- PTAB · Dec 16, 2024 · IPR2024-00973 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on claim 4 over Reiner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We secondly conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera, Paper 12, at 13–14, 18–19; Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo, 3, 7–8. Thus, applying that guidance here, we do not deny institution in view of the Co-Pending Litigation.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude the preliminary record supports, sufficiently to justify institution, Petitioner’s contention that a person of ordinary skill in the art would have been motivated to configure Reiner’s gate/scanning driver 63 to include the ESD protection network structure illustrated in Figure 5. First, we agree with Petitioner’s position that Reiner discloses both of its display drivers 61 and 63 would benefit from ESD protection. That is, Reiner describes display drivers 61 and 63 as “typical example[s]” of integrated circuit devices that can benefit from utilizing Reiner’s bump bridge technology for providing ESD protection, due to the large number of parallel output lines that must cross power supply lines. See Ex. 1005, 4:15–16, 9:11–20 (describing Fig. 4), 12:4–5. Thus, based on this preliminary record, we disagree with Patent Owner’s position that Petitioner mischaracterizes Reiner’s teachings in this regard. Second, based on the preliminary record, Dr. Murphy’s testimony that the ESD protection network structure of Reiner’s Figure 5 would be suitable for implementing in Reiner’s gate/scanning driver 63 due to similarities between the two drivers is supported by the evidence sufficiently to justify institution. See Ex. 1003 ¶¶ 104–105, 111–120. A first similarity is Reiner’s indication that both display drivers 61 and 63 “have areas where the output or input metal lines have to cross power supply lines” Vdd and Vss. Ex. 1005, 9:11–20, 12:4–5, Fig. 3 (illustrating exemplary integrated circuit device 30 powered by supply voltages Vdd and Vss). A second similarity is Dr. Murphy’s testimony that, at least in some embodiments of Reiner’s gate/scanning driver 63, “each of the [scan] lines being driven will have its own semiconductor units . . . [that] drive that particular line,” akin to the individual output devices 70 and source lines 67 of Figure 5. Ex. 1003 ¶¶ 113, 117; see also Prelim. Resp. 21–22 (arguing “Reiner [discloses] that the gate driver integrated circuit comprises individual gate drivers” and “a POSITA would understand that individual gate/scan line drivers are coupled to one another”). These similarities between Reiner’s display drivers 61 and 63 support Dr. Murphy’s conclusion that Reiner’s bump bridge technology for providing ESD protection could and would have been implemented in Reiner’s gate/scanning driver 63 in the same fashion as illustrated in Figure 5 for Reiner’s source/data driver module 61. We appreciate, as Dr. Schubert testifies, that the individual circuits in gate/scanning driver 63 will drive their respective gate/scan lines 68 in different ways than the individual output devices 70 in source/data driver module 61 will drive their respective source/data lines 67. See Ex. 2001 ¶¶ 55–59. Nonetheless, based on the present record, we conclude such differences in the signal outputs of Reiner’s display drivers 61 and 63 have little to do with the benefits of configuring the power inputs of the display drivers to protect the individual circuits from electrostatic discharge events, or how to do so.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We conclude the preliminary record supports, sufficiently to justify institution, Petitioner’s contention that a person of ordinary skill in the art would have been motivated to configure Reiner’s gate/scanning driver 63 to include the ESD protection network structure illustrated in Figure 5. First, we agree with Petitioner’s position that Reiner discloses both of its display drivers 61 and 63 would benefit from ESD protection. That is, Reiner describes display drivers 61 and 63 as “typical example[s]” of integrated circuit devices that can benefit from utilizing Reiner’s bump bridge technology for providing ESD protection, due to the large number of parallel output lines that must cross power supply lines. See Ex. 1005, 4:15–16, 9:11–20 (describing Fig. 4), 12:4–5. Thus, based on this preliminary record, we disagree with Patent Owner’s position that Petitioner mischaracterizes Reiner’s teachings in this regard. Second, based on the preliminary record, Dr. Murphy’s testimony that the ESD protection network structure of Reiner’s Figure 5 would be suitable for implementing in Reiner’s gate/scanning driver 63 due to similarities between the two drivers is supported by the evidence sufficiently to justify institution. See Ex. 1003 ¶¶ 104–105, 111–120. A first similarity is Reiner’s indication that both display drivers 61 and 63 “have areas where the output or input metal lines have to cross power supply lines” Vdd and Vss. Ex. 1005, 9:11–20, 12:4–5, Fig. 3 (illustrating exemplary integrated circuit device 30 powered by supply voltages Vdd and Vss). A second similarity is Dr. Murphy’s testimony that, at least in some embodiments of Reiner’s gate/scanning driver 63, “each of the [scan] lines being driven will have its own semiconductor units . . . [that] drive that particular line,” akin to the individual output devices 70 and source lines 67 of Figure 5. Ex. 1003 ¶¶ 113, 117; see also Prelim. Resp. 21–22 (arguing “Reiner [discloses] that the gate driver integrated circuit comprises individual gate drivers” and “a POSITA would understand that individual gate/scan line drivers are coupled to one another”). These similarities between Reiner’s display drivers 61 and 63 support Dr. Murphy’s conclusion that Reiner’s bump bridge technology for providing ESD protection could and would have been implemented in Reiner’s gate/scanning driver 63 in the same fashion as illustrated in Figure 5 for Reiner’s source/data driver module 61. We appreciate, as Dr. Schubert testifies, that the individual circuits in gate/scanning driver 63 will drive their respective gate/scan lines 68 in different ways than the individual output devices 70 in source/data driver module 61 will drive their respective source/data lines 67. See Ex. 2001 ¶¶ 55–59. Nonetheless, based on the present record, we conclude such differences in the signal outputs of Reiner’s display drivers 61 and 63 have little to do with the benefits of configuring the power inputs of the display drivers to protect the individual circuits from electrostatic discharge events, or how to do so.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’157 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, physics, or a similar field and at least two years of experience designing semiconductor display devices, including LCD displays,” and “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 15–16; Ex. 1003 ¶¶ 75–76. “Patent Owner does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 14; Ex. 2001 ¶¶ 19–20. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’157 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,184,157 - Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.All claims unpatentablePTAB · Nov 27, 2024 · PGR2022-00025 · APJ Susan L C Mitchell · PGR · Final written decision
Claims 1–19 are unpatentable because the ’201 patent lacks written description support for the claimed genus of CRF1 receptor antagonists under § 112(a).
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“[A] sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. at 1350 (citing Regents, 119 F.3d at 1568–69). Moreover, “an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Id. (citing Regents, 119 F.3d at 1568 (quoting Fiers, 984 F.2d at 1171)). Furthermore, “functional claim language can meet the written description requirement when the art has established a correlation between structure and function.” Id. (citing Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002) (quoting 66 Fed. Reg. 1099 (Jan. 5, 2001))). “[M]erely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Id.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the relevant art (“POSA”) “would have a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders . . . [and] would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders.” Pet. 26–27 (citing Ex. 1005 ¶ 34 (Dr. Carey Declaration)). Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Response. Because Petitioner’s definition of a person of skill in the art appears commensurate with the level of skill reflected in the asserted art in this case as well as the ’201 patent itself, see, e.g., Exs. 1024, 1025, 2003, 2004, 2005, we apply Petitioner’s proposed level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating prior art itself can reflect the appropriate level of ordinary skill in the art). C.” slip op. at 22
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“For these reasons, we do not find persuasive the testimony of Patent Owner’s expert, Dr. Dobs, that: By describing adjustments of dosing protocols to achieve an A4 reduction from baseline, and describing this use of tildacerfont as just one embodiment of the claimed use of the entire well-known, well-characterized, and discrete class, the specification reasonably conveyed to a POSA that the invention extended to the particularly claimed use of the entire recited class. Ex. 2014 ¶ 82. On the contrary, far from being a “well-known, well-characterized, and discrete class” the prior art teaches a heterogeneous assembly of different classes of small molecule CRF1 receptor antagonists (Type I, Type II, and “atypical”) displaying a very considerable variety of structures, both in terms of the core pharmacophore (e.g., monocyclic, bicyclic, tricyclic, phenolic, cyclohexyl amide, etc.) as well as in the various side groups. Moreover, the challenged claims recite only “a CRF1 receptor antagonist or a pharmaceutically acceptable salt thereof,” the scope of which also encompasses the much larger (and, according to Williams) much more effective large-molecule (peptide) CRF1 receptor antagonists, about which the Specification is entirely silent. See Ex. 1029, Abstr., 1065. Furthermore, despite Dr. Dobs’ testimony that “[t]he [prior art] references explain the typical CRF1 antagonist consists of a core nitrogen heterocycle with an aryl substituent adjacent to the core nitrogen atom and a branched alkyl group attached at the opposite end of the core,” Dr. Dobs also acknowledged that the “atypical CRF1 receptors depicted in Figures 11 and 12 of Williams had different structures, and lacked the nitrogen heterocyclic core.” Ex. 1042, 127:9–14, 130:13–131:16; see also Ex. 2014 ¶ 83. Additionally, Petitioner’s expert, Dr. Cutler, testified, by way of example, in his Reply Declaration that two of the ‘“first-generation CRF1 antagonists’ identified in Figure 1 of the Williams article do not fall within the Figure 2 structure Dr. Dobs relies upon.” Ex. 1047 ¶ 93. Indeed, with respect to the alleged core pharmacophore that Dr. Dobs” slip op. at 54
- ExcludeMotion to exclude, deniedMixed
“with chemical terminology”; “could not answer questions regarding the chemical structures in the prior art articles”; “did not know whether CRF1 receptor antagonists contained the structural features she deemed ‘essential’ in her Declaration”; and “agreed that tildacerfont has structurally unique features” (see Ex. 1042, 52–53, 125–126, 126–128, 128–130) goes to the weight that we assign to such testimony, but we do not find that such testimony, in light of Dr. Dobs’ extensive qualifications as an endocrinologist set forth above, deems Dr. Dobs unqualified to testify concerning the written description issue in this proceeding. For these reasons explained above, Petitioner’s Motion to Exclude Dr. Dobs’ written description opinions in paragraphs 20 and 75–87 of Exhibit 2014 is denied.” slip op. at 11
Patent outcomesUS 11,007,201 unpatentable§ 112 disclosurecites PhillipsPatents in suitUS 11,007,201 - Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.All claims unpatentablePTAB · Nov 26, 2024 · PGR2021-00088 · APJ John G New · PGR · Final written decision
Claims 1–25 are unpatentable because the ’908 patent lacks written description support under § 112(a); the Board did not reach Grounds 1–3 or 5.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“To the extent that Dr. Dobs has admitted that she is “not comfortable with chemical terminology”; “could not answer questions regarding the chemical structures in the prior art articles”; “did not know whether CRF1 receptor antagonists contained the structural features she deemed ‘essential’ in her Declaration”; and “agreed that tildacerfont has structurally unique features” (see Ex. 1038, 52–53, 125–126, 126–128, 128–130), we will weigh her testimony regarding those matters accordingly. However, for the reasons explained above, Petitioner’s Motion to Exclude Dr. Dobs’ written description opinions in paragraphs 19 and 80–91 of Exhibit 2014 is denied.” slip op. at 10
- Strike new argumentOther
“Analysis Patent Owner’s Exhibits 2020–2026 play no part in our reasoning and were not relied upon by the Board in reaching our Decision. Petitioner’s Motion to strike Exhibits 2020–2026 is therefore dismissed as moot.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“typically possess a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders. Pet. 60 (citing Ex. 1005 ¶ 34). Petitioner argues that such a person of ordinary skill would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders. Id. Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Response. Because we find Petitioner’s definition to be consistent with the demonstrable level of skill in the art (see, e.g., Exs. 1009, 1025, 2003, 2004, 2005), and in the absence of a different proposed definition of the level of skill in the art by Patent Owner, we adopt Petitioner’s definition.” slip op. at 26
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“For these reasons, we do not find persuasive the testimony of Patent Owner’s expert, Dr. Dobs, that: By describing adjustments of dosing protocols to achieve at least a 10% reduction from baseline, and describing this use of tildacerfont as just one embodiment of the claimed use of the entire well-known, well-characterized, and discrete class, the specification reasonably conveyed to a POSA that the invention extended to the particularly claimed use of the entire recited class. Ex. 2014 ¶ 87. On the contrary, far from being a “well-known, well-characterized, and discrete class” the prior art teaches a heterogeneous assembly of different classes of small molecule CRF1 receptor antagonists (Type I, Type II, and “atypical”) displaying a very considerable variety of structures, both in terms of the core pharmacophore (e.g., monocyclic, bicyclic, tricyclic, phenolic, cyclohexyl amide, etc.) as well as in the various side groups. Moreover, the challenged claims recite only “a CRF1 receptor antagonist or a pharmaceutically acceptable salt thereof,” the scope of which also encompasses the much larger (and, according to Williams) much more effective large-molecule (peptide) CRF1 receptor antagonists, about which the Specification is entirely silent. See Ex. 1029, Abstr., 1065.” slip op. at 56
Patent outcomesUS 10,849,908 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,849,908 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitutedPTAB · Nov 22, 2024 · IPR2024-00948 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR on claims 1–3, 7–10, 12, 13, and 19 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on the Hanisch-Dunagan combinations with added references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in demonstrating that claim 1 is unpatentable as obvious over Hanisch in view of Dunagan and Hayashi, Meador, or Shin. 5. Claims 2, 3, and 7–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’097 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends that one of ordinary skill in the art “would have had at least a master’s degree in chemical engineering, mechanical engineering, materials science/engineering, or a related field, and three to five years of experience in design and implementation of battery recycling processes.” Pet. 15–16. Patent Owner argues to the contrary that a person of ordinary skill in the art “would have [had] at least a Bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithium-ion batteries.” Prelim. Resp. 13. On the present record, neither party argues that the result would be any different should we adopt a different definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Patent Owner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner argues that “[t]he ’097 Patent expressly defines ‘drying’ to mean ‘the removal of at least one solvent in the conducting salt.’” Pet. 16 (quoting Ex. 1001, 2:23–25). Petitioner also argues that “[a]ll other terms should be given their plain and ordinary meaning under Philips and do not need further construction for the purposes of this Petition.” Id. Patent Owner argues that “[n]o claim terms require express construction to determine that the Petition does not establish a reasonable likelihood of unpatentability of any claim and, thus, deny institution.” Prelim. Resp. 13. Based on the present record, we need not expressly construe any claim terms at this time.6 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))).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“On the present record, we do not find the relationship between URT and Petitioner to be significant to the degree that raises concerns under Valve and General Plastic. In Valve, two factors affected the determination that there was a significant relationship between the two petitioners at issue: “Valve and HTC were co-defendants in the District Court litigation,” and “the petitions . . . challenge[d] the same claims of the [challenged] patent.” IPR2019-00062, Paper 11, 10. Here, one of these factors is absent, and the other is not entirely present. URT and Petitioner are not co-defendants in the related infringement lawsuit, which accuses only Petitioner. Ex. 2014, 1. As for the claims challenged in the two petitions, Patent Owner is correct that all claims challenged in the present proceeding are also challenged in IPR2024-00887, but the reverse is not true. The petition in IPR2024-00887 challenges claims 15–17 of the ’097 patent, none of which is challenged here. Compare Pet. 3, with IPR2024-00887, Paper 2, 4–5. Thus, there is a significant difference between the present situation and that in Valve.” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - PTAB · Nov 20, 2024 · IPR2024-00887 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–3, 7–10, 12, 13, and 15–19 on all asserted grounds, finding a reasonable likelihood that claim 12 is anticipated by LithoRec.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with 1 In the Introduction and section headings of the Petition, Petitioner identifies claims 1–3, 7–9, 12, 13, and 15–19 as the challenged claims. Pet. i–ii. In the substantive content of the Petition, however, Petitioner includes claim 10 as a challenged claim as well. Id. at 34–35. respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a B.S. degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry [experience] in the recycling or processing of lithiumion batteries.” Pet. 14. On the present record, Patent Owner does not contest Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[n]o claim construction is needed,” because “[t]he claims are unpatentable under any reasonable interpretation.” Pet. 15. That said, Petitioner directs us to alleged definitions of several terms in the specification or prosecution history of the ’097 patent. Id. at 15–17. Patent Owner argues that “[c]laim construction is not required to deny the Petition.” Prelim. Resp. 26. Based on the present record, we agree with both parties that we need not expressly construe any claim terms at this time.6 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))).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). In addition, “[a]n anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1381 (Fed. Cir. 2003). slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - PTAB · Oct 23, 2024 · IPR2024-00679 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 28, 38, 39, 41–43, 53, 56–59, 61–63, and 65–68 on all asserted grounds after finding a reasonable likelihood that claim 28 was obvious over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Based on the present record, we agree with Patent Owner that the recited “reconfiguring the communication port” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfiguring the communication port” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we find Petitioner’s rationale sufficient for institution. Petitioner points to Krantz’s alleged goals of security and automation. Pet. 19. Petitioner (id.) and Dr. Houh (Ex. 1503 ¶ 64) both cite paragraph 19 of Krantz, which states that “[i]f credentials do not authorize full access . . . the server can respond by sending a notification . . . includ[ing] conditions (e.g., signup, renewal etc.) a user must satisfy to become authorized for []full access to resources.” Ex. 1505 ¶ 19. We are persuaded preliminarily that an ordinarily skilled artisan considering Krantz’s teachings of such conditions for full access would have had reason to apply Herrmann’s technique for checking a client’s antivirus security policy in the manner suggested by Petitioner. See, e.g., Ex. 1503 ¶ 64; Ex. 1506 ¶ 68. Krantz’s express teaching of conditions for a client to fully access a network (Ex. 1505 ¶ 19) also undermines Patent Owner’s argument about impermissible hindsight and Patent Owner’s suggestion that Krantz is limited to user authentication. Finally, we are persuaded that Petitioner has shown sufficiently, for purposes of instituting review, that an ordinarily skilled artisan would have expected success in making the combination because it would only require software modifications to Krantz’s system. See, e.g., Ex. 1503 ¶ 64.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00675 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–6, 11–13, 15–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of success at least on obviousness over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Krantz and Herrmann. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 5. Claims 2–6, 11–13, 15–19, and 23–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’484 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 22
- Parallel petitionsDecided for petitioner
“III. PARALLEL PETITIONS As noted above, Petitioner challenges the ’484 patent both in this proceeding and in IPR2024-00679. Petitioner argues that we should institute review in both proceedings because “the analysis of all 33 challenged claims . . . of the 484 Patent could not reasonably fit within the word limit for a single petition.” Paper 4, 2. Petitioner notes further that “addressing different sets of independent claims in each petition was most efficient given the differences between independent claim 1 (Petition 1 - IPR2024-00675) and independent claims 28, 41, 56, and 57 (Petition 2 - IPR2024-00679).” Id. Patent Owner does not argue that we should deny institution either in this proceeding or in IPR2024-00679 due to Petitioner’s having filed parallel petitions challenging the ’484 patent. Prelim. Resp. 1–44. Given Patent Owner’s acquiescence and Petitioner’s arguments, we do not exercise our discretion to deny institution due to the parallel petitions.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the present record, we agree with Patent Owner that the recited “reconfigur[ing] the communication device” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfigur[ing] the communication device” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture. Based on the present record, we need not expressly construe any other claim terms.3 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))).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00676 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–10, 14, 16, 22–23, 25, and 27 on the asserted obviousness ground based on Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“qualifies as prior art to the ’450 patent “because the InfoExpress inventors conceived of the invention [of the ’450 patent] before the effective dates [of Krantz and Herrmann] and exercised reasonably continuous diligence in reducing the claimed inventions to practice.” Prelim. Resp. 33–45. Petitioner disagrees that the present record sufficiently shows that the inventors of the ’450 patent conceived of the invention before the effective date of Krantz or Herrmann and that the inventors exercised reasonably continuous diligence in reducing that invention to practice. See Prelim. Reply 1–7. In particular, Petitioner raises questions with respect to the independence of Patent Owner’s evidence from the inventor testimony that evidence is intended to corroborate, as well as with respect to whether the evidence offered by Patent Owner sufficiently shows conception, reduction to practice, and reasonably continuous diligence. Id. We do not think the information of record is sufficient to antedate Krantz and Herrmann such that we should deny institution of inter partes review on that basis. First, Patent Owner’s arguments rely on the testimony of inventor Stacey C. Lum, who has not yet been subject to cross-examination. See Prelim. Resp. 35–45 (citing Ex. 2003). Second, Petitioner identifies several issues where further development of the record may be helpful. For example, Patent Owner’s asserted date of conception is associated with the date of an engineering specification included in the record as Exhibit 2011. See Prelim. Resp. 35–36 (citing Ex. 2003 ¶ 12; Ex. 2011; Ex. 2012). We agree with Petitioner (see Prelim. Reply 4–5) that it is unclear, based on the present record, whether Exhibit 2011 corroborates the testimony supporting Patent Owner’s conception date given that the present record does not establish the author of Exhibit 2011. See Ex. 2003 ¶ 22 (inventor Stacey C. Lum testifying only that “InfoExpress personnel drafted EX2011”). These and other issues relating to the prior-art status of Krantz and Herrmann are, in our view, best left for trial after full development of the record.3” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,677,450 - PTAB · Oct 11, 2024 · IPR2024-00677 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR of claims 1–7, 10, 12, 17, and 22 based on the asserted obviousness ground over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons that follow, we institute an inter partes review as to claims 1–7, 10, 12, 17, and 22 of the ’444 patent on the ground of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. Patent Owner does not cite any evidence supporting its assessment of the level of ordinary skill. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’444 patent],” so we “need not expressly construe the claim terms.” Pet. 7. Patent Owner argues “the claims should be given their plain meaning in the context of the intrinsic evidence.” Prelim. Resp. 6. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., 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))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the present record, we find Petitioner’s rationale sufficient for institution. Petitioner points to Krantz’s alleged goals of security and automation. Pet. 19. Petitioner (id.) and Dr. Houh (Ex. 1203 ¶ 64) both cite paragraph 19 of Krantz, which states that “[i]f credentials do not authorize full access . . . the server can respond by sending a notification . . . includ[ing] conditions (e.g., signup, renewal etc.) a user must satisfy to become authorized for []full access to resources.” Ex. 1205 ¶ 19. We are persuaded preliminarily that an ordinarily skilled artisan considering Krantz’s teachings of such conditions for full access would have had reason to apply Herrmann’s technique for checking a client’s antivirus security policy in the manner suggested by Petitioner. See, e.g., Ex. 1203 ¶ 64; Ex. 1206 ¶ 68. Krantz’s express teaching of conditions for a client to fully access a network (Ex. 1205 ¶ 19) also undermines Patent Owner’s argument about impermissible hindsight and Patent Owner’s suggestion that Krantz is limited to user authentication. Finally, we are persuaded that an ordinarily skilled artisan would have expected success in making the combination because it would only require software modifications to Krantz’s system. See, e.g., Ex. 1203 ¶¶ 65, 93.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,578,444 - PTAB · Sep 23, 2024 · IPR2024-00625 · APJ Deborah Katz · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable and declining discretionary denial under §§ 314(a) and 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention . . . .” 35 U.S.C. § 102(a). To be anticipated, each and every element of the claim must be found, either expressly or inherently described, in a single prior art reference. See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). When claim elements are inherently taught, the result must be a necessary consequence of what was deliberately intended, but the prior art need not demonstrate that the authors appreciated the results. See Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999); see Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (“At the outset, this court rejects the contention that inherent anticipation requires recognition in the prior art.”).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention . . . .” 35 U.S.C. § 102(a). To be anticipated, each and every element of the claim must be found, either expressly or inherently described, in a single prior art reference. See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). When claim elements are inherently taught, the result must be a necessary consequence of what was deliberately intended, but the prior art need not demonstrate that the authors appreciated the results. See Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999); see Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (“At the outset, this court rejects the contention that inherent anticipation requires recognition in the prior art.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention . . . .” 35 U.S.C. § 102(a). To be anticipated, each and every element of the claim must be found, either expressly or inherently described, in a single prior art reference. See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). When claim elements are inherently taught, the result must be a necessary consequence of what was deliberately intended, but the prior art need not demonstrate that the authors appreciated the results. See Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999); see Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (“At the outset, this court rejects the contention that inherent anticipation requires recognition in the prior art.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues that Pernot teaches treating colorectal cancer and that, therefore, because the MSI-H Study Record is directed to a clinical study treating colorectal cancer in a patient whose cancers are MSI-H with pembrolizumab, which is an anti-PD-1 antibody, one of ordinary skill in the art knowing the teachings of the MSI-H Study Record would have considered the teachings of Pernot. (See Pet. 36.) Petitioner argues that Pernot teaches that colorectal cancer patients that are MSI-H are “good candidates for immunotherapy,” such as PD-1 inhibitors. (See Pet. 36 (quoting Ex. 1006, 3741 (“[Colorectal cancer] associated with MSI could lead to a more intense immune response, but also to specific immunoregulatory phenomena, making [patients with colorectal cancer] good candidates for immunotherapy.”)).) Petitioner cites further to Dr. Neugut’s testimony to argue that one of ordinary skill in the art would have been motivated to combine the disclosure of Pernot with the methods taught in the MSI-H Study Record in order to obtain the results of the MSI-H Study Record’s study. (See Pet. 36 (citing Ex. 1003 ¶ 93).)” slip op. at 17
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,339,219
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.