- Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentablePTAB · Jul 27, 2016 · IPR2015-00551 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable under § 103 over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420-21 (2007). As the title, field of the invention, and background discussion in the ’730 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title (54), 1:4–26. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year before the ’730 patent priority date. Pet. 3–6: Ex. 1001, filing date (22).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“We are not persuaded by Patent Owner’s arguments or the testimony of Dr. DiPiro and Dr. Bergeron in support thereof. Patent Owner does not explain adequately why generating a report for a particular purpose or “ad hoc” precludes it from being a report generated periodically. See, e.g., PO Resp. 28 (citing Ex. 2046 ¶ 33 (testimony by Dr. DiPiro stating that “POSA would not consider ‘ad hoc’ reports to be ‘periodic’ because they are not generated with any regular frequency.”); Ex. 2047 ¶ 31 (testimony by Dr. Bergeron stating same). As noted above, the specification does not limit “periodic reports” to those generated with “regular frequency.” Moreover, to the extent that Figure 4B in the ’730 patent illustrates generating “ad hoc” reports, as Patent Owner contends, such disclosure supports a construction that the recited “periodic reports” include such “ad hoc” reports. Ex. 1001, 6:9–7:2; Reply 13–14 (citing Ex. 1047, 6; Ex.1048, 9 (ll. 12–19), Fig. 4 (436)). Patent Owner also points us to a Merriam-Webster’s Collegiate Dictionary definition of the term “periodic,” which defines the term as “occurring or recurring at regular intervals,” or something that is “repeated.” PO Resp. 28 (citing Ex. 2043, 3). Petitioner points us to several other dictionary definitions, which define “periodic” as also including “intermittent.” Reply 15 (citing Ex. 1049, 3 (defining “periodic” as including “occurring repeatedly from time to time”); Ex. 1050, 3 (defining “periodic” as including “[t]aking place now and then” or “INTERMITTENT”); Ex. 1051, 3 (defining “periodic” as including “[h]appening or appearing now and then” or “intermittent, occasional”). Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“presentation slides, thus confirming the description of the Internet Archive file links (3754t) as containing 381 pages. Compare Ex. 1003, with Ex. 1020, 8. We are persuaded that the Federal Register Notice is evidence of the FDA’s general practice under the Federal Advisory Committee Act and tends to indicate an approximate timeframe when background information and advisory committee meeting minutes, transcripts, and presentation slides are posted on the FDA’s website. Case IPR2014-00059, slip op. at 34 (Apr. 15, 2014) (Paper 9) (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1988)); 5 U.S.C. App 2 § 10(b) (2001) (“[T]he records, reports, transcripts, minutes, appendixes, working papers, drafts, studies, agenda, or other documents which were made available to or prepared for or by each advisory committee shall be available for public inspection . . . .”). The Federal Register Notice states that the minutes, transcript, and slides of the Xyrem Advisory 13 The October 4, 2001 Internet Archive page contains a URL date code of “20011004” (Ex. 1020, 8–9). Ex. 1028 ¶ 5. Committee Meeting are “generally posted about 3 weeks after the meeting.” Ex. 1015. The Internet Archive evidence indicates the meeting transcript, presentation slides, and meeting minutes were not posted on the FDA’s website as of June 17, 2001, less than three weeks after the meeting, but were posted not later than October 4, 2001. Ex. 1018; Ex. 1020; Ex. 1028. Thus, the Federal Register Notice is consistent with the Internet Archive evidence. Petitioner further emphasizes that Patent Owner does not contest the sufficiency of the evidence establishing the public accessibility of Exhibit 1003 on the FDA’s website as of October 4, 2001. Reply 2 n.2; Tr. 6:1–9; see PO Resp. 4–14. Therefore, for the reasons given above, we find that Petitioner has established by a preponderance of the evidence that the Xyrem Advisory Committee Meeting transcript and presentation slides (Exhibit 1003) were publicly accessible on the FDA’s website not later than October 4, 2001.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We disagree with Patent Owner’s inference that members of the Advisory Committee were not POSAs, i.e., people interested in the distribution, safety, and abuse of a sensitive drug. Testimony of the Advisory Committee members cited by Patent Owner (PO Resp. 51–55 (citing Ex. 1003)) indicates that the members were interested in, and discussed at length, the distribution, safety, and abuse of Xyrem. In addition, even assuming the Advisory Committee indicated a preference for one course of action over another, that disclosure does not dictate that a less “preferred” option is not obvious. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (stating that a “reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed” (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004))); Reply 24. We are not persuaded that testimony of Advisory Committee members, as cited by Patent Owner (PO Resp. 51–55 (citing Ex. 1003)), criticizes, discredits, or otherwise discourages providing educational materials regarding Xyrem before shipping the drug to a patient. We agree with Petitioner that by asking questions on this point, the Advisory Committee suggested at least some value in taking that course of action. Reply 24. Contrary to Patent Owner’s arguments, the FDA Advisory Committee expressly considered the alternative of confirming that the patient has read the Xyrem educational material prior to shipping the first prescription. The FDA reviewers specifically listed as an additional “Risk Management Recommendation[]” to the drug sponsor to include: “Obtaining the patient’s signed confirmation that he/she fully understands how GHB is to be used prior to the first prescription being mailed.” Ex. 1004, 115 (14.4); see also Ex. 1007 ¶ 71 (quoting the same passage). We are satisfied that the ACA discloses a process step to a POSA for confirming that a patient has read the Xyrem educational material prior to shipping the first dose of a potentially dangerous drug. Ex. 1007 ¶ 71. We also find the portions of the ACA identified by Petitioner and discussed by Dr. Valuck suggest, if not teach expressly, the step of confirming with a patient that educational materials were received and/or read prior to shipping Xyrem. Pet. 30 (citing (Ex. 1003, Tr., 371:10–12. 374:7–20; Ex. 1004, 115; Ex. 1007 ¶ 71). Both parties agree that the ACA teaches sending the Xyrem educational material (“Xyrem Patient Success Program”) with their first shipment of Xyrem, consistent with the “preferred” course of action noted by Patent Owner. Pet. 30 (citing Ex. 1003, 182:3–8); PO Resp. 49 (citing Ex. 1003 at 182:3–8, slide 157; Ex. 1006, 8–9 n.34–n.37, V10 at 00:05-00:40), id. at 53–55 (addressing what some Committee members indicated was “preferred”). Disclosures in the Preliminary Clinical Safety Review (Ex. 1004, 115), as discussed above, especially in view of the questions raised by the Advisory Committee, sufficiently suggest or teach as an alternative, and establish that a POSA would have had reason, to confirm with a patient that educational material had been received and/or read prior to shipping Xyrem. See, e.g., Ex. 1003, 374:7–20 (raising the idea of patients signing a form confirming that they “read the materials” “before they even get the first dose”). Patent Owner does not persuade us otherwise by arguing that “the ACA discloses to a POSA that the ‘registry information’ in Ex. 1004 is not the same as the educational based ‘registry form’ discussed in Ex. 1003.” PO Resp. 52 n.17. Patent Owner’s arguments in this regard do not address the teachings in the Preliminary Clinical Safety Review (Ex. 1004, 115) discussed above, regardless of any distinction between “registry information” and a “registry form.” Nor are we persuaded otherwise by Patent Owner’s critique of Dr. Valuck’s testimony and his alleged “process” of analyzing the ACA prior art, because this testimony and argument fail to address the teachings in the Preliminary Clinical Safety Review (Ex. 1004, 115) discussed above. PO Resp. 57–58 (quoting Ex. 2044, 198:6–22). Based on the complete record before us, we find Petitioner establishes by a preponderance of the evidence that the ACA discloses a method of distributing a prescription drug that comprises “confirming with a patient that educational material has been received and/or read prior to shipping the prescription drug,” as recited in Step 1.4 of challenged claims. See also KSR, 550 U.S. at 418; In re Bell, 991 F.2d at 785.” slip op. at 50
Patent outcomesUS 8,457,988 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,457,988 - Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentablePTAB · Jul 27, 2016 · IPR2015-00548 · APJ Jacqueline Wright Bonilla · IPR · Final written decision
Claims 1–16 are unpatentable as obvious over the Advisory Committee Art under § 103(a), which the Board found publicly accessible and sufficient to teach or suggest the claimed limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420–21 (2007). As the title, field of the invention, and background discussion in the ’059 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title, 1:10– 27. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year before the ’059 patent priority date. Pet. 3–7; see also Ex. 1001, Related Application, 1:6–9 (indicating earliest priority date for the ’059 patent).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We are not persuaded by Patent Owner’s arguments or the testimony of Dr. DiPiro and Dr. Bergeron in support thereof. Patent Owner does not explain adequately why generating a report for a particular purpose or “ad hoc” precludes it from being a report generated periodically. See, e.g., PO Resp. 28 (citing Ex. 2046 ¶ 34 (testimony by Dr. DiPiro stating that “POSA would not consider ‘ad hoc’ reports to be ‘periodic’ because they are not generated with any regular frequency.”); Ex. 2047 ¶ 32 (testimony by Dr. Bergeron stating same). As noted above, the specification does not limit “periodic reports” to those generated with “regular frequency.” Moreover, to the extent that Figure 4B in the ’059 patent illustrates generating “ad hoc” reports, as Patent Owner contends, such disclosure supports a construction that the recited “periodic reports” include such “ad hoc” reports. Ex. 1001, 6:13–7:3; Reply 13–14 (citing Ex. 1047, 6; Ex. 1048, 9:12–19, Fig. 4, 436). Patent Owner also points us to a Merriam-Webster’s Collegiate Dictionary definition of the term “periodic,” which defines the term as “occurring or recurring at regular intervals,” or something that is “repeated.” PO Resp. 27 (quoting Ex. 2043, 3). Petitioner points us to several other dictionary definitions, which define “periodic” as also including “intermittent.” Reply 15 (citing Ex. 1049, 3 (defining “periodic” as including “occurring repeatedly from time to time”); Ex. 1050, 3 (defining “periodic” as including “[t]aking place now and then” or “INTERMITTENT”); Ex. 1051, 3 (defining “periodic” as including “[h]appening or appearing now and then” or “intermittent, occasional”). Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’059 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 25–28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for patent owner
“1. “exclusive central pharmacy,” “exclusive computer database” and “the central pharmacy authorizing the prescription drug to be dispensed to the patient by another pharmacy” In our Decision on Institution, we construed “exclusive central pharmacy” to mean “single or sole pharmacy,” and we construed “exclusive computer database” to mean “single or sole computer database.” Dec. on Inst. 20. We also construed the phrase “the central pharmacy authorizing the prescription drug to be dispensed to the patient by another pharmacy” in dependent claims 7, 10, and 15 to mean “the exclusive central pharmacy may authorize another pharmacy to prepare and give the prescription drug to a patient.” Id. at 22–23. Our constructions are consistent with those proposed by Petitioner, and Patent Owner takes no position regarding Petitioner’s arguments in this regard. Pet. 9–11; PO Resp. 24 n.8. Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from those interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“but proposes that the construction is incomplete in relation to the term “periodic reports.” PO Resp. 25. Patent Owner contends that “periodic reports” should be construed to mean “at regular frequencies or intervals, as opposed to intermittently or upon request.” Id. at 26–27 (citing Ex. 2046 ¶¶ 31–39; Ex. 2047 ¶¶ 29–36). In support, Patent Owner points to the specification of the ’059 patent, such as Figures 13A–C, and where the specification states “[e]ach report has an associated frequency or frequencies.” Id. at 26–27; Ex. 1001, 8:22–29. The cited portions of the specification, however, describe Figures 13A–C as “descriptions of sample reports obtained by querying a central database having fields represented in Fig. 7.” Ex. 1001, 8:22–24 (emphasis added); see also id. at 2:55–57 (also describing Figs. 13A–C as describing “sample reports”); Reply 13. Thus, we do not agree that the specification indicates that “periodic reports” as recited in the claims refers only to reports obtained at regular frequencies or intervals, even if the term includes such reports. Patent Owner also responds to testimony by Petitioner’s expert, Dr. Valuck, who states that “periodic reports” can be generated on either “an ad hoc basis or on a regular basis.” PO Resp. 27 (quoting Ex. 2044, 184:8–16). Patent Owner argues that a POSA “would understand that ad hoc reports are done for a particular purpose,” and, therefore, a “POSA would not consider ‘ad hoc’ reports to be ‘periodic.’” Id. at 27 (citing Ex. 2046 ¶¶ 34, 38; Ex. 2047 ¶¶ 32, 35, Ex. 1001, Figs. 4B, 13A–C)). Patent Owner also argues that Figure 4B illustrates generating “ad hoc” reports prepared for the particular purpose of investigating specific early refill requests, and not “periodic” reports as recited in the challenged claims. PO Resp. 27–28 (citing Ex. 2046 ¶ 37; Ex. 2047 ¶ 34). We are not persuaded by Patent Owner’s arguments or the testimony of Dr. DiPiro and Dr. Bergeron in support thereof. Patent Owner does not explain adequately why generating a report for a particular purpose or “ad hoc” precludes it from being a report generated periodically. See, e.g., PO Resp. 28 (citing Ex. 2046 ¶ 34 (testimony by Dr. DiPiro stating that “POSA would not consider ‘ad hoc’ reports to be ‘periodic’ because they are not generated with any regular frequency.”); Ex. 2047 ¶ 32 (testimony by Dr. Bergeron stating same). As noted above, the specification does not limit “periodic reports” to those generated with “regular frequency.” Moreover, to the extent that Figure 4B in the ’059 patent illustrates generating “ad hoc” reports, as Patent Owner contends, such disclosure supports a construction that the recited “periodic reports” include such “ad hoc” reports. Ex. 1001, 6:13–7:3; Reply 13–14 (citing Ex. 1047, 6; Ex. 1048, 9:12–19, Fig. 4, 436).” slip op. at 16
Patent outcomesUS 7,895,059 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,895,059 - Amneal Pharmaceuticals, LLC / Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc.All claims unpatentablePTAB · Jul 27, 2016 · IPR2015-00545 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–26 are unpatentable as obvious over the Advisory Committee Art under § 103.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420-21 (2007). As the title, field of the invention, and background discussion in the ’182 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title (54), 1:15–31. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“First, we agree with Petitioner that the preamble language “[a] method of treatment of a narcoleptic patient” in the independent claims is not “necessary to give life, meaning, and vitality” to the claims of the ’182 patent. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The claims recite method steps for controlling distribution of a prescription drug prone to abuse, misuse, or diversion; the claims do not recite treating a patient, administering a compound or drug product for therapeutic effect, or other treatment-related method steps. See, Ex. 1007 ¶ 37. Therefore, we determine the preamble language “[a] method of treatment of a narcoleptic patient” to be non-limiting.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Second, the wherein clause at issue does not recite a method step. Independent claims 1, 8, and 19 consistently recite method steps using the present participle verb form, “receiving,” “entering,” “checking,” and “authorizing.” The wherein clause, however, recites the GHB drug product “treats” cataplexy, rather than reciting a method step of “treating” cataplexy. The absence of the present participle verb form and the use of a wherein clause indicate an intended use or inherent property of the GHB drug product to treat cataplexy, not a method step. See Credle v. Bond, 25 F.3d 1566, 1572 (Fed. Cir. 1994) (“[B]efore each clause containing an undisputed present participle designating the method steps—‘providing an insert;’ ‘joining two opposed webs’ . . . there is a comma, indicating the beginning of a new, distinct step . . . . There is no such comma preceding ‘flexibly securing.’ This suggests that ‘securing’ is not a present participle signifying a distinct method step.”).” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Briefing Information 3754b1.htm” was posted on the FDA’s website not later than June 17, 2001. Ex. 1018, 5. Petitioner’s Internet Archive evidence further indicates this link led to file links for Orphan Medical’s “Briefing Information” (Ex. 1005 Briefing Booklet) and Xyrem “Video Script 2/2/01” (Ex. 1006) and for the FDA’s “Safety Review” (Ex. 1004 Preliminary Clinical Safety Review), which were posted on the FDA’s website not later than July 1, 2001. Ex. 1019. We also note the URL for the FDA website address in Exhibit 1019 concludes with the code “briefing/3754b1.htm,” which matches the Briefing Information code linked in Exhibit 1018.15 Thus, the Internet Archive evidence supports Petitioner’s contention that the documents of Exhibits 1004–1006 were publicly accessible on the FDA’s website for the Xyrem Advisory Committee not later than July 1, 2001, in accordance with the Federal Advisory Committee Act. slip op. at 28
Patent outcomesUS 8,589,182 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,589,182 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentablePTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14
Patent outcomesUS 7,165,927 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,165,927 - Nissan North America, Inc. / Hitachi Automotive Systems, Ltd. v. Diamond Coating Technologies, LLCAll claims unpatentablePTAB · Apr 20, 2016 · IPR2014-01546 · APJ Christopher L Crumbley · IPR · Final written decision
Claim 1 is unpatentable under § 102 as anticipated separately by Menu and Hirochi.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“For these reasons, we determine that the broadest reasonable interpretation of hard carbon thin film in light of the specification is “film containing a significant fraction of sp3-hybridized carbon.” This construction is not inconsistent with that adopted by the District Court,9 and we agree with the court that it excludes graphitic carbon films. While it is unnecessary to determine the exact boundary of the hard carbon film domain, we note that “a significant fraction of sp3” encompasses a wide range of sp3/sp2 ratios that may even be a majority sp2-bonding, extending to at least 75% sp2. 9 We decline to adopt the District Court’s reliance on a 68:30 ratio of sp3/sp2 bonding as indicative of “a significant fraction,” as the Koidl reference upon which that ratio is based is not in the record of this proceeding, nor does it appear to have been cited during the prosecution history of the ’399 patent. Ex. 1001, References Cited.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“as anticipated by Menu. Pet. 11–24. To establish anticipation, Petitioner must prove that each and every element in a claim may be found in Menu, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). For the following reasons, Petitioner has established by a preponderance of the evidence that Menu anticipates claim 1.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Upon review of the reference, the expert testimony, and the parties’ arguments, we find that the amorphous carbon structures of Menu are hard carbon thin films. While we agree with Dr. Kaner’s testimony that the general usage of “amorphous carbon films” may encompass both diamond-like and graphitic carbon, we also agree with Dr. Hersam that Menu is using the term in a more limited way, as synonymous with “diamond-like carbon.” See Ex. 2022, 62. Menu discusses “the need for an improved method for fabricating DLC [diamond-like carbon] superlattice structures” (Ex. 1002, 1:38–40), and it is reasonable to conclude that the method disclosed is directed to addressing this need. In addition, as Petitioner points out, Menu refers initially to “amorphous carbon, or ‘diamond-like carbon’ (DLC)” (id. at 1:25–28), implying that the terms are being used synonymously. The reference to Menu’s first-phase outer layers as “rich in sp2 bonds” (id. at 53–56) does not persuade us otherwise. As Petitioner notes, the ’399 patent uses the same terminology when referring to hard carbon films, suggesting that “rich in sp2” does not imply graphitic. Furthermore, as discussed above, there is a wide range of carbon films within the scope of hard carbon thin films, including films having at least 75% sp2 bonding. Such films can reasonably be termed “rich in sp2” bonds, yet still fall within the domain of diamond-like carbon.” slip op. at 16
- Skill levelNot reached
“UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NISSAN NORTH AMERICA, INC. and HITACHI AUTOMOTIVE SYSTEMS, LTD., Petitioner,” slip op. at 1
Patent outcomesUS 6,066,399 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,066,399 - TDK Corporation v. Lambeth Magnetic Structures LLCInstitution deniedPTAB · Apr 12, 2016 · IPR2016-00013 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6–19, 21–31, 34, 38, and 39 were obvious over the asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the Petitioner’s burden to explain how Shen allegedly teaches a bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9
- BurdenDecided for patent owner
“It is the Petitioner’s burden to explain how Shen allegedly teaches a bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“However, Petitioner has not provided sufficient evidence to show that the described increase in magnetization in Shen is the result of symmetry breaking as opposed to the transition from an (fcc) structure to a (bcc) structure. For example, Petitioner has not identified where in Shen there is a description that an increase in magnetization of the Fe films is due to symmetry breaking. Rather paragraph 4 (5) on page 134 cited by Petitioner generally states that the magnetization of the Fe films sharply increase “in the fcc to bcc transformation regime” and that the increase in magnetization of the transformed bcc films is four to five times larger than the values extrapolated from the low thickness fcc Fe films. Similarly, Petitioner’s expert, Dr. Sinclair, merely states that the “structural transition includes symmetry breaking and causes ‘[t]he magnetization of the transformed bcc Fe films [to sharply increase by] about four to five times larger than the extrapolated value from the low thickness fcc Fe films.”. Ex. 1006, ¶ 52. Dr. Sinclair’s testimony is conclusory and does not present a factual basis for us to conclude that Shen’s increase in magnetization is due to symmetry breaking. Thus, Petitioner has not shown sufficiently whether the increase in magnetization is due to symmetry breaking or a transition from an fcc to a bcc structure.” slip op. at 8
§ 103 obviousnessPatents in suitUS 7,128,988 - Fresenius Kabi USA LLC v. Cubist Pharmaceuticals LLCInstitution deniedPTAB · Jan 28, 2016 · IPR2015-01572 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the cited purification methods would yield claim 91’s required purity from each of impurities 1–14.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner does not provide sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9
- BurdenNot shown unpatentable
“sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“daptomycin composition that is “essentially free” of impurities 1 to 14 in view of the disclosures of the ’843 patent, the ’226 patent, Mulligan, Lin II, and Lakey. Pet. 15–31. In support of this argument, Petitioner notes that daptomycin, or LY146032, is an antibiotic intended for therapeutic use. Pet. 19; Ex. 1007, 1:5–8, 1:36–38; Ex. 1005 ¶ 137. Given this therapeutic application, Petitioner contends a person of ordinary skill in the art would have been motivated to increase the purity of daptomycin compositions “as high as possible.” Pet. 24; Ex. 1005 ¶¶ 75 (asserting that high levels of purity for pharmaceutical preparations of antimicrobial agents would have been a target goal for one of ordinary skill in the art), 137. To achieve this goal, Petitioner contends a person of ordinary skill in the art would have accessed the “extensive tool-box” known in the art for purifying lipopeptide biosurfactants. Pet. 16–17, 23. In particular, Petitioner contends that one of ordinary skill in the art would have understood that the methods disclosed in the ’843 patent, the ’226 patent, Lakey, Mulligan, and Lin II could be used to obtain a daptomycin composition with a purity level exceeding 99%. Pet. 17–18, 20.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,058,238 - Servicenow, Inc. v. BMC Software, Inc.Institution deniedPTAB · Jan 26, 2016 · IPR2015-01601 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Conclusion Upon review of Petitioner’s analysis and the testimony of Dr. Lavian, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that independent claims 1 and 6, as well as claims 2–5, 7, and 9–12 depending therefrom, are unpatentable over Miller.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“proposed interpretation. The dictionary definitions submitted by Petitioner indicate that “accompanying” may have two potential meanings: physically going along with or being associated with. See Ex. 1011, 4. The term’s usage in claim 1 and the written description of the ’898 patent, however, indicate that the term was meant to mean the former. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms”); Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meaning”). First, claim 1 recites “collecting performance management data having accompanying meta data, the meta data including . . . information indicating operations to be performed on the performance management data,” and “generating output data for display using the collected performance management data according to the information indicating the operations to be performed on the performance management data.” Thus, the performance management data is collected, and that data has accompanying meta data. Reading the claim language in context, the phrase “collecting performance management data having accompanying meta data” suggests that the meta data accompanies the performance management data when the step of collecting is performed (i.e., the meta data travels together with the performance management data being collected). Both the performance management data and the accompanying meta data are collected together in the first claim step, and then output data is generated based on the performance management data “according to” a portion of the meta data in the second step. Interpreting claim 1 to mean that the meta data physically goes along with the performance management data when the performance management data is collected is consistent with the surrounding language of the claim.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“claim 1. Pet. 20–28. For example, Petitioner identifies the data provided by the traceroute-helper script (i.e., a 1 if the gateway is working or a 0 if not) in Miller as “performance management data.” Id. at 20–21 (citing Ex. 1003, 10, 16–17). 4 Although Petitioner’s asserted ground as to independent claims 1 and 6 is based on obviousness under 35 U.S.C. § 103(a), Petitioner argues in its Petition that Miller discloses every limitation of the claims, then includes a single sentence stating that Miller “discloses or suggests” every limitation. Pet. 28, 43. Patent Owner contends that the Petition should be denied because Petitioner fails to identify differences between the claimed invention and the prior art under Graham v. John Deere Co., 383 U.S. 1 (1966), and fails to provide any reason why a person of ordinary skill in the art would have modified Miller. Prelim. Resp. 1–9. We need not reach these issues, however, as Petitioner’s asserted ground fails for other reasons explained herein.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“claim 1. Pet. 20–28. For example, Petitioner identifies the data provided by the traceroute-helper script (i.e., a 1 if the gateway is working or a 0 if not) in Miller as “performance management data.” Id. at 20–21 (citing Ex. 1003, 10, 16–17). 4 Although Petitioner’s asserted ground as to independent claims 1 and 6 is based on obviousness under 35 U.S.C. § 103(a), Petitioner argues in its Petition that Miller discloses every limitation of the claims, then includes a single sentence stating that Miller “discloses or suggests” every limitation. Pet. 28, 43. Patent Owner contends that the Petition should be denied because Petitioner fails to identify differences between the claimed invention and the prior art under Graham v. John Deere Co., 383 U.S. 1 (1966), and fails to provide any reason why a person of ordinary skill in the art would have modified Miller. Prelim. Resp. 1–9. We need not reach these issues, however, as Petitioner’s asserted ground fails for other reasons explained herein.” slip op. at 12
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,816,898 - Apple Inc. v. THX Ltd.Some claims unpatentablePTAB · Jun 9, 2015 · IPR2014-00235 · APJ Brian P Murphy · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over Tomonori and Sadaie; claim 3 was not shown unpatentable over Tomonori, Virva, and Sadaie.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In sum, the ’483 patent describes and claims a sound reflecting surface that redirects sound waves output from the speaker towards the elongate output slot, whereas sound damping material absorbs standing waves inside the sound duct. The ’483 patent goes to great lengths to distinguish a sound reflecting surface from a sound damping surface. Furthermore, given that “sound damping material” is different from a “sound reflecting surface” and both are recited as separate claim limitations, it follows that a sound reflecting surface is not made of sound damping material. For the reasons given above, we construe “sound reflecting surface,” in the context of claim 1 and in light of the ’483 patent specification, as “a surface that redirects sound waves output from a speaker, not made of sound damping material.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other Terms Petitioner proposes to construe additional claim terms. Pet. 11–14. We determine that no express construction of these additional terms is necessary for purposes of this decision.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“suppress standing waves inside a duct. Pet. 44 (citing Ex. 1002 ¶ 112). Dr. Vipperman identifies the reason for Sadaie’s use of side wall sound damping as enabling “the sharpness of a fundamental wave resonance of a standing wave determined by the length of the sound path . . . to be suppressed because a substantial length of the sound path cannot be primarily determined.” Ex. 1002 ¶ 112 (citing Ex. 1003, 14). We agree with Petitioner’s reasoning, therefore, that “[e]xtending the damping material of Tomonori along the sidewalls of the duct,” as taught by Sadaie, would have been one of a limited number of known solutions further minimizing the presence of spurious resonances and standing waves inside the duct. Id. at 45 (citing Ex. 1002 ¶ 113). The quoted statements of Petitioner and Dr. Vipperman with respect to Tomonori and Sadaie are consistent with the principles set forth in KSR.10 Petitioner and Dr. Vipperman provide an analysis of why one of ordinary skill in the art of speaker design would have been motivated by Sadaie’s disclosure of side wall sound damping to modify Tomonori’s narrow sound duct, such that sound damping material forms the sides of the sound duct but not the bottom (sound reflecting) surface. In particular, Dr. Vipperman’s Declaration provides a sufficient analysis to support the obvious modification of Tomonori’s narrow profile speaker, by a speaker designer of ordinary skill, such that “sound damping material form[s] sides of the sound duct” to help suppress the presence of spurious resonances and standing waves inside the duct. Ex. 1002 ¶¶ 112, 113.” slip op. at 28
Patent outcomesUS 7,433,483 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,433,483 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047
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.