• Skechers U.S.A., Inc. v. Nike, Inc.No claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00620 · APJ Grace Karaffa Obermann · IPR · Final written decision

  The Board held the challenged claim not shown unpatentable because Petitioner failed to identify a Rosen reference creating basically the same overall visual impression.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. The Designer of Ordinary Skill As we did in our institution decision, we find that a designer of 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, 33. Dec. 7. That definition is consistent with Petitioner’s proposed definition. Pet. 35 (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 neededNot reached

    “D. Claim Construction The claim of the ’783 patent does not require express construction for the purposes of this decision. On that point, we observe that Figures 1–3 of the ’783 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

  • 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 (solid concentric ovals, which depict a channel element near the center of the claimed grid-like pattern of pads).” slip op. at 16

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

    “As a starting point, to make out a successful obviousness challenge, Petitioner must identify “a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.” Rosen, 673 F.2d at 391. Accordingly, “the first step in an obviousness analysis for a design patent requires a search of the prior art for a primary reference,” which requires the tribunal “to: (1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). We address the two prongs of the Durling test in turn below.” slip op. at 6

  Patent outcomesUS D723,783 not shown unpatentable
  Claim construction§ 103 obviousness
• Campbell Soup Company / Campbell Sales Company et al. v. Gamon Plus, Inc.No claims unpatentable
  PTAB · May 2, 2018 · IPR2017-00087 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–16 were cancelled at Patent Owner’s request; claims 27, 28, and 32–35 were not shown unpatentable over the instituted §103 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, as of the earliest priority date of the claims, would have had either: “(1) a Bachelor’s Degree in Industrial Design and at least 1-2 years of experience in designing gravity feed display dispensers, or (2) 5-10 years of experience in designing gravity feed display dispensers.” Pet. 7 (citing Ex. 1002 ¶ 36). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. Consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 18

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

    “construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we construed several claim terms recited in claims 1–17. Inst. Dec. 13–20. Patent Owner requests cancellation of claims 1–16 and we did not institute inter partes review of claim 17. Thus, none of the claim terms we construed previously are at issue in the trial. Additionally, Patent Owner’s Response and Sur-Reply and Petitioner’s Reply do not request that we construe any additional claim terms. Accordingly, we need not construe expressly any claim terms to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803.” slip op. at 15

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

    “how or why an ordinarily skilled artisan would have been led to combine Weichselbaum and Nesso in the manner claimed. On that point, the Petition rests on bare opinion testimony that is not tethered to any disclosure in the prior art or other objective proof. Pet. 32 (citing Ex. 1002 ¶¶ 168–170). We are mindful that a reason to combine prior art may exist “in the content of the public prior art, in the nature of the problem addressed by the invention, or even in the knowledge of one of ordinary skill in the art.” Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d 1332, 1338-39 (Fed. Cir. 2005). But when we turn to the opinion testimony that undergirds Petitioner’s argument on the reasons to combine, we find no objective proof and inadequate reasoning. Id. Ultimately, Petitioner presents two very weak reasons based on unstated and unexplained factual assumptions in support of its view that one of ordinary skill in the art would have been prompted to modify Weichselbaum. Additionally, as explained above, Petitioner takes conflicting positions as to how Nesso’s second chute would be incorporated in Weichselbaum’s device and the record remains unclear as to the precise structure resulting from Petitioner’s combination. Accordingly, Petitioner fails to provide sufficient clarity regarding the specific modifications to Weichselbaum, fails to provide a sufficient reason with rational underpinning as to why and how one of ordinary skill in the art would have modified Weichselbaum in light of Nesso, and appears, on this record, to engage in an impermissible exercise of hindsight reconstruction to make out a reason to combine the applied references in the manner claimed. Further, in light of the full trial record, including Patent Owner’s evidence of secondary considerations discussed below, we are persuaded that the bare opinions set forth in the Visser Declaration (Ex. 1002 ¶¶ 168–170) are entitled to little weight. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for” opinion testimony “going to factual determinations” may be of little probative value in validity determination.”).” slip op. at 36

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “specific product and that product ‘is the invention disclosed and claimed in the patent.’” WBIP, 829 F.3d at 1329 (citation omitted). The presumption is rebuttable, but “a patent challenger cannot successfully rebut the presumption with argument alone—it must present evidence.” Id. (citation omitted). Patent Owner has shown that the asserted objective evidence, discussed further below, is tied to a specific product and that product “is the invention disclosed and claimed in the patent.” Id. (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997)). “This showing––that the specific products are embodiments of the claimed invention and that the proffered objective evidence relates to these products—is sufficient to establish the presumption of nexus for the objective considerations at issue in this case.” Id. at 1330. It is, therefore, Petitioner’s burden to rebut that presumption. Id. at 1329 (“a patent challenger cannot successfully rebut the presumption with argument alone— it must present evidence”); see Tr. 46:20–47:8 (Petitioner agreeing that nexus is presumed and that Petitioner has the burden to overcome the presumption.). Petitioner does not rebut the presumption of nexus. First, Petitioner’s entire argument is phrased as challenging whether Patent Owner satisfied its burden of establishing nexus, as opposed to whether Petitioner rebuts the presumption of nexus. Pet. Reply 20–21 (“It is Patent Owner’s burden to establish a nexus.”) (citing CaptionCall LLC v. Ultratec Inc., IPR2013- 00540, Paper 78 at 50 (PTAB Mar. 3, 2015)). Second, Petitioner points to other factors, including higher prices and increased advertising, referred to in Campbell’s annual reports that contributed to increased soup sales. Pet. Reply 21–22. There is no dispute that other factors also contributed to the increase in soup sales. But, there is also no dispute that Campbell’s own statements, through its Annual Reports and Mr. Finnel’s interview, tie increased soup sales expressly to Gamon’s display racks. Additionally, Campbell’s internal presentation describes Gamon’s IQ Maximizer as “Breakthrough Gravity Feed Shelving” and attributes the following to the display racks based on the results of its study: • +13.6% volume lift for Corporate Brand • +10% volume lift for Condensed Segment • +9.3% volume lift for Campbell’s Condensed • +5.5% volume lift for Wet Soup Category • Encourages purchase of additional varieties • Billboard effect improves branding: 210% larger • Positive labor impact due to elimination of shelf conditioning Ex. 2032, 4. Although other factors had some degree of impact on commercial success,29 we determine that Patent Owner has established that an appreciable amount of Campbell’s increased commercial success of soup during the relevant time period is attributable to the display rack covered by claim 27 of the ’111 patent. Accordingly, Gamon’s sales to Campbell of about $31 million from 2002–2009 as well as a portion of the increased sales of Campbell’s soup using Gamon’s display racks provide a strong showing of commercial success of the commercial embodiment of claim 27 of the ’111 patent.” slip op. at 61

  Patent outcomesUS 8,827,111 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,827,111
• Tristar Products, Inc. v. Choon’S Design, LLCNo claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01883 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  The Board held claim 3 not shown unpatentable under §102 or §103 over La Croix because its cotter-pin heads could not hold a link in place to form a Brunnian link.

  RulingsFinal written decision

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

    “As instructed by the Federal Circuit, “[e]ven under the broadest reasonable interpretation, [our] construction ‘cannot be divorced from the specification and the record evidence.’” Microsoft v. Proxyconn, 789 F.3d at 6 We note, the language in claim 3 is “the top portion comprises a flared portion for holding a link in place” and not the language from claim 1, argued by Petitioner, namely that the top portion is “for holding the link in a desired orientation.” 1298 (citations omitted). The ’420 patent is titled “Brunnian Link Making Device and Kit.” Ex. 1001, at [54]. The entire written description of the ’420 patent relates to forming Brunnian linked articles, thus suggesting that the “top portion compris[ing] a flared portion,” as claimed, must be capable of holding a link in place—a capability necessary to forming a Brunnian linked article. On that point, Mr. Ng, Patent Owner’s declarant,7 testifies:” slip op. at 16

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

    “Patent Owner’s assertions, as discussed above. Instead, Petitioner argues that “Patent Owner’s entire Response . . . rises or falls on the Board narrowly construing” certain terms, including “the top portion comprises a flared portion for holding a link in place.” Pet. Reply. 1. We have discussed our construction of “the top portion comprises a flared portion for holding a link in place,” above (see supra Section II.C). As discussed, based on the entire record now before us, we agree with Patent Owner that the claimed “the top portion compris[ing] a flared portion for holding a link in place,” requires the top portion of the pin must flare about the circumference of the pin in such a manner as to be capable of holding a link in place for forming a Brunnian link. The arguments in Petitioner’s Reply that La Croix teaches the cotter pins include a “top portion compris[ing] a flared portion for holding a link in place” are premised on its proffered construction (see Pet. Reply 11–12), which we do not adopt for purposes of this Decision. It is Petitioner’s burden to prove unpatentability by a preponderance of the evidence, including proving that the cited reference teaches all elements of the claims, as properly construed. See 35 U.S.C. § 316(e). As the Federal Circuit has noted, [i]n an inter partes review, the burden of persuasion is on the petitioner to prove “unpatentability by a preponderance of the evidence,” and that burden never shifts to the patentee. “Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point— thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Dynamic Drinkware, 800 F.3d at 1378–79 (citations omitted). Other than arguing that Petitioner disagrees with Patent Owner’s proposed construction, Petitioner does not present evidence to rebut Patent Owner’s assertion that the cotter pins of La Croix are not flared about the circumference of the center of the pin in such a manner as to be capable of holding a link in place for forming a Brunnian link. Based on the evidence of record, and for the reasons discussed, we determine Petitioner has not shown, by a preponderance of the evidence, that La Croix anticipates claim 3.” slip op. at 25

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

    “For the same reasons discussed above with respect to Petitioner’s anticipation challenge to claim 3, we are not persuaded that Petitioner has shown that La Croix teaches or suggests pins having “top portion[s] compris[ing] a flared portion for holding a link in place,” as recited in claim 3. Because we are not persuaded that Petitioner has shown that La Croix discloses or suggests all of the elements of claim 3, we need not reach Patent Owner’s evidence of secondary considerations (see PO Resp. 10–12). Based on the evidence of record, and for the reasons discussed, we determine Petitioner has not shown, by a preponderance of the evidence, that La Croix renders claim 3 obvious. III.” slip op. at 27

  Patent outcomesUS 8,684,420 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,684,420
• Coalition For Affordable Drugs Viii, LLC v. The Trustees Of The University Of PennsylvaniaNo claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01836 · APJ Lora M Green · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 because the prior art did not establish a reasonable expectation of success using lomitapide in the claimed dosing regimen.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). As to reasonable expectation of success, we agree with Patent Owner that the ordinary artisan would not have had a reasonable expectation of success of combining Pink Sheet with Chang to arrive at the claimed invention. To the extent that Petitioner relies on our Institution Decision, we note that decision was based on the evidence of record at that time. The evidence advanced by Patent Owner during trial, discussed herein, however, tips the scale in favor of a finding different from that set forth in our Institution Decision. slip op. at 36

  • ExcludeMotion to exclude, deniedMixed

    “As to Exhibit 1052, which is the Deposition Transcript of S. David Kimball, and which Patent Owner acknowledges that Petitioner cites in its Reply, Patent Owner argues that it timely objected to the exhibit as an improper duplicate of Exhibit 2304. Mot. Exclude 7. Petitioner responds that Exhibits 2304 and 1052 are the transcripts of Petitioner’s expert. Opp. Mot. Exclude 4. Although acknowledging that the party taking the deposition normally files the transcript, Petitioner asserts that its Reply cites to Ex. 1056, and Patent Owner does not cite to either exhibit. Id. Patent Owner replies that Exhibit 2304 also contains Dr. Kimball’s signed errata sheet and is, thus, the more complete of the two documents. Reply Mot. Exclude. 3. Patent Owner asserts that the citations in Petitioner’s Reply can be updated to reflect the correct exhibit number, if necessary. Id. Given the posture of this proceeding, that is, it is at final written decision, and as Patent Owner notes, the two documents are not exact duplicates, we decline to exclude Ex. 1056, but will allow both Exhibit 1056 and 2034 to remain in the record.” slip op. at 44

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “the unrebutted evidence of commercial success further supports the patentability of the challenged claims. Looking at the entire record before us, we conclude that Petitioner has not meet its burden to establish unpatentability of challenged claims 1‒8 by a preponderance of the evidence over the combination of Pink Sheet and Chang. E. Motion to Amend As discussed above, because we conclude that Petitioner has not demonstrated the obviousness of the claims by a preponderance of the evidence, we need not reach the merits of Patent Owner’s contingent Motion to Amend (Paper 24). We, thus, dismiss the motion a moot.” slip op. at 44

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “biotechnology and medical device companies.” Id. The press release does not even mention Dr. Stein. Thus, there is nothing in the press release suggesting that the ordinary artisan in the cardiovascular/cardiac field, or interested in MTP inhibitors, should attend the presentation. We, therefore, decline to credit Dr. Mayersohn’s testimony that “[a]person of ordinary skill in the art interested in the development of MTP inhibitors could apparently have attended the meeting or accessed the presentation itself via webcast or on the PPD website shortly thereafter” (Ex. 1003 ¶ 25 (citing the PPD Press Release)), as there was nothing in the press release discussing MTP inhibitors. That finding informs our analysis of the factors set forth in Klopfenstein. Thus, although the ordinary artisan may have been able to copy the presentation, and although there may have been an expectation that the materials could be copied, Petitioner does not provide any evidence establishing that the target audience would have been an ordinary artisan in the relevant field.” slip op. at 19

  Patent outcomesUS 7,932,268 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,932,268
• Coalition For Affordable Drugs Viii, LLC v. The Trustees Of The University Of PennsylvaniaNo claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01835 · APJ Lora M Green · IPR · Final written decision

  Claims 1–10 were not shown unpatentable under § 103 because the prior art did not establish a reasonable expectation of success substituting lomitapide into Pink Sheet’s dosing protocol.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish facts supporting its challenge by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Based on the record before us, we conclude that Petitioner has failed” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation not foundMixed

    “Although we find this issue to be very close, we find that the Petitioner has established by a preponderance of the evidence that the ordinary artisan would have looked at other MTP inhibitors, such as lomitapide as taught by Chang, that could be used in the dosing protocol taught by Pink Sheet. Specifically, Pink Sheet teaches a dosing method with the MTP inhibitor, implitamide, wherein, as discussed above, the dosing schedule meets the dosing schedule required by claim 1. Ex. 1013. In addition, Pink Sheet discusses MTP inhibitors generally, and notes that they may have efficacy in situations where high-dose statins are ineffective or inadequate, such as homozygous and severe heterozygous familial hypercholesterolemia. Id. Pink Sheet also acknowledges that the toxicity seen with MTP inhibitors may have been due to the high doses used during the clinical trials. Id. Chang discusses the clinical efficacy of MTP inhibitors, including implitapide (BAY-13-9952) and lomitapide (BMS-201038). Ex. 1015, 566. Specifically, Chang discusses the clinical efficacy of CP-346086, and then notes that similar efficacy was reported for implitapide and lomitapide. Id. Given that implitapide and lomitapide are from the same class of therapeutics, that is, MTP inhibitors, and that they are known to have similar clinical efficacy, based on the record before us, we determine that Petitioner has demonstrated a reasonable basis as to why the ordinary artisan would have substituted lomitapide as taught by Chang for implitapide in the method of Pink Sheet.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “Initially, we note that Petitioner does not contest that Juxtapid is a commercial success, and, thus, in view of the unrebutted evidence provided by Patent Owner, we find that Patent Owner has established that Juxtapid is a commercial success. As to Petitioner’s argument that the Juxtapid website does not suggest a forced titration, as set forth in our section on claim construction above, we decline to construe independent challenged claim 1 as requiring a forced titration. Moreover, as shown in the table below, the dosing schedule of independent claim 1 encompasses the dosing method that is given to doctors on the Juxtapid website (Ex. 2301, 1):” slip op. at 43

  Patent outcomesUS 8,618,135 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,618,135
• Shell Oil Company v. Exxonmobil Research And Engineering CompanyNo claims unpatentable
  PTAB · Feb 21, 2017 · IPR2016-00009 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–4 were held not unpatentable because Petitioner did not prove Valyocsik disclosed ZSM-48 crystals free from ZSM-50 impurity.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “parties, we find that Petitioner has not shown by a preponderance of the evidence that Valyocsik Example 13 is necessarily free from ZSM-50. Our finding is supported by at least three categories of evidence: (1) Dr. Lobo’s concession that Experiment 5 is an “exception” to his opinion that the XRD data for Mr. Cooper’s reproductions of Example 13 show a ZSM-48 product that is free from ZSM-50 impurity (Ex. 1004 ¶ 96); (2) Dr. Higgins’ analysis of the XRD data for Mr. Cooper’s experiments (Ex. 1009) and conclusion that the data for Experiments 1–5 are consistent with the presence of ZSM- 50 in the samples (Ex. 2013, ¶¶ 33–41); and (3) Dr. Lobo’s concession on cross-examination that the XRD data for Mr. Cooper’s Experiments 1, 3, and 5 include peaks consistent with the presence of ZSM-50 (Ex. 2017, 61:1–62:20, 67:22–75:2). We discuss each category of evidence below:” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “First, it is inconsistent with the legal standard for inherency, which requires Petitioner to show that the product of Valyocsik Example 13 is necessarily free from ZSM-50 impurity. Robertson, 169 F.3d at 745. Evidence that the product “may in fact be” impurity-free (Pet. Reply 16) is not sufficient. Oelrich, 666 F.2d at 581 (Inherency “may not be established by probabilities or possibilities.”).” slip op. at 21

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

    “48 crystals that are “free from ZSM-50 and Kenyaite impurities.” After considering the arguments and evidence presented by both parties, we find that Petitioner has not met its burden to prove that Valyocsik discloses, either expressly or inherently, ZSM-48 crystals that are free from ZSM-50 impurity. In view of this finding, we need not address whether Valyocsik discloses ZSM-48 crystals that are free from Kenyaite impurity.” slip op. at 10

  Patent outcomesUS 6,923,949 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 6,923,949
• Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb CompanyNo claims unpatentable
  PTAB · Dec 22, 2016 · IPR2015-01537 · APJ Deborah Katz · IPR · Final written decision

  Claims 1–15 were not shown unpatentable as obvious over Cohen, Shire, and Carpenter because Petitioner did not establish a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “suggests a trial-and-error approach to protein formulation. See Ex. 2011 (“Very often, proteins have to be evaluated individually and stabilized on a trial-and-error basis.”). Thus, we credit Dr. Staples’s testimony regarding the use of trial-and-error optimization because it appears that this was a known approach for formulating proteins. We do not agree that because the approach was known, it was necessarily expected to be successful. Petitioner cites to the statement in Carpenter that the authors were “quite confident” the generalized high throughput formulation procedure they describe “can be coupled successfully with high throughput screening strategies of protein drugs and facilitate drug development within the inherent time and resource constraints of the pharmaceutical industry.” Ex. 1004, 195. We note that, although in isolation Carpenter’s proclamation of being “quite confident” appears to demonstrate a reasonable expectation of success, when considered in context it refers to a general trend in the industry, not to the ability to formulate specific proteins. The full statement does not indicate that there was confidence that any particular drug could be successfully formulated as a liquid. Thus, this evidence is not persuasive.” slip op. at 7

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

    “parties, we determine, on balance, that Petitioner has not established sufficiently that an ordinary artisan would have had a reasonable expectation of success in formulating CTLA4Ig as a stable liquid formulation as recited in the challenged claims. Specifically, in the challenge to Patent Owner’s claims, Petitioner relies on Carpenter to show that an ordinarily skilled artisan would have known how to prepare a stable liquid formulation of CTLA4Ig for subcutaneous administration. Pet. 33–40. The statements in Carpenter are the most significant evidence of whether there would have been an expectation of success in achieving the claimed formulation. But Carpenter expressly states that “[i]t [could] be assumed that most proteins will not exhibit sufficient stability in aqueous solution to allow a liquid formulation to be developed.” Ex. 1004, 188; PO Resp. 16. Carpenter also states that although a stable liquid formulation is desirable, “for most proteins maintaining physical and chemical stabilities in aqueous solution for an extended period of time is extremely difficult.” Ex. 1004, 184. These statements indicate that there would not have been a reasonable expectation of success in achieving the claimed formulations. Dr. Staples’s testimony about routine trial-and-error optimization does not overcome these statements. Petitioner’s citation to Paborji (Ex. 1016) does not persuade us otherwise. Even though Paborji states that CTLA4Ig in phosphate buffer is “relatively stable,” without testimony to explain how this would be interpreted by a skilled artisan, the strong doubt about success expressed in Carpenter is not overcome.” slip op. at 13

  Patent outcomesUS 8,476,239 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,476,239
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00343 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–11 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combinations and calculations lacked adequate support and relied on hindsight.

  RulingsFinal written decision

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’290 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 57–61, of the ’290 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’290 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

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

    “Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 60, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

  Patent outcomesUS 7,554,290 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,554,290
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00344 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–13 were not shown unpatentable over Takano and Yanai under §103 because Petitioner’s evidence did not establish the 20 Amp Limitation without unsupported assumptions and hindsight.

  RulingsFinal written decision

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’173 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 59–63, of the ’173 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’173 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

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

    “18650-size and 26650-size cells is flawed and thus fails to support Petitioner’s assertion that claim 1 would have been obvious over the combination of Takano and Yanai. Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 21

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

    “e) Secondary Considerations Patent Owner argues that “[n]umerous secondary considerations strongly favor the patentability of the challenged claims.” PO Resp. 26–59. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Takano and Yanai render claim 1 obvious, we need not reach Patent Owner’s assertions regarding secondary considerations.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 62, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  Patent outcomesUS 7,944,173 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,944,173
• Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentable
  PTAB · Nov 14, 2016 · IPR2016-00345 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because Petitioner’s evidence did not establish the 20 Amp Limitation without unsupported assumptions and hindsight.

  RulingsFinal written decision

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

    “example 2 is described as having a positive electrode surface area of 6,700 cm2 (id. ¶ 40). This wide variance in the surface areas disclosed by Adachi suggests that the working examples are specific embodiments and not indicative of “common knowledge” in the field. Moreover, we are not persuaded that the range of 400– 680 cm2 is an industry standard surface area for 18650-size cells or that one of ordinary skill in the art necessarily would consider a value in this range to be a typical or likely choice of surface area for any 18650-size cell. Accordingly, the only basis to assert that it would have been obvious to select a positive electrode surface area of 540 cm2 for Yanai’s cell 1-4 would be to rely on the disclosure of Adachi; that is, to assert that it would have been obvious to one of ordinary skill in the art to modify the combination of Takano and Yanai with the teaching of Adachi. Petitioner, however, has repeatedly argued that this is not what it proposes. Reply 3; Tr. 22:22–23:4. Furthermore, we agree with Patent Owner that the Petition does not provide an adequate reason to combine Adachi with Takano and Yanai.” slip op. at 14

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

    “Takano, however, discloses a battery having a plurality of cells connected in series. Ex. 1072 ¶¶ 4, 11, 26. Although we do not question that connecting battery cells in series and/or parallel is known generally in the art, Petitioner does not provide adequate specific reasoning as to why one of ordinary skill in the art would have been led to modify Takano to connect cells in parallel when Takano clearly discloses a series connection. Dr. Abraham’s testimony that the type of connection would be chosen “as needed to provide whatever target voltage and amperage is desired for a particular application,” by itself, does not provide a sufficient reason to modify Takano’s series connection. Petitioner does not explain how the prior art discloses a desired voltage or amperage that would cause one of ordinary skill in the art to modify Takano in the manner proposed. In this case, the only teaching of a desired amperage comes from the ’510 patent itself. Furthermore, Dr. Abraham’s reliance on the disclosure at column 5, lines 61–65, of the ’510 patent as supporting the alleged obviousness of combining two cells in parallel is improper. This passage of the ’510 patent describes alternative configurations of the patentees’ own invention; it is not describing prior art. Relying on knowledge gleaned only from the challenged patent’s disclosure is impermissible hindsight. Cf. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (As long as a judgment on obviousness “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”).” slip op. at 18

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

    “Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Third, we agree with Patent Owner that Petitioner’s argument that “three Yanai-based 18650 cells in parallel” would satisfy the 20 Amp Limitation is a new argument. Paper 59, 2. In our view, this argument does more than merely address Patent Owner’s argument regarding Dr. Abraham’s addition error. Rather, by relying on three cells instead of two, Petitioner attempts to provide a new theory as to why the combination of Takano and Yanai renders the challenged claims obvious that was not set forth clearly in the Petition. Because Petitioner waited until the Reply to make this argument, Patent Owner did not have an opportunity to respond to Petitioner’s new argument. We thus decline to consider Petitioner’s new argument as it is an improper reply. Furthermore, Petitioner’s assertion that Patent Owner made no attempt to explain why using three cells would have been just as obvious as using two cells is an improper attempt to shift the burden of proof with respect to obviousness to Patent Owner.” slip op. at 17

  Patent outcomesUS 7,999,510 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,999,510

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.