- 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 27, 2024 · IPR2024-00674 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claim 44 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01244 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims, and those claims appear on the present record to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—the use of Kawagoe in both petitions—is used in different prior-art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 16– 37. However, 35 U.S.C. § 315(b) also provides that the one year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Since the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01244), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, regardless of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - PTAB · Sep 27, 2024 · IPR2024-00673 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claims 1–9, 13–28, and 32–42 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01242 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims and, on the present record, those claims 8 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“CTPG”). appear to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—reliance on Kawagoe in both petitions—is applied in different prior art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“III. WHETHER THE PETITION IS TIME-BARRED Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 19– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01242), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“under the pre-AIA version of 35 U.S.C. § 112, first paragraph and found that “movement of minority carriers is affected by multiple forces and fields” and that “it does not appear that simply the presence of ‘a unidirectional drift field’ in itself can achieve ‘drawing all minority carriers from said surface layer to said substrate.’” Ex. 1016, 289 (emphasis added). Patent Owner responded with the following argument: [A] unidirectional drift (electric) field necessarily affects all the present minority carriers in the same way - moving all minority carriers in the same direction because of the unidirectional drift due to the existence of the electric field. See “Physics and Technology of Semiconductor Devices,” A.S. Grove, pp. 224– 225, John Wiley and Sons, Inc., New York, 1st Edition 1967 (“This same electric field will then be of such direction as to aid the motion of injected holes. Thus the injected minority carriers will now move not only by diffusion but also by drift due to the existence of this electric field.”). Depending on the particular slope of the graded concentration of dopant, all minority carriers are either swept “down” (from the surface layer to the substrate) or “up” (from the substrate to the surface layer). See Applicant’s Figs. 5(b) and 5(c). Id. Patent Owner further argued that the Examiner’s finding appears to not consider that the graded dopant concentration itself creates a “built-in” electrical field that forces the movement of carriers into a particular direction, whereby the “direction” of the electrical field and the resulting direction of the carrier movement depends solely on the slope of the graded concentration of dopant. With regard to the existence of a “built-in” electric field created by a graded dopant density, . . . this inherent “built-in” unidirectional electric field is the additional parameter for ensuring that all minority carriers are being moved in one direction and which parameter the Office Action deemed to be missing from the disclosure. Id. at 289–90 (emphases added). Also, “without conceding its position on this issue,” Patent Owner amended claims to eliminate reference to “all carriers” and instead, refer to “carriers.” 13 Id. at 290. 4. Analysis of Claim 1 At this stage of the proceeding, we determine that Patent Owner’s statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - PTAB · Sep 27, 2024 · IPR2024-00672 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01243 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1. We decline to further discuss the parties’ arguments or resolve any disputed issues as to challenges based on Kawagoe on this preliminary record, because the trial in the 1243 IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the 1243 IPR affords the parties better opportunity to brief, argue, and develop evidence in support of their positions. Thus, for the same reasons stated in our Decision on Institution in the 1243 IPR, we determine the Petition here warrants institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“deficient because Kawagoe’s disclosure of graded dopant concentration teaches impeding carrier movement rather than aiding it, as required by claim element 1.5. Prelim. Resp. 13–14. Patent Owner relies on Kawagoe’s disclosure that the concentration gradient prevents electrons from entering the p-well. Id. at 14 (citing Ex. 1007, 16:7–11). Patent Owner further argues Kawagoe’s carriers are not in the active regions, as required by claim element 1.5. Id. at 14–16 (citing Ex. 1003 ¶ 91, n.5). At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), included revisions to 35 U.S.C. §§ 102 and 103 that became effective in 2013, after the effective filing date of the challenged claims. See Ex. 1001, codes (22), (60). Therefore, we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103(a). 2 US 6,043,114, issued March 28, 2000 (Ex. 1007, “Kawagoe”). Petitioner asserts that Kawagoe is prior art under 35 U.S.C. § 102(b). Pet. 4. 3 US 6,163,877, issued December 19, 2000 (Ex. 1014, “Gupta”). Petitioner asserts that Gupta is prior art under 35 U.S.C. § 102(b). Pet. 5. 4 US 2003/0183856 A1, published October 2, 2003 (Ex. 1006, “Wieczorek”). Petitioner asserts that Wieczorek is prior art under 35 U.S.C. §§ 102(a),(e). Pet. 4. 5 Stanley Wolf and Richard N. Tauber, Silicon Processing for the VLSI Era, Vols. 1–4, Lattice Press (2000) (Ex. 1008, “Wolf”). Petitioner asserts that Wolf was published and publicly available no later than 2002, and is prior art under 35 U.S.C. § 102(b). Pet. 5 (citing Exs. 1012, 1013, 1036). Exhibit 1008 was submitted in four parts (A–D) and includes selected portions of Wolf. We cite to Wolf using its original page numbers and omit the exhibit part designations. Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 18– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01243), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner’s first argument is not persuasive because it is based on speculation that Petitioner “is trying to block settlement with any of these defendants unless [Patent Owner] also settles with” Petitioner. Opp. Mot. Join. 5. As discussed below, we determine that Patent Owner will not be prejudiced unduly by the joinder. Moreover, we note that even in a situation where the petitioner and patent owner in the proceeding to be joined had settled (Code200 v. Bright Data Ltd., IPR2022-00861, Paper 17 at 5 (PTAB July 25, 2022) (vacated)), the Director nevertheless vacated a decision to deny a motion for joinder. Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 at 7 (Office of the Director of the USPTO Aug. 23, 2022) (precedential); see also eBay, Inc. v. Lexos Media IP, LLC, IPR2024-00336, Paper 11 at 13–15 (PTAB Feb. 23, 2024). Patent Owner’s second argument is moot because Patent Owner’s Request for Director Review has been denied. 1243 IPR, Paper 43 (PTAB Apr. 24, 2024). Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1243 IPR. Specifically, we find that joining Petitioner to the 1243 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1243 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1243 IPR.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,510,842 - 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 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 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - 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 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). 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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artOther
“a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,554,910
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.