- Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentablePTAB · Apr 25, 2025 · IPR2024-00079 · APJ George R Hoskins · IPR · Final written decision
Claims 1–6, 8–20, and 23–31 are unpatentable as obvious over Kenley and Long; the Board did not reach the alternative ground.
RulingsFinal written decision- Expert testimonyOther
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“(5) Analysis and Conclusion as to Motivation to Combine We conclude a preponderance of the evidence supports Petitioner’s” slip op. at 48
Patent outcomesUS 9,218,348 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,218,348 - Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentablePTAB · Apr 25, 2025 · IPR2024-00078 · APJ George R Hoskins · IPR · Final written decision
Claims 1–6 and 8–11 are unpatentable as obvious over Kenley and Long; the Board did not reach the alternative ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“the ’478 patent, the applicant clearly and plainly informed the Office that an “[e]xemplary” embodiment of “searching the first temporary storage location for the archive file,” as recited in then-pending claim 34 and step [1.4] of issued claim 1, is found at specifically cited portions of the ’478 patent specification. See Ex. 1002, 147 (“Exemplary support may be found at . . . .”). Those specifically cited disclosures describe how smart data manager 15 “examines” input buffer 20 “for the presence of archive files” or equivalently “to determine whether any archive files are stored therein.” Ex. 1001, Fig. 2A (step 100), 5:39–42, 6:19–27. Based on this prosecution history, we conclude that in one embodiment of claim 1, searching the first temporary storage location for the archive file per step [1.4] is satisfied by examining the first temporary storage location for the presence of an archive file. We reach this conclusion even if the referenced portions of the ’478 patent specification are not regarded as being definitional with respect to the “searching” requirements of step [1.4].” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(5) Analysis and Conclusion as to Motivation to Combine We conclude a preponderance of the evidence supports Petitioner’s” slip op. at 51
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
- BurdenFwd all claims unpatentableUnpatentable
“Accordingly, we conclude Petitioner has shown by a preponderance of” slip op. at 77
Patent outcomesUS 8,473,478 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,473,478 - Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentablePTAB · Apr 25, 2025 · IPR2024-00080 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–21 are unpatentable: claims 1–8, 10–16, and 18–21 as obvious over Sweat, and claims 9 and 17 as obvious over Sweat and Schneider.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner does not dispute this assessment. See PO Resp. 10–11 (“Patent Owner agrees to this definition proposed in the Petition.”). 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 ’850 Patent. Accord Inst. Dec. 7–8.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction principles, and does not revise or ignore the explicit language of the claims.”). In that vein, “[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.” Hockerson–Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.Cir.1999); accord Phillips, 415 F.3d at 1314 (“[T]he context in which a term is used in the asserted claim can be highly instructive.”). Patent Owner’s interpretation that “the current version” requires two current versions — one locally stored current version and a corresponding remotely stored current version — asks us to improperly adopt a claim construction which ignores explicit claim language and context in order to read unrecited features into the claim. The limitation in question, more fully and in better context, recites “storing the selected previous version . . . as the current version on the local storage location.” Ex. 1001, 9:24–26 (emphasis added). The express language shows that the claim is specifically directed to the current version on the local storage location and not any possible remote current version. As such, even if there were a “current version on the remote storage location” which corresponds to and is kept in parity with the current version on the local storage location, i.e., a backup copy of the locally stored current version, the claim does not recite that feature, establishing that it does not require that feature. Further, as to the context of the claim, the term in question is part of a recited method of restoring a file to a previous version of the file on a local computational machine, rather than a method for maintaining parity of remotely stored backup files during that restoration process. See id. at 8:63–9:28. As such, the explicitly recited claim language and the context of the claim do not support reading an unrecited remote backup feature into the claim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“been obvious to use the “Download” feature described by Sweat to replace a corrupted or otherwise compromised file, thus meeting “storing the selected previous version . . . as the current version on the local storage location.” Pet. 60–62. First, regarding the technical operation of Sweat’s download function, Petitioner explains that a user “download[s] a version of [a] file from the server 106 to the local computer 104” and selects a local “target location to save the selected file.” Id. at 61 (citing Ex. 1006, 10:58–63). Sweat’s download function “[c]opies the file or folder to the user’s local computer” and can “overwrite files that exist on the user’s local computer, as desired.” Ex. 1006, 5:49–55. From those disclosures, Petitioner asserts it would have been obvious to use Sweat’s download function “to restore a previous version of a file by copying the file to the user’s local computer and overwriting the current version of the file on the user’s local computer, so as to save the restored file as the new current version of that file.” Pet. 62 (citing Ex. 1004 ¶¶ 125– 126). Petitioner explains that the download function would be used in such a manner where a user “desire[s] to restore a previous version of the file to replace the current version for example, in the case where the newest version of the file has become corrupted or where desired data has been deleted from” slip op. at 21
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We agree with Petitioner. Sweat’s description of its “Viewing Files” feature explains that “a user must install the appropriate viewer to open and view drawing files.” Ex. 1006, 23:38–41. Sweat lists examples of such viewers including software applications such as Volo™ View Express. Id. at 23:45–46, 23:63–67. While Sweat does not list a CAD file creating application in its exemplary list of viewers in that “Viewing Files” section (see id. at 23:38–24:35), elsewhere, Sweat states that a CAD application, e.g., “AutoCAD®,” is “drawing/viewing software utilized by the viewer” (id. at 23:29–33). Furthermore, Petitioner’s declarant offers undisputed testimony that AutoCAD is software for creating CAD drawing files and can also be used to view those created CAD drawing files. Ex. 1024 ¶ 39 (citing Ex. 1029, 19–23, 541–542). On that evidence, we agree a POSITA would understand that Sweat describes using a viewer to preview previous versions of CAD drawing files and that Sweat also describes AutoCAD (which creates CAD drawing files) can be used as a viewer. In light of that understanding, we agree it would have been obvious to use AutoCAD, i.e., “an application that created the file,” to preview previous versions of that file. Pet. 62–63. We also agree that it would have been rational to do so because the same already locally available software application which created the file could then be used to view the file. Id.; see Ex. 1004 ¶ 128. Owner dismisses Petitioner’s obviousness argument as “irrelevant,” and, instead, argues that Sweat does not disclose the claimed features. PO Sur- Reply 16–17; see PO Resp. 39–40. In particular, Patent Owner argues Sweat “discloses the use of specialized viewing software to view the related file” and emphasizes that “CAD software is clearly not being used in Sweat’s ‘View in Window’ functionality” PO Resp. 39–40 (citing Ex. 1006, 23:39–51); PO Sur-Reply 17. While it may be the case that Sweat does not outright disclose the features recited in the claim, those arguments do not show fault in Petitioner’s case that the claimed features would have been obvious. See CRFD Rsch., Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017) (“Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.”); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016) (“A claimed invention may be obvious even when the prior art does not teach each claim limitation.”), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). Accordingly, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claim 2 is obvious over Sweat.” slip op. at 28
Patent outcomesUS 10,585,850 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,585,850 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 22, 2025 · IPR2025-00123 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of inter partes review of claims 1–8 and 13–25 under § 314(a), finding the trial date and district court investment outweighed Petitioner’s stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The District Court recently denied Petitioner’s motion to stay without prejudice. Ex. 2003, 3. The District Court stated that Petitioner’s motion “is premature” because the Board has not decided “whether or not to institute inter partes review.” Id. We decline to speculate based on the record in this case whether the District Court would grant a renewed motion to stay the District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the first Fintiv factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“G. Summary On balance, we determine that Fintiv factors 1–6 favor discretionary denial of institution. Specifically, as discussed above, factors 2, 3, and 5 each weigh in favor of discretionary denial, factor 4 weighs strongly against discretionary denial, and factors 1 and 6 are neutral. We determine that the projected trial date (at least six months before the projected statutory deadline for a final written decision) and the parties’ significant investment in the District Court Litigation outweigh Petitioner’s stipulation. Thus, based on our holistic view of the Fintiv factors, we exercise our discretion under § 314(a) to deny the Petition. III. CONCLUSION For the reasons discussed above, we exercise our discretion under § 314(a) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 10
Discretionary denialPatents in suitUS 8,745,749 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 21, 2025 · IPR2024-01477 · APJ Bach V Hoang · IPR · Institution
The Board denied institution of IPR on claims 1–14 under § 314(a), finding that the Fintiv factors favoring denial outweighed the stipulation against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Statutory Deadline We weigh this factor as favoring the exercise of discretionary denial. The parties agree that the projected statutory deadline for issuing our Final Written Decision (April 23, 2026) is a little more than six months after trial is currently scheduled in the District Court litigation (October 6, 2025). Supp. Br. 4; Prelim. Resp. 19–20. Because the currently scheduled District Court trial is set to begin six months before our deadline to reach a final decision, this factor favors discretionary denial in this case. See Fintiv, Paper 11 at 9. C. Factor 3 – Investment in the Parallel Proceeding We weigh this factor as favoring the exercise of discretionary denial. Showing substantial investment in the District Court litigation, document production is substantially complete and fact discovery will be completed within two weeks of this Decision on Institution. Ex. 2001, 4–5 (Second Amended Docket Control Order). Further, a hearing on claim construction and associated briefing is complete. Id. And, the deadline to serve Institution. Id. at 4. These actions show that there has been notable investment by the parties in the District Court litigation. Furthermore, we must consider this parallel work in relation to the October 6, 2025 District Court litigation trial date, which is six months before the projected statutory deadline of our Final Written Decision. See Fintiv, Paper 11 at 10. As work in the District Court litigation has moved beyond preliminary stages into more advanced stages, instituting at this time implicates at least some duplicative costs. See id. On the matter of petition timing, it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding. Fintiv, Paper 11 at 11. Here, Petitioner filed its petition on September 27, 2024, which is four months after receiving Patent Owner’s May 29, 2024 disclosure of asserted claims and infringement contentions and nine months after it was served Patent Owner’s December 29, 2023 infringement complaint. Ex. 1017; Ex. 1018, 1. Further, Petitioner served its amended invalidity contentions in the District Court litigation on December 17, 2024, i.e., after it filed its Petition.5 We do not find the timing of the Petition in this case to outweigh the significant investment in the District Court litigation. Considering the substantial investment in the District Court litigation and the rapidly advancing District Court litigation trial date balanced against the timing of the Petition, we determine this factor weighs in favor of discretionary denial.” slip op. at 11
Discretionary denialPatents in suitUS 8,898,803 - Manitowoc Foodservice Companies, LLC v. Gate CFV Solutions, IncInstitution deniedPTAB · Apr 18, 2025 · DER2023-00006 · APJ John E Schneider · DER · Institution
The Board denied institution of a derivation proceeding because Manitowoc did not show that all elements of amended claim 1 were conceived and communicated to Gate CFV Solutions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“invention and communicated that invention to Respondent prior to July 22, 2021, the filing date of Respondent’s ’693 application. See Pet. 6–10. Of great importance here, however, are the requirements noted above, that Petitioner must show: (1) that Petitioner has at least one claim that is the same or substantially the same as Respondent’s claimed invention; (2) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to Respondent; and (3) that the challenged claims are drawn to the same or substantially the same invention as the invention Petitioner disclosed to Respondent. See 37 C.F.R. § 42.405(a)(2), 37 C.F.R. § 42.405(b)(3). For the reasons discussed below, Petitioner has not made the requisite showing in the Petition with respect to at least item (2).” slip op. at 9
None - Sterlite Technologies Inc. v. Afl Telecommunications, LLC.Institution deniedPTAB · Apr 9, 2025 · IPR2025-00127 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8, or 13 were unpatentable over either proposed obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- Skill levelOther
“B. Level of Ordinary Skill in the Art As noted above, resolving the question of obviousness requires determination of the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Here, however, as Patent Owner observes (Prelim. Resp. 10), 8 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. Petitioner has provided no assessment as to the level of ordinary skill to be considered in evaluating the grounds of obviousness that are advanced by Petitioner. The absence of such assessment calls into question the fundamental adequacy of Petitioner in carrying its burden to show a reasonable likelihood of success of unpatentability of the challenged claims that necessarily must take into account the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In any event, we do not discern that there is any apparent dispute between the parties as to the meaning of any claim term. In considering the record at hand, we determine that it is unnecessary to make explicit, or further address, any claim term in deciding whether or not to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the 9 Throughout their briefings, the parties refer to the limitations designated [1.1] through [1.7] using the term “element,” e.g., “element [1.7]” (see, e.g., Pet. 23; Prelim. Resp. 23). For consistency with the parties’ chosen nomenclature, we do the same in this Decision. controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“A POSITA would have been motivated to modify Summers’ fiber optic cable 50 to include Kaji’s intermittently-fixed optical fiber tape 2A to obtain the predictable result of enabling a higher density of optical fibers to be packed in Summers’ fiber optic cable 50, as contemplated by Kaji. *** a POSITA would have had a reasonable expectation of success because such modification would amount to nothing more than a simple substitution of Summers’ four-fiber ribbons 52 with Kaji’s intermittently-fixed optical fiber tape 2A by known methods of cable manufacturing. ***” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,287,591 - R-Pac International Corporation v. Adasa IncInstitution deniedPTAB · Mar 25, 2025 · IPR2024-01416 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution on claims 1–20 under §325(d), finding the challenges relied on previously presented or cumulative art and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Taking a holistic view of the totality of the information presented, we determine that the challenges set forth in the Petition are based on the same or substantially the same prior art or arguments previously presented to the Examiner. Moreover, Petitioner does not direct us to information sufficient to establish a material Examiner error. Accordingly, we exercise our discretion under Section 325(d) and do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–20 of the ’967 patent is denied, and no trial is instituted.” slip op. at 28
Discretionary denialPatents in suitUS 9,798,967 - PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016), 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Kinderfarms LLC v. Genexa Inc.All claims unpatentablePTAB · Mar 24, 2025 · PGR2023-00051 · APJ Deborah Katz · PGR · Final written decision
Claims 1–24 are unpatentable as obvious under § 103 over FR458 with the ’4666 patent and WO133; claims 1–17 are also unpatentable over WO742 with the ’4666 patent and WO133.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ positions about the level of ordinary skill in the art are similar. (See Pet., 13–14; see PO Resp., 10–12.) In light of the parties’ arguments and evidence, we determine that the ordinarily skilled artisan would have had a bachelor of science degree in a relevant life sciences field, such as chemistry, biochemistry, or pharmacy, with at least three to four years of work or laboratory experience in pharmaceutical formulations and would have had access to team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals. (See Pet. 13–14; see PO Resp. 10–12; see Dec. 6–7.) Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’795 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although Petitioner puts forth constructions for terms in the claims of the ’795 patent, Patent Owner argues that we need not expressly construe any terms to resolve the controversy between the parties. (See Pet. 14–19; see PO Resp. 12.) Except as indicated below, we agree that express construction of the claim terms is not required because the parties do not materially dispute the meanings of the terms. 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))). Limitation (c) of claim 1 recites “syrup formulation” once and then “syrup” by itself twice. The parties agree that two recitations of “syrup” by itself mean and are synonymous with “syrup formulation.” (See Tr. 15:16– 19 (counsel for Petitioner: “[T]he term, syrup, by itself, means the formulation. And for that reason, we--it’s our position that it’s the syrup formulation that has the specific viscosity requirements as well as the other features that we discussed.”); 31:17–20 (counsel for Patent Owner: “But those wherein clauses, what it’s referring to, the syrup formulation and the syrup -- it was all to a complete to a final formulation, right, it’s not just the agave syrup. Everybody here recognizes and understands that from that perspective.”).) Thus, the parties agree that the “viscosity of less than 1500 centipoise at about 22 degrees” limits the final “pharmaceutical syrup formulation for oral administration,” not the “agave syrup” limitation in limitation (b) of claim 1.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner argues further that Dr. Crowley testifies that, “[g]enerally, suspensions having a viscosity in the range of 20 to 150 cP are considered readily pourable,” but that this range is well below the viscosity range of 200–900 cP taught in WO133 and the preferred viscosity range of 1000–3000 cP taught in the ’4666 patent. (See PO Resp. 45 (quoting Ex. 1003 ¶ 59).) Dr. Crowley testifies that “increasing the viscosity of a suspension formulation has been shown to impair the dissolution characteristics of immediate release acetaminophen” and that, “[w]ith respect to suspensions for oral administration, having a higher viscosity is generally not desirable.” (Ex. 1003 ¶ 59.) According to Patent Owner, this is a “teaching away” because Petitioner’s own expert testimony demonstrates a motivation not to combine the acetaminophen formulation of FR458- Example 1 with the 1000-3000 cP range of the ’4666 patent and the 200-900 cP range of WO133 since by his own admission doing so would yield bad results (i.e., impairing the dissolution characteristics of the acetaminophen) and generally undesirable higher viscosity. (PO Resp. 46 (citing Berkland Decl., Ex. 2009 ¶ 148).) Dr. Crowley’s cited testimony, however, is about general characteristics of suspensions for oral administration, whereas the WO133 refers specifically to sweetened analgesic formulations. (See Ex. 1006, 8:1– 3 (“The viscosity of the acetaminophen composition generally ranges from about 200–900 centipoise, preferably from about 300–700 centipoise.”); see Pet. Reply 8–9.) As Petitioner notes, Dr. Crowley also testifies that the viscosity of 29 commercially available, pediatric liquid oral antibiotic formulations were measured and determined to range from 20 to 1,780 cP” and that “[t]he viscosity of Children’s Tylenol has been reported to be less than 1,000 centipoise at shear rates between 0.05 and 0.2 reciprocal seconds.” (Ex. 1005 ¶ 58.) Thus, we are not persuaded that Dr. Crowley’s testimony contradicts the teachings regarding viscosity of analgesic formulations in the cited prior art.” slip op. at 23
Patent outcomesUS 11,617,795 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 11,617,795
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.