- Biomune Company v. Merial, University Of Saskatchewan, And The Queen’S University Of BelfastAdverse judgmentPTAB · Oct 30, 2015 · IPR2015-00254 · APJ Robert A Pollock · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1–6 after Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(4), “[a]bandonment of the contest” is construed as a request for adverse judgment. Accordingly, we interpret Patent Owner’s Response as a request for adverse judgment. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims is appropriate.” slip op. at 2
NonePatents in suitUS 6,517,843 - Torrent Pharmaceuticals Limited / Apotex, Inc. et al. v. Novartis AG And Mitsubishi Pharma Corp.All claims unpatentablePTAB · Sep 24, 2015 · IPR2014-00784 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–32 are unpatentable as obvious over Chiba and Aulton; the motion to amend with proposed claims 33–64 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“institute an inter partes review of claims 1–32 of U.S. Patent No. 8,324,283 B2 (“the ’283 patent,” Ex. 1001). Paper 2 (“Pet.”).1 On December 1, 2014, the Board instituted trial to review patentability of the challenged claims. Paper 11 (“Dec. on Inst.”). Apotex, Inc. and Mylan Pharmaceuticals Inc. (“Apotex,” or, together with Torrent, “Petitioners”) filed a separate Petition also seeking to institute an inter partes review of claims 1–32 of the ’283 patent. IPR2015-00518, Paper 1 (“IPR-518 Pet.”). This second Petition was accompanied by a motion seeking joinder with the trial that had been instituted in IPR2014-00784. IPR2015-00518, Paper 2 (“IPR-518 Joinder Mot.”). On February 17, 2015, the Board instituted trial in IPR2015-00518 and joined the proceedings in IPR2014-00784 and IPR2015-00518. IPR2015-00518, Paper 8 (“IPR-518 Dec.”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276–79 (Fed. Cir. 2015). Under that standard, absent any special definitions, we assign claim terms their ordinary and customary meaning, as understood by a person of ordinary skill in the art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we do not construe several terms for which constructions were proposed in the Petition but about which the parties do not disagree.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Where the prior art teaches the claimed invention, a claim is not rendered patentable by virtue of being motivated in the inventors’ minds by a newly-discovered advantage of the prior-art combination; allowing such a claim to stand “would remove from the public that which is in the public domain.” In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979); see also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”). Here, Patent Owners argue that the newly discovered low-dose instability of fingolimod when mixed with common excipients motivated the inventors’ choice of the allegedly less common mannitol as an excipient. PO Resp. 12–15 (citing Ex. 2043 ¶¶ 14–19, 22, 24–36). As explained above, though, it does not matter that the prior art failed to recognize this advantage of a fingolimod-mannitol combination. “[T]he motivation in the prior art to combine the references does not have to be identical to that of the [patentee] to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).” slip op. at 14
Patent outcomesUS 8,324,283 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,324,283 - PTAB · Mar 11, 2015 · IPR2014-01108 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Asustek Computer Inc., Dexin Electronics Co., Ltd., and Thermaltake Technology represent all petitioners in this review. The Board has discretion to terminate this review with respect to Better Mouse Co., LLC as Patent Owner. The above represent all parties in this proceeding.” slip op. at 2
NonePatents in suitUS 7,532,200 - Target Corporation v. Destination Maternity CorporationRehearing grantedPTAB · Feb 12, 2015 · IPR2014-00509 · APJ Lora M Green · IPR · Rehearing
The Board granted Target’s request for rehearing of the denial of institution, for the reasons given in the related IPR2014-00508 decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“our Decision Denying Joinder of the instant proceeding with IPR2013-00533 (Paper 18), as well as our Decision Denying Institution of Inter Partes Review (Paper 19). Paper 20 (“Request for Rehearing”). Patent Owner, Destination Maternity Corporation, was authorized to file an Opposition (Paper 22), to which Petitioner was authorized to file a Reply (Paper 23). For the reasons discussed in the Decision Granting Petitioner’s Request for Rehearing in related IPR2014-00508 (Paper 28), we grant the Request for Rehearing.” slip op. at 2
None - PTAB · Sep 12, 2014 · IPR2013-00555 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without issuing final written decisions.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
None - PTAB · Sep 12, 2014 · IPR2013-00557 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five related inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Sep 12, 2014 · IPR2013-00554 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
None - PTAB · Sep 12, 2014 · IPR2013-00556 · APJ Christopher L Crumbley · IPR · Order
The Board granted the joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id. 1 Unless otherwise noted, citations are to the record of IPR2013-00554; similar papers may be found in the records of the other related proceedings. Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 6,607,803 - PTAB · Sep 12, 2014 · IPR2013-00558 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Jul 29, 2014 · IPR2014-00546 · APJ Kristen L Droesch · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2014-00546 without a final written decision and granted confidential treatment of their settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On July 28, 2014, the parties filed a Joint Motion to Terminate the proceeding. Paper 10. Accompanying the Motion, the parties filed a true copy of a Settlement and License Agreement resolving the dispute that is the subject of this proceeding. Ex. 2005. The parties request that the Settlement and License Agreement be treated as business confidential information, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 11. This proceeding is in the preliminary stages, as no significant activity has occurred since the filing of Patent Owner’s Preliminary Response on July 10, 2014. Paper 9. Based on the facts of the case, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 8,405,147
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.