• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Aug 13, 2021 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–3, 5, 6, 10–12, 14, and 15 were not shown unpatentable under the three § 103 grounds because the combinations did not establish the encrypted-frame limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” Pet. 14 (citing Ex. 1003 ¶¶ 65–67). Patent Owner does not address, expressly, the level of ordinary skill in the art in its Response. See generally PO Resp. Dr. Nielson, however, applies Petitioner’s proposed level of ordinary skill in his Declaration (Ex. 2009 ¶ 34) and does not indicate that he does otherwise in his Second Declaration (see generally Ex. 2024). In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 10 (citing 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)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 11

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

    “Petitioner contends that “the challenged claims are invalid under their plain and ordinary (‘P&O’) meaning.” Pet. 15 (citing Ex. 1003 ¶ 99). In the Preliminary Response, Patent Owner raised the meaning of two claim terms—“user encryption key” and “content encryption key.” Prelim. Resp. 40–44, 46–48. In the Institution Decision, we addressed each term to the extent necessary to resolve the controversy presented, and we found, in each instance, that Petitioner’s mapping of the prior art to these limitations of the claims was sufficient on the record presented at the time. See Inst. Dec. 12– 15 (discussing the construction of the terms), 22–28 (discussing limitation 1[a], which includes “user encryption key”), 28–31 (discussing limitation 1[b], which includes “content encryption key”). In particular, on the preliminary record, we found that “Chen’s master key Kw teaches the recited ‘user encryption key’” (id. at 28) and “Chen’s work key Kw teaches the recited ‘content encryption key’” (id. at 30). In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” Dec. 12–15. Additionally, we need not construe other claim terms to resolve the present controversy before us.6” slip op. at 13

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

    “techniques, and standards in the industry regarding the same in an attempt to explain how one of ordinary skill in the art would have understood Chen at the time of the ’920 patent. As discussed herein, the weight of the evidence is very closely balanced. Fundamentally, however, it is Petitioner’s burden to establish how one of ordinary skill in the art would have understood Chen and the combined teachings of Chen and Grab-333. And, as we find herein based on the full record developed during trial, Petitioner does not establish that the combined teachings of Chen and Grab-333 would have met limitation 1[c]. Below, we walk through the parties’ arguments and evidence, starting with the Petition, and then we discuss our findings regarding Chen in light of the full trial record.” slip op. at 24

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “To begin, 37 C.F.R. § 42.23(b) specifies, in relevant part, that “[a] sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.” 37 C.F.R. § 42.23(b). The Consolidated TPG repeats the above-quoted language of the rule and also explains that [s]ur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony. As noted above, a sur-reply may address the institution decision if necessary to respond to the petitioner’s reply. This sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony. Consolidated TPG at 73–74. Accordingly, Rule 42.23(b) provides a blanket prohibition on a patentee filing exhibits with a sur-reply, as Patent Owner has done here.” slip op. at 54

  Patent outcomesUS 9,184,920 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,920
• Unified Patents Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 8, 2021 · IPR2019-01379 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1 and 17 were not shown unpatentable over Kim and Huang because Petitioner did not establish an adequate motivation to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in image and/or video processing.” Pet. 15–16 (citing Ex. 1005 ¶ 42). Patent Owner neither comments on that proposal, nor proposes an alternative level of ordinary skill in the art. See generally PO Resp. 5 The burden of showing something by a preponderance of the evidence requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence. Concrete Pipe & Prods. of Cal., Inc. v. Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993). Because Petitioner’s proposed definition is consistent with the cited prior art, we apply it for purposes of this Decision. In our view, moreover, 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 prior art itself can reflect an appropriate level of skill in the art at the time of the invention).” slip op. at 9

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

    “00052, which also involves the ’651 patent, the Board construed the term “level of detail” as “level of change of visual elements across adjacent pixels,” and that the same construction should apply here. PO Resp. 58–60 (citing IPR2020-00052, Paper 42). Petitioner does not propose a construction for that term, but argues that “the combined Kim and Huang teachings would determine the level of detail for adjacent pixels under Patent Owner’s ‘adjacent pixels’ construction.” Pet. Reply 5–11. Because our ultimate decision does not rest on the construction of that claim term, we do not construe the term in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). As part of our obviousness analysis, we address additional claim construction arguments regarding the “determining” limitation. See infra § III.E.1.a.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Patent Owner that these exhibits represent expressions of opinion of unnamed users that Patent Owner relies on to show cotemporaneous praise existed. These exhibits are cited in the Hanson Declaration only as evidence of industry praise, i.e., to support testimony based on his personal knowledge. See Ex. 2045 ¶ 51. And although Mr. Hanson quotes statements from these exhibits in his declaration, their relevance lies in that they allegedly reflect praise for DivX’s deblocking method. For example, the statement by user “temperance”—that Petitioner objects to as being relied on for the truth of the matter asserted (Paper 46, 1– 2)—is offered to show that “[t]here was plenty of healthy debate on the boards about the quality of the new version of the codec,” and “many commenters specifically praised the deblocking.” See Ex. 2045 ¶ 46. Moreover, it is clear that these are merely opinions of online users, not factual assertions. See id. (quoting temperance: “IMHO, DivX 6 deblocking is better (for metrics and eyes) than xvid’s”) (emphasis added); see Sonos, slip op. at 7 (separating admissible expressions of opinions that constitute praise from bare factual assertions). Other statements that Petitioner objects to (Paper 46, 2) are similarly opinions of online users, not factual assertions that Patent Owner relies upon for the truth of the matter stated therein. We are therefore not persuaded that Exhibits 2018–2030 and 2032–2033 contain inadmissible hearsay.11 See Cisco Sys., Paper 41 at 50–51 (allowing exhibits cited only as evidence of industry praise); Quanergy Sys., Inc. v. Velodyne Lidar, Inc., IPR2018-00255, 2020 WL 2595492, at *2 (PTAB May 21, 2020) (citing Asetek Danmark A/S v. CMI USA, Inc., 13-CV-00457-JST, 2014 WL 12644295, at *2 (N.D. Cal. Nov. 19, 2014)).” slip op. at 55

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the Petition does not detail Petitioner’s newly proposed interpretation of this claim limitation. See Pet. 29–36 (arguing only that a person of ordinary skill in the art would have recognized that Kim determines the level of detail for a region comprising an 8 x 8 block of pixels of a reconstructed video frame). On the contrary, the Petition argued: [T]he prior art cited in this Petition teaches and suggests exactly what is claimed and what allegedly distinguished the claims from Kim II: determining the level of detail of a region that includes pixels from multiple rows and multiple columns that encompass pixels immediately adjacent to at least two sides of the block boundary, and selecting a filter to apply.” Pet. 18 (emphasis added).6 Under these circumstances, we consider Petitioner’s new argument waived. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ 6 Petitioner refers to a different prior art reference, U.S. Patent No. 6,983,079, cited by the examiner during the prosecution of the ’651 patent, as Kim II. the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 23

  Patent outcomesUS 8,139,651 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,139,651
• Illumina, Inc. v. Natera, Inc.No claims unpatentable
  PTAB · Dec 11, 2020 · IPR2019-01201 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–27 were not shown unpatentable: the single-cell Dhallan theories lacked a reasonable expectation of success, and Rabinowitz was not established as prior art.

  RulingsFinal written decision

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

    “In sum, Petitioner’s evidence in the Petition establishes that single cells were used for genetic analysis, amplification techniques were known, and SNP arrays could be used to analyze chromosome imbalances. Petitioner’s evidence, however, does not persuasively address the interplay between the amount of DNA in a single cell and the amount of DNA or amplified DNA needed to carry out the claimed method using a SNP 22 genotyping array and Dhallan’s aneuploidy analysis. This is important because Patent Owner cites evidence demonstrating that at the relevant time, “various researchers had determined that very low amounts of DNA could not be reliably used for SNP genotyping arrays (even with intervening amplification).” PO Resp. 47.” slip op. at 22

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

    “On this record, we agree with Patent Owner and Dr. Quackenbush that the ’406 application and ’741 provisional together demonstrate to persons of 23 The ’741 provisional is incorporated by reference into the ’406 application. Ex. 1026, 1:5–13. 48 ordinary skill that the inventors understood pyrosequencing could be used for high-throughput sequencing, if expensive machines were purchased. In other words, the ’741 provisional gives context to the statement in the ’406 application, and we agree with Dr. Quackenbush that “‘[s]uitability’, as the provisional makes clear to a person of ordinary skill in the art, is a cost issue, rather than a technical one.” Ex. 2012 (Quackenbush Decl.) ¶ 277; see also id. ¶¶ 276–80 (opining on disclosures in the ’741 provisional).” slip op. at 48

  • ExcludeMotion to exclude, deniedDenied

    “As to Dr. Quackenbush’s qualifications, although Petitioner characterizes his expertise as relating to statistics, the record reflects that he also has adequate experience in the fields of genetics and biotechnology. For example, he is Professor of Computational Biology and Bioinformatics, the Chair of the Department of Biostatistics, and the Director of the Health Data Science Center at the Harvard TH Chan School of Public Health. Ex. 2013, 1. He has almost three decades of experience in research and teaching in the fields of genetics and biotechnology (id. at 1–8, 12), has published hundreds of articles in these fields (id. at 13–52), was the Editor-in-Chief of the journal Genomics for over a decade (id. at 8), and has served as a peer reviewer, or on the editorial board, of a dozen other publications relating to genetics and biotechnology (id. at 7–8). Paper 49, 2. Given that experience in genetics and biotechnology, we find that Dr. Quackenbush has sufficient 54 specialized knowledge, experience, and education in the techniques of the ’592 Patent and prior art, such as DNA amplification, genotyping, and analysis of genetic data, for his testimony to be helpful to us. Moreover, even if Dr. Quackenbush did not personally work in fetal diagnostics at the relevant time, there is no requirement that a declarant must actually be a person of ordinary skill in the art to present testimony as to what such a person would have understood at the time of the invention. See, e.g., SEB S.A., 594 F.3d at 1373 (stating there is no requirement of a perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The remaining arguments raised in Petitioner’s motion relate to the sufficiency, rather than admissibility, of evidence. Such arguments are improperly advanced in a motion to exclude. See TPG 79 (stating that a motion to exclude may not be used to challenge the sufficiency of the evidence to prove a particular fact); see also Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (“[T]he Board, sitting as a non-jury tribunal, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial.”). Moreover, “there is a strong public policy for making all information filed in an administrative proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). Rather than excluding evidence that is allegedly 55 confusing, misleading, or incorrect, we simply give it the appropriate weight in our analysis.” slip op. at 54

  • Strike new argumentNew argument disregardedDecided for patent owner

    “success arguments focus solely on Dhallan’s single cell disclosure, while “ignor[ing] Dhallan’s disclosure that its methodology can be performed using 2–32 cells, which also falls within the claims.” Reply 18 (citing, e.g., Pet. 13–14). Patent Owner responds that this is an improper attempt to change the thrust of the obviousness theory presented in the Petition. Sur-reply 16–17. We agree with Patent Owner. Although the Petition references portions of Dhallan that address using sources of DNA other than a single cell (see, e.g., Pet. 13–14, citing Ex. 1002 ¶¶ 44, 74), this is by way of background only, falling within a section titled “Introduction to Dhallan.” See Pet. 11. Petitioner’s detailed obviousness arguments for claim 1 are limited to use of DNA from a single cell, and do not extend to DNA from multiple cells.15 See, e.g., id. at 19–20 (arguing that, because Dhallan’s preferred embodiment is one embryo cell, Dhallan teaches the claimed limitation reciting “wherein the small amount of genetic material from the individual is from fifty or fewer of the individual’s 15 As noted above, claim 1 recites several possible sources for the claimed “small amount of genetic data.” See supra n.9. Here we focus on Petitioner’s unpatentability arguments based on option [i], but note that Petitioner’s unpatentability arguments under options [ii] and [iii] also did not extend to use of DNA from multiple cells. See, e.g., Pet. 20 (cross-referencing arguments for claims 4, 5, and 17); id. at 34 (for claim 4, arguing option [ii] based on “a single human cell”); id. at 35 (for claim 5, arguing option [iii] based on “extracellular fetal DNA from maternal blood”); id. at 42 (for claim 17, arguing option [iii] based on a “single fetal cell”). 30 cells”); id. at 29 (“A POSA would have been motivated to use a single cell as the source of genetic material . . . .”); id. at 31 (“A POSA would have reasonably expected success in using Dhallan’s methodology, for example as described in Example 14, on one embryonic cell.”). Accordingly, we agree with Patent Owner that Petitioner is impermissibly attempting to change the thrust of its obviousness theory on reply. Sur-reply 16–17. We will not consider Petitioner’s belated attempt to argue a reasonable expectation of success in using more than a single cell in the claimed method. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the . . . patent owner response.”).” slip op. at 30

  Patent outcomesUS 8,682,592 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,682,592
• Intel Corporation v. VLSI Technology LLCNo claims unpatentable
  PTAB · Feb 26, 2020 · IPR2018-01661 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–5, 15, and 16 were not shown unpatentable because the asserted combinations failed to establish the claimed power gain and power loss relationship used to determine whether to power down.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Raghunathan, Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’014 patent “would have had at least an M.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience), and would have three years of experience with computer hardware and software power management design techniques.” Pet. 24 (citing Ex. 1102 ¶¶ 57–58). In our Institution Decision, we adopted Petitioner’s proposal with a modification to the level of education based on Patent Owner’s proposal in its Preliminary Response. Inst. Dec. 7 (citing Prelim. Resp. 5). Specifically, we determined that “a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” Id. Neither party argues during trial that our definition of the level of ordinary skill in the art was incorrect. See PO Resp. 2–3. See generally Pet. Reply. Because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” slip op. at 8

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

    “We need only construe claim terms that are in controversy, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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)). In this proceeding, neither party proposes a formal construction for any term. See Pet. 23; PO Resp. 3. We find it unnecessary to construe expressly any claim terms to resolve the controversy before us.” slip op. at 9

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

    “Weighing the parties’ arguments and evidence on the complete record now before us, we find Petitioner has not shown that a person of ordinary skill in the art would have understood Takahashi’s “predetermined value” to be an estimated power gain. Patent Owner, with the support of Dr. Wolfe’s credible testimony, persuasively argues that Takahashi’s “predetermined value” is a previous value of the cache-miss rate. Petitioner, on the other hand, does not point to anything in Takahashi that describes the “predetermined value” as an estimated power gain, nor does Petitioner cite any testimony from Dr. Raghunathan in support of its position other than a portion of his declaration that is substantially the same as the discussion in the Petition. See Pet. 33–34 (citing Ex. 1102 ¶ 80); see also Ex. 1102 ¶¶ 72– 80 (testimony substantially the same as pages 29–34 of the Petition). Without any suggestion in Takahashi that the “predetermined value” relates to an estimated power gain, Takahashi’s stated goal of reducing power consumption is not sufficient to show that Takahashi’s “predetermined value” is representative of an estimated power gain. For these reasons, we find that Petitioner has not established that Takahashi teaches or suggests an estimated power gain or determining whether to power down a portion of a device component in response to a relationship between an estimated power gain and an estimated power loss, as recited in independent claim 1. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Takahashi.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We focus on one argument we find particularly persuasive—that Hu does not teach using the L2Access:leak ratio to “determin[e] whether to power down” a cache or a portion of a cache, as required by claim 1, even if the L2Access:leak ratio can be considered a relationship between an estimated power gain and an estimated power loss. See PO Resp. 24; PO Sur-reply 16–18. In its Reply, Petitioner alleges that “Hu explicitly discloses using the L2Access:leak ratio to determine when to power down the L1 cache.” Pet. Reply 16 (emphasis added) (citing Ex. 1102 ¶¶ 97–98). Petitioner, however, does not support this proposition by quoting or citing specific language in Hu, relying only on Dr. Raghunathan’s declaration, which provides substantially the same discussion as the Petition. Compare Ex. 1102 ¶¶ 97–98, with Pet. 39–40. We agree with Patent Owner that the portion of Hu cited in the Petition and Dr. Raghunathan’s declaration does not teach using the L2Access:leak ratio to determine whether to power down the L1 cache, as Petitioner contends. See PO Sur-reply 16–18; Pet. 39–41; Ex. 1102 ¶¶ 97– 99. Rather, Hu discloses determining values of the normalized cache leakage energy for different decay intervals at four values of the L2Access:leak ratio—5, 10, 20, and 100. Ex. 1104, 175–76; see PO Sur-reply 17. Hu uses these assumed values of the L2Access:leak ratio as inputs to generate simulation data, not to determine whether to power down a cache or portion of a cache. Ex. 1104, 175, see PO Resp. 24; PO Sur-Reply 15–16. Petitioner argues that Hu teaches that the higher the L2Access:leak ratio, the longer the system should wait before powering down the cache. Pet. 39–41; Pet. Reply 16–17. Hu, however, does not expressly compare the effect of different L2Access:leak ratios other than to state that when the L2Access:leak ratio is 100, a small decay interval is detrimental to performance and power. Ex. 1104, 175. As Patent Owner correctly asserts, Hu does not describe using the L2Access:leak ratio to determine an appropriate decay interval, nor does Hu describe using the L2Access:leak ratio to determine whether to power down a portion of a cache. See PO Sur-Reply 17–18.” slip op. at 24

  Patent outcomesUS 8,020,014 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,020,014
• Intel Corporation v. VLSI Technology LLCNo claims unpatentable
  PTAB · Feb 12, 2020 · IPR2018-01040 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–4, 10, 12, and 13 were not shown unpatentable because the prior art did not teach or support adding the separately claimed third voltage reference.

  RulingsFinal written decision

  • Adverse judgmentDenied

    “We agree with Patent Owner that we should not address the patentability of claim 9 in this Decision. See PO Resp. 63–64. Rather, following Federal Circuit case law, we treat claim 9 as if it never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims. See LG Elecs., Inc. v. Wi-LAN Inc., IPR2018-00673, Paper 48 at 3 (PTAB Sept. 5, 2019) (Final Written Decision); Yamaha Golf Car, Paper 63 at 3; Baker Hughes, Paper 74 at 6, 11–12. We also agree with Patent Owner that we should not enter adverse judgment as to claim 9. See PO Sur-reply 26–27. Arthrex, the case relied on by Petitioner, does not mandate a different outcome. By its terms, 37 C.F.R. § 42.73(b)(2) permits disclaimer to be construed as a request for adverse action when there are “no remaining claim[s] in the trial.” That was the situation in Arthrex. 880 F.3d at 1347 (“Arthrex, Inc. disclaimed all claims that were the subject of the petition.”). Here, in contrast, several claims remain in the trial. Furthermore, Arthrex does not support Petitioner’s patent are disclaimed.” Pet. Reply 27. The Arthrex language quoted by Petitioner compares disclaimer of an “entire patent” under § 42.73(b)(1) with disclaimer of “some of the claims” of the patent (i.e., fewer than all claims in the patent but all challenged claims so there are no remaining claims in the trial) under § 42.73(b)(2). 880 F.3d at 1350. Neither situation is present here when only one claim (claim 9) has been disclaimed and several challenged claims (claims 1–4, 10, 12, and 13) remain in the trial.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention of the ’207 patent “would have had at least a[n] M.S. degree in electrical engineering and would have at least two years of experience with circuit design.” Pet. 17 (citing Ex. 1002 ¶ 32). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the asserted prior art and adopted Petitioner’s position, which Patent Owner did not oppose in the Preliminary Response. Inst. Dec. 14 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Neither Patent Owner, in its Response, nor Dr. Ipek, in his declaration, proposes a level of ordinary skill in the art. Dr. Ipek, however, states that “[f]or purposes of the subject IPR proceedings, I have been asked to employ [Petitioner’s proposed] standard of a person of ordinary skill, but I do not offer the opinion that it is the correct standard.” Ex. 2011 ¶ 19. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one least an M.S. degree in electrical engineering and at least two years of experience with circuit design. See Inst. Dec. 14; Pet. 17.” slip op. at 18

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

    “the complete record developed during this inter partes review, we again conclude that the “third voltage reference” must be separate from the “second voltage reference.” We begin with the language of claim 1, which recites a first voltage reference, a second voltage reference, and a third voltage reference as separate elements.7 “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citation omitted). The terms “first,” “second,” and “third” are terms used to distinguish separate elements of a claim. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1373 (Fed. Cir. 2005); see also 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2005) (“The use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between repeated instances of an element or limitation.”). Although Gillette and 3M address whether such terms impose a numerical or serial limitation, they nevertheless support Patent Owner’s position that enumerated elements typically are not construed to be the same element. See Sur-reply 11–12. Other cases cited by Patent Owner also support its position. See id. at 12 (citing Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935–39 (Fed. Cir. 2013) (construing “first” and “second” disks as separate and discrete disks); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405) (Fed. Cir. 1996)” slip op. at 21

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “ordinary skill in the art would have sought to reduce power consumption in Takahashi to address the well-known problem of current leakage, and that providing a separate voltage reference for transistor 223 in Takahashi’s Figure 15 (i.e., a third voltage reference) would have achieved that goal. Pet. 34–35 (citing Ex. 1002 ¶ 88). But the only evidence Petitioner relies on for adding the proposed third voltage reference is the testimony of Dr. Stojanovic. Id. (citing Ex. 1002 ¶ 88). Without any additional supporting evidence, Dr. Stojanovic’s testimony is insufficient to supply the missing “third voltage reference,” which is a key limitation of claim 1. See K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014); Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (Nov. 2019)9 (“[I]n an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. . . . In other words, expert testimony may explain ‘patents and publications,’ but is not a substitute for disclosure in a prior art reference itself.” (citing K/S Himpp, 751 F.3d at 1365)); see also Inst. Dec. 30–31 (reaching the same conclusion on the preliminary record). Furthermore, we agree with Patent Owner that Petitioner’s proposed” slip op. at 37

  Patent outcomesUS 7,706,207 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,706,207
• Trans Ova Genetics, LC v. Xy, LLCNo claims unpatentable
  PTAB · Jun 26, 2019 · IPR2018-00250 · APJ David Cotta · IPR · Final written decision

  Claims 1–16 were not proven unpatentable because Petitioner failed to establish that Lu, relied on in every asserted obviousness ground, was prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable

    “Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); In re Katz, 687 F.2d 450, 454 (Fed. Cir. 1982). “The question of whether a reference is a work of others for the purposes of § 102(a) is, like that of inventorship, a question of law based on underlying facts.” Allergan, 754 F.3d at 969 (citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). In determining whether a reference is the work of the named inventor(s), the inquiry focuses on whether the relevant content of the reference – which includes “the design, trial, and analysis of results” – was solely the work of the inventor(s). See Allergan, 754 F.3d at 969; Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003) (“What is significant is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.”).” slip op. at 14

  • Expert testimonyPatent owner expert creditedOther

    “9 We acknowledge that Mr. Miles, as a former board member of XY, as well as XY’s long-time patent counsel and the filer of the ’769 priority provisional applications, may have some interest in the outcome of this IPR and that Mr. Miles is being compensated by XY for time spent relating to his testimony. Ex. 2003 ¶¶ 4–7; Ex. 1033, 21:7–14, 158:8–22. However, we note that Mr. Miles’ testimony was under oath and subject to cross-examination. We find Mr. Miles’ testimony to be credible as to the facts for which it is cited herein.” slip op. at 10

  • ExcludeMotion to exclude, deniedMixed

    “Exclude. Paragraph 12 of the Miles Declaration reads as follows: “Also[,] in the late 1990s, XY had a collaborative research agreement with a bull stud called Cogent in the United Kingdom.” Ex. 2003 ¶ 12.11 This statement is not itself hearsay because it was asserted by Mr. Miles while testifying in this proceeding, i.e., “at the current trial.” See Fed. R. Evid. 801(c). Petitioner contends that paragraph 12 is inadmissible because it is based, at least in part, on statements contained in Exhibits 2001 and 2002. We are not persuaded by this argument because paragraph 12 does not rely on Exhibits 2001 and 2002. See Ex. 2003 ¶ 12; Ex. 1033, 59:22–62:18 (Mr. Miles’ testimony on basis and meaning of paragraph 12 of his declaration). Petitioner also argues that paragraph 12 should be excluded as improper opinion testimony because it is based on Exhibits 2001 and 2002, to which, according to Petitioner, Mr. Miles is not competent to testify. Mot. 13–14. We are not persuaded by Petitioner’s argument because, as discussed, paragraph 12 does not rely on Exhibits 2001 and 2002.” slip op. at 22

  Patent outcomesUS 8,652,769 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,652,769
• Pfizer, Inc. v. Chugai Pharmaceutical Co. Ltd.No claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01358 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claims 1–7, 12, and 13 were not shown unpatentable because Shadle did not establish the claimed molarity and conductivity limitations, and the obviousness showing was insufficient.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and several years of postgraduate training or practical experience in a relevant discipline such as biochemistry, process chemistry, protein chemistry, chemical engineering and/or biochemical engineering, among others.” Pet. 6 (citing Ex. 1002 ¶ 28). Petitioner further contends that “[s]uch a person would also understand that protein purification is a multidisciplinary field, and could take advantage of the specialized skills of others using a collaborative approach.” Id. (citing Ex. 1002 ¶ 28). Patent Owner does not address Petitioner’s position on this matter and does not propose its own description for a person of ordinary skill in the art at the time of the invention. We agree with Petitioner, and adopt Petitioner’s description of the level of ordinary skill in the art at the time of invention of the ’815 patent. We also note that the applied prior art reflects a level of skill at the time of the claimed invention consistent with our determination. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Consistent with the Institution Decision, we determine that “the plain language of the claims, as well as the specification of the ’815 patent, indicates that the term ‘molarity’ refers to the total concentration of solute present in the solution, rather than the concentration of one particular solute.” Id. at 10–11. The claims of the ’815 patent refer consistently to the overall molarity of solutions, and not of any particular solute in a given solution. For example, claim 1 requires “an acidic aqueous solution of low conductivity . . . having a molarity of 100 mM or less” (Ex. 1001, 12:42–44 (emphasis added)), and further recites that the molarity of the “adjusted sample is 100 mM or less” (id. at 12:45–47 (emphasis added)). Claim 2 9 similarly limits the molarity of the “acidic aqueous solution.” Id. at 12:50– 52. Notably, these claims do not identify any particular solute to which the term molarity refers; rather, the claims of the ’815 patent describe solutions having certain characteristics, of which solution molarity is one. As we stated in our Institution Decision: Similarly, the specification of the ’815 patent refers to the molarity of the complete solution, rather than one solute in that solution. See, e.g., id. at 4:61–64 (“As used herein, a ‘neutral aqueous solution . . .’ generally refers to an aqueous solution . . . which has a molarity of 0 to 100mM”), 5:28–31 (“an ‘acidic aqueous solution of low conductivity’ generally refers to an aqueous solution . . . , which has a molarity of 0 to 100 mM”). The file history of the ’815 patent likewise references the molarity of the solution, rather than of a given solute in the solution. See e.g., Ex.1005, 82 (“an important feature of the present invention is to adjust pH value of the solution, the eluate, to from 4 to 8 while maintaining the molarity of the solution at 100mM or less.”), 107 (“0.1 M buffer was used as an eluent, and 1 M Tris-HCl was used to adjust the pH of the eluted fraction, that is, the fact that 0.1 M and 1 M solutions were used means that the molarity of the eluted fration [sic] must be over 0.1 M (100 mM)”). Inst. Dec. 11.” slip op. at 9

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

    “In the Institution Decision, we concluded that the claim terms “conductivity” and “ionic strength,” for which Petitioner proffered constructions in its Petition (Pet. 30, 35–36), did not require express construction for purposes of this proceeding. Dec. 8. Neither Petitioner nor Patent challenges that determination. See PO Resp. 11–22; Reply, passim. In its Response, Patent Owner proposes constructions for several additional 11 terms. Namely, Patent Owner contends that the preambles of claims 1 and 13 should be construed as limiting (PO Resp. 12), “to form particles” should be construed to require that the solution becomes clouded (id. at 16), and “the treated sample containing a physiologically active protein,” as recited in claim 5, should be interpreted to mean “the sample resulting from performing the method of claim 1, which concludes with removing particles in step 3” (id. at 17). Because interpretation of these claim terms is not necessary to our anticipation or obviousness analyses, we need not construe them. See Nidec, 868 F.3d at 1017.” slip op. at 11

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

    “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either expressly or inherently. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). “To establish that a prior art reference inherently—rather than expressly— discloses a claim limitation, ‘the limitation at issue necessarily must be present, or [is] the natural result of the combination of elements explicitly disclosed by the prior art.’” Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018) (alteration in original) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014)). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” slip op. at 14

  Patent outcomesUS 7,927,815 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,927,815
• Pfizer, Inc. v. Chugai Pharmaceutical Co. Ltd.No claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01357 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claims 1–8 and 13 were not held unpatentable because Petitioner failed to prove anticipation by Shadle or obviousness over Shadle.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the art at the time of the invention would have had “at least a graduate degree, such as a Ph.D., 6 and several years of postgraduate training or practical experience in a relevant discipline such as biochemistry, process chemistry, protein chemistry, chemical engineering and/or biochemical engineering, among others.” Pet. 6 (citing Ex. 1002 ¶¶ 28–29). Petitioner further contends that “[s]uch a person would also understand that protein purification is a multidisciplinary field, and could take advantage of the specialized skills of others using a collaborative approach.” Id. (citing Ex. 1002 ¶¶ 28–29). Patent Owner does not address Petitioner’s position on this matter and does not propose its own description for a person of ordinary skill in the art at the time of the invention. We agree with Petitioner, and adopt Petitioner’s description of the level of ordinary skill in the art at the time of invention of the ’289 patent. We also note that the applied prior art reflects a level of skill at the time of the claimed invention consistent with our determination. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6

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

    “Consistent with the Institution Decision, we determine that “the plain language of the claims, as well as the specification of the ’289 patent, indicates that the term ‘molarity’ refers to the total concentration of solute present in the solution, rather than the concentration of one particular solute.” Id. at 10. The claims of the ’289 patent refer consistently to the overall molarity of solutions, and not of any particular solute in a given solution. For example, claim 1 requires “an acidic aqueous solution of low conductivity having a molarity of 100 mM or less” (Ex. 1001, 12:50–51 (emphasis added)), and further recites that the “molarity of the neutralized 9 eluate is 100 mM or less” (id. at 12:54 (emphasis added)). Claim 2 similarly limits the molarity of the “acidic aqueous solution.” Id. at 12:59–61. Notably, these claims do not identify any particular solute to which the term molarity refers; rather, the claims of the ’289 patent describe solutions having certain characteristics, of which solution molarity is one. As we stated in our Institution Decision: Similarly, the specification of the ’289 patent refers to the molarity of the complete solution, rather than one solute in that solution. See, e.g., id. at 4:61–66 (“As used herein, a ‘neutral aqueous solution . . .’ generally refers to an-aqueous [sic] solution . . . which has a molarity of 0 to 100mM”), 5:28–31 (“an ‘acidic aqueous solution of low conductivity’ generally refers to an aqueous solution . . . , which has a molarity of 0 to 100 mM”). The prosecution history of the ’289 patent likewise references the molarity of the solution, rather than of a given solute in the solution. See e.g., Ex.1005, 12 (“an important feature of the present invention is to adjust pH value of the solution, the eluate, to from 4 to 8 while maintaining the molarity of the solution at 100mM or less.”), 37 (“0.1 M buffer was used as an eluent, and 1 M Tris-HCl was used to adjust the pH of the eluted fraction, that is, the fact that 0.1 M and 1 M solutions were used means that the molarity of the eluted fration [sic] must be over 0.1 M (100 mM)”). Inst. Dec. 10–11.” slip op. at 9

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

    “In its Response, Patent Owner proposes constructions for several additional terms. Namely, Patent Owner contends that the preamble of claim 1 should be construed as limiting (PO Resp. 12), “to form particles” should be construed to require that the solution becomes clouded (id. at 17), and “the treated sample containing an antibody,” as recited in claim 5, should be interpreted to mean “the sample resulting from performing the method of claim 1, which concludes with removing particles in step 4” (id. 11 at 18). Because interpretation of these claim terms is not necessary to our anticipation or obviousness analyses, we need not construe them. See Nidec, 868 F.3d at 1017.” slip op. at 11

  • ExcludeOther

    “Petitioner asserts that Patent Owner untimely introduced Exhibits 2201–2207 for the first time during the deposition of Petitioner’s Reply declarant, Dr. Przybycien. Paper 36, 4. Petitioner additionally asserts that the challenged exhibits are inadmissible because they are irrelevant. Id. Patent Owner responds that the objected-to exhibits were timely introduced because they were used to challenge opinions presented by Dr. Przybycien for the first time in conjunction with Petitioner’s Reply. Paper 44, 2. Patent Owner further asserts that the exhibits are relevant because they illuminate gaps in Dr. Przybycien’s Reply testimony. Id. at 3. Because we have not relied on Exhibits 2201–2207, or Dr. Przybycien’s testimony regarding those exhibits in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude Exhibits 2201–2207 as moot.” slip op. at 33

  Patent outcomesUS 7,332,289 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,332,289
• Argentum Pharmaceuticals LLC v. Alcon Research, Ltd.No claims unpatentable
  PTAB · Sep 20, 2018 · IPR2017-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–28 were not shown unpatentable under § 103 because the proposed combinations lacked a persuasive reason to make the required modifications and meet the claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Petitioner submits that such a person would have had a Doctorate in microbiology or chemistry (or a related field) with at least a few years of experience in the development of ophthalmic formulations. Pet. 7. Alternatively, in Petitioner’s view, that person would have had a Bachelor’s or Master’s Degree combined with significant (5 years or more) practical experience developing ophthalmic formulations. Id. Patent Owner, for its part, advances a definition that “does not differ materially” from that proposed by Petitioner. Resp. 5. Petitioner’s definition is comparable to the level of skill reflected in the asserted prior art. The prior art itself is sufficient to demonstrate the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect appropriate level of ordinary skill in the art). To the extent more specified findings are required, we adopt the definition proposed by Petitioner. Pet. 7. We observe, however, that there is no appreciable difference between the parties’ respective definitions that would “materially” alter the outcome of this decision based on our acceptance of one definition over the other. Resp. 5.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Pet. 5–7; Dec. 7–8. Patent Owner tacitly agrees. See Resp. 1 (stating that a “self-preserved” composition is “one that has sufficient antimicrobial activity to pass standard tests for ‘preservative efficacy’ without needing a conventional preservative”). Accordingly, for reasons set forth in our decision instituting review in the Apotex IPR, we determine that: (a) The preamble term “self-preserved” breathes life and meaning into the claims, and is construed as a limitation of claims 1–28; and (b) The broadest reasonable interpretation of “self-preserved” compositions is “compositions that do not contain a conventional antimicrobial preservative.” Apotex IPR, Paper 9, 5–6; Dec. 7–8. Schneider, which is asserted in each ground of unpatentability stated in the Petition, informs that edetate disodium (“EDTA”) and benzalkonium chloride (“BAC”) were conventional antimicrobial preservatives known and available at the time of the invention—an issue not meaningfully disputed by Petitioner. Ex. 1007, 7:14–21; Pet. 15. Our claim construction findings are supported by the specification of the ’299 patent, which states that “[t]he multi-dose compositions of the present invention, which do not contain a conventional antimicrobial preservative, are referred to herein as being ‘self-preserved’.” Ex 1001, 3:27–29. The specification identifies BAC as an example of a conventional antimicrobial preservative excluded from the self-preserved composition of the challenged claims. Id. at 4:23–25. No other claim term requires express construction for the purposes of this decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy).” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Petitioner argues that we should adopt the claim construction resolved in the Apotex IPR, as we did in the decision on institution in this case. Pet. 5–7; Dec. 7–8. Patent Owner tacitly agrees. See Resp. 1 (stating that a “self-preserved” composition is “one that has sufficient antimicrobial activity to pass standard tests for ‘preservative efficacy’ without needing a conventional preservative”). Accordingly, for reasons set forth in our decision instituting review in the Apotex IPR, we determine that: (a) The preamble term “self-preserved” breathes life and meaning into the claims, and is construed as a limitation of claims 1–28; and (b) The broadest reasonable interpretation of “self-preserved” compositions is “compositions that do not contain a conventional antimicrobial preservative.” Apotex IPR, Paper 9, 5–6; Dec. 7–8. Schneider, which is asserted in each ground of unpatentability stated in the Petition, informs that edetate disodium (“EDTA”) and benzalkonium chloride (“BAC”) were conventional antimicrobial preservatives known and available at the time of the invention—an issue not meaningfully disputed by Petitioner. Ex. 1007, 7:14–21; Pet. 15. Our claim construction findings are supported by the specification of” slip op. at 6

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

    “Petitioner asserts that an ordinarily skilled artisan “would have retained as much of” Formulation A “as feasible, as this was already an FDA-approved formulation, marketed as Travatan®.” Pet. 15; Ex. 1002 ¶¶ 46–47. But Petitioner’s challenge incongruously depends on at least six modifications to Formulation A; seven, if attaining UPS preservative efficacy requirements is not an inherent property of the modified composition. Petitioner does not address, much less explain, how or why an ordinarily skilled artisan, undertaking those six or seven modifications, would have done so with a reasonable expectation of success in arriving at a “self-preserved” composition using zinc as the sole preservative—in a field where zinc “had never before been the sole preservative in a marketed ophthalmic drug.” Resp. 9; Ex. 2023 ¶ 46; Ex. 2025 ¶ 30. The Petition does not articulate a rational reason why a person of ordinary skill in the art, setting out to improve Formulation A, would have selected the particular combination of ingredients required by claim 1. Formulation A bears almost no resemblance to the composition of claim 1, lacking three of the four required ingredients (zinc ions, sorbitol, and propylene glycol) and containing two others (BAC and EDTA) that are excluded by the “self-preserving” terms of the claim. Compare Ex. 1001, claim 1, with Ex. 1007, 9:25–42 (Table, Formulation A). And even if we set aside those hurdles, the challenge fails for lack of persuasive evidence showing how or why an ordinarily skilled artisan would have resolved to include the claimed ingredients in the specified concentrations, while at the same time limiting anionic species (to the extent included) to a concentration of “less than 15 mM.” Ex. 1001, claim 1. Petitioner fails to establish that the subject matter of claim 1 would have been obvious over the combined disclosures of Schneider, Xia, and Chowhan—with or without the additional disclosure of Gadd. Pet. 2–3.” slip op. at 26

  Patent outcomesUS 8,268,299 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,268,299
• Skechers U.S.A., Inc. v. Nike, Inc.No claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00621 · APJ Grace Karaffa Obermann · IPR · Final written decision

  The sole challenged claim was not shown unpatentable because Petitioner failed to identify a qualifying Rosen reference for its obviousness challenges.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “Petitioner bears “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). Our rules require a successful petition to include “a detailed explanation of the significance of the evidence including material facts.” 37 C.F.R. § 42.22(a)(2)). An issue bearing on the challenge is whether and how the claimed channel element impacts the “visual impression created by the patented design as a whole.” Durling, 101 F.3d at 103; see Ex. 1001, Fig. 1 (depicting an elongated region, of relatively darker shading, superimposed over about two thirds of a sipe that bisects the claimed heel region).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art would have had either (1) a degree in Industrial Design combined with some work experience as a designer of footwear designs; or (2) two years of direct experience creating footwear designs. 9 The Petition asserts U.S. Patent No. 6,115,945 (Ex. 1006, “the ’945 patent”) as a background reference. See, e.g., Pet. 5, 34. Dec. 7. That definition is consistent with Petitioner’s proposed definition. Pet. 36 (Petitioner’s definition); Reply 2 (Petitioner, reasserting that definition). Patent Owner, for its part, raises no persuasive information tending to establish a different definition. Resp. 2 (Patent Owner, essentially acquiescing to Petitioner’s definition). That definition also is consistent with the disclosures reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 4

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

    “D. Claim Construction The claim of the ’781 patent does not require express construction for the purposes of this decision. On that point, we observe that Figures 1–3 of the ’781 patent (Ex. 1001) reflect the scope of the patented design. To the extent any explanation of that scope is necessary to our decision, we provide it below in our analysis of the asserted challenge. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

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

    “Conclusions Regarding the First Prong of the Durling Test A preponderance of the evidence supports a conclusion that Petitioner fails to take account adequately of the channel element of the patented design and, therefore, fails also to identify “the correct visual impression created by the patented design as a whole”—a required first step in identifying a Rosen reference. Durling, 101 F.3d at 103. That failure, standing alone, justifies our conclusion that Petitioner fails also to prove by a preponderance of the evidence that the challenged claim of the ’781 patent is unpatentable.” slip op. at 20

  Patent outcomesUS D723,781 not shown unpatentable
  Claim construction§ 103 obviousness

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.