- PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’078 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentablePTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner
“Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43
Patent outcomesUS 9,865,135 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick 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. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’428 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’993 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to be construed only to the extent necessary to resolve the controversy. See 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)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.All claims unpatentablePTAB · Nov 27, 2024 · PGR2022-00025 · APJ Susan L C Mitchell · PGR · Final written decision
Claims 1–19 are unpatentable because the ’201 patent lacks written description support for the claimed genus of CRF1 receptor antagonists under § 112(a).
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“[A] sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. at 1350 (citing Regents, 119 F.3d at 1568–69). Moreover, “an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Id. (citing Regents, 119 F.3d at 1568 (quoting Fiers, 984 F.2d at 1171)). Furthermore, “functional claim language can meet the written description requirement when the art has established a correlation between structure and function.” Id. (citing Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002) (quoting 66 Fed. Reg. 1099 (Jan. 5, 2001))). “[M]erely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Id.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the relevant art (“POSA”) “would have a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders . . . [and] would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders.” Pet. 26–27 (citing Ex. 1005 ¶ 34 (Dr. Carey Declaration)). Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Response. Because Petitioner’s definition of a person of skill in the art appears commensurate with the level of skill reflected in the asserted art in this case as well as the ’201 patent itself, see, e.g., Exs. 1024, 1025, 2003, 2004, 2005, we apply Petitioner’s proposed level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating prior art itself can reflect the appropriate level of ordinary skill in the art). C.” slip op. at 22
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“For these reasons, we do not find persuasive the testimony of Patent Owner’s expert, Dr. Dobs, that: By describing adjustments of dosing protocols to achieve an A4 reduction from baseline, and describing this use of tildacerfont as just one embodiment of the claimed use of the entire well-known, well-characterized, and discrete class, the specification reasonably conveyed to a POSA that the invention extended to the particularly claimed use of the entire recited class. Ex. 2014 ¶ 82. On the contrary, far from being a “well-known, well-characterized, and discrete class” the prior art teaches a heterogeneous assembly of different classes of small molecule CRF1 receptor antagonists (Type I, Type II, and “atypical”) displaying a very considerable variety of structures, both in terms of the core pharmacophore (e.g., monocyclic, bicyclic, tricyclic, phenolic, cyclohexyl amide, etc.) as well as in the various side groups. Moreover, the challenged claims recite only “a CRF1 receptor antagonist or a pharmaceutically acceptable salt thereof,” the scope of which also encompasses the much larger (and, according to Williams) much more effective large-molecule (peptide) CRF1 receptor antagonists, about which the Specification is entirely silent. See Ex. 1029, Abstr., 1065. Furthermore, despite Dr. Dobs’ testimony that “[t]he [prior art] references explain the typical CRF1 antagonist consists of a core nitrogen heterocycle with an aryl substituent adjacent to the core nitrogen atom and a branched alkyl group attached at the opposite end of the core,” Dr. Dobs also acknowledged that the “atypical CRF1 receptors depicted in Figures 11 and 12 of Williams had different structures, and lacked the nitrogen heterocyclic core.” Ex. 1042, 127:9–14, 130:13–131:16; see also Ex. 2014 ¶ 83. Additionally, Petitioner’s expert, Dr. Cutler, testified, by way of example, in his Reply Declaration that two of the ‘“first-generation CRF1 antagonists’ identified in Figure 1 of the Williams article do not fall within the Figure 2 structure Dr. Dobs relies upon.” Ex. 1047 ¶ 93. Indeed, with respect to the alleged core pharmacophore that Dr. Dobs” slip op. at 54
- ExcludeMotion to exclude, deniedMixed
“with chemical terminology”; “could not answer questions regarding the chemical structures in the prior art articles”; “did not know whether CRF1 receptor antagonists contained the structural features she deemed ‘essential’ in her Declaration”; and “agreed that tildacerfont has structurally unique features” (see Ex. 1042, 52–53, 125–126, 126–128, 128–130) goes to the weight that we assign to such testimony, but we do not find that such testimony, in light of Dr. Dobs’ extensive qualifications as an endocrinologist set forth above, deems Dr. Dobs unqualified to testify concerning the written description issue in this proceeding. For these reasons explained above, Petitioner’s Motion to Exclude Dr. Dobs’ written description opinions in paragraphs 20 and 75–87 of Exhibit 2014 is denied.” slip op. at 11
Patent outcomesUS 11,007,201 unpatentable§ 112 disclosurecites PhillipsPatents in suitUS 11,007,201 - Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.All claims unpatentablePTAB · Nov 26, 2024 · PGR2021-00088 · APJ John G New · PGR · Final written decision
Claims 1–25 are unpatentable because the ’908 patent lacks written description support under § 112(a); the Board did not reach Grounds 1–3 or 5.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“To the extent that Dr. Dobs has admitted that she is “not comfortable with chemical terminology”; “could not answer questions regarding the chemical structures in the prior art articles”; “did not know whether CRF1 receptor antagonists contained the structural features she deemed ‘essential’ in her Declaration”; and “agreed that tildacerfont has structurally unique features” (see Ex. 1038, 52–53, 125–126, 126–128, 128–130), we will weigh her testimony regarding those matters accordingly. However, for the reasons explained above, Petitioner’s Motion to Exclude Dr. Dobs’ written description opinions in paragraphs 19 and 80–91 of Exhibit 2014 is denied.” slip op. at 10
- Strike new argumentOther
“Analysis Patent Owner’s Exhibits 2020–2026 play no part in our reasoning and were not relied upon by the Board in reaching our Decision. Petitioner’s Motion to strike Exhibits 2020–2026 is therefore dismissed as moot.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“typically possess a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders. Pet. 60 (citing Ex. 1005 ¶ 34). Petitioner argues that such a person of ordinary skill would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders. Id. Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Response. Because we find Petitioner’s definition to be consistent with the demonstrable level of skill in the art (see, e.g., Exs. 1009, 1025, 2003, 2004, 2005), and in the absence of a different proposed definition of the level of skill in the art by Patent Owner, we adopt Petitioner’s definition.” slip op. at 26
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“For these reasons, we do not find persuasive the testimony of Patent Owner’s expert, Dr. Dobs, that: By describing adjustments of dosing protocols to achieve at least a 10% reduction from baseline, and describing this use of tildacerfont as just one embodiment of the claimed use of the entire well-known, well-characterized, and discrete class, the specification reasonably conveyed to a POSA that the invention extended to the particularly claimed use of the entire recited class. Ex. 2014 ¶ 87. On the contrary, far from being a “well-known, well-characterized, and discrete class” the prior art teaches a heterogeneous assembly of different classes of small molecule CRF1 receptor antagonists (Type I, Type II, and “atypical”) displaying a very considerable variety of structures, both in terms of the core pharmacophore (e.g., monocyclic, bicyclic, tricyclic, phenolic, cyclohexyl amide, etc.) as well as in the various side groups. Moreover, the challenged claims recite only “a CRF1 receptor antagonist or a pharmaceutically acceptable salt thereof,” the scope of which also encompasses the much larger (and, according to Williams) much more effective large-molecule (peptide) CRF1 receptor antagonists, about which the Specification is entirely silent. See Ex. 1029, Abstr., 1065.” slip op. at 56
Patent outcomesUS 10,849,908 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,849,908 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686 - PTAB · Nov 26, 2024 · IPR2024-00934 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR of claims 19–21 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation at 3, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because TI filed a Sotera stipulation. Pet. 80; Ex. 1041.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construed as “indirectly or directly connecting such that an electrical signal can flow between”; and (2) “impedance device” was construed as “a device that exhibits an impedance.” Id. at 6. Even though TI identifies four claim terms in total in the Petition, TI argues that the asserted prior art renders the challenged claims unpatentable under any reasonable construction of those claim terms. See, e.g., id. at 4 (arguing that the “prior art analyzed here renders the claims unpatentable under either [party’s] constructions” proposed in the district court case), 6 (arguing that the “prior art renders the Challenged Claims unpatentable under . . . the [Board’s] constructions”). In its Preliminary Response, ParkerVision does not address TI’s proposed constructions, nor does ParkerVision identify additional claim terms that would require construction at this stage in the proceeding. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Taking into account ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that TI would prevail in demonstrating at least one of claims 19– 21 of the ’342 patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to claims 19–21 of the ’342 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Galton, TI argues the following: [a] person of ordinary skill in the art . . . as of the ’342 Patent’s priority date (April 14, 2000) would have had a least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design. Less work experience may be compensated by a higher level of education, such as a master’s degree. Pet. 6 (citing Ex. 1003 ¶¶ 28–30). In its Preliminary Response, ParkerVision does not address TI’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt TI’s uncontested assessment of the level of skill in the art because it is consistent with the ’342 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,496,342 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray, with claims 10, 11, 13, and 20 also unpatentable over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same level of ordinary skill in the art, except that Patent Owner states that the industry experience would have been “in analyzing and/or designing exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” PO Resp. 15–16. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’227 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 28 n.10. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4–6. According to Patent Owner, the Specification defines this claim term. Id. at 4–5 (citing Ex. 1001, 51:37– 40:59–6:4). In its briefing, Petitioner disagreed with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 2–4. However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the challenged claims are unpatentable even under Patent Owner’s narrower construction of it.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C); see also id. at 26–27 (asserting that “including multiple sensors in treadmills was a routine and well-known task”) (citing Ex. 1002 ¶¶ 159–162). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ treadmill to add both “Ray’s motivational image that showed a thinner image of the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing that detection of a user’s presence could provide benefits, including motivation (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25)), 41 (arguing that data transmission was “a well-known and routine task” (citing Ex. 1002 ¶¶ 188–189)). Patent Owner does not dispute these contentions. See PO Resp. We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success. See Pet. 16–18, 26–27; Ex. 1002 ¶¶ 135–138, 140–145, 161, 189; see also, e.g., Ex. 1004, 5:27–29, 7:11–22, 9:55–57.” slip op. at 22
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 60–71), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosure. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 32
Patent outcomesUS 10,032,227 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,032,227 - Nexus Pharmaceuticals, LLC v. Exela Pharma Sciences, LLCInstitution deniedPTAB · Aug 8, 2024 · PGR2024-00016 · APJ Ulrike W Jenks · PGR · Institution
The Board denied institution of PGR on claims 1–30 under § 325(d), finding substantially the same art or arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we exercise discretion to deny institution under § 325(d). Accordingly, we do not institute a post-grant review of the challenged claims of the ’370 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”3 Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). We consider several non-exclusive factors as set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”), which “provide useful insight into how to apply the 3 The Board institutes trial on behalf of the Director. 37 C.F.R. § 42.4(a). framework” under § 325(d). Advanced Bionics, 9. These non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, 17–18 (formatting added). “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, 10.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art: would have had an advanced degree like a Ph.D. or equivalent in chemistry, biochemistry, pharmaceutics, pharmacy, or a related pharmaceutical field, with at least two years of experience in pharmaceutical formulation development, analysis, optimization and manufacturing, including experiences with processes and techniques for minimizing impurities in, and improving the stability of, pharmaceutical drug products during manufacture and storage. Pet. 27 (citing Ex. 1003 ¶ 24). Petitioner also states that one of ordinary skill in the art “may also have lesser levels of education but more years of experience” and “[a] multi-disciplinary team consisting of individuals with different skills and experience could also suffice.” Id. Patent Owner argues that: A person of ordinary skill in the art has attained a Pharm. D., or M.S. or Ph.D. in chemistry, chemical engineering, or a related field; has three or more years of experience in developing aqueous drug formulations; and has access to other scientists to collaborate and consult with on, for example, characterizing the drug formulation, manufacture of the drug formulation, and clinical use and effect of the drug formulation.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Because this Decision declining to institute trial does not necessitate the application of any express claim construction, we need not construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim constructionDiscretionary denialPatents in suitUS 11,642,370
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.