbay renders claim 1 obvious, we need not reach Patent Owner’s assertions regarding objective indicia of nonobviousness.” slip op. at 24

  Patent outcomesUS 8,377,118 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,377,118
• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11

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

    “C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11

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

    “We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16

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

    “Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28

  Patent outcomesUS 7,353,555 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,353,555
• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394
• Apple Inc. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-00812 · APJ Jason W Melvin · IPR · Final written decision

  The Board found claims 1–3, 16, 21–24, 37, and 38 not shown unpatentable over Reber and Franklin because the combination did not establish the claimed access restrictions and information handling.

  RulingsFinal written decision

  • Skill levelOther

    “invention for the ’539 patent “would have a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and approximately two years of work experience in the computer science field including, for example, operating systems, database management, encryption, security algorithms, and secure transaction systems, though additional education can substitute for less work experience and vice versa.” Pet. 10 (citing Ex. 1102 ¶¶ 61–62). Patent Owner submits that the level of skill would involve “a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields.” PO Resp. 17 (citing Ex. 2018 ¶¶ 16– 20). Patent Owner agrees that its “description of the level of ordinary skill in the art is essentially the same as that of the Petitioner, except that Petitioner’s description requires two years of work or research experience (as compared to three years).” Id. at 17–18. We do not understand any of the parties’ disputes to turn on a precise definition of the level of skill in the art and apply the level of skill as defined by the parties.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “To support our analysis of the disputed issues below, we construe “account identifying information” and “third party.” We conclude that there is no need to construe any other term to resolve the issues in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

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

    “We agree the claim language supports that the separately recited “third party” must be different from the claimed “provider” and “entity.” As to the secure registry itself, we agree further with Patent Owner that the claim language mandates that the “third party” cannot be the secure registry system. The claims recite that the secure-registry processor is configured such that “account identifying information is provided to a third party.” By using “provided,” the claim instructs that the secure registry must send account-identifying information somewhere, not simply perform an additional operation on the information.5 Patent Owner further focuses on the party at issue. According to Patent Owner, the “third party” should be “a party other than one of these other parties already recited in the claims.” PO Resp. 24. Although the claims recite the “secure registry” as a system, as opposed to the “provider” and “entity,” which it recites as “parties,” we agree with Patent Owner that for a third party to be distinct from the secure registry, it should be distinct from whomever operates the secure registry. See id. at 24–25, 47–48 n.8; infra at 21. Accordingly, we construe “third party” as “a party that is not the secure registry, the entity, or the provider.”” slip op. at 9

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

    “The Petition states that it would have been obvious to perform merchant validation at the processor and database, but gives no reason for making that change. See Pet. 37. Instead, the Petition states a skilled artisan “would have applied the known techniques of Franklin to improve the security of the Reber system” and that doing so would have reduced fraud by merchants. Id. (citing Ex. 1102 ¶ 114). As explained, “the known techniques of Franklin” were to perform merchant validation at the merchant’s bank, not at the secure registry. Ex. 1132, 11:43–46 (“The acquiring bank validates the authorization request by verifying that the merchant is a valid merchant and that the credit card number represents a valid number.”). Thus, a reason to use Franklin’s techniques does not further justify modifying Franklin’s teaching to perform validation at the secure registry as claimed. Petitioner attempts to justify the combination in the Reply, arguing that, in Franklin, “it would have been obvious simply to perform the merchant validation procedure at the issuing bank, depending on the needs of a particular implementation (for example, where the issuing bank and the acquiring bank are the same).” Pet. Reply 12–13. Petitioner reasons that “organizing the system in this way would . . . increase efficiency by reducing the overall number of computations (e.g., conducting only one validation/compliance operation and not two separate operations at two separate places).” Id. at 13. Those statements serve to highlight the deficiency of the Petition. Petitioner’s arguments in the Reply do not respond to Patent Owner, other than attempting to fill in a gap in the we conclude Petitioner’s showing regarding access restrictions at the secure registry is inadequate regardless of the construction of “access restrictions for the provider to secure data for the entity.” Petition. We agree with Patent Owner that Petitioner’s Reply arguments go too far beyond those of the Petition. See PO Sur-reply 15–16; 37 C.F.R. § 42.23(b) (2017); Trial Practice Guide Update 14–15 (Aug. 2018), https://go.usa.gov/xU7GP (“[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered. . . . Examples of new issues are new theories or arguments necessary to make out petitioner’s case-in-chief . . . , such as a newly raised rationale to combine . . . that was not expressed in the petition.”); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in excluding a reply as improper under 37 C.F.R. § 42.23(b) because Petitioner relied on a new rationale to combine). Petitioner failed to make an adequate showing in the Petition regarding a plain requirement of the claims. The Petition identifies no prior-art disclosure that taught or suggested to skilled artisans to implement access restrictions at the secure registry, and provides insufficient reasons why a skilled artisan would have had reason to do so. Thus, Petitioner fails to show that challenged claims 1, 22, or 37” slip op. at 13

  Patent outcomesUS 8,856,539 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,856,539
• Apple Inc. / Visa Inc. et al. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Oct 7, 2019 · IPR2018-00810 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 were not shown unpatentable under § 103 over Maritzen, Jakobsson, and Niwa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 8

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

    “We agree with Petitioner that the Specification identifies fingerprint, voice print, signature, iris or facial scan, DNA analysis, and possibly a picture of a person as examples of biometric information. Furthermore, we credit Dr. Shoup’s testimony that biometric information falls into the category of “things a person is.” See Ex. 1002 ¶ 33. Therefore, in the context of the claims and the Specification of the ’826 patent, we construe the term “biometric information” to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.”” slip op. at 10

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

    “We agree Maritzen does not disclose expressly that PTD 100 is a handheld device. The only disclosure from Maritzen cited in the Petition, ¶ 63, describes the architecture for PTD 100 but makes no mention that PTD 100 is a handheld device. Ex. 1004 ¶ 63. The Petition does not direct us to any other disclosure in Maritzen that explicitly describes any of the disclosed PTD embodiments as being handheld, and we are not aware of any such disclosure. Furthermore, the testimony of Dr. Shoup cited by Petitioner merely repeats the same assertion that Maritzen’s PTD 100 is the first handheld device without providing any support or explanation for this assertion, other than citing the same ¶ 63 of Maritzen. Ex. 1002 ¶ 49.” slip op. at 13

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

    “We agree with Patent Owner. Maritzen discloses that clearing house 130 verifies that the biometric key (transmitted by PTD 100) is valid by comparing the biometric key to a known biometric key maintained within the clearing house. Ex. 1004 ¶ 48; see also id. at 81 (“Clearing house 130 also validates biometric key 350 against pre-established biometric key 950.”). Maritzen also discloses that “[p]rivacy card 110 only transmits the biometric key. The biometric information identifying the user is not transmitted at any time.” Id. ¶ 44. This disclosure indicates that the biometric key does not contain biometric information. In other words, the biometric key is something different than biometric information, which we have construed to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.” See supra § III.C. Thus, we find that one of ordinary skill in the art would not consider replacing the known biometric key in clearing house 103 with second biometric information as taught by Jakobsson because comparing the biometric key to biometric information, rather than the known biometric key, would not be effective to verify the biometric key. In other words, because the biometric key does not contain biometric information, it could not be compared meaningfully to the second biometric information.” slip op. at 23

  Patent outcomesUS 9,100,826 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,100,826
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00565 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–14, 56–58, 140, 144, and 146 were not shown unpatentable under § 103 over the instituted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

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

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claims 1 and 13 recite “a “microprocessor capable of . . . interpreting . . . said movement data.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data, and are consistent with claims 1 and 13, which recite “interpreting” distinctly from receiving, storing, and responding. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the claims and the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said movement data” is “analyzing the movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 13

  • BurdenNot shown unpatentable

    “On balance, we are not persuaded on the full record that Stewart discloses that processor 52 controls the comparing function. Accordingly, we determine that Petitioner has not met its burden of establishing that Stewart’s processor 52 interprets movement data. Regarding the limitation of the microprocessor being capable of “detecting a first user-defined event based on the movement data and at least one of the user-defined operational parameters regarding the movement data,” Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a defined/predetermined threshold. Pet. 25 (citing Ex. 1004, 5:4–7, 14:6–11). Petitioner also asserts that it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 25 (citing Ex. 1010 ¶¶ 59). As an initial point, we note that Petitioner relies on the same disclosures from Stewart (i.e., Ex. 1004, 5:4–7, 14:6–11) for disclosing both interpreting data and detecting an event, but does not provide a sufficient explanation of how these same disclosures teach two different claim limitations. Moreover, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14). As discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6–9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that the combination of Stewart and Rush teaches or suggests the detecting limitation of claim 1.” slip op. at 21

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00564 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 20–26, 29, 104–107, 110, 113–122, 126–128, 134–138, and 175 were not shown unpatentable because the asserted combinations failed to teach claim 20’s interpreting and detecting limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

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

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claim 20 recites “interpreting, using a microprocessor.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said physical movement data” is “analyzing the physical movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “In general, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments,” and “[a] finding that the agency lacks jurisdiction to decide constitutional questions is especially likely when the constitutional claim asks the agency to act contrary to its statutory charter.” Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003). But see Am. Express Co. v. Lunenfeld, Case CBM2014-00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“[F]or the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment.”). We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 12

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

    “detecting limitation”), Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a predetermined threshold. Pet. 22–23 (citing Ex. 1004, 5:4–7, 14:6–11). Noting that Stewart does not disclose expressly that the predetermined threshold is set by user commands, Petitioner argues that Rush discloses a monitoring device that detects axial loads, such as a spearing movement, in which the threshold value for detecting the spearing movement can be adjustable to accommodate users of different ages and sizes. Id. at 23 (citing Ex. 1006, 3:13–18, 9:48–50, 9:54–58). Thus, according to Petitioner, it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 23–24 (citing Ex. 1010 ¶¶ 61, 62). In this analysis, Petitioner maps Stewart’s predetermined threshold to the recited user-defined operational parameters. This claim limitation, however, recites at least one of the user-defined operational parameters. In other words, the detection of a first user-defined event must be based on at least one of the same user-defined operational parameters upon which the interpretation of the movement data was based. But, as discussed above, Petitioner maps the user-defined operational parameters of the interpreting limitation to Stewart’s user-defined time commands that cause the processor to start and stop the recording of movement data. Pet. 20. By inconsistently relying on different parameters in Stewart to satisfy the claimed user-defined operational parameters, Petitioner has not met its burden of establishing that the combination of Stewart and Rush meets the subject matter of claim 20. In addition, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14. Furthermore, as discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6– 9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that Stewart teaches or suggests the detecting limitation of claim 20.” slip op. at 23

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576
• St. Jude Medical, LLC v. Snyders Heart Valve LLCNo claims unpatentable
  PTAB · May 2, 2019 · IPR2018-00109 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 18 and 20 were not shown unpatentable because Leonhardt did not disclose the claimed central frame structure and the proposed Leonhardt-Johnson combination lacked adequate motivation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the record before us, that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the record, including the asserted prior art and, for the purposes of this Final Written Decision, we adopt Petitioner’s definition.” slip op. at 9

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

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b) (2018); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Claim 1 recites that the flexible valve element is attached to the “central portion of the frame.” Patent Owner argues that “central portion of the frame” means “central structural frame portion,” which cannot refer solely to an “empty space.” PO Resp. 3–7. Patent Owner explains that, during the related litigation, Petitioner agreed that the central portion of the frame must “actually be part of the structure of the frame.” Id. at 6 (quoting Ex. 2001, 119–20). Accordingly, we discern no dispute on the issue of whether “central portion of the frame” refers to a structural portion of the frame; it does.” slip op. at 10

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

    “Petitioner’s argument that Leonhardt’s valve is attached to the central part of the frame of claim 1 fails. Leonhardt’s valve is undeniably attached to its frame because the valve is sutured or glued to stent 26. Claim 1 requires the valve element to be attached to a portion of the frame located along the radial centerline. Ex. 1001, 19:19–20. However, Leonhardt’s frame (stent 26 coupled via connecting bar 29) is a hollow cylinder devoid of structure located along its centerline. Ex. 1017, Figure 1C. Thus, regardless of how Leonhardt’s valve is attached to stent 26 and connecting bar 29, it is not attached to a structure “located along a centerline” as recited in claim 1 and thus claims 18 and 20. Therefore, we determine that Petitioner fails to establish by a preponderance of evidence that Leonhardt anticipates claims 18 and 20. 4. Summary For the reasons expressed above, we determine that Petitioner has failed to prove by a preponderance of evidence that Leonhardt anticipates claims 18 and 20.” slip op. at 14

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

    “F. CLAIMS 18 AND 20: OBVIOUSNESS BY LEONHARDT Petitioner argues that even if Leonhardt fails to describe elements as claimed, an ordinarily skilled artisan would consider that “variations” of Leonhardt to meet the claimed limitations would have been obvious “in view of the general knowledge in the art and the limited number of ways of using known elements to achieve expected results.” Pet. 42. Petitioner also argues that “[a]s these are method claims, and not device claims, even if the valve device were somehow unobviously different, which it is not, that difference should be given minimal weight in evaluating the obviousness of the method.” Id. at 44. Petitioner cites no authority for this proposition, and we are aware of none. Claims 18 and 20 are directed to a “transluminal method of inserting an artificial valve as set forth in claim 1.” Id. at 21:1–25 (claim 18), 21:31– 50 (claim 20). Each time claims 18 and 20 refer to an “artificial valve” steps of the recited methods, they refer to the valve set forth in claim 1. None of Petitioner’s arguments persuasively addresses Leonhardt’s failure to describe a flexible valve element attached to a central portion of the frame located along a centerline. See Part II.E. Accordingly, we conclude that Petitioner has failed to prove by a preponderance of evidence that Leonhardt alone renders claims 18 and 20 unpatentable as obvious.” slip op. at 14

  Patent outcomesUS 6,821,297 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,821,297
• Aurobindo Pharma USA, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9

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

    “Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11

  • BurdenNot shown unpatentable

    “Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19

  Patent outcomesUS 6,866,866 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,866,866

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.