- PTAB · Mar 10, 2023 · IPR2022-01395 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood of success on at least one claim; it found Petitioner’s showing deficient for claims depending from claim 45.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the current record, we institute an inter partes review.” slip op. at 2
- BurdenMixed
“3. Independent Claim 45 – Means-Plus-Function limitations As we discuss above in connection with our claim construction analysis, we agree with Patent Owner’s argument that Petitioner’s treatment of the means-plus-function claim limitations of independent claim 45 is deficient. Petitioner fails to identify the specific structures associated with each means-plus-function term8. Accordingly, Petitioner cannot demonstrate that the prior art discloses the structure corresponding to each means-plus-function limitation, and, consequently, cannot demonstrate that independent claim 45 is unpatentable over the prior art.” slip op. at 43
- Parallel petitionsDecided for petitioner
“We determine that two petitions are appropriate in this case. We base our determination on the ambiguity in the prosecution history, where the Examiner seems to suggest that the second actuator must be a rotary actuator. See Ex. 1002, 280 (rejecting all of the pending independent claims and stating that Dubay10 (Ex. 1007, which the Examiner refers to as “Wo document ’117” or just “Wo document”) “discloses the invention substantially as claimed. However, Wo document lacks the second actuator being a rotary actuator” (emphasis added)). We also determine that instituting both petitions does not “place a substantial and unnecessary burden on the Board,” and Patent Owner does not argue that two petitions would place such a burden on Patent Owner. See CTPG 59.” slip op. at 47
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We find that neither the same or substantially the same art previously was presented to the Office nor the same or substantially the same arguments previously were presented to the Office. As an initial point, there is no dispute that Feliz was not before the Office. See Pet. 18 (“All the grounds rely on references never presented to the Office during prosecution and raise arguments never considered by the Office.”). The Examiner’s rejections during prosecution of the application that matured into the ’995 patent relied on Littman, which features a rotary actuator located just above the wheel at the lower part of its leg, to teach the second actuator. See Ex. 1002, 280–281; Ex. 2001, 4:13–32 (describing drive means 88), Figs. 1–5 (depicting drive means 88). The Petition relies on Feliz’s rotary actuator for the second actuator. Pet. 33–34. However, this is where the similarities between Feliz and Littman end. Feliz discloses an earth excavator with lifting columns. See Ex. 1012, 8:45–9:12; see also Pet. 26 (providing an annotated version of Feliz’s Figure 4, identifying a rotary actuator at the upper portion of a lifting column, over a ground engaging unit). In this way, Feliz is not cumulative of Littman. See Ex. 2001, 1:5–10 (describing Littman’s “prime mover,” which has “a plurality of elongated, segmented legs with individual steerable drive means on each so as to enable the prime mover to be easily moved to and positioned properly in a wide variety of environments and terrains”), Fig. 1 (showing the prime mover). The Examiner reasoned that a person having ordinary skill in the art would have looked to Littman’s rotary actuator as the second actuator. Ex. 1002, 280–281. The Applicant argued that Littman does not suggest spacing its rotary actuator apart from a first actuator or have a lifting column. In contrast, Petitioner directs us to express disclosures in Feliz of a lifting column and the second actuator positioned near the top of a lifting column, such that it is spaced apart in the vertical direction from Bitelli’s first actuator. See Pet. 29, 35. As such, little overlap exists between the arguments made during prosecution and the arguments in the Petition. For the reasons discussed above, we find that Part One of the” slip op. at 51
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,523,995 - PTAB · Jan 24, 2023 · IPR2022-01248 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on all presented grounds for claims 1–21 and 23–30, finding a reasonable likelihood of proving at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–21 and 23–30 of the ’653 patent on all presented challenges. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). B.” slip op. at 4
- BurdenMixed
“For the reasons above, based on the present record, Petitioner’s arguments do not show adequately that Yegoshin would have been understood to have multiplexed signals, or that Bernard “includes or operates as a multiplexer for combining the data packets” (Pet. 37). Because Petitioner does not sufficiently show multiplexed signals in any of the asserted references, Petitioner does not provide enough argument and evidence that its proposed combination of Yegoshin, Johnston, Billström, and Bernard would have “a single interface comprised of multiplexed signals from the plurality of wireless transmit and receive components,” as required by claim 1. For these reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove claim 1 unpatentable over the combination of Yegoshin, Johnston, Billström, and Bernard. For the same reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove dependent claims 2–13 unpatentable over the combination. However, because claim 1 will remain in the proceeding under SAS, we also provide our preliminary views on the dependent claims.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim Construction Petitioner states that “no formal claim constructions are necessary in this proceeding.” Pet. 2. Patent Owner does not propose an interpretation for any term but, as discussed below in Section II.D, argues that Petitioner should have disclosed and applied the claim constructions it has advanced in related litigation. At this preliminary stage, we determine that the record does not require use to resolve any claim construction dispute to decide whether or not to institute. 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)). C.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’653 patent and the prior art, we adopt it for purposes of this analysis. B.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,842,653 - PTAB · Jan 24, 2023 · IPR2022-01325 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–20; Petitioner showed a reasonable likelihood that claim 13 would have been obvious over Hakim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’930 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’930 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA”) would have had a bachelor’s degree in mechanical engineering or a related field, with at least two years of professional experience working in bottle manufacturing. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of bottle manufacturing, less professional experience is needed to attain the ordinary level of skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner proposes formal construction of any term. See Pet. 7; see also generally Prelim. Resp. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner gives no reason why a skilled artisan would have relocated Hakim’s air valve from the lower right corner (see Ex. 1005, Fig. 4e (depicting “vent” at the lower right corner)) to the location in Petitioner’s annotated figure, reproduced above and circled in red. We agree with Patent Owner that “Petitioner does not explain why its cherry-picked located marked by a red circle is consistent with Hakim’s directive to locate the air valve ‘at the bottom of the bottle nipple.’” Prelim. Resp. 15 (citation omitted); see also Ex. 1005, 13, 28. Although Mr. Goldman provides a reason why a skilled artisan would not have located the valve at the top of the teat (Ex. 1003 ¶ 81), Mr. Goldman provides no reason for relocating the valve to its proposed location. We further agree that the proposed location would appear to promote leaking by transplanting the air valve—‘a slit or cross-cut’ in a shallow surface depression . . . from a protected location at the ‘bottom rim,’ which is ‘covered by the hard portion of [a] screw cap,’ . . . to an exposed location amongst Hakim’s teething bumps, where the valve would be susceptible to inadvertent actuation by an infant squeezing or gnawing on the nipple. Prelim. Resp. 17 (citing Ex. 1005, 29–30). Accordingly, Petitioner fails to show a reasonable likelihood that a skilled artisan would have had reason to modify Hakim by relocating its vent valve to satisfy an “air valve extending through said nipple and disposed (i) radially inwardly from the collar and (ii) above the flange,” as recited in claim 1.” slip op. at 18
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,952,930 - Apple Inc. v. Aire Technology LimitedInstitutedPTAB · Jan 4, 2023 · IPR2022-01136 · APJ Brian J Mcnamara · IPR · Institution
Instituted IPR on all challenged claims and grounds: claims 1–3, 8–11, and 15, including grounds the Board found unlikely to succeed.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“exercise our discretion to deny the Petition in favor of the parallel Apple litigation identified above taking place in the U.S District Court for the Western District of Texas (“the Texas court”). Prelim. Resp. 1–10. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “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”: 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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). 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. We consider each of these factors below.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“Tobergte and O’Toole differ in two ways: (1) unlike Tobergte, O’Toole does not rely on magnetic coupling, and (2) unlike Tobergte, O’Toole deactivates its receiver, as well as its associated circuitry. Nevertheless, Tobergte discloses that its continuously operating receiver circuit “requires only a very small amount of electric energy” in much the same way that O’Toole’s continuously operating timer uses only a small amount of energy compared to the remainder of the integrated circuit. We further note that in both Tobergte and O’Toole, operation at normal power levels occurs after the receiver detects the presence of a valid data signal. We agree with Petitioner that a person of ordinary skill would have circuits would reduce power consumption. As discussed below, however, it is not clear why a person of ordinary skill would have reason to include O’Toole’s timer, which is active and therefore consumes power in the sleep mode, into Tobergte’s receiver, which, because it is passive, consumes very little power when not in the presence of a nearby data carrier. 3. Claim 8 Claim 8 depends from claim 1. Petitioner designates as claim limitation 8.1 the claim’ s sole recitation “wherein the switching apparatus has a time controller for cyclically switching the measuring device on and off.” Petitioner maps Tobergte’s receiver 36 to the claimed measuring device. Pet. 63 (citing Ex. 1005, 3:42–45, 4:11–14). Petitioner notes that Tobergte’s receiver circuit “is ‘continually kept in operation’ to monitor for voltage indicative of a nearby data carrier and activate the switch if such voltage is detected.” Id. (citing Ex. 1005, 4:4–11). Petitioner posits that a person of ordinary skill would have had reason to connect O’Toole’s wakeup timer between Tobergte’s receiver device and Tobergte’s switch to its energy source to form a more intelligent switching apparatus that cyclically activates and deactivates Tobergte’s receiver at periodic intervals. Id. at 65– 66. Although we agree with Petitioner that a person of ordinary skill would have understood that cyclically operating circuitry in a wireless data communications device reduces its power consumption and preserves battery life, it is not clear why an ordinarily skilled artisan would have had reason to apply O’Toole’s techniques to cycle Tobergte’s receiver on and off. Tobergte’s continuously operating receiver consumes little power when not in presence of a data carrier. Ex. 1005, 4:4–11. O’Toole’s timing circuit remains active and consumes power during the sleep mode. Ex. 1008, modification against each other, to determine whether there would be a motivation to combine. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000); see also Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331–32 (Fed. Cir. 2019). Petitioner has not explained why an ordinarily skilled artisan would have had reason to introduce additional complexity and power consumption to Tobergte by adding a power consuming sleep timer to periodically deactivate a receiver (the claimed measuring device) that itself consumes little power when not in the presence of a data carrier On the current record, we are not persuaded that Petitioner has demonstrated a person of ordinary skill would have combined the teachings of Tobergte and O’Toole to arrive at the limitations recited in claim 8.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,174,360 - PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution
Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,165,240 - Celltrion, Inc. v. Chugai Seiyaku Kabushiki Kaisa, Genentech, Inc., And Hoffmann La Roche Inc.InstitutedPTAB · Aug 31, 2022 · IPR2022-00578 · APJ Tina E Hulse · IPR · Institution
The Board instituted IPR of claims 1–12 on all asserted grounds, finding a reasonable likelihood of unpatentability for at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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). Upon considering the argument and evidence presented in the papers, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–12 of the ’264 Patent.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“is uncontested on this record, defining a “person” of ordinary skill in the art as a “team of individuals” (Pet. 27) is not conventional. We note that Petitioner’s experts provide an alternative definition for a person of ordinary skill in the art as someone who “would have had access to individuals skilled in clinical medicine, pharmacokinetics and formulation.” Ex. 1034 ¶ 49; Ex. 1032 ¶ 27; Ex. 1036 ¶ 27. We also note that in the currently pending related cases, IPR1288 and IPR1542, the Board found in its Decision on Institution that an ordinarily skilled artisan “would have been an individual with an M.D. specializing in the treatment of autoimmune disorders and having several years of experience treating patients with such disorders, including rheumatoid arthritis, or having several years of experience researching treatments for autoimmune disorders, including rheumatoid arthritis.” IPR2021-01288, Paper 30 at 6–7; see also IPR2021-01542, Paper 25 at 7–8. At this stage of the proceeding, we adopt our prior definition, with the further clarification that a person of ordinary skill in the art may alternatively (or also) have a Ph.D. and would have access to individuals skilled in clinical medicine, pharmacokinetics and formulation. We find this definition to be consistent with the prior art of record, which is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). The parties are invited to address this issue further during trial if the definition of the level of ordinary skill is in dispute.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“On this record at this stage of the proceeding, we find that if the preamble is limiting, we agree with Petitioner’s proposed construction and adopt that construction for the reasons stated in the Petition. Pet. 36–38. That is, if the preamble is limiting, we find the intrinsic evidence supports construing “method of treating” as “giving treatment, regardless of efficacy.” See Ex. 1001, 14:46–63 (describing “inadequate efficacy” to various “treatment”). We further note that the Specification defines “treatment” as referring “to both therapeutic treatment and prophylactic or preventative measures.” Ex. 1001, 15:1–2. The Specification then defines the term “effective amount” as “an amount of the antibody that is effective for treating the IL-6 disorder.” Id. at 15:3–4 (emphasis added). If “treating” the IL-6 disorder required efficacy, it would not be necessary for the Specification to define an “effective amount” for treating the disorder, as efficacy would be implicit in the “treatment.” Thus, although we need not address whether the preamble is limiting at this stage of the proceeding, we determine that if it is, the claimed “method of treating rheumatoid arthritis” need not be effective to fall within the scope of the claims.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner asserts NCT ’653 is a printed publication that was available on ClinicalTrials.gov before November 2009 and is therefore prior art under 35 U.S.C. § 102(b). Pet. 40. Petitioner explains that the posting renders NCT ’653 publicly available because “the very purpose of ClinicalTrials.gov is to make such trials as widely and promptly available to the public as possible.” Id. (citing Ex. 1035 ¶¶ 13–19, 23). At this stage of the proceeding, and absent a response from Patent Owner, we find Petitioner has shown sufficiently that NCT ’653 qualifies as prior art. 2. Analysis Anticipation requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). Moreover, to anticipate, a prior art reference must “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,580,264 - PTAB · Jul 11, 2022 · IPR2022-00324 · APJ Russell E Cass · IPR · Institution
Instituted IPR of claims 1–7, 9, and 11–16 on all grounds; Samsung showed a reasonable likelihood of proving at least one challenged claim unpatentable, and discretionary denial was unwarranted.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In weighing factor two, we follow the Interim Fintiv Guidance, which directs us to consider “the most recent statistics on median time-to-trial for civil actions in the district court in which the parallel litigation resides,” which is 24.2 months. Interim Fintiv Guidance 8–9. Applying this time period, the expected trial date would be in November 2023, which is several months later than the July 2023 due date for our final written decision in this case. We do not agree with Patent Owner that the median time-to-trial statistics are not relevant here because the parties can only move the trial date upon a showing of “good cause.” See PO Supp. Br. 1 (citing Ex. 2003, 1, 5). We also do not agree that the speculative possibility that the district court might grant summary judgment weighs in favor of exercising discretion to deny institution, particularly because Patent Owner has not provided any reason why summary judgment is likely in this case. See id. at 2. Consequently, we find that this factor weighs against exercising discretion to deny institution.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed
“Based on the present record, Petitioner has sufficiently shown that the preambles of independent claims 1, 11, and 14 are non-limiting. The preamble of claim 1 recites a “headset,” but the “headset” is not referenced in the body of that claim, which appears to recite a structurally complete invention. Similarly, the preambles of claims 11 and 14 recite an “earpiece,” but the body of those claims do not reference the “earpiece” and appear to recite a structurally complete invention. Additionally, the Examiner determined during prosecution that the terms “a headset” and “earpiece” recited in precursors to the independent claims “ha[ve] not been given patentable weight” because “the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause,” and the applicant did not dispute this determination. Ex. 1004, 69, 131. Thus, the preamble terms “headset” and “earpiece” appear to be more akin to the intended use of a structurally complete invention recited in the body of the claim than an “essential element” of the claimed invention that should be given patentable weight. However, we question whether Petitioner has sufficiently shown that the preambles of dependent claims 2, 3, and 16 are non-limiting. Each of these claims refers to the preamble in the body of the claim. For example, claim 2, states that the “event” of claim 1 “is a touching of the headset,” claim 3 states that the processor “triggers the event responsive to detecting an abrupt movement of the headset, or a change in location of the headset.” Similarly, claim 16 states that the “event” of claim 15 “is a touching of the earpiece” or “an abrupt movement of the earpiece.” In Arctic Cat, the Federal Circuit distinguished the non-limiting structural language in the preamble from a situation where preamble language “suppl[ies] ‘antecedent basis’ for terms in the body,” and identified this factor as one of “[t]he rules we have articulated about what preamble language reciting structure is limiting.” Arctic Cat, 191 F.3d at 1329. The parties may further address the issue of whether the preambles of the challenged claims are limiting during the trial.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Other than the preambles, the parties do not propose constructions for any other claim terms. Pet. 17; Prelim. Resp. 15. We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,254,591 - PTAB · Feb 8, 2022 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 on all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in a selected range of a maximum continuous power (MCP) level,” and “the second output power . . . being in a selected range of the MCP level to a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’459 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionTerm construed board ownOther
“We agree with Patent Owner that Petitioner has not explained sufficiently what a “maximum power output value” means in the context of the ’459 patent. Nor has Petitioner explained sufficiently why “maximum intermittent power” should be tied to the “maximum power output value.” In contrast, Patent Owner’s proposed construction is supported by the Specification, although we do not agree with the last clause of the construction because the references to “typical” values do not assist in understanding the claim language. Accordingly, for purposes of this Decision, we preliminarily construe “maximum intermittent power” to mean “an elevated operating output level that the pump unit may operate intermittently throughout its operating life without excessive damage to the pump unit.”” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham · NautilusPatents in suitUS 10,907,459 - PTAB · Nov 12, 2021 · IPR2021-00843 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all grounds for claims 1–17, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’023 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’023 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“For purposes of this Decision, we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’023 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the appropriate level of ordinary skill in the art may be reflected in “the prior art itself”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which demonstrates individuals having a broad array of scientific degrees that collaborate as a team. We note, however, that our decision to institute trial in this proceeding would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“On this record, we agree with Patent Owner that the disputed preamble phrase is limiting. “[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, the Examiner expressly allowed the claims in view of the Examiner’s Amendment changing “scanning system” to “cataract surgery scanning system,” thereby transforming this portion of the preamble into a limitation. Ex. 1006, 13, 15, 18; see Catalina Mkt’g, 289 F.3d. at 808. Furthermore, contrary to Petitioner’s arguments, the record appears to suggest that there are structural differences between the optical systems of cataract surgery systems on the one hand and corneal surgery systems on the other. See Ex. 2006, 5:30–36; Ex. 2009, 1209–10. Thus, on this record, we are not persuaded that the language added by the Examiner represents merely an intended use for the disclosed system. In view of the foregoing, for purposes of this Decision, we construe the preamble phrase “cataract surgery scanning system” recited in independent claims 1, 8, and 12 to be limiting.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The ’023 patent explains that a “cataract incision” is an incision created “to allow access for the lens removal instrumentation.” Ex. 1004, 10:17–19. The potential ambiguity in the claim comes, as Petitioner notes, from the fact that the cataract incision of claim 1 “only partially extend[s] through the target tissue,” which would not appear to provide immediate “access to an eye chamber of the patient’s eye.” Pet. 10; Ex. 1004, 10:19– 23, 14:15–21. Although somewhat ambiguous on its face, the prosecution history provides guidance as to how this claim phrase is to be interpreted. Phillips, 415 F.3d at 1317 (“Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.”). During prosecution, the Applicants explained that the invention allows “straight cataract incisions [to be] made at the correct location,” and that partially penetrating cataract incisions are advantageous because they allow the laser delivery system to be located in an “unsterile field,” with the final penetrating incision to be made “by a physician after a patient has been moved to a sterile field.” Ex. 1006, 52–53. The Applicants then explained that despite the fact that partially penetrating cataract incisions do not fully for the lens removal instruments,” as that term is used in the ’023 patent. Id. at 52 (noting the purpose of “partially penetrating cataract incisions” is “to allow access for lens removal instruments”), 55 (“In short, none of the cited art teaches . . . to deliver the first treatment pattern to the target tissue to form partially penetrating cataract incisions – i.e. incisions that allow access for the lens removal instruments.”). The Examiner agreed with this reasoning. Id. at 15 (agreeing that the prior art did not teach or suggest partially penetrating cataract incisions that provide “access to the eye chamber of the patient’s eye”). Given these disclosures, we agree with Patent Owner that “provides access to an eye chamber of the patient’s eye” in claim 1 means that the partial incision is a starting incision, made in the appropriate shape and location, that allows complete access for lens removal instrumentation when completed, for example, by the surgeon. In view of the foregoing, we construe the claim phrase “cataract incision therein that provides access to an eye chamber of the patient’s eye, the incision . . . only partially extending through the target tissue” to require “a partially penetrating cataract incision that, when completed by the” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,233,023 - PTAB · Oct 8, 2021 · IPR2021-00966 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one claim; it dismissed the renewed joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“light of trial dates that have been set in parallel litigations. See Fintiv, Paper 11 at 3, 5, 9. Where, as here, the trial date is approximately six months earlier than the projected date of our Final Written Decision, the Board has weighed this factor in favor of exercising discretion to deny institution. See id. at 9. Although the trial could be delayed (e.g., as a result of the COVID-19 pandemic), the record includes no evidence indicating that such a delay is likely, and we decline to speculate about the likelihood of such a delay. Therefore, we find that factor 2 weighs in favor of exercising our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion Petitioner’s assertions and explanations are consistent with and supported by the evidence cited by Petitioner. Moreover, Petitioner sufficiently explains why a person of ordinary skill in the art would have understood Chin to teach or suggest each limitation of claim 1. On the current record, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing that the subject matter of claim 1 would have been obvious over Chin.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’340 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Choi. See Ex. 1003 ¶ 26. For purposes of this Decision, we adopt Petitioner’s proposed level of skill. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingMixed
“On this record, we agree with Patent Owner.12 Claim 1 recites “[a]n integrated circuit package substrate comprising,” inter alia, “a plurality of rows of contact pads . . . for making a direct connection between the integrated circuit package substrate and a printed circuit board.” Ex. 1001, 6:36–43. The phrase “the integrated circuit package substrate” derives antecedent basis from the preamble. See id. Given the structure of this claim, we conclude that the preamble is limiting. See Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1371 (Fed. Cir. 2020) (“The fact that [two of] the terms [in preamble] . . . provide antecedent basis for these terms in the body of the claim is a strong indication that the preamble acts ‘as a necessary component of the claimed invention.’” (quoting Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003))); see also Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 1368 (Fed. Cir. 2020) (“While antecedent basis alone is not determinative of whether a preamble is limiting, use of preamble terms to define positive limitations in the body of claims can evince an inventor’s intent that the preamble limit the scope of the claim.”). This conclusion, however, does not apply to the other two independent claims of the ’340 patent. While independent claims 7 and 12 recite the same preamble as claim 1, the bodies of these claims do not rely on the preamble for antecedent basis. See Ex. 1001, 7:22–36 (no recitation of “integrated circuit package substrate” in body of claim 7), 8:8–21 (same 12 Petitioner has not yet had an opportunity to respond to this claim construction issue, but may do so in its reply brief at trial. for claim 12). Patent Owner provides (and we perceive) no other reason to conclude that the preamble of either of these claims is limiting. See Prelim. Resp. 12–13 (addressing preamble of claim 1, but not claims 7 and 12). Accordingly, on this record, we conclude that independent claims 7 and 12 are not limited by their preambles.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,049,340
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.