- PTAB · Dec 20, 2022 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Institution
The Board instituted post-grant review of the sole claim on the Petition’s grounds and granted Samsung’s motion to join PGR2022-00031.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS Before deciding joinder questions, the Board first determines whether the petition “warrants the institution of a post-grant review under section 324.” See 35 U.S.C. §§ 325(c), 324(a) (stating that the petition “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”); see also Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020) (interpreting joinder requirements in inter partes review under 35 U.S.C. §§ 314(a), 315(c)). When a second petition is a “me-too” or “copycat” petition, the institution analysis may include a General Plastic analysis. See Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) (designated as precedential on December 4, 2020) (“Uniloc”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Although the decision in Uniloc informs that a petitioner’s failure to adequately address these factors may weigh in favor of discretionary denial, this case is distinguishable because Petitioner has not previously filed a petition challenging the validity of the ’702 patent claim. See, e.g., Uniloc, Paper 9 at 11. The Petition is substantively the same as the petition in PGR 031 and includes notice of Petitioner’s intention to file the joinder motion. See Pet. 1; Mot. 1–2. This factor is neutral given Petitioner’s willingness “to proceed solely on the grounds, evidence, and arguments advanced, or that will be advanced, in” PGR 031. Mot. 1– 2.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder must be filed “no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner timely filed the Motion for Joinder on October 28, 2022, within one month of the Decision of Institution in PGR 031. See Mot. 14; PGR 031, Paper 22. The Petition indicates Petitioner’s intent to file the Motion for Joinder. See Pet. 1. The Petition is substantively identical to the petition in PGR 031 and, accordingly, presents no new grounds. Mot. 6–8. Because Petitioner seeks only to join the first proceeding as a party, and makes no arguments in its Petition that differ from those already being addressed in PGR 031, we grant the Motion for Joinder. In so doing, we take account of Petitioner’s assertions that joinder will not impact the trial schedule because there are no new grounds and, furthermore, Petitioner “consents to any trial schedule adopted in” PGR 031. Mot. 7–8. The Board agrees that joinder should not impact the trial schedule.” slip op. at 11
Discretionary denial - Stmicroelectronics, Inc. v. The Trustees Of Purdue UniversityAdverse judgmentPTAB · Sep 29, 2022 · IPR2022-00309 · APJ Jo-Anne M Kokoski · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after disclaimer of all claims, entering judgment against claims 1, 6, 7, and 10-12 and terminating the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request adverse judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). In addition, “[a]ctions construed to be a request for adverse judgment include . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. § 42.73(b)(2). Because Patent Owner disclaimed all claims in the ’112 patent, there are no challenged claims remaining in the proceeding, and we grant Patent Owner’s Request for Adverse Judgment.” slip op. at 2
NonePatents in suitUS 8,035,112 - Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGSome claims unpatentablePTAB · Jun 17, 2021 · IPR2020-00300 · APJ Amber L Hagy · IPR · Final written decision
Claims 1 and 21–26 were held unpatentable as obvious over Huber, Everett, and Lexer; claims 2, 27, 40, and 42 were not shown unpatentable. Substitute claims 44 and 45 were entered.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“(7) Claim 1 Conclusion After having analyzed the entirety of the trial record and assigning” slip op. at 31
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“For the above reasons, Petitioner has not met its burden to” slip op. at 72
Patent outcomesUS 8,690,330 mixed§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,690,330 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing grantedPTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing
The Board granted the petitioner’s rehearing request, vacated the final written decision, and will issue a revised decision after overlooking Varenna 2012 in Grounds 5–7.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2
NonePatents in suitUS 9,820,999 - PTAB · May 7, 2018 · PGR2017-00039 · APJ Grace Karaffa Obermann · PGR · Rehearing
The Board dismissed Patent Owner’s rehearing request as moot after granting the parties’ joint motion for adverse judgment and terminating the proceeding.
RulingsRehearing decision- RehearingRehearing, deniedNot reached
“our decision instituting a post grant review. Paper 11. On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment. Paper 16 (“Joint Motion”). In the Joint Motion, Patent Owner informed the Board that, in the event that we grant the Joint Motion and terminate the proceeding, Patent Owner “considers its request for rehearing to be moot and withdraws its request.” Id. at 1. Concurrently herewith, we issue a Judgment and Final Written Decision that grants the Joint Motion and terminates the proceeding. Accordingly, on this record, we dismiss Patent Owner’s Request for Rehearing (Paper 11) as moot. It is ORDERED that Patent Owner’s Request for Rehearing (Paper 11) is dismissed as moot.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“our decision instituting a post grant review. Paper 11. On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment. Paper 16 (“Joint Motion”). In the Joint Motion, Patent Owner informed the Board that, in the event that we grant the Joint Motion and terminate the proceeding, Patent Owner “considers its request for rehearing to be moot and withdraws its request.” Id. at 1. Concurrently herewith, we issue a Judgment and Final Written Decision that grants the Joint Motion and terminates the proceeding. Accordingly, on this record, we dismiss Patent Owner’s Request for Rehearing (Paper 11) as moot.” slip op. at 2
NonePatents in suitUS 9,463,183 - PTAB · May 7, 2018 · PGR2017-00039 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
The Board entered adverse judgment against Petitioner after the parties agreed Petitioner had abandoned its challenge to claims 1–13.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment against Petitioner. Paper 16 (“Joint Motion”). On May 3, 2018, the parties indicated that they “jointly continue to consent to entry of adverse judgment against” Petitioner as advanced in the Joint Motion. Paper 18, 1. The parties direct us to 37 C.F.R. § 42.73(b)(4), which we construe as an admission that Petitioner has abandoned the contest. Paper 16, 1; Paper 18, 1. CONCLUSION Under these circumstances, entry of judgment adverse to Petitioner is appropriate, and thus, granted. It is ORDERED that adverse judgment is entered against Petitioner under 37 C.F.R. § 42.73(b)(4); and” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsGranted
“On May 3, 2018, with our prior authorization, the parties filed a Joint Motion to Limit the Petition. Paper 18. Concurrently herewith, we issue an order granting the parties’ Joint Motion to Limit the Petition to remove the two grounds of unpatentability based on 35 U.S.C. § 112, leaving the challenge to claims 1–13 based on 35 U.S.C. § 103 as the sole ground remaining in dispute.” slip op. at 2
NonePatents in suitUS 9,463,183 - Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentablePTAB · Nov 14, 2016 · IPR2015-01166 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combination relied on unsupported assumptions and impermissible hindsight.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, Snap-On Incorporated (“Snap-On”) filed a Petition and a Motion for Joinder to this proceeding. IPR2016-00345, Papers 2, 3. We granted the Motion for Joinder, and IPR2016-00345 was joined with IPR2015-01166 and terminated. Paper 24, 6. Consequently, Hilti and Snap-On (collectively, “Petitioner”) are joined in this proceeding.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construed three claim terms in our Decision to Institute: (1) “hand held power tool,” (2) “battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps,” and (3) “nominal voltage.” Inst. Dec. 6–12. Neither party has indicated that the interpretations for those phrases were improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following interpretations are not in dispute and apply to this Decision:” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“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 success › HindsightNot shown unpatentableDecided for patent owner
“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
Patent outcomesUS 7,999,510 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,999,510 - Lupin Ltd. / Lupin Pharmaceuticals Inc. et al. v. Senju Pharmaceutical Co., Ltd.No claims unpatentablePTAB · Sep 12, 2016 · IPR2016-00091 · APJ Erica A Franklin · IPR · Final written decision
Claims 1–30 were not shown unpatentable under § 103 over Sallmann and Ogawa; unexpected properties and objective evidence outweighed the showing of obviousness.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On February 25, 2016, we instituted an inter partes review in IPR2016-00091 and granted the motion for joinder with IPR2015-01100, adding InnoPharma Licensing, Inc., InnoPharma Licensing LLC, InnoPharma Inc., InnoPharma LLC, Mylan Pharmaceuticals, and Mylan Inc. to the Lupin petitioner (collectively “Petitioners”). Paper 22. Petitioners filed a Reply to the Patent Owner Response. Paper 35 (Public), Paper 37 (Parties and Board Only), (collectively, “Reply”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Petitioners. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Patent Owner has not identified any controversy as to the scope of the claim terms for which it seeks construction. Nor does Patent Owner explain specifically why adopting the district court’s construction of the identified terms is necessary to resolve an issue in this proceeding. Accordingly, we decline to adopt the district court’s claim construction. Rather, because the parties identify no controversy as to the scope of any claim terms, we conclude that, for the purposes of this decision, no claim term requires express construction.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“development of pharmaceuticals, and would have a Ph.D. and several years of experience in the field.” Pet. 6. Patent Owner asserts, more broadly, that a person of ordinary skill in the art would have at least a bachelor’s degree in a field such as chemistry, pharmaceutical chemistry or a related discipline with 3–5 years of work experience. PO Resp. 7 (citing Ex. 2082 ¶¶ 47–48 (Williams Decl.)). Based on the record as a whole, we find that Patent Owner’s description more appropriately encompasses the broad education that the person of ordinary skill in the relevant art may possess. Thus, we adopt that description. We note, however, that neither party asserts specifically that the ultimate conclusion of obviousness turns on adoption of a particular level of ordinary skill.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for patent owner
“Given these prior art teachings, Petitioners persuade us that an ordinary artisan would have recognized that tyloxapol and polysorbate 80 were interchangeably useful as non-ionic surfactants in acidic NSAID-containing ophthalmic aqueous solutions, and, therefore, absent persuasive objective evidence to the contrary, that is enough to support the proposed substitution, even in the absence of an express suggestion to do so. In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997); In re Fout, 675 F.2d 297, 301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967)). As to the stability requirements in claims 1, 11, and 19, the ’606 patent discloses that the tyloxapol range effective to stabilize a bromfenac-containing solution is between about 0.01 and 0.5 w/v %. Ex. 1004, 5:19– 25. Both the tyloxapol concentration described in Sallmann (0.1 w/v %) and the polysorbate 80 concentration described in Ogawa (0.15 w/v %), fall within the stabilizing range set out in the ’606 patent. Therefore, in addition to having a reason to substitute the tyloxapol recited in claims 1, 11, and 19 of the ’606 patent for the polysorbate 80 in Ogawa’s Example 6, an ordinary artisan also had a reason to include the tyloxapol at a concentration encompassed by each of those claims.” slip op. at 16
Patent outcomesUS 8,927,606 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,927,606 - Lupin Ltd. / Lupin Pharmaceuticals Inc. et al. v. Senju Pharmaceutical Co., Ltd.No claims unpatentablePTAB · Sep 12, 2016 · IPR2016-00089 · APJ Francisco C Prats · IPR · Final written decision
Claims 1–30 were not shown unpatentable because the unexpected properties and commercial success of the claimed formulations outweighed the obviousness showing over Sallmann and Ogawa.
RulingsFinal written decision- BurdenNot shown unpatentable
“ordinary artisan would have recognized that tyloxapol and polysorbate 80 were interchangeably useful as non-ionic surfactants in acidic NSAID-containing ophthalmic aqueous solutions, and, absent persuasive objective evidence to the contrary, that is enough to support the proposed substitution, even in the absence of an express suggestion to do so. In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997); In re Fout, 675 F.2d 297, 301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967)).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“acknowledge that, under Microsoft v. Proxyconn, claim construction in inter partes reviews must not be unreasonably broad or inconsistent with the specification of the patent under consideration. 789 F.3d at 1298. In general, however, only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the instant case, Patent Owner does not identify any controversy as to the scope of the claim terms for which it seeks construction. Nor does Patent Owner explain specifically why adoption of the district court’s construction of the identified terms is necessary to resolve any of the issues critical to this proceeding. Accordingly, we decline to adopt the district court’s claim construction. Rather, because the parties identify no controversy as to the scope of any claim terms, we conclude that, for the purposes of this decision, no claim term requires express construction.” slip op. at 8
- Skill levelOther
“witnesses advance somewhat different opinions. See Pet. 6–7 (citing Ex. 1005 ¶ 40 (Lawrence Decl.));5 see also PO Resp. 7 (citing Ex. 2082 ¶¶ 44– 45 (Williams Decl.)).6 Nonetheless, neither party asserts specifically that the ultimate conclusion of obviousness turns on adoption of a particular level of ordinary skill. In any event, both experts generally agree that an ordinarily skilled artisan at the critical time would have had at least a bachelor’s degree in a field such as chemistry, pharmaceutical chemistry, or a related discipline, with 3–5 years of work experience, and potentially a Ph.D., depending on 5 Declaration of M. Jayne Lawrence, Ph.D., dated April 21, 2015 (Ex. 1005). 6 Declaration of Robert O. Williams III, Ph.D., dated February 22, 2016 (Ex 2082). the extent of formal education and practical experience. See id. When evaluating the parties’ contentions regarding the scope and content of the prior art, and the differences between the prior art and the challenged claims, we take into consideration both parties’ assertions regarding the level of ordinary skill. We also consider that the cited references provide evidence as to the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“contention that an ordinary artisan would have considered Sallmann’s tyloxapol and Ogawa’s polysorbate 80 to be interchangeably useful in aqueous ophthalmic solutions. Pet. 38 (citing Ex. 1005 ¶¶ 334–336). Given her qualifications, experience, and explanation, we credit her testimony on this issue. See Ex. 1005 ¶¶ 3–15. Dr. Lawrence’s testimony in this regard, moreover, is supported by the Yasueda and Desai references cited in Dr. Lawrence’s Declaration.” slip op. at 13
Patent outcomesUS 8,754,131 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,754,131 - Bio-Rad Laboratories, Inc. v. California Institute Of Technology And Fluidigm CorporationAll claims unpatentablePTAB · Apr 21, 2016 · IPR2015-00009 · APJ Donna M Praiss · IPR · Final written decision
Claims 1, 2, 5–11, 18, 19, 30, 31, 46, 47, and 49–51 are unpatentable as obvious over Stewart II and Burns; additional grounds cover claims 49, 51 and 18, 19, 46, 47.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art In determining the level of skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s Declarant, Dr. Anna, attests that a person with ordinary skill in the art would “hav[e] at least the equivalent of a Bachelor’s degree in engineering, physics, or chemistry and two years of academic, research, or industry experience related to fluid mechanics, fluid dynamics, or microfluidics.” Ex. 1002 ¶ 29. Patent Owner does not dispute Dr. Anna’s assessment of the level of ordinary skill. PO Resp. 3. Thus, we adopt Petitioner’s Declarant’s attestation as to the level of skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner essentially contends that Dr. Anna’s deposition and declaration statements in this proceeding concerning Stewart II are inconsistent with statements in her earlier publication indicating that the named inventors on the ’503 patent were the first to report droplet formation in a T-shaped device. Dr. Anna explained she was unaware of Stewart II at the time of her publication and that, even in view of Stewart II, her published statements about the Thorsen 2001 Article being the first to report on microdroplet formation in a T-shaped device would still be accurate, because Stewart II was not part of the body of work reported in the academic literature. Ex. 2018, 31:9–11, 59:21–60:3, 61:2–12, 63:11–21. The veracity of Dr. Anna’s explanation is supported by Patent Owner’s expert, Dr. Squires, who testified at deposition that he does not typically include patents in his own academic review papers and did not cite the patent literature in his own papers on the subject of microfluidics. Ex. 1020, 31:5–9, 37:19– 38:21, 40:20–41:17. Dr. Anna’s deposition testimony, in fact, clarifies any apparent inconsistency between her declaration and the Thorson 2001 Article. Accordingly, we are not persuaded that Dr. Anna’s testimony should be given diminished weight in light of her prior statements about the Thorson 2001 Article.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In our Decision on Institution, we interpreted two claim terms of the ’503 patent as shown below: Table 1 Term Construction sheared severed or broken off dispersed droplets of sample fluid of monodisperse sample fluid droplets substantially uniform size Dec. on Inst. 6–7. The parties do not challenge our claim constructions. Consequently, for purposes of this Final Written Decision, we adopt the constructions as stated in Table 1 in accordance with the analysis set forth in our Decision on Institution. Id.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded that Petitioner meets its burden of showing that the selection of known channel sizes for microfluidic devices as disclosed in Burns would have been obvious as a predictable variation in the same field because the dimensions of Burns are less than 267 microns as directed by Stewart II. KSR, 550 U.S. at 417. The combination is supported by the Anna Declaration. Dr. Anna testified that the fluid behavior in the Stewart II device would be “substantially the same” in a device having the dimensions disclosed by Burns. Ex. 1002 ¶ 50 (“fluid behavior (including flow characteristics, fluid forces, etc.) would be substantially the same in devices designed for droplets of less than 267 microns as they would be in devices designed for droplets of less than 100 microns.”). Dr. Squires’s testimony that the combination of Burns with Stewart II would have been unpredictable with no reasonable expectation of success due to multiple factors affecting droplet formation is not supported by the record. See Ex. 2019 ¶¶ 23–27, 29, 30, 37, 38. Dr. Squires’s opinion is based on Stewart II being unbelievable because it does not disclose operating data. Id. at ¶¶ 29– 30. Referring to Burns, Dr. Squires further states “[n]or does the mere fact that channels with dimensions smaller than 100 microns could be fabricated at the time of invention provide a basis for one of ordinary skill in the art to believe that Stewart II’s device would operate as described by Stewart II when using channels with dimensions of 100 microns or less.” Id. at ¶ 37. The formation of microdroplets, however, is disclosed in both Stewart II and Burns. Stewart II discloses droplet formation in a microfluidic device at dimensions less than 267 microns in diameter. Ex. 1004, 3–4. Burns discloses droplet formation in a microfluidic device at the claimed dimensions. Ex. 1005, 7. While multiple factors may affect droplet formation, the formation of droplets in devices having a channel that is less than 267 microns in diameter (Stewart II) or in the claimed range (Burns) is supported by the evidence.” slip op. at 21
Patent outcomesUS 7,294,503 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,294,503
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.