• Laboratory Corporation Of America Holdings v. Ravgen, Inc.No claims unpatentable
  PTAB · Dec 12, 2022 · IPR2021-01026 · APJ David Cotta · IPR · Final written decision

  Claims 1–9 and 21–30 were not shown unpatentable: Lee did not establish that ACD dextrose impeded cell lysis, and Sorenson/Rao lacked motivation to combine because formaldehyde was known to damage nucleic acids.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Van Ness’s proposed POSA level is too broad. Under that proposal, an individual with, for example, an undergraduate degree in microbiology and three years’ work experience studying the habitats of bacteria might qualify as a POSA. It is not clear that such a person would have sufficient, relevant experience in the detection of chromosomal abnormalities, especially through non-invasive methods for detecting fetal 10 genetic abnormalities in maternal samples, as described in the ’720 patent. See, e.g., Ex. 1001, 1:22–5:44 (Field of Invention and Background Art). Petitioner’s proposal of the POSA level is more precise because it requires familiarity with techniques for detecting cell-free DNA in biological samples, which is relevant to the prior art and the claimed technology. Petitioner’s proposal also appears to be more consistent with the cited prior art. 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). Accordingly, we adopt Petitioner’s POSA level here, but note that our other determinations on this record would not change under Patent Owner’s POSA level.12” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDisclaimer foundDecided for patent owner

    “Owner relied not on properties unique to EDTA, but on the fact that it was a “well-known chelator” and anticoagulant: [T]he assertion by the Office that EDTA is a cell lysis inhibitor is simply incorrect. . . EDTA is not an “agent that inhibits cell lysis.” Rather, EDTA is a well-known chelator of calcium and magnesium. EDTA is routinely added to blood during the blood collection process as an anticoagulant due to its ability to chelate calcium. Ex. 2064, 1196. Given Patent Owner’s clear intent to exclude EDTA from the scope of the claimed “agent” on the basis that it was a chelator and an anticoagulant, we find that a POSA would have understood other chelators and anticoagulants to also be excluded from the scope of the claimed agent. Consistent with this understanding, during subsequent prosecution of the application that issued as the ’720 patent, Patent Owner argued that the Holodniy reference, which disclosed a method of detecting free nucleic acid in which blood was collected in tubes containing ACD, “fail[ed] to teach or suggest a method for detecting free nucleic acid comprising, inter alia, isolating free nucleic acid from a non-cellular fraction of a sample, wherein an agent that impedes cell lysis has been added.” Ex. 1003, 1428 (emphasis added). On the salient point here, the Examiner agreed, concluding that “Holodniy et al. teach a method of detecting free nucleic acid which comprises all of the limitations of Claim 1, except these authors do not teach that their samples comprise an agent that impedes cell lysis.” Id. at 1344 (emphasis added); see also id. at 1156 (finding that Adams et al., a reference that also collects blood in tubes containing ACD, taught “all of the limitations recited in Claim 1 except these authors do not teach adding an agent that impedes cell lysis to the sample.”). And Patent Owner argues 15 persuasively, without dispute from Petitioner, that ACD is the “only” addition to the collection tubes besides the blood sample itself. Sur-reply 4 (citing Ex. 1016, 2; Ex. 2023, 20:52–54). This supports that neither the Examiner nor the Patent Owner considered ACD as an anticoagulant chelator to be an “agent,” as that term is used in claim 1. Accordingly, we construe the phrase “agent that impedes cell lysis” to” slip op. at 15

  • Strike new argumentNew argument consideredDecided for petitioner

    “function to prevent cell lysis, “by: (1) interacting with and stabilizing the cell membrane; (2) maintaining osmolarity so that the cells do not rupture; and (3) providing a nutrient source.” Reply 3 (citing Ex. 1002 ¶¶ 22–23; 2001 ¶ 169; Ex. 1059 ¶ 5; Ex. 1054, 125:3–127:12; 1057, 3–4, and Ex. 1056, 7– 13, 15–19, 24). Patent Owner argues that the evidence as to how dextrose functions to prevent cell lysis should have been presented in the Petition. Sur-reply 16. On this record, we do not agree. While this evidence could have been included in the Petition, it is responsive to arguments raised in Patent Owner’s response. See PO Resp. 18–22. In any event, consideration of this evidence simply explains how and why dextrose has the capacity to impede cell lysis, and we have already found that the ’720 patent provides 25 evidence that dextrose has this capacity. Under the circumstances, it was therefore reasonable for Petitioner, in the Petition, to rely on such disclosures of the patent itself. Further, consideration of how and why dextrose impedes cell lysis largely benefits Patent Owner, by providing reasons why dextrose might not inhibit cell lysis under the specific circumstance present in Lee.” slip op. at 25

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “interact with and stabilize the cell membrane. Reply 3 (citing Ex. 1002 ¶¶ 22–23). In the cited testimony, Dr. Edwards states, “it was known that carbohydrates have a role in membrane stabilization” and that dextrose “is a membrane stabilizer.” Ex. 1002 ¶¶ 22–23. This is consistent with the teaching in the ’720 patent that glucose is “[a]n agent that stabilizes cell membranes.” See e.g., Ex. 1001, 6:49–56. The evidence thus supports that dextrose can help to stabilize cell membranes. However, this evidence is tempered by evidence supporting that the “impact of carbohydrates on biological membranes is extremely complex” and that it is “extremely difficult to predict how solutes such as carbohydrates will affect biological membranes.” Ex. 2231, 60:18–61:2, 83:14–18 (Dr. Edwards testimony). This is because “there’s a finite but long – long list of variables that will impact the – the mechanism by which carbohydrate interacts with the cell membrane.” Id. at 66:20–67:7; see also id. at 66:1–15 (identifying temperature, concentration and pressure as variables that play a role in how carbohydrates interact with biological membranes); id. at 68:1–17 (identifying prior and simultaneous exposure to other substances as variables that play a role in how carbohydrates interact with biological membranes). 26 Petitioner also provides evidence that dextrose helps prevent cell lysis by “maintaining osmolarity so that cells do not rupture.” Reply 3 (citing Ex. 2001 ¶ 169; Ex. 1056, 7–13, 24; Ex. 1059 ¶ 5). We agree that the cited evidence supports that dextrose has the ability to prevent cell rupture by maintaining isotonicity. In particular, Rapoport found that erythrocytes in an acid-citrate glucose solution underwent osmotic hemolysis at a slower rate than erythrocytes in a simple citrate solution. Ex. 1056, 613. However, Patent Owner introduces evidence, which we credit, that the failure to maintain isotonicity does not necessarily cause cell lysis. Ex. 2299, 237:4– 16 (Dr. Edward’s testimony). For example, cells placed in a hypertonic solution may “shrink or kind of shrivel” rather than burst, and cells placed in a hypotonic solution may swell, but will not necessarily lyse. Id. at 245:3– 16, 246:17–247:8.” slip op. at 26

  Patent outcomesUS 7,727,720 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,727,720
• Apple, Inc. v. Alivecor, Inc.All claims unpatentable
  PTAB · Dec 6, 2022 · IPR2021-00972 · APJ David Cotta · IPR · Final written decision

  Claims 1–23 are unpatentable as obvious: claims 1, 5, 7–9, 11, 12, 16, 18–20, 22, and 23 over Shmueli and Osorio; remaining claims over combinations adding Lee-2013 or Chan.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner argues that we should reject our originally proposed definition in light of, for example, Petitioner’s proposed definition before the ITC, which required an engineering background and “at least two years of relevant work experience designing wearable devices and/or sensors for measuring physiological signals.” PO Resp. 27 (citing Ex. 2004, 6). As noted at oral argument, however, Patent Owner truncates the full extent of Petitioner’s ITC definition, which further states that “a hypothetical person of ordinary skill in the art could also be a person with a medical degree (MD or DO) and with at least two years of work experience using biomedical sensors and/or analyzing their data (in the context of industry, in biomedical academic research, or in practice treating patients).” Ex. 2004, 6; Tr. 40:13– 41:10. Patent Owner’s assertion that our originally proposed definition, would “classify all cardiologists as [persons of ordinary skill in the art],” is well taken. PO Resp. 25. Accordingly, we apply the following modified definition, which is consistent with Petitioner’s representation before the ITC. For the purpose of this proceeding, a person of ordinary skill in the art may be a member of an interdisciplinary team including persons with backgrounds in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology, and having at least two years of relevant work experience designing, using, or analyzing data from, cardiac monitoring devices.” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “Dr. Efimov has extensive experience in the design of cardiac monitoring and related technologies, but Petitioner asserts that he “is unable to offer credible testimony on the meaning of [relevant] medical terminology,” because he is not a doctor. Reply 28; Sur-reply 22 (arguing that “Dr. Efimov is a recognized expert in the field of clinical cardiac electrophysiology”). Considering the totality of Dr. Efimov’s background, including extensive work on the physiology, diagnostics, and therapy of cardiac arrhythmias, we do not adopt Petitioner’s position. See, e.g., Ex. 2001 ¶¶ 2–15. In light of the above, we determine that Dr. Chaitman and Dr. Efimov are both qualified to testify as to the understanding of a person of ordinary skill in the art, we, nevertheless, consider the weight of both parties’ experts on a particular topic in light of the strengths and weaknesses of their respective background. C. Claim Construction” slip op. at 26

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

    “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner offers a construction for the claim term “discordance,” proposing that it should be construed to mean “when a first sensed parameter value would not be expected to coincide with a second sensed parameter value.” Pet. 8–10. Patent Owner does not propose a competing construction and, in the ITC Investigation, proposed “[n]o construction required” for the term “discordance.” Ex. 2009, 4. Having reviewed the evidence and argument of record, we determine that we do not need to construe the term “discordance” in order to resolve this dispute. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). slip op. at 27

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

    “Patent Owner’s proposed construction is consistent with the intrinsic and extrinsic evidence. See e.g., Ex. 1047 (medical dictionary defining arrhythmias as “[a]n abnormal rate or rhythm of the heartbeat” caused by “a disturbance in the electrical impulses within the heart”); Ex. 1001, 4:4 (“Heart function is also measured in terms of regularity of rhythm. . . . When there is an abnormality of rhythm, the condition is typically referred to as an arrhythmia.”). Although it is not clear that the term is in dispute, for clarity, we understand the term “arrhythmia” as used in the context of the ’941 patent to mean: a cardiac condition in which the electrical activity of the heart is irregular or is faster (tachycardia) or slower (bradycardia) than normal.” slip op. at 28

  Patent outcomesUS 10,638,941 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,638,941
• Apple, Inc. v. Alivecor, Inc.All claims unpatentable
  PTAB · Dec 6, 2022 · IPR2021-00971 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–30 are unpatentable under § 103 over Shmueli alone or in combinations with Osorio, Li 2012, Kleiger, and Chan.

  RulingsFinal written decision

  • Skill levelSkill level board ownPetitioner expert creditedOther

    “Patent Owner’s assertion that our originally proposed definition, would “classify all cardiologists as POSITAs,” is well taken. Accordingly, we apply the following modified definition, which is consistent with Petitioner’s representation before the ITC. For the purpose of this proceeding, a person of ordinary skill in the art may be a member of an interdisciplinary team including persons with backgrounds in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology, and having at least two years of relevant work experience designing, using, or analyzing data from, cardiac monitoring devices.” slip op. at 27

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Patent Owner notes that the ITC applied the plain and ordinary meaning to the terms “arrhythmia” and “confirm” or “confirming.” PO Resp. 21 (citing Ex. 2010, 12–13). We understand “arrhythmia” as used in the context of the ’731 patent refers to “a cardiac condition in which the electrical activity of the heart is irregular or is faster (tachychardia) or slower (bradycardia) than normal.” See id. at 24–25 (quoting Ex. 1001, 1:40–42). This term does not appear to be in dispute. See Tr. 21:18-22:3 (“[Board”]: . . . Patent Owner raised the issue of claim construction for the term arrhythmia. Is there any dispute there? [Petitioner’s counsel]: Honestly, Your Honor, we considered that -- put a lot 23 of energy into considering it. We don’t believe so.”); see also, Tr. 53:24-54:2 (“[Board]: . . . Your claim construction of arrhythmia is merely a matter of precision and clarification rather than a contested point; is that correct? [Patent Owner’s counsel]: I believe that’s largely correct.”). Patent Owner also asserts, and we agree, that “confirm” and “confirming” are discrete requirements from “detect” in claims 3, 5, 6, 19, 21, and 22. See id. at 25. Accepting these clarifications, we apply the plain and ordinary meaning to all claim terms. D. Ground 1: Obviousness over Shmueli” slip op. at 30

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

    “sensor and “detect, based on the PPG data, the presence of an arrhythmia.”11 According to Petitioner, although Shmueli does not explicitly use the term arrhythmia, one of ordinary skill in the art reading Shmueli would have found it obvious that the text “Detect Irregular Heart Condition,” in element 38 of Shmueli’s Figure 7, refers to detecting the presence of arrhythmia based on PPG data. See Pet. 22–24; Ex. 1003 ¶¶ 47–51. For the purpose of instituting trial, we determined that “one of ordinary skill in the art would have understood Shmueli’s use of ‘irregular heart condition’ as referring to—or at a minimum, encompassing— arrhythmia, and, thus, disclosing the detection of arrhythmia.” DI 33–34. As discussed below, the arguments and evidence adduced at trial confirm our initial understanding.” slip op. at 31

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

    “pages 17–18 of Petitioner’s Reply, which we adopt in full. In short, Osorio relates to medical device systems and methods capable of detecting a pathological body state of a patient. Ex. 1005 ¶ 2. As discussed above, we do not read Osorio as limiting “pathological state” to epilepsy or other neurological condition. To the contrary, one of ordinary skill in the art would have understood Osorio’s teachings applicable to “any pathological state,” including arrythmia. See e.g., id. at 44. As such, the references are not directed to different problems as Patent Owner urges. Further, even if one of ordinary skill in the art were to read Osorio as limited to the detection neurological events such as epilepsy, Osorio contains express teachings to monitor heart rate and heart rate variability for signs of arrhythmia. See Ex. 1005 ¶¶ 42, 43, 45, 46, 71; Ex. 1069, 58:23–59:3; 61:13–62:7. Whether Osorio’s detection of arrhythmias is viewed as a standalone goal, or as data for use in monitoring for epileptic seizures, does not materially affect the analysis. “Because Shmueli already renders arrhythmia detection obvious and Osorio motivates use of activity tracking to improve detection of any heart-related pathological conditions,” including arrhythmias, it is irrelevant whether Osorio’s ultimate goal is the detection of neurological events. Reply 18 (citing Pet. 23–24; Ex. 1004, 13:9–17, Fig. 7). With respect to Patent Owner’s reliance on Adidas, it is well established that a finding of obviousness does not require that all features of a secondary reference are “bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. In the present case, we do not understand Petitioner to argue for the wholesale incorporation of Osorio into Shmueli’s device. Rather, Petitioner more narrowly argues that one of ordinary skill in the art would find it obvious to incorporate two elements of Osorio into Shmueli’s device: “using activity level monitoring to improve the accuracy of detecting a pathological event (e.g., arrhythmia), and (ii) determining HRV from HR and using HRV to detect the pathological event (e.g., arrhythmia),” because, for example, “HRV analysis is more robust . . . and is less affected by noise.” Pet. 30, 43–44, 48–49; see generally Ex. 1003 ¶¶ 151–167. Thus, even were Osorio ultimately limited to the detection of neurological events, Patent Owner’s suggestion that these targeted improvements would render Shmueli’s device inoperable for its intended purpose is unavailing. In view of the above, and all the argument and evidence adduced at trial, Petitioner has established sufficiently that one of ordinary skill in the” slip op. at 47

  Patent outcomesUS 10,595,731 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,595,731
• Apple, Inc. v. Alivecor, Inc.All claims unpatentable
  PTAB · Dec 6, 2022 · IPR2021-00970 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–6, 10–16, and 20 as obvious over Shmueli and Osorio; claims 7–9 and 17–19 as obvious over those references and Hu 1997.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “truncates the full extent of Petitioner’s ITC definition, which further states that “a hypothetical person of ordinary skill in the art could also be a person with a medical degree (MD or DO) and with at least two years of work experience using biomedical sensors and/or analyzing their data (in the context of industry, in biomedical academic research, or in practice treating patients)”. Ex. 2004, 6; Tr. 40:13–41:10. Patent Owner’s assertion that our originally proposed definition, would “classify all cardiologists as POSITAs,” is well taken. Accordingly, we apply the following modified definition, which is consistent with Petitioner’s representation before the ITC. For the purpose of this proceeding, a person of ordinary skill in the art may be a member of an interdisciplinary team including persons with backgrounds in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology, and having at least two years of relevant work experience designing, using, or analyzing data from, cardiac monitoring devices.” slip op. at 25

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “the art even under Patent Owner’s then-proposed definition. See DI 26–28. Despite Patent Owner’s subsequent position that the ordinarily skilled artisan should have an engineering degree and “design experience” in developing wearable cardiac sensors, the arguments and evidence adduced at trial do not alter our initial determination. See, e.g., PO Resp. 37–41; Reply 27–28; Sur-reply 22–24; see generally Tr. 40:25–46:19, 55:2–56:13. Rather, we agree with Petitioner’s argument in support of Dr. Chaitman’s qualifications, that this proceeding involves “piecing together known technologies and . . . the analysis of cardiac data” including PPG data, ECG data and activity level. Tr. 38:4–18. Thus, one of ordinary skill in the art with an understanding of cardiac monitoring technology “would understand how these types of data work, how they interplay and how the data could be processed on these devices.” Id.” slip op. at 26

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “meaning to the terms “arrhythmia,” “alert,” and “heart rate monitor.” PO Resp. 32 (citing Ex. 2010, 12–13). We understand “arrhythmia” as used in the context of the ’499 patent refers to “a cardiac condition in which the electrical activity of the heart is irregular or is faster (tachycardia) or slower (bradycardia) than normal.” Id. at 31–36 (quoting Ex. 1001, 1:31–33). This term does not appear to be in dispute. See Tr. 21:18–22:3 (“[Board”]: . . . Patent Owner raised the issue of claim construction for the term arrhythmia. Is there any dispute there? [Petitioner’s counsel]: Honestly, Your Honor, we considered that -- put a lot of energy into considering it. We don’t believe so.”); see also id. at 53:24–54:2 (“[Board]: . . . Your claim construction of arrhythmia is merely a matter of precision and clarification rather than a contested point; is that correct? [Patent Owner’s counsel]: I believe that’s largely correct.”). With the above understanding, we apply the plain and ordinary meaning to all claim terms. D. Ground 1: Obviousness over Shmueli and Osorio” slip op. at 27

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

    “In light of the above, and all the evidence adduced at trial, we agree with Petitioner that one of ordinary skill in the art would have understood Shmueli to teach or disclose methods and systems for “determining the presence of an arrhythmia,” as required by the challenged claims.” slip op. at 36

  Patent outcomesUS 9,572,499 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,572,499
• Thorne Research, Inc. v. Trustees Of Dartmouth CollegeAll claims unpatentable
  PTAB · May 31, 2022 · IPR2021-00268 · APJ John E Schneider · IPR · Final written decision

  Claim 2 is unpatentable as anticipated by Stamler and, alternatively, obvious over Stamler.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “2. Anticipation2 “Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single prior art reference for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997). “[U]nless a reference discloses within the four corners of the document not only all of the 2 As noted above, the pre-AIA provisions of 35 U.S.C. apply to the ’086 patent. the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).” slip op. at 8

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

    “Under § 120, a patent is entitled to the priority date of an earlier filed application if (1) the written description of the earlier filed application discloses the invention claimed in the later filed application sufficient to satisfy the requirements of § 112; (2) the applications have at least one common inventor; (3) the later application is filed before the issuance or abandonment of the earlier filed application; and (4) the later application contains a reference to the earlier filed application. In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011); see also 35 U.S.C. § 120 . As discussed above and in our Decision to Institute, the ’086 patent meets this criterion. While we agree with Petitioner that the face of the ’086 patent does not include a citation of the ‘701 application, the specification does contain a clear claim of priority back to the ’701 application. Ex. 1001, col. 1. ll. 7–13; Ex. 1004 1.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the art offered by Patent Owner in the ’1795 IPR, which, as noted above, also involved the ’086 patent, should apply to this proceeding, namely “someone with a Ph.D. in biochemistry or similar field in the pharmaceutical sciences, with familiarity and experience with pharmacokinetics.” Pet. 33. Patent Owner does not dispute Petitioner’s definition and, indeed, Patent Owner’s expert, Dr. Amiji, used the same definition in his analysis. Ex. 2014 ¶ 21. For purposes of this Decision, therefore, we adopt Petitioner’s description. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention and supports Petitioner’s definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14

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

    “We have considered the arguments presented by the parties, and find that our initial construction is proper for the reasons set forth in the ’1795 proceeding. Ex. 1018 12–14. We decline to adopt Patent Owner’s construction that calls for an isolation step separate from the process used to manufacture synthetic NR.” slip op. at 16

  Patent outcomesUS 8,383,086 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,383,086
• 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
• SNF S.A. v. Solenis Technologies, L.P.Rehearing denied
  PTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Obviousness (§103) › KSR rationalesNot reached

    “Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11

  • Other 314aInstitution denied discretionary otherInstitution denied

    “reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10

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

    “art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,644,320
• Argentum Pharmaceutical LLC v. Novartis AGNo claims unpatentable
  PTAB · Oct 5, 2020 · IPR2016-01479 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–3 were not shown unpatentable because the asserted prior-art combinations did not establish a reasonable expectation of success in treating advanced PNETs after chemotherapy failure.

  RulingsFinal written decision

  • Skill levelOther

    “demonstrate by a preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations.10 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation not foundDecided for patent owner

    “Judged by the correct standard, the evidence leaves little doubt that a person of ordinary skill in the art would have been motivated to pursue everolimus as a potential treatment option for advanced PNETs after failure of cytotoxic chemotherapy. Novartis does not seriously contend otherwise, focusing its arguments instead on whether the motivation to pursue everolimus was greater than the motivation to pursue other possible treatments. Not only does Öberg 2004 discusses rapamycin as an “interesting new compound” that suggests clinical trials with rapamycin in combination with cytotoxic chemotherapy, it specifically provides a treatment algorithm that shows rapamycin among the potential “experimental therapies” following failure of cytotoxic chemotherapy. Ex. 1027, 60, Fig 1. And O’Donnell specifically demonstrates that administration of everolimus to human cancer patients was safe. Ex. 1029, 200. We credit Dr. Ratain’s testimony that by 2005, there was a “significant body” of data on the administration of everolimus to humans, but no reported clinical data on rapamycin. Ex. 1003 ¶ 135. Given the difference in information on everolimus and rapamycin, we find that the skilled artisan would have been motivated to pursue everolimus as an alternative to the rapamycin disclosed in Öberg 2004. Even if a person of ordinary skill would have had reason to pursue everolimus, however, our inquiry does not end there. Argentum must also prove that the skilled artisan “would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). That “expectation of success need only be reasonable, not absolute.” Id. at 1364. “Whether an ordinarily skilled artisan would have reasonably expected success . . . is measured as of the date of the invention.” Amgen Inc. v. F. Hoffman–La Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009).” slip op. at 15

  • Obviousness (§103) › Analogous artNot shown unpatentableDecided for patent owner

    “the only prior art clinical trial of everolimus presented to us, was a Phase I trial designed to test dosages, not efficacy. Ex. 1029, 803. While Öberg 2004 does disclose the promise of rapamycin, we agree with the District Court that at the time of the invention the mTOR pathway was insufficiently understood, such that a person of ordinary skill in the art would not have reasonably expected rapamycin’s “promise,” as reported in Öberg 2004, to translate to everolimus. Ex. 1027, 60. And in regard to Boulay 2004, Novartis argues that the record lacks sufficient evidence to support Argentum’s contention that the CA20948 rat pancreatic tumor model described therein was applicable to the treatment of PNETs. Ex. 1005, 253. On this point, again we agree with the District Court. District Court Decision, 287 F. Supp. 3d at 526 (“I find that Defendant has failed to establish by clear and convincing evidence that CA20948 is a PNET model.”). Upon evaluating the full record before us, we find that the CA20948 tumor model line originated from a pancreatic adenocarcinoma, which is distinct from a neuroendocrine tumor (NET). Ex. 2038, 197–99; Ex. 2041 ¶¶ 132–134. We credit and rely on Dr. Kulke’s testimony that pancreatic adenocarcinomas and PNETs were known to differ in their origin, incidence, clinical behavior, molecular genetics, and responses to pharmacotherapies. Ex. 2041 ¶¶ 57, 135–136. Argentum does not dispute the distinction between CA20948 and PNETs, but instead argues that tests performed on CA20948 would nevertheless be understood to be applicable to PNETs. Reply 17–18. Argentum’s primary support for this argument derives from the De Jong reference, which discloses the use of the CA20948 pancreatic tumor line in a study of the treatment of neuroendocrine tumors. Ex. 1010, Abstract. As based treatment of tumors using radioactive somatostatin-analogues. PO Resp. 33; Ex.1010, 356–58. Both neuroendocrine tumors and CA20948 express somatostatin receptors; it is this commonality that made CA20948 useful as a model for NETs in De Jong’s study of radiation treatment. Ex. 2041 ¶¶ 139, 141. But just because some features of a cell line make it useful in studies of tumors where those features are relevant, it does not necessarily follow that the cell line is relevant to all studies of those tumors. See Tr. 14:15–25. As Dr. Kulke credibly explains, the person of ordinary skill in the art would not have understood from the De Jong radiation treatment study that CA20948 could be used as a model for NETs in a pharmacotherapy study. Ex. 2041 ¶ 143–146. For these reasons, we agree with the District Court that Argentum has not proven CA20948 to be a PNET model; nor is there reason to believe that a person of ordinary skill in the art would have considered CA20948 to be applicable to studying the treatment of PNETs with mTOR inhibitors, much less such treatment after the failure of cytotoxic chemotherapy.” slip op. at 18

  • ExcludeMotion to exclude, deniedMixed

    “We agree. If Argentum had submitted only certain portions of Dr. Kulke’s testimony into the record before us, Novartis would be entitled to rely on FRE 106 to request that the Board admit other portions of his testimony that, in fairness, should be considered. But that is not what Novartis requests here; nor could it, given that Exhibits 1070, 1095, and 1119 were already admitted in their entirety. And in any event, Novartis’ request would not have been proper as part of a motion to exclude. Upon reviewing the Motion, it is clear that Novartis is using its FRE 106 arguments as a vehicle for introducing additional citations to, and discussion of, Dr. Kulke’s testimony that were not introduced in the multiple other opportunities for merits briefing that Novartis had during this trial. For this” slip op. at 28

  Patent outcomesUS 9,006,224 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,006,224
• Cooler Masters Co., Ltd. v. Aavid Thermalloy LLCNo claims unpatentable
  PTAB · Jun 4, 2020 · IPR2019-00146 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1, 2, 4, and 5 were not shown unpatentable because Nakamura did not disclose the claimed spacer, and Petitioner did not establish a basis to modify it.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill in the art than that proposed by Petitioner. PO Resp. 11‒12. In particular, Patent Owner disagrees with Petitioner’s requirement for an advanced degree in mechanical engineering or a closely related field as it would, for example, exclude both the named inventors of the ’679 patent as well as “a large majority of active workers in the field at the time of the invention.” Id. at 12 (citing Ex. 2002 ¶ 80). Rather, Patent Owner contends that the person of ordinary skill in the art at the time of the invention would have a Bachelor of Science degree in engineering and at least 3 years of experience working or studying in the field of heat pipes; or an equivalent level of education, training, and work experience. Id. at 11 (citing Ex. 2002 ¶¶ 77‒79). Dr. Pokharna comports with the qualifications a person would have needed to understand and implement the teachings of the ’679 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Moreover, Petitioner concedes that this dispute as to the appropriate level of skill in the art “is immaterial because the challenged claims are invalid under both sides’ definitions.” Reply 1 n.2. We agree with Petitioner that the outcome of this proceeding is not dependent on our application of one party’s definition as compared to the other. Nonetheless, because Petitioner’s and Dr. Pokharna’s definition better reflects the level of ordinary skill in the art, we adopt and apply it here. C.” slip op. at 10

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

    “extending between and contacting said first and second plates,” claim 1 separately recites “a depression formed in said first plate,” which projects into said vapor chamber and is bonded to said second plate. PO Resp. 25–26 (emphasis added) (citing Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.”)); see Ex. 2002 ¶ 114. Whereas claim 1 requires that a spacer contact both the first and second plates, it makes clear (as do claims 4 and 6) that a depression formed in a first plate is bonded to only the opposing plate. See Ex. 1001, claim 7 (reciting that a “depression formed in said second plate . . . is in contact with an inner surface of said first plate”). We, thus, infer from the structure of the recited in claim 1 are distinct components with distinct properties. In particular, the claimed “spacer . . . extending between and contacting said first and second plates” is a distinct element between and in contact with two plates, whereas the claimed “depression” is a part of one plate that contacts, or is bonded to, an opposing plate.” slip op. at 14

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

    “whether a reference is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); see In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Bruckelmyer and Wyer specifically addressed the public accessibility of laid open patent applications.” slip op. at 24

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

    “The relevant language of independent claim 1 is not merely “spacer” but “spacer. . . extending between and contacting said first and second plates,” which we construe as referring to a “structure separate from and in 16 Petitioner also addresses obviousness under the construction of “spacer” that Patent Owner proposed before the district court but that we do not adopt here. See id. at 36–41; section II(C)(2), n.7, above. 17 Petitioner and its expert also reference Nakamura’s Figures 5 and 6, which show embossed depressions in only one plate. Pet. 39–40; Ex. 1002 ¶ 64. Nonetheless, we agree with Patent Owner that “Petitioner’s grounds are based on the concavities 9 described and illustrated with respect to Figure 4 of Nakamura,” and Petitioner’s passing reference to the alternative embodiment of Nakamura’s Figures 5 and 6 does not substantially affect our analysis, which focuses on the embodiment of Figure 4. See PO Resp. 46 (citing Inst. Dec. 15–18). clearance between the plates.” See section II(C)(2), above. Applying this panel’s construction, we agree with Patent Owner that Petitioner has neither shown how Nakamura discloses this limitation, nor identified any rationale or motivation to modify Nakamura to provide a “spacer. . . extending between and contacting said first and second plates,” as recited in claim 1. See PO Resp. 46–47. As discussed above, Petitioner seeks to satisfy this limitation by pointing to the “H-shaped structure” defined by concavities pressed into opposing plates of the heat pipe illustrated in Nakamura’s Figure 4. But as Patent Owner points out, “these concavities are integral with the portions of the container in which they are formed, and a concavity cannot be said to contact the same plate in which it is formed without rendering the term ‘contacting’ in claim 1 meaningless.” Id. (citing Ex. 2002 ¶¶ 116, 145).” slip op. at 35

  Patent outcomesUS 7,100,679 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,100,679
• Cooler Masters Co., Ltd. v. Aavid Thermalloy LLCSome claims unpatentable
  PTAB · Jun 4, 2020 · IPR2019-00337 · APJ Linda E Horner · IPR · Final written decision

  Claims 9, 10, and 13 were held unpatentable as obvious; claims 11 and 12 were not shown unpatentable.

  RulingsFinal written decision

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

    “The existence of a published abstract that would have allowed one skilled in the art exercising reasonable diligence to locate the foreign patent application and the fact that the application was classified and indexed in the patent office, were central to the Wyer court’s conclusion that the application was “publicly accessible.”” slip op. at 35

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

    “inherency, then the assertions of obviousness are mere conclusory statements. We are unable to recognize any proffered reasoning underlying the assertions of obviousness. “[Challenges] on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As yet another possible alternative, Petitioner may be basing its case on improper hindsight by relying on and quoting the Specification of the ’240 patent in its obviousness analysis. See Pet. 27. That, too, is unpersuasive. Regardless as to its theory of the case, we determine that Petitioner has failed to explain sufficiently why the claimed heat pipe having a configuration of two plates having bonded together circumferential edge lips would have been obvious. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 12 is unpatentable over Morikawa alone.” slip op. at 55

  • ExcludeMotion to exclude, deniedMixed

    “as not relevant under FRE 104 on the grounds that Petitioner failed “to introduce sufficient proof that Exhibit 1004 was publicly accessible such that it qualifies as a prior art printed publication under United States law.” Paper 46, 3; see also id. at 4 (citing Fed. R. Evid. 104, 401). As set forth in section II.D, above, the evidence of record leads us to an entirely different conclusion regarding Nakamura’s prior art status. Because Petitioner persuades us that Nakamura qualifies as a prior art printed publication as of the earliest possible effective filing date of the challenged claims of the ’240 patent, we deny Patent Owner’s request on its merits.” slip op. at 82

  Patent outcomesUS 7,066,240 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,066,240

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.