- PTAB · Jun 21, 2023 · IPR2023-00267 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1, 7, 15, and 21 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Scott.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). 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). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’822 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are persuaded by Petitioner’s undisputed contentions on the current record that Petitioner demonstrates a reasonable likelihood that claim 1 is unpatentable.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner states that “[n]o terms of the ’822 Patent require construction beyond their plain and ordinary meaning.” Pet. 10. For purposes of our Decision, which examines claim 1 below, we determine that it is not necessary to construe any particular term.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a similar field; and at least two years of experience in the wager based gaming industry. A person with less education but more relevant practical experience may also meet this standard.” Pet. 10 (internal citations removed). Based on the record before us, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 9
Claim construction§ 102 anticipationPatents in suitUS 10,997,822 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00166 · APJ Robert L Kinder · IPR · Institution
The Board denied institution for claims 1–10 because Petitioner did not show a reasonable likelihood that the Nadison 610, Johnson, and ISO11783 combination rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’017 patent would have had: a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and have at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Pet. 11. Patent Owner does not dispute this level of skill. See Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “[n]o terms need construction for this IPR” but “reserves the right to identify terms for construction as may become necessary in . . . ‘the District Court case’[] and to respond to any constructions that Patent Owner submits.” Pet. 20. Patent Owner “agrees with Petitioner that no terms require construction” and also “reserves the right to identify terms for construction as may become necessary in the parallel district court litigation . . . and to respond to any construction that Petitioner may submit.” Prelim. Resp. 15. On this record, we determine that no claim term requires an express construction for the purpose of determining 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))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Petitioner that the ISO11783 requires a device to have a NAME field in order for the task controller to identify the device. See Ex. 1013, 12. However, we are not persuaded by Mr. Ault’s testimony or Petitioner’s arguments that the communication protocol must be defined in an implement profile such as the NAME field even if manufacturers use systems beyond those directly supported in the ISO11783. See Pet. 27–48; Ex. 1013, 28, 33; Ex. 1002 ¶¶ 64, 114–125, 162–167; Ex. 1014, 5, 9. The NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why any communication protocol would identify the function or place of an ECU in a network, which is the purpose of the NAME field. See Pet. 37–38 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”). Petitioner has not explained sufficiently otherwise. We further observe that Mr. Ault alludes that ISO11783 provides a standardized, and thus known, communication protocol that supports the use of proprietary communications simultaneous with standardized messages. Id. ¶ 64. Mr. Ault later surmises that “it would have been obvious to a POSITA to store proprietary message formats for manufacturers that use proprietary message format.” Id. ¶ 167. We observe that in paragraphs 63 and 64 of his declaration, Mr. Ault relies on Exhibit 1014, titled “An Electronic Communication Protocol for Agricultural Equipment,” for the proposition that ISO11783 “supports the use of proprietary communications simultaneous with standardized messages” and “[m]anufacturers are free to implement enhanced control and information systems beyond those directly supported in the standard.” Id. ¶ 64 (citing Ex. 1014, 7)7 (alteration in original). We understand this cited disclosure in Exhibit 1014 acknowledges that proprietary communications are beyond those directly supported in the ISO11783 and that enhanced control and information systems are required for proprietary communications. Id. Said another way, these statements are consistent with our understanding that ISO11783 does not, by default, teach proprietary communication protocols defined in the device description fields, e.g., NAME field. Ex. 1014, 7 (“ISO11783 does not provide a complete design that can be implemented without further considerations on agricultural equipment.”). That being the case, we agree with Patent Owner’s position that the ISO11783 does not itself “identify different proprietary formats (i.e., the communication protocol) used by a given implement from a stored collection of implement profiles.” Prelim. Resp. 21. 7 Petitioner cites to page 9, however, we use the stamped page numbers for the exhibit. Even assuming for the moment that proprietary message formats “indicate” communication protocols, Petitioner has still not explained sufficiently why a POSITA would store those proprietary message formats in the NAME field. As noted above, the NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why proprietary message formats would identify the function or place of an ECU in a network. See id.; see also Pet. 37 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”).” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,107,017 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00159 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 would have been obvious over Nadison 610, Nadison 630, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 8
- Expert testimonyPetitioner expert discountedOther
“The testimony from Petitioner’s expert, Mr. Ault, is not persuasive in this regard. See Ex. 1002 ¶¶ 165–170. For example, in paragraph 152 of his declaration, he repeats the same citations of ISO11783 presented in the Petition. Ex. 1002 ¶ 165. Mr. Ault testifies that the POSITA would have understood that ISO11783 standard part 10 directly teaches the POSITA to identify a device description object pool (a “communication protocol” in the language of the ’485 patent) using the NAME field (as WorkingSetMasterNAME) as well as other items such as a “Device Software Version” in table A-1. Ex. 1002 ¶ 165 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and [] at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Additional education would compensate for less experience, and vice-versa. Pet. 11. Patent Owner accepts Petitioner’s level of skill at this stage. Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“However, the portions of ISO11783 cited in the Petition do not support Petitioner’s arguments or Mr. Ault’s testimony in this regard. For example, Petitioner argues that ISO11783, Part 10 teaches “objects containing the device description data” for the implements include manufacturing code, device class, and device software version. Even assuming Petitioner is correct, missing from this disclosure is any mention of a “communication protocol” required by claim 1. Pet. 29; see also Ex. 1013, 33 (cited as page 27 in the Petition). As another example, page 28 of ISO11783, Part 10 (cited as page 22 in the Petition) teaches that the task controller stores the device description for transfer back to the FMIS (farm management information system), but does not teach the NAME field or device description includes a communication protocol. Ex. 1013, 33; Pet. 29–30 (citing Ex. 1013, 27). Rather, ISO11783 teaches that “[t]he task controller shall also store the device description for transfer back to the FMIS. For this transfer of the device description data over the ISO 11783 CAN network, a set of objects is defined. The objects containing the device description data are described in Annex A.” Ex. 1013, 28. describes attributes of ISO11783’s DeviceObjects. Table A.1 labeled “DeviceOject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 27. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 15
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,151,485 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00164 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would have been obvious over Nadison 610, Johnson, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Claim 1 requires that “a plurality of implement profiles on the server system, each of which is associated with a respective known farming implement, the implement profiles each defining a known manufacturer code, a known device class, a known version and a known communication protocol for the respective known farming implement associated therewith.” Ex. 1001, 25:46–52 (emphases added).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. at 28. Table A.1 labeled “DeviceObject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 28. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The testimony from Petitioner’s expert, Mr. Ault, is not persuasive in this regard. See Ex. 1002 ¶¶ 151–159. For example, in paragraph 152 of his declaration, he repeats the same citations of ISO11783 presented in the Petition. Ex. 1002 ¶ 152. Mr. Ault testifies that the POSITA would have understood that ISO11783 Part 10 directly teaches the POSITA to identify a device description object pool (a “communication protocol” in the language of the ’116 patent) using the NAME field (as WorkingSetMasterNAME) as well as other items such as a “Device Software Version” in table A-1. Ex. 1002 ¶ 152 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’116 patent would have had: a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and have at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Pet. 11. Patent Owner does not dispute this level of skill. See Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,164,116 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00158 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 would have been obvious over Nadison 610, Nadison 630, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Table A.1 labeled “DeviceOject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 27. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 156 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and [] at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Additional education would compensate for less experience, and vice-versa. Pet. 11. Patent Owner accepts Petitioner’s level of skill at this stage. Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,126,937 - Vifor (International) AG v. Biofer S.P.A.Institution deniedPTAB · Apr 24, 2023 · IPR2022-01608 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16, 19–21, and 23–25 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“step of reacting a sugar with bromine occurs “in a solution at a pH between 7.0 and 9.0.” Ex. 1001, 16:46–47. A dispositive question arises, on this record, as to whether Petitioner’s information, directed to this pH range limitation, is sufficient to support institution of review. For reasons that follow, we determine that Petitioner’s information is not sufficient and deny the Petition on that basis.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and 12 and that Stoll suggests a pH range of 7 or greater. Pet. 29–30 and n.7, 39. Those prior art pH ranges overlap or encompass the specified pH range of “between 7.0 and 9.0.” Pet. 38–39 and n.10. Under these circumstances, the burden of production shifts to Patent Owner to come forward with evidence of the criticality of the specified pH range limitation. See id. at 39–40 (quoting E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018). Patent Owner meets that burden by directing us to the Marchi Declaration. Resp. 9–12; Ex. 1004, 432–440. That evidence contains experimental results that support Dr. Marchi’s opinion that the claimed method, when performed at a pH of 8, “can be run with equimolar amounts of oxidant without increasing depolymerization,” but when performed at a pH of 10, results in an undesirable “depolymerizing attack on the main chain, even employing only 0.9 equivalents of oxidant.” Ex. 1004, 434–435 (¶ 7). As Patent Owner points out, moreover, the oxidation reaction in each of the examples in Geisser is carried out at a pH of 10. see Prelim. Resp. 26 and n.8 (citing Ex. 1006, Examples 1–8).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We assess the ground based on anticipation by Geisser in view of the principle that a prior art reference anticipates a patent claim “if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The ground based on anticipation by Geisser rests on a conclusory opinion that Geisser’s disclosure of a pH range between 8 and 12 “describes” an oxidation reaction that occurs “at a pH between 7.0 and 9.0.” Pet. 63 (citing Ex. 1002 ¶ 178, which repeats that conclusory opinion verbatim without objective evidence or analysis). It is unclear on this record, and Petitioner does not explain adequately, how or why Geisser anticipates the pH range limitation of claim 1, which is “critical” for reasons explained above in our analysis of the ground based on obviousness over Geisser and Stoll. Ex. 1004, 435 (the Marchi Declaration, ¶ 7). Accordingly, on this record, we determine that Petitioner does not establish a reasonable likelihood of prevailing “with respect to at least [one] of the claims” based on any ground asserted in the Petition. 35 U.S.C. § 314(a).” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that an ordinarily skilled artisan “would hold an advanced degree, such as an M.S. or doctorate, in chemistry, medicine, pharmacy, or a related degree,” as well as post-graduate experience “in areas of carbohydrate chemistry, synthetic chemistry, medicinal chemistry, inorganic chemistry, and/or metal carbohydrate complexes, or the clinical use of such complexes.” Pet. 16. Patent Owner does not contest Petitioner’s proposed definition in the Preliminary Response. Prelim. Resp. 17–18. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,759,320 - PTAB · Mar 30, 2023 · IPR2023-00026 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claims 1 and 5 are anticipated by Prevost-2006.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We understand “filled” to have a broad plain and ordinary meaning. That is, “filled” broadly embraces the circumstances where something is fully filled or partially filled. Here, Petitioner’s declarant, Dr. Hoare, provides an opinion that is consistent with our understanding of the regular meaning of the word. Pet. 23; Ex. 1002, ¶ 142. We understand that Patent Owner’s position essentially contends that “filled” does not include “fully filled”—arguing that Prevost-2006 does not describe the extent to which the core material “filled” the shell structure, or that Petitioner does not show sufficiently that “filled” means “completely occupies.” Prelim. Resp. 8–10; Ex. 2001, ¶ 39. As an initial matter, we observe that neither Petitioner’s nor Patent Owner’s declarant directs us to information that would help us understand why an ordinarily skilled artisan would have understood “filled” to exclude the circumstance of being completely filled. Because of this, for purposes of deciding whether to institute review, we see no reason to interpret “filled” in a manner inconsistent with the term’s plain and ordinary meaning, which broadly includes the circumstance of being completely filled. Patent Owner is free to develop this issue in timely filed response to the Petition. On this record, however, we preliminarily find that Prevost-2006 meets the “completely occupies” limitation of claim 1 because its fiber is described as a shell structure that is “filled” with a core structure. Ex. 1010, 345, 349. That circumstance distinguishes Provost-2006 from the Lee reference, which unlike Provost-2006 concerned “hollow fibers” and, during examination, was overcome by an amendment that added the “completely occupies” limitation. Prelim. Resp. 9 (quoting Ex. 1004, 616) (emphasis omitted).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We understand “filled” to have a broad plain and ordinary meaning. That is, “filled” broadly embraces the circumstances where something is fully filled or partially filled. Here, Petitioner’s declarant, Dr. Hoare, provides an opinion that is consistent with our understanding of the regular meaning of the word. Pet. 23; Ex. 1002, ¶ 142. We understand that Patent Owner’s position essentially contends that “filled” does not include “fully filled”—arguing that Prevost-2006 does not describe the extent to which the core material “filled” the shell structure, or that Petitioner does not show sufficiently that “filled” means “completely occupies.” Prelim. Resp. 8–10; Ex. 2001, ¶ 39. As an initial matter, we observe that neither Petitioner’s nor Patent Owner’s declarant directs us to information that would help us understand why an ordinarily skilled artisan would have understood “filled” to exclude the circumstance of being completely filled. Because of this, for purposes of deciding whether to institute review, we see no reason to interpret “filled” in a manner inconsistent with the term’s plain and ordinary meaning, which broadly includes the circumstance of being completely filled. Patent Owner is free to develop this issue in timely filed response to the Petition. On this record, however, we preliminarily find that Prevost-2006 meets the “completely occupies” limitation of claim 1 because its fiber is described as a shell structure that is “filled” with a core structure. Ex. 1010, 345, 349. That circumstance distinguishes Provost-2006 from the Lee reference, which unlike Provost-2006 concerned “hollow fibers” and, during examination, was overcome by an amendment that added the “completely occupies” limitation. Prelim. Resp. 9 (quoting Ex. 1004, 616) (emphasis omitted). Claim 5 further recites that “a cell or cell culture is contained in the micro gel fiber.” As we observe above, Prevost-2006 discloses that its “hollow fibers were filled with islets [cells] suspended in agarose.” Ex. 1010, 345; Pet. 24. Thus, on this record, we also find that Prevost-2006 discloses the claimed microfiber containing “a cell or cell culture” within the micro gel fiber. Accordingly, we determine that Petitioner has established a reasonable likelihood that it “would prevail with respect to” claim 1 and claim 5 based on anticipation by Provost-2006. 35 U.S.C. § 314(a). To provide guidance to the parties and streamline the issues for trial, we discuss below the other challenges asserted in the Petition.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“For example, Petitioner does not identify a reason why an ordinarily skilled artisan would have combined the teachings of double-layer and single-layer fibers. We recognize that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Nevertheless, to support a conclusion of obviousness when combining the teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we have doubts that Petitioner provides sufficient reasons an ordinarily skilled artisan would have combined the teachings of the multiple references asserted in this challenge to achieve the claimed invention or would have reasonably believed they would have been successful in doing so. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (showing of a motivation to combine references must include evidence that a skilled artisan would have reasonable expectation of success in doing so).” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“We have concerns about whether Petitioner shows sufficiently that Nelson- 603’s disclosures would have led an ordinarily skilled artisan to create an “alginate-alginate bicomponent fiber.” Petitioner’s arguments and Dr. Hoare’s opinions contain similar wording and do not explain adequately why an ordinarily skilled artisan would have created such a fiber—beyond Nelson-603’s general disclosure that “it will be apparent to those of skill in the art that variations may be applied to the compositions and methods.” Pet. 39–40; Ex. 1002, ¶¶ 162, 199, 120; Ex. 1011, 12:57–66; 33:58–66. Without additional evidence and reasoning, we assign Dr. Hoare’s testimony on this issue little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (designated: February 10, 2023) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). On this record, that general instruction is not sufficient to establish that Nelson-603 would have prompted an ordinarily skilled artisan to modify any fiber disclosed in the reference to achieve the claimed invention.” slip op. at 15
§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,785,195 - Regeneron Pharmaceuticals, Inc. v. Novartis Pharma AG, Novartis Technology LLC, Novartis Pharmaceuticals CorporationAll claims unpatentablePTAB · Jan 24, 2023 · IPR2021-00816 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–26 are unpatentable, including as obvious over the cited combinations; the Board found the challenged claims’ features known in the prior art and the objective-indicia evidence insufficient to overcome the showing.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“in Boulange would help reduce the amount of “residual” or “free” silicone oil that can enter the protein formulation and cause negative effects because the baking attaches the silicone oil to the inner surface of the syringe barrel. Id. ¶ 165. Accordingly, and based on the final record, we determine that Petitioner has provided sufficient articulated reasons and evidentiary underpinnings for its reasons for combining Sigg’s terminally sterilized PFS comprising a VEGF-antagonist with Boulange’s low-silicone and low break loose/gliding force syringe.” slip op. at 55
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“presentation in January 2017 helped to slow declining sales of the vial presentation and sales eventually climbed higher than they had been at any previous time. PO Resp. 55 (citing Ex. 2099). We disagree, however, with Patent Owner’s conclusion that “these data confirm nexus because they show that it was the PFS presentation, embodying the ʼ631 patent, that enabled Genentech to reverse the downward trend for Lucentis and to capture incremental sales and market share.” Id. at 56. Patent Owner and Mr. Malackowski wrongly focus on the purported nexus between commercial success and the Lucentis PFS, instead of the nexus between commercial success and the claimed inventions of the ’631 patent. See Ex. 1107 ¶¶ 32–38 (Declaration of Lisa J. Cameron, Ph.D). We agree with Dr. Cameron that “Mr. Malackowski assumes that the Lucentis PFS is coextensive with the claimed inventions of the ’631 Patent,” and thus, “makes no attempt to establish a nexus between the claimed inventions of the ʼ631 Patent and the alleged commercial success of the PFS form of Lucentis.” Id. ¶ 34 (emphasis omitted).” slip op. at 88
- Expert testimonyOther
“ophthalmologists’ use of the Lucentis PFS existed in prior art PFSs for intravitreal injection. See id. “For example,” Dr. Kiss points to the “Macugen PFS and Trivaris PFS, both commercially available as pre-filled syringes prior to 2012,” as “provid[ing] ophthalmologists with efficiency, convenience, reduced risk of infection due to fewer administration steps, and more accurate dosing.” Id. ¶ 33. For these reasons, Dr. Kiss testifies persuasively that “an ophthalmologist would very much prefer to use the Lucentis PFS over a Lucentis vial format.” Id. ¶ 34.” slip op. at 85
Patent outcomesUS 9,220,631 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 9,220,631 - Risen (Suzhou) Pharma Tech. Co. Ltd. v. Alzheon, Inc.Institution deniedPTAB · Jan 13, 2023 · PGR2022-00051 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution on all challenged claims, finding no reasonable likelihood of unpatentability under §§ 101 and 112(a), and denying Grounds 4–6 under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence, we determine that the information presented fails to demonstrate it is more likely than not that at least one of the challenged claims of the ’742 patent is unpatentable for ineligibility, lack of written description, or non-enablement. We also exercise our discretion to deny institution of post-grant review under 35 U.S.C. § 325(d). slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“tramiprosate “showed a significant overall treatment effect” in “an APOE4+ sub-group,” including APOE4 homozygotes; “therapeutic interventions applied earlier in the course of AD more likely might achieve the goal of disease modification;” and that “AD would be optimally treated before significant cognitive impairment, during its pre-symptomatic or pre-clinical stages …”) (emphases removed). Accordingly, Caltagirone was previously presented to the Office and we also find that Caltagirone’s disclosures are substantially similar to, or cumulative of, other references previously considered by the Examiner.” slip op. at 49
- Adverse judgmentAdverse judgmentOther
“D. Statutory Disclaimer After the filing of the Petition in this proceeding, Patent Owner filed a statutory disclaimer, disclaiming claims 9 and 11–15 of the ’742 patent, effective October 7, 2022. Prelim. Resp. 12; Ex. 2001, 1. “No post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.207(e). We do not analyze the validity of claims 9 and 11–15 based on Petitioner’s challenges (e.g., Grounds 2 and 3) because these claims have been statutorily disclaimed.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least an M.D. or Ph.D. degree in a biomedical science or equivalent field. They would also have several years of clinical experience treating and/or conducting clinical trials of drugs for AD patients, or professional experience working in clinical trial design and execution related to drugs for AD or supervising such work. Pet. 14–15 (citing Ex. 1003 ¶ 62) (internal citation omitted). Patent Owner does not contest the characterization offered by Petitioner. Prelim. Resp. 12–13. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’742 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · GrahamPatents in suitUS 11,191,742 - Microchip Technology Inc. v. HD Silicon Solutions LLCSome claims unpatentablePTAB · Dec 13, 2022 · IPR2021-01042 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–11, 13–27, and 29–32 are unpatentable as anticipated by Haswell or obvious over Haswell and Itou; claims 12 and 28 were not shown unpatentable over Haswell and Lempel.
RulingsFinal written decision- Skill levelDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the “type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5 (citing Ex. 1002 ¶ 27). Patent Owner does not dispute this level of skill. See generally PO Resp. Based on the final record before us, including the prior art of record, we adopt Petitioner’s proposal, which is also supported by Dr. Sechen’s testimony. See Ex. 1002 ¶ 28.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. “instruction cache” Each of claims 1, 21, and 29, specifically require a method or system for instruction error correction that uses “an instruction cache.” In its Petition, Petitioner does not specifically advocate for an interpretation of “instruction cache.” In our Institution Decision, we noted the importance of the meaning of the term because “Patent Owner challenges two of the prior art references (Haswell and Itou) as not disclosing an instruction cache, as claimed, arguing instead that each reference uses a main storage memory or similar.” Dec. on Inst. 21–22. In the Institution Decision, we preliminarily found that the instruction cache is a memory for the storage of instructions that are accessed and executed by the processor. Id. (citing Ex. 1001, 1:62– 64, code (57)). We also noted that lack of argument and evidence at that phase of the proceeding. Id. The parties responded by including additional argument, testimony, and evidence in the final record, which we now consider. Patent Owner argues that an “instruction cache” is distinct from main memory. PO Resp. 31–32. Patent Owner first relies on the cross-examination testimony of Dr. Sechen (Exhibit 2005), Petitioner’s expert. Id. Dr. Sechen testified during questioning that the main memory is not an instruction cache in that “it wouldn’t satisfy the normal definition of an instruction cache, which has certain features.” Id. (quoting Ex. 2005, 61:20– 62:7, 98:3–101:10). Patent Owner further argues that Dr. Sechen “also explained that the retrieval of data from an instruction cache is faster than from main memory due in part to its proximity to the processor.” Id. at 32 (quoting Ex. 2005, 166:8–18). Patent Owner further relies on the description of an “instruction cache” found in the Specification of the ’619 patent, that “[t]he instruction cache 103 is a memory for the storage of instructions 109 that are accessed and executed by the processor 106.” Id. (quoting Ex. 1001, 1:62–64). Patent Owner also relies on the testimony of its own expert, Dr. Przybylski, who testifies that “the retrieval of data from a cache is faster (and thus takes fewer instruction cycles) than retrieval from main memory,” and “[b]ecause an instruction cache only holds a subset of the contents of main memory at any given time, a cache requires tags, a tag storage, and hit/miss logic in order to autonomously determine whether the fetch of an instruction can be satisfied from the cache.” Ex. 2003 ¶¶ 65, 66; Ex. 1001, 3:19–21.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“B. “means for detecting an error” Independent claim 29 recites “means for detecting an error in each of the instructions concurrently with the fetching of a respective one of the instructions.” Ex. 1001, 12:51–53. Petitioner contends, and we agree, that “[t]his element is interpreted under pre-AIA 35 U.S.C. §112, ¶6 because it claims ‘means for’ and then recites the function of ‘detecting an error in each of the instructions concurrently with the fetching of a respective one of the instructions.’” Pet. 38. Petitioner identifies the corresponding structure as the error correction circuitry 129. Id. (citing Ex. 1001, 7:53–55 (“error detection of the same instruction 109 is performed by the error correction circuitry 129 (FIG. 1)”). Patent Owner does not challenge this interpretation. We find Petitioner’s showing persuasive as to the interpretation of the “means for detecting an error” limitation. C. “means for generating a corrected instruction” Claim 30 recites “means for generating a corrected instruction if the error is detected in the instruction, the corrected instruction being a corrected version of the instruction.” Ex. 1001, 12:55–56. Petitioner contends, and we agree, that this element “is interpreted under pre-AIA 35 U.S.C. §112, ¶6 because it claims ‘means for’ and then recites the function of “generating a corrected instruction if the error is detected in the instruction, the corrected instruction being a corrected version of the instruction.” Pet. 40–41. Petitioner identifies the corresponding structure as the error correction logic 143 or circuit 129. Pet. 41. Petitioner relies on the ’619 patent’s disclosure of “when an error is detected ‘in either the instruction 109 or the error correction code 113, then the error correction logic 143 proceeds to generate a corrected version of the instruction 109 and its associated error correction code 113.’” Id. (citing Ex. 1001, 6:7–11; Ex. 1002 ¶ 134). Additionally, Petitioner notes that “the ’619 patent discloses that the error correction circuitry 129 (e.g., collectively) generates a corrected version of the instruction 109 and its corresponding error correction code 113. Pet. 41–42 (citing Ex. 1001, 10:1– 3; Ex. 1002 ¶ 134) (footnote omitted). Thus, according to Petitioner, “a [person of ordinary skill in the art] POSITA would understand that either the error correction logic 1292 or the error correction logic 143, which belongs to the error correction logic 129, generates the corrected instruction.” Pet. 42 (citing Ex. 1002 ¶ 134). Patent Owner does not challenge this interpretation. We find Petitioner’s showing persuasive as to the interpretation of the” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“transfer of instructions from memory to a computer processor.” Id. at 1:7–11; see id. at 2:13–15 (“a method and system for detecting error during transfer of data signals from a data memory that permits correction of the error”). Accordingly, Petitioner has shown by a preponderance of the evidence that Haswell discloses “error correction” as required by the preamble of claim 1.” slip op. at 28
Patent outcomesUS 7,302,619 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,302,619
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.