- PTAB · Mar 22, 2023 · IPR2023-00532 · APJ John G New · IPR · Institution
The Board instituted review of claims 1, 3–11, 13, 14, 16–24, and 26 on six anticipation and obviousness grounds, and granted Celltrion’s motion to join the Mylan IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of these representations by Petitioner, and having reviewed the Celltrion Petition, we determine that, under the current circumstances, it is appropriate to exercise our discretion to institute inter partes review of the challenged claims based upon the same grounds authorized and for the same reasons discussed in our Institution Decision in the Mylan IPR. See Mylan IPR, Paper 21.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(c) JOINDER. — If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: Set forth the reasons joinder is appropriate; identify any new grounds of unpatentability asserted in the petition; and explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB” slip op. at 5
NonePatents in suitUS 10,130,681 - PTAB · Jan 4, 2023 · IPR2022-01199 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 24, and 25 for all petition grounds and granted Keysight’s motion to join the PAN IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. CONCLUSION As discussed above, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 18–53, with PAN Pet. 18–50; see Prelim. Resp. 37, 41; supra § III.B.1; infra §§ III.C.6(c), III.D.3. Based on the current record, and for the reasons discussed above, Patent Owner’s arguments that the Petition fails to satisfy the “reasonable likelihood” standard for instituting trial lack merit. See supra §§ III.B.2–III.B.5. Hence, we determine that the Petition “warrants the institution of an inter partes review under section 314.” See 35 U.S.C. § 315(c).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 97; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 101, 120. Hence, we disagree with Patent Owner that session traffic associated with a whitelisted destination domain is “simply forwarded to its destination without . . . filtering.” See Prelim. Resp. 20. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 97–98, 101, 104, 115, 125, 134, 1144; Prelim. Resp. 19. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 101, 120, 142. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 116, 141–142. Buruganahalli identifies the following advantage due to filtering packets with encrypted data based on a hostname extracted from a hello message: “the rest of the stream” containing packets with encrypted data “can be forwarded without any decryption resulting in less state to track thereby enhancing performance.” Ex. 1004, 5:43–51; see Ex. 1003 ¶ 120.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree that factor (1) favors discretionary denial. When considering parallel litigation in light of Fintiv, the Board seeks to, among other things, minimize “inefficiency and duplication of efforts” when another tribunal may resolve “the same or substantially the same issues.” Fintiv, IPR2020-00019, Paper 11 at 5 n.7, 6, 14; see Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 11 (PTAB Jan. 9, 2020). A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Fintiv, IPR2020-00019, Paper 11 at 6. In the circumstances here, there are few, if any, “concerns about inefficiency and duplication of efforts.” In the 2017 Keysight case, neither the district court nor the jury determined the validity/invalidity of any claim in the ’856 patent over any prior art since the case settled before jury deliberations began. See Ex. 3004, 34; Prelim. Resp. 15; Opp. 3 n.1. Hence, factor (1) does not favor discretionary denial. (b)” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Factor (1): Previous Petition For factor (1), Petitioner did not previously file a petition requesting an inter partes review of any claim in the ’856 patent. We recognize, however, that General Plastic has not been limited to proceedings where the same petitioner files multiple, staggered petitions and that “when different petitioners challenge the same patent,” we should consider “any relationship between those petitioners when weighing the General Plastic factors.” See, e.g., Valve, IPR2019-00062, Paper 11 at 9. In Valve, the Board noted that the petitioner Valve and a previous petitioner HTC “were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, IPR2019-00062, Paper 11 at 1, 10. Based on those particular facts, the Board determined that there was a “significant relationship” between Valve and HTC “with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Here, in contrast to Valve, nothing in the current record indicates that there is a “significant relationship” between Petitioner and PAN “with respect to Patent Owner’s assertion of” the ’856 patent. That Petitioner copied PAN’s petition to present substantively identical challenges to claims 1, 24, and 25 in the ’856 patent does not create a “significant relationship” between Petitioner and PAN. Copying a previously instituted petition is “common in the joinder context” and “an accepted approach” because it is an efficient way to satisfy § 315(c)’s requirement to file a petition that “warrants the institution of an inter partes review.” Expedia, Inc. v. Express Mobile, Inc., IPR2022-00785, Paper 16 at 7–9 (PTAB Sept. 27, 2022). For these reasons, factor (1) does not favor discretionary denial.” slip op. at 50
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,917,856 - PTAB · Jan 4, 2023 · IPR2022-01151 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 24, and 25 on all petition grounds and granted Cisco’s motion to join the PAN IPR, subject to stated conditions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“we decline Patent Owner’s invitation to depart from the “reasonable likelihood” standard for instituting trial. 7. CONCLUSION As discussed above, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 34–67, with PAN Pet. 18–50; see Prelim. Resp. 34, 37; supra § III.B.1; infra §§ III.C.5(c), III.D.3. Based on the current record, and for the reasons discussed above, Patent Owner’s arguments that the Petition fails to satisfy the “reasonable likelihood” standard for instituting trial lack merit. See supra §§ III.B.2–III.B.5. Hence, we determine that the Petition “warrants the institution of an inter partes review under section 314.” See 35 U.S.C. § 315(c).” slip op. at 36
- Other 314aInstitution denied discretionary otherDenied
“For these reasons, Patent Owner’s arguments about harassment and gamesmanship do not warrant the exercise of discretion to deny institution.” slip op. at 42
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“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.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner stipulates as follows: If the Board institutes trial, Petitioner will not pursue, in any further proceedings at the district court, the specific grounds asserted in the inter partes review, or on any other ground that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications). Pet. 22 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Because Petitioner provides a Sotera stipulation, we decline to exercise our discretion under § 314(a) to deny institution based on the Cisco case. See Interim Procedure at 3, 7, 9.” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“potential for abuse” due to multiple, staggered petitions “challenging the same patent and same claims.” Gen. Plastic, IPR2016-01357, Paper 19 at 17. The Board said, “The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 34–67, with PAN Pet. 18–50; see Prelim. Resp. 34, 37. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.5(a). Further, any differences between the Petition and PAN’s petition did not result from roadmapping to correct a deficiency in PAN’s petition because the Board instituted review in the PAN IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016- 01357, Paper 19 at 17. slip op. at 48
Discretionary denialPatents in suitUS 9,917,856 - Honeywell International, Inc. / Sierra Wireless, Inc. et al. v. 3g Licensing S.A.All claims unpatentablePTAB · Dec 6, 2022 · IPR2021-00906 · APJ Jameson Lee · IPR · Final written decision
Claims 1–4, 6, 8, 9, 12, 33–36, 38, 40, 41, 44, 56, 57, 62, and 63 are unpatentable; substitute claims 66–85 are allowed because unpatentability over the asserted prior art was not shown.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“evidence that any of Patent Owner’s proposed substitute claims 66–85 in the Revised Motion to Amend Claims are unpatentable over prior art. Patent Owner, on the other hand, has proved that its proposed substitute claims 66– 1 Petitioner entity Dell, Inc. was terminated from this proceeding on January 11, 2022. Paper 23. Petitioner entities ZTE Corporation and ZTE (USA) Inc. were terminated from this proceeding on October 20, 2021. Paper 17. Petitioner entity Cradlepoint Inc. was terminated from this proceeding on November 7, 2022. Paper 72. Accordingly, Patent Owner’s Revised Motion to Amend Claims is granted. A.” slip op. at 2
- Strike new argumentNew argument consideredDenied
“For the foregoing reasons, Patent Owner’s Motion to Strike is denied.” slip op. at 91
- ExcludeMotion to exclude, deniedDenied
“prejudicial to Petitioner because they all post-date the priority date of the ’388 patent. Paper 59, 3–4. However, as we explained above, these documents need not have pre-dated the critical date of the ’388 patent. It is not necessary that one with ordinary skill in the art would have had access to them prior to June 1, 2004, or July 20, 2004. Petitioner has not shown the alleged prejudice. Additionally, our consideration of these documents did not result in a favorable conclusion for Patent Owner, either on the matter of Patent Owner’s proposed claim construction or on the matter of Patent Owner’s alleged satisfaction of a long-felt need.” slip op. at 97
Patent outcomesUS 7,580,388 unpatentableNonecites Phillips · KSR · Graham · NautilusPatents in suitUS 7,580,388 - PTAB · Oct 19, 2022 · IPR2022-01513 · APJ Tina E Hulse · IPR · Institution
The Board instituted IPR on claims 1–8 on all five grounds previously instituted in IPR2022-00517 and granted Teva’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Teva’s Petition here is substantively identical to Mylan’s Petition in the -517 IPR, challenging the same claims based on the same art and the same grounds. Compare IPR2022-00517, Paper 1 with IPR2022-01513, Paper 2. For the same 1 European Medicines Agency, Assessment Report, Xarelto, EMA/CHMP/794349/2012 (2013). Ex. 1005 (“EMA”). 2 Foley et al., Antithrombotic therapy in peripheral artery disease, 21 VASCULAR MED. 156–69 (2016). Ex. 1006 (“Foley”). 3 Plosker, Rivaroxaban: A Review of Its Use in Acute Coronary Syndromes, 74 DRUGS 451–64 (2014). Ex 1007 (“Plosker”). reasons stated in our Decision Granting Institution of Inter Partes Review in IPR2022-00517, we institute trial in this proceeding on the same five grounds. See IPR2022-00517, Paper 15.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Motion for Joinder. Based on authority delegated to us by the Director, we have discretion to join an inter partes review to a previously instituted inter partes review. 35 U.S.C. § 315(c). Section 315(c) provides, in relevant part, that “[i]f the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311.” Id. When determining whether to grant a motion for joinder, we consider factors such as timing and impact of joinder on the trial schedule, cost, discovery, and potential simplification of briefing. Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 4
NonePatents in suitUS 10,828,310 - Google LLC v. Express Mobile, Inc.InstitutedPTAB · Sep 27, 2022 · IPR2022-00790 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1, 2, 5–7, and 11 on the petition’s grounds and granted Google’s motion to join the Facebook IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This Petition presents the same patentability challenges as those we found sufficient in the Facebook IPR, and Patent Owner does not argue the patentability merits of Petitioner’s challenges at this stage. See Pet. 1 (“[this] petition and the petition in the Facebook IPR Proceeding are substantively identical”); Prelim. Resp. 9, n.2 (“Patent Owner is not including technical merits arguments in its Preliminary Response.”). We thus conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’755 patent for the reasons given in the Institution Decision in the Facebook IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“* * * As explained above, we find that only the first General Plastic factor favors denial. We thus conclude that, considered as a whole, the relevant factors do not favor a discretionary denial of institution.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“the Motion would increase complexity. Petitioner has agreed to act as a understudy and thus will not have a material role in this proceeding unless it becomes the sole petitioning entity. Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13
- PTAB / AIA Trials › §315(e) estoppelOther
“Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13
Discretionary denialPatents in suitUS 9,063,755 - PTAB · Sep 27, 2022 · IPR2022-00785 · APJ Aaron W Moore · IPR · Institution
The Board instituted review on the petition’s challenges and granted joinder in IPR2021-01455, limiting the joined petitioner’s role as specified in its motion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Whether the Petition Warrants Institution 35 U.S.C. § 314(a) provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This Petition presents the same patentability challenges as those we found sufficient in the Facebook IPR, and Patent Owner does not argue the patentability merits of Petitioner’s challenges at this stage. See Pet. 1 (“This Petition raises grounds of unpatentability identical to those in the already instituted in IPR2021-01455.”); Prelim. Resp. 10, n.1 (“Patent Owner is not including technical merits arguments in its Preliminary Response”). We thus conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’755 patent for the reasons given in the Institution Decision in the Facebook IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“For the reasons explained below, we find the present circumstances distinguishable from those in Uniloc, and we decline to deny the Petition based on the General Plastic factors.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We also are not persuaded by Patent Owner’s argument that granting the Motion would increase complexity. Petitioner has agreed to act as an understudy, and thus will not have a material role in this proceeding unless all other entities are terminated. Consistent with our normal practice, all Petitioning entities will speak with one voice. And although Petitioner does identify a new expert, it states that “Dr. Jeffay agrees with Dr. Madisetti’s opinions and adopts them as his own” and that “the declaration of Dr. Jeffay is substantively identical to the declaration of Dr. Madisetti and does not expand on the scope of expert opinions provided by Dr. Madisetti in the Facebook IPR.” Mot. 3 n.1. We understand that Dr. Jeffay will have no active role in the proceeding unless and until Facebook settles and Dr. Madisetti withdraws, in which case Dr. Jeffay will be limited to the positions previously taken by Dr. Madisetti. Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 12
Discretionary denialPatents in suitUS 9,063,755 - Gaf Materials LLC v. Kirsch Research And Development, LLCAll claims unpatentablePTAB · May 24, 2022 · IPR2021-00192 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–33 are unpatentable: claims 1, 8–12, and 19 are anticipated by Lou; the remaining claims are obvious over the stated Lou-based combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patent. See Phillips, 415 F.3d at 1315–17. The term “extrusion lamination” does not appear anywhere in the ’482 patent outside of issued claim 1, but our understanding is supported by the prosecution history of the ’482 patent. Claim 1 as originally filed in the application that issued as the ’482 patent recited, in relevant part, “a reinforcing scrim of interwoven strands for supporting tensile forces in multiple directions; and at least one layer of thermoplastic material affixed to a side of the reinforcing scrim for providing a weather-resistant barrier.” Ex. 1002 (’482 patent prosecution history), 33. In response to a rejection of the claims as anticipated by U.S. Patent No. 5,523,357 to Peterson, describing a rubber mill calendering process, the applicant amended claim 1 to add the phrase “by extrusion lamination.” Id. at 71, 76. We find nothing to suggest that a person of ordinary skill in the art would have understood that amendment to add a requirement of an additional layer of thermoplastic material, separate and apart from the “at least one layer of thermoplastic material” already recited in the original claim, to serve as a binder between the scrim and the original layer of thermoplastic material. The applicant explained in remarks accompanying the amendment, “Peterson fails to disclose forming a thermoplastic layer over the reinforcing scrim by an extrusion lamination process.” Id. at 71 (italics, underlining, and capitalization omitted). We, thus, find that the added phrase specifies how the recited “thermoplastic material” must be “affixed” to “the side of the reinforcing scrim,” but does not alter the recited function of the thermoplastic material, namely, “for providing a weather-resistant barrier.” Although the applicant’s remarks further state that “[c]ontrarily [to the rubber mill calendering process of Peterson], the roofing underlayment of the present invention is formed by an extrusion lamination process which bonds the various layers together, including the pre-formed films, reinforcement scrim, and slip-resistant material” (id.), claim 1 does not recite “pre-formed films” or “slip-resistant material”; such additional layers are recited in dependent claims 5 (“metallized film”) and 2 (“layer of slip-resistant material”), respectively (Ex. 1001, 6:29, 6:37). Looking finally to the extrinsic evidence of record, including the testimony of the parties’ experts and other exhibits filed by the parties, we find no persuasive evidence to show that the recitation of extrusion lamination requires an additional layer in addition to the recited scrim and the at least one layer of thermoplastic material affixed to a side of the scrim. In that regard, notwithstanding Patent Owner’s contentions, we are not persuaded that “extrusion lamination” and “extrusion coating” are mutually exclusive. Rather, we credit Mr. Kaczkowski’s testimony that extrusion coating would also be considered “extrusion lamination” if, for example, it “results in the extrudate being permanently bonded to the substrate.” Ex. 2020, 28:17–20. While Patent Owner argues that Mr. Kaczkowski’s statement “is nothing more than restatement of the extrusion coating process,” and “[t]o think otherwise would require believing that ‘extrusion coating’ involves a thermoplastic layer that is extruded, and thus coated, onto a substrate with the result being that it is not permanently bonded, i.e., it will delaminate from the substrate” (PO Sur-reply 5), we disagree with Patent Owner’s further contentions that “[s]uch a product makes no sense” and “[u]nder Petitioner’s theories, the [prior art] would not work” (id.). Although there could indeed be extrusion coating processes that would result in coatings that are not permanently bonded, it does not follow that the cited prior art used such processes. Further, although a laminate may be affixed to substrate by an adhesive or other binder, we find no persuasive evidence in the record that the binder must be a separate layer from the laminate.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“the “reinforcing scrim of interwoven strands” recited in claim 1 and Lou’s polypropylene polymer 2 to the recited “thermoplastic material.” Id. at 22– 23. Petitioner further contends that Lou discloses “affixing the thermoplastic material by extrusion lamination,” citing Lou’s disclosures that “[e]xtruder 20 supplies polypropylene polymer 2 through a slit orifice to deposit a thin continuous coating on the surface of sheet 1” and that coated sheet 3 is pressed by a calendaring nip formed by heated and unheated rolls. Id. at 23 (quoting Ex. 1005, 2:34–44) (citing Ex. 1003 ¶ 19; Ex. 1005, 2:45– 49).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Having considered the parties’ respective arguments, we find that Petitioner’s contentions are supported by the evidence of record, and we find that Petitioner has articulated sufficient reasoning with rational underpinnings (including support both from the cited prior art and from Mr. Kaczkowski’s testimony) to combine the relevant teachings of Lou and Goodacre. We disagree with Patent Owner’s suggestion it is insufficient that Mr. Kaczkowski opined that a person of ordinary skill would have evaluated the proposed combination based on the combined teachings of the asserted references. As the Supreme Court has explained, When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103. KSR, 550 U.S. at 421. Patent Owner does not dispute Goodacre’s teachings or that combining those teachings with Lou would increase the tensile strength of Lou’s underlayment, but appears instead only to fault Mr. Kaczkowski for not determining whether those solutions would be less expensive than other alternatives. Such arguments are not persuasive. Although, as cited above, Petitioner alleges in the Petition that a skilled artisan would have recognized cross-lamination as “a simpler, less costly way to manufacture a nonwoven reinforcing scrim . . . consistent with Lou” (Pet. 37), we find that is only one among several reasons identified by Petitioner and Mr. Kaczkowski for the combination (see, e.g., id. at 34–35 (additionally identifying increased tensile strength as a well-known benefit of orienting polyolefin fabric)), each of which is independently persuasive.” slip op. at 53
- ExcludeMotion to exclude, grantedGranted
“Motion to Exclude. Federal Rule of Evidence 801 defines “hearsay” as a “a statement that: (1) the declarant does not make while testifying in the current trial or hearing; and (2) a party offers in evidence to prove the truth of the matter asserted in the statement.” Fed. R. Evid. 801(c). We agree with Petitioner that Patent Owner is offering Dr. Reitman’s testimony for its truth. As Petitioner points out, Dr. Reitman’s testimony is presented in the Patent Owner Response in alleged support of Patent Owner’s argument. See Reply Mot. Excl. 1 (citing PO Resp. 22 (“Maureen Reitman recognized that ‘extrusion coating’ and ‘extrusion lamination’ were two different processes”; “[A]s Ds. [sic] Reitman recognized, a POSITA would understand ‘extrusion coating’ to be different than ‘extrusion lamination.’”)). Further, Rule 802 provides that hearsay is not admissible unless a federal statute, the Federal Rules of Evidence, or other rules prescribed by the Supreme Court provide otherwise. Fed. R. Evid. 802. We agree with Petitioner that no exception or exclusion applies in this case. Mot. Excl. 1. Although, as Patent Owner contends, Federal Rule of Evidence 703 provides that “[a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed,” and that “[i]f experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted,” we are not persuaded that opinions of others offered in litigation are the sort of “facts or data” that experts in the field of roofing underlayments would reasonably rely on in forming their own opinions.” slip op. at 64
Patent outcomesUS 6,308,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,308,482 - Commonwealth Scientific And Industrial Research Organisation v. BASF Plant Science GmbHAdverse judgmentPTAB · Jan 11, 2022 · PGR2021-00004 · APJ Jo-Anne M Kokoski · PGR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims, claims 1–9.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Here, Patent Owner disclaimed claims 1–9 of the ’183 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). See Ex. 2001, 1. Accordingly, we construe Patent Owner’s Disclaimer as a request that the Board enter judgment against it with respect to claims 1–9, the only claims at issue in this trial, and we grant that request. See Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as a request for adverse judgment), aff’d Case No. 2021-01648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021).” slip op. at 2
NonePatents in suitUS 10,533,183 - Pfizer, Inc. / Samsung Bioepis Co., Ltd. v. Genentech, Inc.Some claims unpatentablePTAB · Nov 29, 2018 · IPR2017-02139 · APJ Robert A Pollock · IPR · Final written decision
Claims 1, 2, 4, 25, 29–31, 33, 62–64, 66, 67, 69, 72, 78, 80, and 81 are unpatentable; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner Samsung Bioepis Co., Ltd. (“Bioepis”) timely submitted a Petition presenting substantially the same challenges as set forth in Pfizer’s Petition along with a request for joinder to IPR2017-01488. IPR2017- 02139. Paper 1. We granted Bioepis’s Petition and associated request for joinder to this case. IPR2017-02139, Paper 11, 6–7.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Person of Ordinary Skill in the Art The parties propose similar definitions of a person of ordinary skill for the ’213 patent. See Pet. 15–16; Prelim. Resp. 18; PO Resp. 18. In our institution decision, we adopted Patent Owner’s proposal that “[a] person of ordinary skill for the ’213 patent would have had a Ph.D. or equivalent in chemistry, biochemistry, structural biology, or a closely related field, and experience with antibody structural characterization, engineering, and/or biological testing, or an M.D. with practical academic or industrial experience in antibody development.” Dec. 8. Petitioners do not contest this definition in its Reply and we find no reason to revise our earlier determination.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“variable domain,” which appears in claims 4, 33, 62, and 69, to mean “a human variable domain which comprises the most frequently occurring amino acid residues at each location in all human immunoglobulins of any particular subclass or subunit structure.” Prelim. Resp. 18–19; PO Resp. 19. Patent Owner correctly points out that this “construction comes directly from the definition provided in the ’213 patent.” Prelim. Resp. 19 (citing Ex. 1001, 11:32–38). Petitioners expressly adopt this construction in their Reply. Pet. Reply 5–6. We do not agree, however, that the claims demand a consensus of “all” human immunoglobulins in the literal sense. Indeed, Petitioners point out that “the ‘consensus’ sequence used for the patent variants was generated using the most common residue at each position identified in [Kabat 198711].” Pet. Reply 15 (citations omitted). And though Patent Owner attempts to distinguish Queen 1990 as describing “a consensus framework from many human antibodies,’ not all as in the ’213 patent,’” it presents no argument as to why we should interpret the claim in this manner. 11 Kabat et al., Sequences of Proteins of Immunological Interest: Tabulation and Analysis of Amino Acid and Nucleic Acid Sequences of Precursors, V- Regions, C-Regions, J-Chain, T-Cell Receptor for Antigen, T-Cell Surface Antigens β2-Microglobulin, Major Histocompatibility Antigens, Thy-1 Complement, C-Reactive Protein, Thymopoietin, Post-Gamma Globulin, and α2-Macroblobulin, 41–175 (4th Ed. 1987). Ex. 1052. See PO Resp. 47. Moreover, in a parallel proceeding involving the same patent, Patent Owner did not dispute that the reference to “all sequences” in the patent, “refer[s] to all known sequences and there’s no dispute . . . that was really synonymous with Kabat 1987.” See IPR2017-01374 Paper 82, Tr. 15:4–16:4; see Ex. 1202 ¶ 157; Ex. 2105 ¶¶ 24–25; Ex. 2107 ¶¶ 18–19; Ex. 1198, 56:20–61:24; Ex. 1199, 27:14–28:13, 29:25–36:2, 57:1–58:6, 115:7–17, 165:17–169:9. Indeed, in a similar parallel proceeding, counsel for Patent Owner acknowledged that the term “all human immunoglobulins” refers to “all reasonably available[,] all known at the time of the invention.” IPR2017-01373, Paper 83, 47:21–48:5. Accordingly, we adopt the parties’ proposed construction, with a clarifying modification, specifically, “a human variable domain which comprises the most frequently occurring amino acid residues at each location in all human immunoglobulins of any particular subclass or subunit structure, as set forth in Kabat 1987.”” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“lacks immunogenicity compared to a non-human parent antibody upon repeated administration to a human patient.” In our institution decision, we determined that this claim language “refer[s] to a humanized antibody having reduced immunogenicity in a human patient as compared to its non-humanized parent antibody.” Dec. 10–12. Neither party disputes this interpretation. See PO Resp. 19; Pet. Reply 5–6. Consistent with claim 63’s express comparison between the immunogenicity of the claimed humanized antibody and that of its non-human parent, the Specification states that one object of the invention is to “to provide methods for the preparation of antibodies which are less antigenic in humans than non-human antibodies but have desired antigen binding and other characteristics and activities.” Ex. 1001, 4:24–28. The Specification similarly states that embodiments within the scope of the claims have “low immunogenicity,” or are designed to “minimize the potential immunogenicity of the resulting humanized antibody in the clinic.” Id. at 52:54–58, 61:56–61. Moreover, with reference to claim 63 in particular, Patent Owner points to the ’272 application as “explain[ing] that the purpose of humanizing antibodies using its consensus sequence approach is to reduce immunogenicity versus the non-human parent antibody. (Id., 6:24–30, 84:24–30.).” Prelim. Resp. 42 (citing Ex. 2032 (File History for U.S. Patent Application No. 07/715,272 (“the ’272 application”)); see also id. at 38 (indicating that the limitation is satisfied where “[o]nly 1 out of 885 patients experienced an immunogenic response . . . which was a substantial improvement over the murine 4D5 antibody”). In light of the above, we do not alter our prior determination that “[a] humanized antibody which lacks immunogenicity compared to a non-human parent antibody upon repeated administration to a human patient,” refers to a humanized antibody having reduced immunogenicity in a human patient as compared to its non-humanized parent antibody.” slip op. at 14
Patent outcomesUS 6,407,213 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 6,407,213
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.