- PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,373,449 - PTAB · Sep 27, 2024 · IPR2024-00650 · APJ Deborah Katz · IPR · Institution
The Board instituted IPR of claims 1–38 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine whether to institute an inter partes review on behalf of the Director. See 37 C.F.R. § 42.4(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“determined to be microsatellite instability high or DNA mismatch repair deficient were placed into a study arm and then treated with pembrolizumab. (See Ex. 1005, Ex. 1003 ¶¶ 60–73.) Because treatment of the patients was performed only after MSI-H status was determined, the MSI-H Study Record teaches treating the patients “in response to” determining their MSI- H status.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“have been expected, Petitioner cites to Brown as teaching that PD-1 inhibitors are inherently more effective when treating tumors comprised of cells that are easy for immune cells to recognize. (See Pet. 41 (citing Ex. 1034, 747).) Petitioner argues further that Duval teaches that MSI-H cancers have cells that are easy for immune cells to recognize. (See Pet. 41 (citing Ex. 1087, 5002).) Dr. Neugut’s testimony supports Petitioner’s argument that the cited teachings of Brown and Duval, as well as other references, would have motivated a person of ordinary skill in the art to obtain the results of the MSI-H Study Record. (See Ex. 1003 ¶¶ 124, 130, 132; see Pet. 41.) Petitioner argues further that Brown and Duval would have motivated one of ordinary skill in the art to obtain the results of the MSI-H Study Record by treating patients with common types of MSI-H cancers, including endometrial, small bowel, and gastric cancers. (See Pet. 41 (citing Ex. 1003 ¶ 130).) Petitioner argues further that the state of the art, as demonstrated by Brown and Duval, as well as other references, would have provided one of ordinary skill in the art with a reasonable expectation of success because physicians were successfully treating patients with cancers that were known to be MSI-H with PD-1 inhibitors. (See Pet. 42 (citing Ex. 1003 ¶¶ 131, 132).)” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the ’219 patent would have been a medical doctor or a professional in a related field with at least five years of experience with treating cancer. (See Pet. 11 (citing Neugut Decl., Ex. 1003 ¶19).) Petitioner argues further that the ordinarily skilled artisan would have experience in or access to a person with knowledge of clinical studies for therapeutics and how they work and to a pathologist with comparable experience. (See id.) Dr. Neugut’s testimony supports Petitioner’s arguments regarding the level of skill that an ordinarily skilled artisan in the relevant field would have. (See Ex. 1003 ¶ 19.) Accordingly, in the analysis below, and in the absence of argument by Patent Owner to the contrary, we apply the level of skill set forth by Petitioner and refer to Dr. Neugut’s testimony of what one of ordinary skill in the art would have understood at the time the application that became the ’491 patent was filed, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,634,491 - PTAB · Sep 12, 2024 · IPR2024-00310 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 4–6 and 8 on all asserted grounds, finding a reasonable likelihood that claims 4–6 and 8 are obvious over Lee1 and Lee2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’207 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“In its Preliminary Response, “Patent Owner generally concurs with [Petitioner’s] description, though would propose that a POSITA only needs two years of experience . . . . [but] does not believe any difference between Patent’s Owner’s view and Petitioners’ view affects the unpatentability analysis.” Prelim. Resp. 24. We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We preliminarily adopt Petitioner’s formulation, which is supported by expert testimony and is generally consistent with the level of skill reflected in the Specification and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When construing claim terms, we first review the language of the claims. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). The claim recites four terms: “preambleInitialReceivedTargetPower(0),” “preambleInitialReceivedTargetPower(1),” “powerRampingStep(0),” and “powerRampingStep(1).” Ex. 1001, 36:57–62. These terms represent outputs of, or values dependent on, inputs (0) or (1). Id. at 29:30–53; Ex. 2002 ¶¶ 21– 23. Given that claim 4 separately lists initial power values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1),” we are skeptical of Petitioner’s argument that these two values should be construed to mean a single value (i.e., preambleInitialReceivedTargetPower), because that would render the separate listing superfluous. Moreover, if the two values “preambleInitialReceivedTargetPower(0)” and “preambleInitialReceivedTargetPower(1)” were construed to mean single value preambleInitialReceivedTargetPower, the additional “(0)” and “(1)” claim language would be superfluous. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”); Dig.-Vending Servs. Int’l, LLC v. Univ. of Phx., Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (noting “the importance of construing claim terms in light of the surrounding claim language, such that words in a claim are not rendered superfluous”); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (construing claim to avoid rendering the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting the district court’s claim construction because it rendered superfluous the claim requirement for openings adjacent to the end walls).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Because the prior art need not explicitly disclose or explicitly suggest the proposed modification (here, at least according to Patent Owner, making initial power and power ramping dependent on procedure type), the absence of precise teachings regarding the proposed modification does not undermine the grounds of unpatentability. Lee2 discloses initial power and power ramping functions dependent on input. Ex. 1006 ¶¶ 63, 71–74. Specifically, Lee2 discloses using, based on measured signal power (RSRP), event/distance as input for initial power and power ramping. Id. Lee2 does not, nor could it, address using procedure type as input for initial power and power ramping because Lee2 only discloses 1 type of procedure––the conventional 4-step. Ex. 1006, Fig. 3. Per Lee1, reducing from the conventional 4-step to 2-step is a development in the technology to reduce time delay. Ex. 1005 ¶ 6. Although not discussed in Lee1, the prosecution history shows that switching from 4-step to 2-step is similarly based on measured RSRP. Prelim. Resp. 39 (discussing prosecution history); Ex. 4039–40. Patent Owner’s declarant also acknowledges that there is a correlation (albeit unreliable) between RSRP and distance. Ex. 2002 ¶ 27 (“RSRP may or may not correspond to distance in the real world due to various wireless artifacts . . . .”). Accordingly, we are preliminarily persuaded that a person of ordinary skill in the art, facing the needs created by the development of new types of procedures (i.e., the 2-step), and upon recognizing the link between event/distance, procedure type, and measured RSRP, would have, in light of Lee2, seen a benefit and had a reasonable expectation of success in using initial power and power ramping functions dependent on procedure type.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,932,207 - Apotex Inc. v. Novo Nordisk A/SInstitutedPTAB · Sep 11, 2024 · IPR2024-00631 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted review of claims 1–10 on all petitioned grounds, finding a reasonable likelihood of unpatentability, and granted Apotex’s motion to join the Mylan IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016); see also 35 U.S.C. § 314(a). In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), the Board set forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors are as follows: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. In evaluating these factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. at 6. The Director has also issued interim guidance to the Board on applying the factors. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under 37 C.F.R. § 42.5(b), we “may waive or suspend a requirement of [part 42 of the Board’s rules] and may place conditions on the waiver or suspension.” Here, we agree with Petitioner that it has shown sufficient reason for us to waive the one-month from institution joinder motion deadline. See 37 C.F.R. § 42.122(b). Petitioner waited until it had a sufficient business reason to file this Petition, and subsequently promptly filed its Petition and Motion for Joinder. Most critically, Petitioner raises no new unpatentability grounds, the trial schedule for the Mylan IPR need not be adjusted, and Petitioner agrees to serve in a silent understudy role. We determine that joinder with the Mylan IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 13
Discretionary denialPatents in suitUS 10,335,462 - PTAB · Sep 10, 2024 · IPR2024-00563 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1, 12, and 28 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Gil, Norden, Dean, Alphagan, and Federal Register.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the District of New Jersey is more than three years, argues that “a trial may not be held until 2026—well after a FWD would be expected in this proceeding.” Pet. 15 (citing Ex. 1027, 2); Reply 8. Based on this evidence of the median time to trial in the district, we find factor 2 weighs in favor of institution. See Fintiv Memo 3 (“[W]hen considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.”)” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“In claim construction, “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,596,600 - PTAB · Aug 27, 2024 · IPR2024-00388 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Other 314aDenied
“reexamination of the ’243 Patent on December 12, 2023,” and argues that, “[i]n view of the finite resources of the Board and the co-pending ex parte reexamination, the Director should deny the Petition under 35 U.S.C[.] § 315(d).”4 Prelim. Resp. 41–42; see id. at 41 (Patent Owner emphasizing the word “termination” in § 315(d)). Patent Owner’s argument about the finite resources of the Board suggests that the Board is conducting the reexamination proceeding. See Prelim. Resp. 46 (Patent Owner referring to “the Board’s reasons for granting the ex parte reexamination,” and asserting that “the Board has made substantive statements about the prior art in the ex parte reexamination by issuing a non-final office action . . . [and, i]n a non-final office action, the Board issued two grounds of rejection.”). The reexamination, however, is being conducted by the Central Reexamination Unit, not by the Board. Thus, the Board’s resources are not being utilized in the reexamination. We determine that, given the circumstance that are present here, discretionary denial of the Petition due to the Board’s resources is not warranted.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“In General Plastic, the Board considered several factors in determining whether to exercise discretion under § 314(a) to deny institution when a party files multiple or “follow-on” petitions challenging the same patent as a previous petition. See General Plastic, Paper 19 at 15–16; see also id. at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” (emphasis added)). Here, it is our understanding that there has been no prior petition challenging the ’243 patent at the Board. The parties do not direct us to any authority extending the application of General Plastic to a situation, such as here, where a reexamination request was filed before a petition. Cf., e.g., Geneoscopy, Inc. v. Exact Sciences Corp., IPR2024-00459, Paper 9 at 32 (PTAB July 26, 2024) (“Given the facts and circumstances of this case, we are not inclined to extend the holding of General Plastic to Petitioner’s prior ex parte reexamination request.”); Dish Network LLC v. Entropic Commc’ns, LLC, IPR2024-00373, Paper 9 at 10 (PTAB July 26, 2024) (“The parties point to no authority to support that General Plastic has ever been applied in the context of a reexamination filed before a petition similar to the facts of this case. We decline to consider further discretionary denial under General Plastic under the facts presented here.”); Samsung Elecs. Co., Ltd. v. Netlist, Inc., IPR2022-00615, Paper 20 at 21 (PTAB Oct. 19, 2022) (“Patent Owner points to no authority that General Plastic has ever been applied to deny institution of a petition based on a prior reexamination. We decline to extend General Plastic to discretionarily deny the Petition on this basis.”); Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01597, Paper 12 at 45 (PTAB Mar. 12, 2019) (“To the extent that Anza [asks us] to deny institution based on prior reexaminations, it is not explained sufficiently why the rationale of General Plastic extends to such situations. We decline to do so for the first time in this case.” (footnote omitted)). We decline to extend General Plastic to the circumstances in this case. As such, we decline to exercise discretion to deny the Petition under § 314(a) and General Plastic.5 IV.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed above, the first three Fintiv factors weigh against discretionary denial, the fourth factor is either neutral or weighs slightly against denial, and only the fifth factor favors denial. Considering these factors as a whole, we determine that the first five Fintiv factors collectively weigh against discretionary denial, and thus, we do not assess compelling merits. H. Conclusion Regarding the Fintiv Factors We consider “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. We determine that the facts weighing against exercising discretion to deny institution collectively outweigh those facts weighing in favor of exercising discretion. Thus, we decline to deny institution based on the Fintiv factors.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims of the ’243 patent. Accordingly, we institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc., 138 S. Ct. at 1354, 1359–60; 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims. VII. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–20 of the ’243 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,291,243 - PTAB · Aug 22, 2024 · IPR2024-00580 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted review of claims 1, 3–6, and 8 on all asserted grounds, finding a reasonable likelihood that at least claim 1 would be shown obvious over the ’772 Publication and Snowdy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Beginning with independent claim 1, we determine that Petitioner has met its burden for institution. Based on the current record, Petitioner has shown a reasonable likelihood of succeeding in establishing that the combination of the ’772 Publication and Snowdy renders at least claim 1 obvious.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“Pet. 12 (citing Ex. 1005 ¶¶ 111–115). Patent Owner states that it does not dispute this definition for purposes of the Preliminary Response. Prelim. Resp. 16. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’462 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“We agree with Patent Owner on the record before us that Petitioner does not appear to offer sufficient evidence and reasoning as to why a POSA would have modified AAVrh.10 at position 665 as described as opposed to other modifications based solely on the disclosure of the ’772 Publication. We do agree with Petitioner, however, that on the record before us, Snowdy provides such sufficient evidence and reasoning. See Pet. 47–52.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,680,274 - PTAB · Aug 14, 2024 · IPR2024-00510 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2 and 4 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has not met this standard. Therefore, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The specification of the ’976 patent (“Specification”) does not expressly define the first RNTI phrase, but it provides some support for Patent Owner’s implicit construction. See, e.g., Ex. 1001, 8:41–46 (“URLLC C-RNTI (i.e., different RNTI from SPS C-RNTI)”). The prosecution history for the ’976 patent does not provide evidence regarding how the first RNTI phrase should be construed. See Ex. 1002. Ordinary usage, however, favors Patent Owner’s implicit construction. For example, the term “object” in the phrase “an object different from a ball” would generally exclude a ball. As an illustration, in ordinary usage, a tennis ball would generally not be considered to be an object different from a ball merely because baseballs also exist. Similarly, a red ball would not be considered to be different from a ball merely because green balls exist. Instead, in ordinary usage, an object different from a ball would be limited to objects that are not balls, such as a tennis racket and a baseball bat. Further, Petitioner has not given us any reason to adopt its proposed implicit construction even though it could have anticipated that its implicit claim construction would be at issue based on Patent Owner’s reasonably expected arguments. Pet. 4–5, 32–37; see also id. at 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs, Babaei still satisfies the requirement that the ‘first RNTI’ be ‘different from … a semi-persistent scheduling C-RNTI’ . . .”). After reviewing the record, we construe the first RNTI phrase as requiring that the recited first RNTI is not a semi-persistent scheduling C- RNTI.” slip op. at 10
- BurdenNot shown unpatentable
“Petitioner recognized that Patent Owner might argue that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs. Pet. 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs”). Petitioner, however, made no attempt to prove and, in fact, does not argue that the SPS RNTIs of Babaei are not semi-persistent scheduling C- RNTIs. Id. Instead, Petitioner relies on its implicit construction for the first RNTI phrase and asserts that, because there are differences between Babaei’s SPS RNTIs, they satisfy the first RNTI phrase (even if both SPS RNTIs are semi-persistent scheduling C-RNTIs). Id. As discussed in Section II.B.1 above, we did not adopt that implicit construction. Instead, we construed the first RNTI phrase to require that the first RNTI is not a semi-persistent scheduling C-RNTI, and Petitioner has not shown that what it maps the recited first RNTI to is not a semi-persistent scheduling C-RNTI. See Section II.B.1 above. Thus, we determine that Petitioner has not made a sufficient showing for the first RNTI recitation. Accordingly, Petitioner has not demonstrated a reasonable likelihood of proving that claims 2 or 4 would have been obvious over the combination of Babaei and Fwu.” slip op. at 17
Claim constructionPatents in suitUS 10,484,976 - PTAB · Aug 13, 2024 · IPR2024-00467 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on all challenged claims based on the asserted obviousness ground over Gil, Norden, Dean, Alphagan, and Federal Register.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics, 8. As explained above, during prosecution of the ’245 patent, the examiner issued a nonstatutory double patenting rejection because the claims were “not patentably distinct from” the ’742 patent claims.13 See supra Section I.H (citing Ex. 1010, 96). Petitioner argues that “[i]t was material error for the Examiner to both acknowledge that the ’245 claims were patentably indistinct from the ’742 claims and yet ignore the FWD and allow the claims despite the Board’s prior findings.” We find Petitioner’s argument persuasive. To determine whether Petitioner has sufficiently shown material error, we look at, for example, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Advanced Bionics, 9 (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 10–11 (Dec. 15, 2017)). Petitioner asserts Gil, Norden, Dean, Alphagan, and Federal Register in this” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“previously denied its motion to stay. Ex. 2029. Thus, factor 1 weighs in favor of denying institution.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to expressly construe any claim term. Patent Owner appears to suggest, although it does not explicitly argue, that the claims require “a single drop of [0].025% brimonidine.” See Prelim. Resp. 6; see also id. at 27 (arguing Gil is “with multi-dosed 0.03% brimonidine”); id. at 28 (arguing Dean is with “multi-dosed concentrations”). To the extent our understanding is correct, Patent Owner should expressly discuss at trial any construction that would so limit the claim. Such discussion should be set forth in a separate section of a response, if filed, designated for claim construction; claim construction positions should not be merely included in arguments over the merits on patentability.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art (“POSA”) would have been a composite person (or team) that included a medical doctor and pharmaceutical formulator. EX-1014, ¶¶60-61; EX-1013, ¶¶16, 22-24. The medical doctor would be an ophthalmologist with at least three to four years of experience in clinical trials and FDA regulation of eye products and would have experience in the use of topical brimonidine and apraclonidine and topical vasoconstrictors such as naphazoline and tetrahydrozoline. EX-1014, ¶60. The pharmaceutical formulator would have a doctorate in pharmaceutics or a related degree and at least three to five years of experience developing eye drop formulations for clinical trial and regulatory approval. EX-1013, ¶16. Pet. 16–17. Patent Owner does not, at this point, dispute this proposed definition of the ordinarily skilled artisan. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the person of ordinary skill in the art as it appears consistent with the skill level reflected in the prior art of record and the disclosure of the ’245 patent.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,833,245 - PTAB · Aug 7, 2024 · IPR2024-00387 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on every asserted ground, finding a reasonable likelihood that Keith anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. The parties’ arguments for this factor concern only whether the Petition made a showing of unpatentability by compelling merits. See Pet. 104; Prelim. Resp. 47–48; Prelim. Reply 2; Prelim. Sur-reply 2–3. Board precedent provides that we should only consider the compelling merits issue if the first five Fintiv factors favor discretionary denial. CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (Vidal February 27, 2023) (precedential). “Thus, in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” Id. As discussed above, the first three Fintiv factors weigh against discretionary denial, the fourth factor is either neutral or weighs slightly against denial, and only the fifth factor favors denial. Considering these factors as a whole, we determine that the first five Fintiv factors collectively weigh against discretionary denial, and thus, we do not assess compelling merits.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons discussed below, we determine that the Petition does demonstrate a reasonable likelihood of prevailing on its challenge to, at least, the independent claims as anticipated by Keith. Therefore, we institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of 7 It is not clear whether Petitioner’s use of the word “combination” is referring to the combination of the reference’s teachings (the important aspect for an obviousness analysis) or is referring colloquially to the “combination” of limitations that constitute the overall claimed subject matter. See, e.g., Prelim. Reply 3. unpatentability asserted for each claim.”). During trial, the parties will have the opportunity to further discuss their respective positions on this single-reference obviousness challenge based on Kimura and on the grounds that build on that challenge.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it applies the plain and ordinary meanings to all terms, and contends that “[n]o express constructions are required in this proceeding.” Pet. 6. “For purposes of this Preliminary Response, Patent Owner states that no express construction is necessary at this stage.” Prelim. Resp. 9. We agree with the parties, and determine that, on this record and for purposes of this decision, no claim terms require express construction. We, however, discuss here some claim construction issues in order to narrow and clarify the issues going forward.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“including “energy transaction execution engine,” should be construed as having the plain and ordinary meaning. See Pet. 6. Petitioner contends that phrase is not a means-plus-function element governed by 35 USC § 112, sixth paragraph. See Pet. 14 n.4. However, in applying the claims to prior art references, Petitioner offers alternative arguments in the event that the phrase is construed as a means-plus-function element. See Pet. 14 n.4 (“The energy transaction execution engine does not appear to be in means-plus-function format, but, due to 37 C.F.R. § 42.104(b)(3), Petitioner cautiously notes that corresponding structure [in Kimura] would be energy transaction execution engine 316 and any implementing algorithm.”); id. at 65 n.10 (“If this is in means-plus function format . . . , Keith at least discloses an equivalent.”). Patent Owner does not argue that “an energy transaction execution engine” is a means-plus-function element. See Prelim. Resp. 19 n.4 (“For the purposes of this Preliminary Response, Patent Owner is solely addressing Petitioner’s hypothetical means-plus-function argument, and does not currently take a position on whether the ‘energy transaction execution engine’ constitutes a means-plus-function claim.”). Therefore, neither party contends that “energy transaction execution engine” is a means-plus-function element, and neither party asks us to construe the phrase that way. We do not reach Petitioner’s alternative construction and, at this preliminary stage and in light of the parties’ positions, we decline to construe “energy transaction execution engine” as a means-plus-function element governed by § 112, sixth paragraph. See, e.g., Phillips, 415 F.3d at 1311 (“[W]e have held that the absence of that term [‘means’] creates a rebuttable presumption that section 112, paragraph 6, does not apply.”).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,103,391
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.