- PTAB · Dec 8, 2023 · IPR2023-00998 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–3 over all six 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
“and accompanying evidence under 35 U.S.C. § 314. An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition and Preliminary Response, Reply, and Sur-Reply, we determine that Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’880 patent is unpatentable. Accordingly, we institute an inter partes review as to all the challenged claims of the ’880 patent on all the grounds of unpatentability set forth in the Petition. We note that there are disputed issues in this proceeding under 35 U.S.C. § 325(d) and § 314(a) concerning discretionary denial; however,” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not presently dispute this definition “except to clarify that the POSA would have at least two years of experience in engineering monoclonal antibodies for human therapeutic use, either in the laboratory or industry.” Prelim. Resp. 48; see also id. at 48–49 (arguing that Petitioner cannot prove unpatentability of the challenged claims under either party’s definition). 23 At this stage in the proceeding, we accept and use Petitioner’s proposed definition of the skilled artisan, as being both (largely) unopposed by Patent Owner and inclusive of Patent Owner’s additional qualification. In this respect, it appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” encompasses Patent Owner’s proposed modification, and is consistent with the level of skill in the art reflected in the prior art of record. 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)). Our decision whether to institute, however, does not turn on which party’s definition of the skilled artisan is used, and our determinations would be unchanged if we applied Patent Owner’s definition. Further, we note that evidence may be presented as the case progresses to support some other proposed definition of the skilled artisan, which may influence our determination of this issue. C. Claim Construction” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Neither party requests the construction of any claim term. See, e.g., Pet. 18. We need only construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage in the proceeding, we find it unnecessary to construe the language of any challenged claim because the claim language is readily understandable to the person of ordinary skill in the art on its face, within the context of the claims.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“TPO mimetic peptide graft in Fab clone X4b has been transplanted into the heavy chain CDR3 region of another antibody framework, 5G1.1. . . . Construction of 5G1.1 is described in U.S. Application Ser. No. 08/487,283, incorporated herein by reference.” Prelim. Resp. 50 (emphasis added); Ex. 1004 ¶ 191. It is not disputed here that U.S. Patent Application 08/487,283 issued as Evans. See Ex. 1005, code (21); see generally Prelim. Resp. The portion of Evans relating to “Construction of 5G1.1” (Ex. 1004 28 ¶ 191, emphasis added) appears to be (or at least includes) Example 11, which is titled “Construction and Expression of Recombinant mAbs.” Ex. 1005, 42:55–58 (emphasis added). According to Dr. Ravetch, “Evans’[s] Example 11 teaches construction of . . . humanized 5G1.1 scFv constructs.” Ex. 1003 ¶ 177. And, none of the other Evans Examples addressing an anti- C5 antibody or a 5G1.1 antibody designate their respective disclosure as relating to “construction,” as per the title of Example 11 and the sentence of Bowdish expressly incorporating Evans. See Ex. 1005, 33:1–42:54 (Examples 1–10); Ex. 1003 ¶ 177. Thus, on this record, we find that Petitioner’s pointing to the antibodies (or fragments) of Evans’s Example 11 for use as a starting point for Bowdish’s invention to be more reasonable than Patent Owner’s arguments that antibodies would have been selected from some other Example. Furthermore, Patent Owner does not dispute that, if Bowdish and Evans are read as asserted by Petitioner and Dr. Ravetch, the antibody sequences of claim 2, i.e., SEQ ID NO: 2 and SEQ ID NO: 4, are disclosed. Petitioner’s reading is also consistent with the Specification of the ’880 patent, which cites Evans (among others) for the proposition that “[s]uitable anti-C5 antibodies are known to those of skill in the art” and, in particular, that Evans discloses “antibodies which are specific to human complement . . . . includ[ing] a preferred whole antibody (now named eculizumab),” and “methods of engineering such antibodies.” Ex. 1001, 10:57–65, 12:13–21, 12:43–47. Therefore, we do not find any error in Petitioner’s assertion that Bowdish/Evans discloses the antibody of claim 2.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,718,880 - PTAB · Dec 8, 2023 · IPR2023-00933 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claim 1 under all four asserted grounds, finding a reasonable likelihood that the claim is anticipated or obvious.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposed definitions of the ordinarily skilled artisan are very similar, except that Patent Owner’s description more-specifically defines the field of experience of the artisan. At this stage in the proceedings, we accept and use Petitioner’s proposed definition of the ordinarily skilled artisan, as being both generally unopposed by Patent Owner and inclusive of Patent Owner’s supplemental definition. It appears that Petitioner’s language “at least two years of experience in the discovery, development, and design of therapeutic antibodies for use as potential treatments in human disease” includes Patent Owner’s proposed level of experience. Pet. 12–13. We also take into account the level of skill in the art reflected in the prior art of record. 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)). Our decision whether to institute does not turn on which party’s definition of the skilled artisan is used, and our determinations would be unchanged if we applied Patent Owner’s supplemented definition. Further, we note that evidence may be presented as the case progresses to support some other proposed definition of the skilled artisan, which may influence our determination of this issue. C.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“CLAIM CONSTRUCTION Petitioner states, “Petitioner does not believe claim construction is necessary at this time.” Pet. 15. Patent Owner does not mention claim construction at this stage of the proceeding. See generally Prelim. Resp. At this stage in the proceedings, and for the purposes of this decision, we find it unnecessary to construe the language of claim 1 because the claim language is readily understandable on its face and there is no dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). As the case continues, we may determine that certain claim language should be interpreted. D.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In view of the unique record before us, we agree with Patent Owner that all of the references relied on by Petitioner here, “were previously presented to the Office” as required by § 325(d) and Advanced Bionics. Prelim. Resp. 19. Accordingly, we proceed to part two of the analysis.” slip op. at 55
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied
“DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) AND FINTIV Patent Owner points to § 314(a) as a basis for denying institution, but provides no substantive argument or evidence on this point. See Prelim. Resp. 17–32; see generally Prelim. Sur-Reply 6. Under certain circumstances, the Board may apply our discretion under 35 U.S.C. § 314(a) to deny institution in light of a parallel district court proceeding involving the same patent. See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). But, as noted by Petitioner, the patent at issue here “has never been asserted in any litigation.” Pet. 49. Accordingly, we also decline to exercise our discretion under Section 314(a) to deny institution.” slip op. at 61
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,732,149 - PTAB · Dec 8, 2023 · IPR2023-01017 · APJ Meredith C Petravick · IPR · Institution
The Board instituted review of claims 1–26 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“discretionarily deny institution under §314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Memorandum 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Such a stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id. Patent Owner contends that in light of “parallel District Court Litigation,” i.e., NorthStar Sys. LLC v. Bayerische Motoren Werke AG, No. 2:22-cv-00496-JRG (E.D. Tex.), the Fintiv factors weigh in favor of denying institution under 35 U.S.C. § 314(a). Prelim. Resp. 20–26. Petitioner responds that discretionary denial is not appropriate because it “has stipulated that if the Board institutes IPR on this Petition, it will not pursue 9 Available at: https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf or reasonably could have raised’ during this proceeding.” Pet. Prelim. Reply 1 (citing Sotera, Paper 12 at 18–19; Ex. 1021). Under the mandatory Fintiv guidance discussed above, this stipulation is dispositive. Memorandum 7. Patent Owner responds, however, that Petitioner “should not be credited with this stipulation as it has come at the eleventh hour.” PO Prelim. Sur-Reply 2. Petitioner submitted its Sotera stipulation to Patent Owner by email dated September 22, 2023, several days after Patent Owner filed its Preliminary Response.10 Patent Owner has not brought to our attention any binding precedent that establishes a time limit by which a Sotera stipulation must be submitted before we enter our decision on institution, and we are not aware of any such precedent. Nor does Patent Owner allege that it has been prejudiced by the timing of the stipulation.11 Therefore, we are not persuaded that we should disregard Petitioner’s Sotera stipulation because of its timing.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, 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 ’943 patent. Accordingly, we institute an inter partes review of claims 1–26 of the ’943 patent on the grounds asserted in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Second, Patent Owner improperly interprets the term “OVI” to require distance information. At the outset we note that Patent Owner has not expressly requested that any claim terms should be construed in this proceeding. See supra Section II.D. Patent Owner apparently reads the embedded term “vector” in isolation rather than as part of the term “object vector indicator.” See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.”); Trivascular, Inc. v. 13 Patent Owner alleges that “[t]he placement of the ‘south’ icon is likely hard coded as static information and therefore not computed by Kreitler.” Prelim. Resp. 12. This allegation is unsupported attorney argument to which we give little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). without considering the context in which those terms appear is not reasonable). Even if “vector,” read in isolation, means something akin to a “Euclidean vector” that would arguably contain both a “magnitude” (which we understand Patent Owner to mean distance) and a direction, an “OVI” would not necessarily contain this exact information. Moreover, defining “OVI” to contain both distance and direction would render superfluous the language in claim 1 that expressly requires the created OVI to “contain[] the distance . . . information.” See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (construing a claim in a way that renders a term superfluous is “a methodology that [our reviewing court] has denounced”). We discern no reason to limit the claim language in such a way. Construing “OVI” as a “Euclidian vector” that necessarily contains both distance and direction information would also be contrary to the ’943 patent’s written description. The written description indicates that the word “vector” is broader than “Euclidean vector,” in that it may simply be an “arrow” that is “pointing in the direction of the referenced remote location marker.” Ex. 1001, 3:66–4:4. The written description states that “[i]nformation displayed in the OVI . . . may include a vector (e.g. arrow) pointing in the direction of the referenced remote location marker, the distance and travel time to the remote location marker.” (Ex. 1001, 3:66–4:3 (emphasis added)), indicating that such information is optional rather than always present.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that the combination of Kreitler, Altman690, and Suomela teaches or suggests all of the limitations of claim 1, that the asserted references constitute analogous art, that the ordinarily skilled artisan would have had reason to combine the references, and such a person of ordinary skill would have had a reasonable expectation of success. Pet. 6– 22. Petitioner supports its contentions with citations to Kreitler, Altman690, Suomela, and Dr. Rosenberg’s declaration. Id. Turning to the elements of claim 1, Petitioner contends that Kreitler in combination with Altman690 teaches the preamble of claim 1 and limitations 1a, 1b, 1c, 1d, 1e and 1f. Pet. 23–32 (citing Ex. 1005, 1:38–46, 2:20–24, 5:36–37, 6:43–45, 6:50–55, 6:67–7:4, 10:27–29, 12:3–10, 12:16– 18, Figs. 1, 2, 4, 15; Ex. 1006 ¶¶ 8, 9, 41, 55, 77, Fig. 8B; Ex. 1003 ¶¶ 101– 114, 116–118). Petitioner contends, for example, that Kreitler’s special icon 110 corresponds to the claimed OVI that is placed in a position corresponding to an off-map MO. Id. at 23–24 (citing Ex. 1005, 6:43–62, Fig. 1; Ex. 1003 ¶ 97). Petitioner further contends that “Altman690 discloses a social-networking system for displaying electronic maps with icons representing real-time locations of social network users and POIs.” “a POSITA would have found it obvious and advantageous to include Altman690’s social-networking functionality within Kreitler’s location-based items to enable sharing/accessing POIs between users.” Pet. 11 (citing Ex. 1003 ¶ 68). For limitations 1e and 1g, Petitioner relies on Kreitler individually and in combination with Suomela. Pet. 29–30, 32–34 (citing Ex. 1005, 5:36–41, 6:43–45, 6:51–57, Fig. 1; Ex. 1007, Abstract, 2:1–15, 4:34–41, Fig. 5; Ex. 1003 ¶¶ 115, 119–123). Petitioner asserts, for example, that Suomela “expressly discloses displaying both distance and travel-related information,” and specifically discloses “‘a digital map’ including objects ‘in a peripheral portion’ representing off-map locations, placed according to the direction to the off-map locations.” Id. at 33 (citing Ex. 1007, Abstract, 2:1–15, 4:34–41, Fig. 5; Ex. 1003 ¶¶ 121–122). According to Petitioner, “[a] POSITA would have been motivated to add Suomela’s distance and travel-related information to Kreitler[’s OVI] to provide further helpful information to a user.” Id. at 33 (citing Ex. 1003 ¶ 123). Petitioner further contends that: The ’943, Kreitler, Altman609, and Suomela are all in the field of mapping on electronic devices. All four address the known problem of displaying MO information, with Kreitler, Altman609, and Suomela disclosing known solutions, the combination of which yields predictable results. Therefore, it would have been obvious for a POSITA to combine Kreitler, Altman690, and Suomela for a more effective and efficient navigation system showing POIs on electronic maps.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,014,943 - PTAB · Dec 8, 2023 · IPR2023-00934 · APJ Meredith C Petravick · IPR · Institution
Instituted IPR of claims 1–30 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable, including claims 1, 13, and 18 over Kreitler and Suomela.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“(setting out six nonexclusive factors that the Board may consider in determining whether to deny institution because of a parallel district-court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s June 21, 2022 Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memorandum”).11 The Memorandum sets forth, inter alia, that the Board will not discretionarily deny institution under §314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Memorandum 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Such a stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments, based on the record before us at this stage of the proceeding, we determine that Petitioner has shown a reasonable likelihood that claim 1 is unpatentable over Kreitler and Suomela.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Second, Patent Owner improperly interprets the term “OVI” to require distance information. Patent Owner apparently reads the embedded term “vector” in isolation rather than as part of the term “object vector indicator.” See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.”); Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (construing claim terms without considering the context in which those terms appear is not reasonable). Thus, even if “vector,” read in isolation, means something akin to a “Euclidean vector” that would arguably contain both a “magnitude” (which we understand Patent Owner to mean distance) and a direction, an “OVI” would not necessarily contain this exact information. Moreover, defining “OVI” to contain both distance and direction would render superfluous the language in claim 1, limitation 1d, that expressly requires the created OVI to “contain[] the distance . . . information.” See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (construing a claim in a way that renders a term superfluous is “a methodology that [our reviewing court] has denounced”).” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“1d. Pet. 6–14, 19–22. Petitioner argues that Kreitler “teaches [1c] via determining navigational information including distance and direction (distance and travel-related information) to an item of interest (MO)” (id. at 19 (citing Ex. 1005, 5:36–41, 6:43–45, 7:5–31; Fig. 1)) and “discloses creating and displaying a special icon (OVI) indicating an off-map MO including the direction of the MO (travel-related information)” (Pet. 19 (citing Ex. 1005, 6:51–57)). Petitioner indicates that Kreitler does not expressly disclose OVI’s that contain distance-related information. Pet. 8. Petitioner contends that Suomela discloses displaying objects representing geographic points of interest that indicate direction and distance from the center of the map. Pet. 9 (citing Ex. 1006, Abstract 2:1–13, 4:34–56; Ex. obvious and advantageous to include distance indicators, as taught by Suomela, within Kreitler’s special icons to provide a user the distance from a position within the selected map to off-map POIs referenced by special icons.” Pet. 11 (citing Ex. 1003 ¶ 66). Based on the current record, and taking into account Patent Owner’s arguments, which we discuss below (see, supra, § II.E.4) we agree with Petitioner that a POSITA would have been motivated to include Suomela’s distance indicators within Kreitler’s special icons in order to advantegously provide distance information to a user. Ex. 1003 ¶ 66. We determine that Petitioner’s analysis and evidence sufficiently shows that the combination of Suomela and Kreitler discloses these steps.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,478,527 - PTAB · Nov 17, 2023 · IPR2023-00884 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR of claims 1–30 on every asserted ground, 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
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the preliminary record, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’572 patent is unpatentable under the presented grounds. Therefore, we grant institution of inter partes review. We note that there are disputed issues in this proceeding under 35 U.S.C. § 325(d) and § 314(a) concerning discretionary denial; however, we determine institution should be not be denied. See Pet. 63–68; Prelim. Resp. 49–62. Our reasoning is discussed below.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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.” slip op. at 67
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Petitioner that the Examiner committed error in failing to make any rejections over the references asserted here. As noted above, certain of Petitioner’s grounds for unpatentability present compelling merits and had the Examiner correctly evaluated the asserted references, a rejection under § 102 or § 103 would have been made. Accordingly, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 3. Summary For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 77
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,253,572 - PTAB · Nov 9, 2023 · IPR2023-00890 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–30 on all asserted grounds, finding a reasonable likelihood that claims 1–30 would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“same parties and invalidity challenges. Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 at 5–6, 12-13 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) (setting out six nonexclusive factors that the Board may consider in determining whether to deny institution because of a parallel district-court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s June 21, 2022 Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memorandum”).8 The Memorandum sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Memorandum 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Such a stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 Petition, Preliminary Response, Preliminary Reply, Preliminary Sur- Reply, and the present record, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–30 of the ’297 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“See IGT v. Bally Gaming Int'l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.”); Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (construing claim terms without considering the context in which those terms appear is not reasonable). Thus, even if “vector,” read in isolation, means something akin to a “Euclidean vector” that would arguably contain both a “magnitude” (which we understand Patent Owner to mean distance) and a direction, an “OVI” would not necessarily contain this exact information. Moreover, defining “OVI” to contain both distance and direction would render superfluous the language in claim 1 that expressly requires the created OVI to “contain[] the distance . . . information.” See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (construing a claim in a way that renders a term superfluous is “a methodology that [our reviewing court] has denounced”). Construing “OVI” as a “Euclidian vector” that necessarily contains both distance and direction information would also be contrary to the ’297 patent’s written description. The written description indicates that the word “vector” is broader than “Euclidean vector,” in that it may simply be an “arrow” that is “pointing in the direction of the referenced remote location marker.” Ex. 1001, 3:43–45. The written description states that “[i]nformation displayed in the OVI . . . may include a vector (e.g. arrow) pointing in the direction of the referenced remote location marker, the distance and travel time to the remote location marker, etc.” (Ex. 1001, 3:43–46 (emphasis added)),12 indicating that such information is optional rather than always present.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in Computer or Electrical Engineering or equivalent engineering discipline, and approximately three years’ experience in telecommunications, navigation, or geolocation systems,” but “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 3–4. Patent Owner does not oppose Petitioner’s contention. See Prelim. Resp. 6 (stating that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art”). At this stage of the proceeding, we adopt Petitioner’s unopposed definition for purposes of this Decision. We also look to the cited prior art references as evidence of the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,032,297 - PTAB · Oct 20, 2023 · IPR2023-00739 · APJ John G New · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 10–12, 18, 19, 21, and 26–28 are obvious over the 2009 Press Release and Shams.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Release nor Shams expressly teaches the dosing regimen of “2 mg approximately every 4 weeks for the first 5 injections followed by 2 mg approximately once every 8 weeks or once every 2 months,” as recited in the independent claims. However, the question guiding our analysis is not one of anticipation, but of obviousness. Specifically, the question is whether the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR, 550 U.S. at 406. We therefore turn to that analysis.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We conclude that, on the record as presently developed, Petitioner has demonstrated a reasonable likelihood of success in demonstrating that a person of ordinary skill in the art would have found it obvious to modify the dosage regiment of the 2009 Press Release by adding a single dose at week twelve, in view of the teachings of Shams, to arrive at the claimed invention. We find that a person of ordinary skill in the art would have considered this addition of a single dose to be routine optimization to ensure, as Dr. Chaum relates, “to determine the optimal number of initial injections, before moving to eight-week dosing.” Ex. 1002 ¶ 151. Furthermore, and at this stage of the proceeding, we agree with Petitioner that a person of ordinary skill in the art would have had a reasonable expectation of success in modifying the 2009 Press Release dosing protocol to include an additional dose at week twelve to ensure sufficient “drying” of the inner wall of the retina prior to increasing the interval of the doses two eight weeks/two months.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“claimed method. A reference teaches away when “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner points to Shams’ Example 1, which it cites as representing Genentech’s PIER Phase IIIb study. See Prelim. Resp. 18. The PIER study, argues Patent Owner involved three monthly loading doses of a different VEGF antagonist (ranibizumab) followed by quarterly dosing, and, according to Patent Owner, was widely perceived as a failure. Id. Patent Owner contends that, based upon this single example, a person of ordinary skill in the art would have been discouraged from following the teachings of Shams. Id. We disagree. As we have explained above, the disclosures of Shams encompass a larger variety of regimen options than merely that embodied in Example 1. Shams is directed expressly to “methods including administering … a number of first individual doses of a VEGF antagonist, followed by administering … a number of second individual doses of the antagonist, wherein the second individual doses are administered less frequently than the first individual doses.” Ex. 1010, 4–5; see also id., claim 1. Furthermore, Shams expressly teaches that “[t]he doses may be administered according to any time schedule which is appropriate for treatment of the disease or condition.” Id. at 22. We find that these broad teachings of Shams would, rather than discouraging a skilled artisan from following its teachings, encourage a person of ordinary skill in the art to optimize the number of first and second individual doses to maximize the therapeutic effect of the regimen of VEGF antagonist dosage administration. Shams places no express limits upon the number of first individual doses and, as we have explained above, the addition of a single additional dose at week twelve would fall well within the scope of Shams’ disclosures.” slip op. at 38
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“A method for treating….” Petitioner initially accepts, for the purposes of this Decision, that the preamble of claim 1 is limiting, and agrees with the Board’s prior rejection, in the related IPR2021-00881 Final Written Decision, of Patent Owner’s position that the preamble requires a particular level of efficacy. Pet. 16 (citing Ex. 1002 ¶¶ 82–91). Specifically, Petitioner notes that the Board found that administering a compound—the recited VEGF antagonist—“to [a] patient for the purpose of improving or providing a beneficial effect on their angiogenic eye disorder” satisfies the “treating” portion of the preamble. Id. at 17 (quoting Ex. 1025, 19; and citing id. at 23; Ex. 1053, 9– 10; Ex. 1054). Patent Owner states that, for the purposes of this Decision only, it does not contest Petitioner’s proposed construction. Prelim. Resp. 11. Therefore, for the same reasons we explained in the Final Written Decision in related IPR2022-00881 concerning a related patent having claims with language similar to the presently challenged claims, and for the purposes of this Decision, we adopt Petitioner’s proposed construction of “a method for treating….” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,888,601 - Orthocision, Inc. v. Pain Teq, LLCInstitutedPTAB · Sep 20, 2023 · IPR2023-00625 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, 9, and 10 over all five asserted § 103 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
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it will prevail in showing that at least one challenged claim of the ’129 patent is unpatentable under the presented grounds. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties appear to largely agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience; the disagreement being on the precise type and focus of that experience. Each party cites only its witness’s definition of the ordinarily skilled artisan as support for its proposed definition. Neither party nor their witnesses cite any further supporting evidence for their proposed definitions.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Considering the parties’ proposed interpretations, we find Petitioner’s unsupported on the current record. The portion of the ’129 patent’s written description and Petitioner’s proposed interpretation of “open tip” share little in common, for example, the Specification does not mention “an exposed tapered edge,” much less, suggest that the term “open tip” requires such. See Pet. 19. On the other hand, Patent Owner’s proposed interpretation is more supported in view of the ’129 patent’s Specification and the plain language of the claim as some sort of “opening” seems necessary for an “open tip.” Prelim. Resp. 10. However, Patent Owner appears to read too much structure from the written description into the claim language as a limitation because it is not apparent that an “open tip” requires all the structural features proposed by Patent Owner, i.e., the distal end of the abrading head has a leading edge that encloses the opening. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988). The claim terms “open” and “tip” and their combination, “open tip,” are common words, used in their ordinary way, and are understandable on their face. And, what the ’129 patent’s written description makes clear is that the abrading head of the invention has a void (some empty space) and that the tip of the abrading head is open to that void. See Ex. 1001, 6:14–50. This would include, but is not limited to Patent Owner’s proposed tip where the leading edge entirely encloses the void. Thus, we interpret the claim term “open tip,” consistently with the” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112(6)) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties appear to agree that this is a means plus function limitation. See Pet. 19–20; Prelim. Resp. 10–19. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a component element of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,020,129 - Apotex Inc. v. Cellgene CorporationInstitutedPTAB · Jul 20, 2023 · IPR2023-00512 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, 6–9, 11–28, 32–36, and 38–43 on all asserted grounds, finding a reasonable likelihood of success on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in showing that at least one of claims 1, 2, 6–9, 11–28, 32–36, and 38–43 of the ’628 patent is unpatentable over the cited prior art. Our decision derives from our review of the preliminary record before us. Accordingly, we institute inter partes review of each challenged claim the ’628 patent on each of the grounds asserted by Petitioner. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that the Petition is granted and we institute inter partes review of claims 1, 2, 6–9, 11–28, 32–36, and 38–43 of the ’628 patent based on the grounds asserted in the Petition.” slip op. at 53
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “[w]hen the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term.” Multiform Dessicants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998). We agree with the parties that the ’628 patent expressly defines this term in stating “[t]he term ‘non-enteric-coated,’ when used herein, refers to a pharmaceutical composition, formulation, or dosage form that does not comprise a coating intended to release the active ingredient(s) beyond the stomach (e.g., in the intestine),” and we adopt this express definition herein with regard to “nonenteric coated tablet.”9 Ex. 1001, 11:42–48 (emphasis added).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“to, and sometimes associated with, but not identical to the claim term “subject”), which appears in claims 11, 12, 18–22, and 38–43, means “a human or other animal who received the recited pharmaceutical composition in connection with a test of the recited parameter.” Prelim. Resp. 18–19 (also asserting Petitioner does not appear to dispute this construction). We first note that the term “test subject” appears in the ’628 patent only in the claims. See generally Ex. 1001. However, we find Patent Owner’s definition comports with the Specification’s express definition of “subject,” a term the Specification appears to use synonymously with the claim term “test subject” and the word patient, and that Patent Owner’s definition adds that the subject received the pharmaceutical composition in connection with a test of the recited parameter, which we find to be a reasonable interpretation of the claim term “test subject,” in accordance with the plain language of the claims on their face, and as supported by the relevant portions of the Written Description that describe testing parameters relating to drug administration. Ex. 1001, 35:45–36:62, 67:61–81:48. We adopt Patent Owner’s definition herein.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). However, “‘[i]nherency . . . may not be established by probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (citations omitted, alterations in original). “The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.” Scaltech Inc. v. Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999). slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,846,628 - Ford Motor Company v. Safe Driving Technologies LLCSome claims unpatentablePTAB · Mar 10, 2023 · IPR2021-01446 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–4, 6, 10, 12–14, 16, 17, and 19–21 are unpatentable under §103; claim 15 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Our rules and Consolidated Trial Practice Guide are clear on this prohibition. And, the Consolidated Trial Practice Guide explains: “[w]here a party believes it has a basis to request relief on a ground not identified in the rules, the party should contact the Board and arrange for a conference call with the Board and opposing party to discuss the requested relief with the judge handling the proceeding.” CTPG 75. Thus, the Board identifies appropriate ways for a party to address matters that it considers to be beyond the specific procedures outlined in the rules. Merely submitting new evidence was not authorized by Board rules or guidance and Patent Owner did not seek authorization to file the new evidence. The facts warrant excluding Exhibits 2030–2032 and we grant the Motion. See CTPG 81.” slip op. at 83
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“underpinnings, why a person of ordinary skill would have been motivated to modify the prior art to achieve the claimed invention. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner . . . must . . . articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” (citing KSR, 550 U.S. at 418)). Nonetheless, “a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792 (CCPA 1982)); see also Application of Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]his court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art. The justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the ‘ultimate or epitome of obviousness.’” (citations and footnote omitted)).” slip op. at 14
Patent outcomesUS 9,047,170 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,047,170
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.