- PTAB · Jul 3, 2023 · PGR2023-00014 · APJ Georgianna W Braden · PGR · Institution
The Board instituted PGR on claims 1–5 and all asserted challenges, finding written description and enablement challenges met the threshold but the Harris–Xing obviousness challenge did not.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner’s argument is unpersuasive because the combination of Harris with Xing is not cumulative of Pavlakis, Harris-2015, and Damsky. Here the combination of Harris with Xing is argued in different ways compared to what was made to the Examiner. Additionally, we agree with Petitioner that Xing discloses information the Examiner indicated were absent from the prior art. See Ex. 1010, 14–15. For example, Xing teaches administering a therapeutically effective amount of an inhibitor of IL-15 or the IL-15 receptor is administered to the subject. Compare id. at 15, with Ex. 1007, 3. Xing also teaches that TM-β1-mediated blockade of CD122 prevented disease development and progression and that inhibiting IFN-γ production downstream of IL-15 through topical administration of JAK inhibitors effectively eliminated existing lesions. Thus, we do not find that the same or substantially the same arguments were presented previously to the Office, nor do we find that the same or substantially the same art was previously presented to the Office. Thus, the first part of the Advanced Bionics framework is not satisfied for Petitioner’s § 103 challenge, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny institution of a trial proceeding on this challenge.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“At this stage of the proceeding, Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and uses Petitioner’s proposed level of skill. Prelim. Resp. 16. For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’505 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Both parties state that express claim construction is unnecessary at this stage of the proceeding and that all terms are to given their plain and ordinary meaning. Pet. 23; Prelim. Resp. 17. We agree. Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 terms for purposes of institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4. A post-grant review may not be instituted unless it is determined that “the information presented in the petition filed under section 321, 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.” 35 U.S.C. § 324 (2018); see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). The “more likely than not” standard requires greater than 50% chance of prevailing. Consolidated Trial Practice Guide 58 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. For the reasons provided below and based on the record before us, we determine Petitioner has demonstrated that it is more likely than not that it would prevail in showing the unpatentability of at least one of the challenged claims. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Accordingly, we institute a post-grant review of the ’505 patent and all of the asserted challenges to patentability.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,278,505 - Life Spine, Inc. v. Globus Medical, Inc.InstitutedPTAB · Jun 15, 2023 · IPR2022-01600 · APJ Kristi L R Sawert · IPR · Institution
Instituted IPR on all grounds for claims 1–20; the Board found a reasonable likelihood of obviousness over Olmos and Varela ’774 for claims 1–7 and 9–20, and over Varela ’357 and Oglaza for claim 8.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the same or substantially the same prior art or arguments previously were presented to the Office.” The Board analyzes this issue under a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. slip op. at 11
- Other 314aDenied
“1. Legal Standard As noted above, institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (authorizing institution of an inter partes review under particular circumstances, but not requiring institution under any circumstances); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); SAS, 138 S. Ct. at 1356 (stating that “[section] 314(a) invests the Director with discretion on the question whether to institute review” (emphasis omitted)). 2. Analysis Patent Owner contends that “[s]hould the Board agree that all Grounds fail except for Ground 2, then Patentee requests the Board discretionarily deny this Petition under §314(a).” Prelim. Resp. 77. Patent Owner contends that it would be “a waste of Board and party resources to proceed with an IPR here on a single dependent claim, if Petitioner has not met its burden with respect to the nineteen (19) other claims.” Id. at 78 (citing Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42–43 (PTAB Jan. 24, 2019) (informative)). We do not agree with Patent Owner that all grounds of unpatentability fail except for Petitioner’s second asserted ground. Instead, for the reasons discussed below, we determine that Petitioner has met its burden in showing a reasonable likelihood of unpatentability based on all asserted grounds of unpatentability except for Ground 1. Infra §§ G–I. Asserted Grounds 2, 3, and 4 cover all twenty claims of the ’649 patent. Pet. 3. Thus, we decline to exercise our discretion to deny institution under § 314(a) as Patent Owner requests. See Prelim. Sur-reply 6 (contending that “if the Board agrees that all Grounds fail except for Ground 2, then the Board should discretionarily deny the Petition under §314(a)”).” 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. Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”): would have had a bachelor’s degree in mechanical engineering or biomedical engineering and two or more years of experience in biomechanical engineering, biomedical engineering, and/or spinal implant devices. A person could also have qualified as a POSITA with some combination of more formal education (e.g., an M.D.) and less technical experience or less formal education and more technical or professional experience in the foregoing fields, and would have had further appreciation of various technical concepts in this field. Pet. 18 (citing Ex. 1002 ¶¶ 32–35). Patent Owner does not presently dispute Petitioner’s proposal. Prelim. Resp. 8. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no terms require constructions differing from their plain and ordinary meaning.” Pet. 19. Patent Owner “currently takes no position on Petitioner’s assertion” but “reserves the right to propose specific constructions in this proceeding, if necessary.” Prelim. Resp. 7–8. We determine that no claim terms require express construction for this Decision. Any final written decision entered in this case may include a final claim construction based on the full trial record that differs from any discussion of claim scope provided in our analysis below.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,973,649 - Life Spine, Inc. v. Globus Medical, Inc.InstitutedPTAB · Jun 14, 2023 · IPR2022-01602 · APJ Kristi L R Sawert · IPR · Institution
The Board instituted IPR on claims 1–14 on all six asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and any Patent Owner Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”): would have had at least a Bachelor’s Degree in mechanical engineering or biomedical engineering and two or more years of experience in biomechanical engineering, biomedical engineering, and/or spinal implant devices. A person could also have qualified as a POSITA with some combination of more formal education (e.g., an M.D.) and less technical experience or less formal education and more technical or professional experience in the foregoing fields. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 11 (citing Ex. 1002 ¶¶ 76–79). Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that “no terms require constructions differing from their plain and ordinary meaning.” Pet. 12. We determine that no claim terms require express construction for this Decision. Any final written decision entered in this case may include a final claim construction based on the full trial record that differs from any discussion of claim scope provided in our analysis below.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires that a prior art reference set forth each and every element of a claim as set forth in the claim. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (anticipation not only requires that each element of a claim be present in a prior art reference, but also the arrangement or combination of those elements as claimed).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,956,087 - Life Spine, Inc. v. Globus Medical, Inc.InstitutedPTAB · Apr 20, 2023 · IPR2022-01599 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all asserted grounds challenging claims 1, 7–13, and 16, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Other 314aDenied
“We are not persuaded by Patent Owner’s arguments. Every ground in the Petition uses “and/or” once, namely, in the phrase “Boehm and/or Song.” See Pet. 3–4. Additionally, ground 3 optionally adds Baynham, and ground 6 optionally adds Chung. See id. Patent Owner is correct that these variations arguably lead to nominally more than the six combinations listed in the Petition. See Prelim. Resp. 7–8. Nevertheless, we agree with Petitioner that “[t]hese alternatives impose no meaningful additional burden.” Prelim. Reply 7. This is because the Petition “alternatively cites Boehm, Song, Varela-’774, and Baynham for specific limitations, i.e., dilator/cannula (Boehm and Song), overlapping (Varela-’774), and central ramp extension limitations (Baynham).” Id. (citing, e.g., Pet. 11–19, 63–72, 76, 116–17). Thus, under the circumstances presented here, we find that because the “alternative combinations are used to teach the same limitation[s],” “the additional burden is minimal.” Protect Animals with Satellites v. OnPoint Sys., LLC, IPR2021-01483, Paper 11, 18 (PTAB Mar. 4, 2022). Moreover, the differences between the alternative grounds set forth in the Petition are not particularly difficult to understand. Indeed, Patent Owner itself succinctly summarizes those differences. See Prelim. Resp. 20–21. This case is materially different than Adaptics, where the Board found the petition “suffers from a lack of particularity that results in voluminous and excessive grounds.” Adaptics, IPR2018-01596, Paper 20, 18. The petition included a “catch-all” ground that cited “up to ten references connected by the conjunction ‘and/or,’” “yielding hundreds of possible combinations,” “none of which [wa]s presented with sufficient particularity.” Id. at 18–19. The petitioner and its declarant also relied on additional documents beyond those named in the grounds themselves, requiring “the Board and Patent Owner to search the record for evidence that might support the full breadth of Petitioner’s contentions.” Id. at 22–23. Here, the Petition does not present “hundreds of possible combinations,” nor is there any allegation of reliance on additional references beyond those named in the grounds themselves. For the above reasons, we decline to discretionarily deny the Petition based on a lack of particularity. B. Discretionary Denial Under § 325(d)” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The Advanced Bionics framework “reflects a commitment to defer to previous Office evaluations of the evidence.” Id. at 9. Here, however, the Office did not evaluate Chung or the arguments Petitioner presently advances based on Chung in its prior consideration of Olmos. Thus, based on the totality of the evidence presented, we are not persuaded that Petitioner’s similar mapping of Chung and Olmos to the challenged claims—where that mapping differs from the Examiner’s mapping of Olmos to applicant’s claims—compels a conclusion that Chung is cumulative of Olmos. Five of the six grounds listed in the Petition include Chung, a reference that was not before the Examiner. And Petitioner uses Chung differently than the Examiner used the allegedly cumulative reference, Olmos. Accordingly, we find that the first part of the Advanced Bionics framework is not met with respect to Chung. See, e.g., Halliburton Energy Servs., Inc. v. U.S. Well Servs., LLC, IPR2021-01036, Paper 12 at 19–20 (PTAB Jan. 19, 2022); Advanced Bionics, IPR2019-01469, Paper 6 at 10. For these reasons, even though Olmos, Baynham, and Boehm were before the Office, and Song is cumulative of Boehm, we find that in view of our analyses above regarding Varela and Chung, § 325(d) is not sufficiently implicated such that its statutory purpose would be undermined by instituting on all challenges. See SAS Q&A’s (June 5, 2018),10 Question/Answer D1 (explaining that “[i]n view of the Office’s policy to institute on all challenges or none,” where “only some of the challenges fall within” the scope of § 325(d), “[t]he panel will evaluate the challenges and determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on all challenges”). Additionally, even if the first part of the Advanced Bionics framework were met, we would also find that “the Office erred in a manner material to the patentability of challenged claims” under the second part of the Advanced Bionics framework. Advanced Bionics, IPR2019-01469, Paper 6 at 8. For example, we are persuaded that Petitioner, by showing a reasonable likelihood that the challenged claims would have been obvious over Olmos with Boehm and/or Song (as discussed below in Section II.J), has demonstrated that the Examiner erred by not applying Olmos and Boehm in the manner Petitioner argues and as supported by Dr. Drewry. See, e.g., Apple Inc. v. MPH Techs. OY, IPR2019-00820, Paper 10 at 16–17 (PTAB Oct. 7, 2019); Advanced Bionics, IPR2019-01469, Paper 6 at 8–9 n.9 (stating that “[a]n example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims”). For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“understanding of a person of ordinary skill in the art at the time the invention was made.12 See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”): would have had a bachelor’s degree in mechanical engineering or biomedical engineering and two or more years of experience in biomechanical engineering, biomedical engineering, and/or spinal implant devices. A person could also have qualified as a POSITA with some combination of more formal education (e.g., an M.D.) and less technical experience or less formal education and more technical or professional experience in the foregoing fields, and would have had further appreciation of 11 Patent Owner does not presently assert objective indicia supporting nonobviousness of the challenged claims. See generally Prelim. Resp. 12 As noted above (supra n.2), for purposes of this Decision we need not decide whether the challenged claims have a priority date in June 2012 or September 2010. The current record reflects that the level of skill in the art would have been the same under either date. See Ex. 1002 ¶ 32. various technical concepts in this field, as explained by Prof. Drewry. Pet. 5 (citing Ex. 1002 (Drewry Decl.) ¶¶ 31–32). Patent Owner does not presently dispute Petitioner’s proposal. Prelim. Resp. 6–7. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level). E. Claim Construction” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“On this preliminary record, Petitioner has the better argument. It appears that Patent Owner’s construction improperly reads in limitations from example embodiments, such as the embodiments depicted in Figures 58, 64, 67, 52, 25, and 46 of the ’732 patent. See Prelim. Resp. 48–52 (Patent Owner’s annotated Figures 58, 64, 67, 52, 25, and 46). Patent Owner does not adequately explain why the example embodiments depicted in the Specification should be understood to limit the claims. Indeed, on the present record, Patent Owner’s construction appears to run contrary to the Federal Circuit’s guidance that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); see also Phillips v. AWH Corp, 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Petitioner demonstrates that the Specification uses the term “extension” more broadly to refer to a variety of structures, not merely to structures that “increase the length of the central ramp.” See, e.g., Prelim. Reply 1; Ex. 1001, 6:47–58, Fig. 10 (element 46), 12:8–10, 40–43, Fig. 23 (elements 250 and 254), 10:40–45, 11:1–19, Fig. 24 (elements 202, 204, 224). Patent Owner does not take into account the Specification’s use of the term “extension” in connection with structures other than the central ramp (see, e.g., Prelim. Sur-reply 1–2), but on this record nothing indicates that the patentee intended a special definition for the term “extension” in the context of the central ramp. For purposes of this Decision, we apply what we presently understand to be the plain and ordinary meaning of the term “extension” within the phrase “central ramp extension,” i.e., “an addition to the main structure.” See Ex. 3002, 4. Thus, we preliminarily construe the term “central ramp extension” to mean “an addition to the central ramp.” This construction is consistent with the broad use of the term “extension” in the Specification to refer to a variety of additions to a main structure having a variety of shapes. See, e.g., Prelim. Reply 1; Ex. 1001, 6:47–58, Fig. 10 (element 46), 12:8–10, 40–43, Fig. 23 (elements 250 and 254), 10:40–45, 11:1–19, Fig. 24 (elements 202, 204, 224). To the extent either party disagrees with this preliminary construction, they should timely present evidence and argument in support of their construction at trial.” slip op. at 20
Claim constructionDiscretionary denialcites KSRPatents in suitUS 8,845,732 - Life Spine, Inc. v. Globus Medical, Inc.InstitutedPTAB · Apr 19, 2023 · IPR2022-01435 · APJ Kristi L R Sawert · IPR · Institution
The Board instituted review of claims 1–11 on all asserted grounds because the Olmos obviousness challenge to claims 1–11 met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We are not persuaded that Chung is cumulative of Olmos. Patent Owner presents a table purporting to show that Petitioner’s mapping of Chung to the challenged claims is similar to Petitioner’s mapping Olmos to the challenged claims. See Prelim. Resp. 12–20. This mapping, Patent Owner argues, “demonstrates that Chung is ‘substantially similar’ to Olmos and therefore cumulative.” Id. at 12. Petitioner, however, maps Olmos to the challenged claims in a materially different manner than the Examiner mapped Olmos to the claims during prosecution. As one example, Patent Owner itself points out that Petitioner maps Olmos’s “elevated guide 232/272” to the claimed “rod receiving extension,” whereas the Examiner never made this mapping. Id. at 20. Instead, according to Patent Owner, the Examiner allowed the claims over Olmos once “rod receiving extension” was added to independent claim 1. Id. at 6–7; see also id. at 26 (“[I]t is clear that the Examiner never considered guide 232/272 to be an ‘extension,’ which is precisely why the Examiner allowed the ’001 Patent claims over Olmos when ‘rod receiving extension’ was added to the independent claims.”); Advanced Bionics, IPR2019-01469, Paper 6, at 15 (in analyzing whether Charvin and Zimmerling are “substantially the same art,” “review[ing] whether Petitioner relies on Charvin in substantially the same manner as the Examiner cited Zimmerling during prosecution such that Charvin discloses substantially the same information as Zimmerling in relevant part”). We also find that “the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art” are different. Advanced Bionics, IPR2019-01469, Paper 6, at 9 n.10. The Advanced Bionics framework “reflects a commitment to defer to previous Office evaluations of the evidence.” Id. at 9. Here, however, the Office did not evaluate Chung or the arguments Petitioner presently advances based on Chung in its prior consideration of Olmos. Thus, based on the totality of the evidence presented, we are not persuaded that Petitioner’s similar mapping of Chung and Olmos to the challenged claims—where that mapping differs from the Examiner’s mapping of Olmos to applicant’s claims—compels a conclusion that Chung is cumulative of Olmos. Four out of five grounds advanced in the Petition include Chung, a reference that was not before the Examiner. And Petitioner uses Chung differently than the Examiner used the allegedly cumulative reference, Olmos. Accordingly, we find that the first part of the Advanced Bionics framework is not met with respect to the grounds that include Chung. See, e.g., Halliburton Energy Servs., Inc. v. U.S. Well Servs., LLC, IPR2021- 01036, Paper 12 at 19–20 (PTAB Jan. 19, 2022); Advanced Bionics, IPR2019-01469, Paper 6 at 10. The remaining ground does not include Chung. See Pet. 3 (alleging that claims 1–11 are anticipated by, or obvious over, Olmos alone). Under these circumstances, we must “evaluate the challenges and determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on all challenges,” and if so, “evaluate whether the entire petition should be denied.” SAS Q&A’s (June 5, 2018), Question/Answer D1.6 Here, given the requirement to institute on all challenges or none and the fact that Petitioner maps Olmos to the challenged claims in a materially different manner than the Examiner, we determine that § 325(d) is not sufficiently implicated such that its statutory purpose would be undermined by instituting on all challenges. Additionally, even if the first part of the Advanced Bionics framework were met, we would also find that “the Office erred in a manner material to the patentability of challenged claims” under the second part of the Advanced Bionics framework. Advanced Bionics, IPR2019-01469, Paper 6 at 8. For example, we are persuaded that Petitioner, by showing a reasonable likelihood that at least one challenged claim would have been obvious over Olmos (as discussed below in § II.I), has demonstrated that the Examiner erred by not applying Olmos in the manner Petitioner argues and as supported by Dr. Drewry. See, e.g., Apple Inc. v. MPH Techs. OY, IPR2019-00820, Paper 10 at 16–17 (PTAB Oct. 7, 2019); see also Advanced Bionics, IPR2019-01469, Paper 6 at 8–9 n.9 (stating that “[a]n example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims”). For these reasons, and considering the Petition as a whole, we decline” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims of the ’001 patent is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of any challenged claim or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Any final decision in this proceeding will be based on the full trial record.” slip op. at 48
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”): as of September 3, 2010, would have had a bachelor’s degree in mechanical engineering or biomedical engineering and two or more years of experience in biomechanical engineering, biomedical engineering, and/or spinal implant devices. A person could also have qualified as a POSITA with some combination of more formal education (e.g., an M.D.) and less technical experience or less formal education and more 7 Patent Owner does not presently assert objective indicia supporting nonobviousness of the challenged claims. See generally Prelim. Resp.; Prelim. Sur-reply. technical or professional experience in the foregoing fields, and would have had further appreciation of various technical concepts in this field, as explained by Prof. Drewry. Pet. 5 (citing Ex. 1002 (Drewry Decl.) ¶¶ 31, 43–64). Patent Owner does not presently dispute Petitioner’s proposal. Prelim. Resp. 1–2. Because Petitioner’s proposed level of ordinary skill in the art is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level). Because the claims at issue are directed to a surgical method, the parties are encouraged to address in their papers at trial whether a person of ordinary skill in the art would have had more formal medical training than that required by Petitioner’s proposal.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On this preliminary record, we do not discern a meaningful difference between the parties’ proffered constructions. Both parties agree that the rod receiving extension must “receive a rod,” and Petitioner acknowledges that the “rod receiving extension” is “a longitudinal protrusion on the central ramp.” Prelim. Reply 2. At most, then, it appears that the parties disagree about the length of the extension. Compare, e.g., Prelim. Resp. 34 (stating that the rod receiving extension must increase or extend the axial length of the central ramp), with Prelim. Reply 2 (stating that “[t]here is no requirement that the extension have a particular shape or that it lengthen the central ramp”). That dispute, however, need not be resolved to apply the prior art in this Decision. For this Decision, we apply Petitioner’s construction of “a longitudinal protrusion on the central ramp that receives a rod.” Prelim. Reply 2. The parties are encouraged to further develop the record at trial as to how an ordinarily skilled artisan, at the time of the invention, would have interpreted “rod receiving extension” in light of the disclosure of the ’001 patent, and more clearly explain any relevant differences between their interpretations. Any final written decision entered in this case may include a final claim construction based on the full trial record that differs from this preliminary construction, or from any discussion of claim scope provided in our analysis below.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,137,001 - Life Spine, Inc. v. Globus Medical, Inc.InstitutedPTAB · Mar 24, 2023 · IPR2022-01434 · APJ Cynthia M Hardman · IPR · Institution
Instituted IPR on all asserted grounds against claims 1–15 after finding a reasonable likelihood that claim 15 is anticipated by Chung.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the same or substantially the same prior art or arguments previously were presented to the Office.” The Board analyzes this issue under a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering all of the arguments and evidence of record, we determine that for purposes of institution, Petitioner has sufficiently shown that Chung discloses an intervertebral implant that teaches all limitations of claim 15. See Pet. 57–62. The arguments and evidence for limitation 15[g]’s “extension” are the same as for the “extension” of claim 1. See, e.g., Pet. 58, Prelim. Resp. 32–47. Thus, we refer back to our analysis above (see supra Section II.F.1.a.i) in determining that Petitioner has sufficiently shown for purposes of institution that Chung teaches the claimed “extension.” On this record, Petitioner has shown a reasonable likelihood of establishing that claim 15 is anticipated by Chung. On that basis, we institute an inter partes review of all challenged claims. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018); 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On this preliminary record, Petitioner has the better argument. It appears that Patent Owner’s construction improperly reads in limitations from example embodiments, such as the embodiments depicted in Figures 25 and 46 of the ’731 patent. See Prelim. Resp. 39 (Patent Owner’s annotated Figures 25 and 46). Petitioner demonstrates that both the Specification and the Examiner used the term “extension” more broadly to refer to a variety of structures, not merely to structures that “increase the length of the central ramp.” See, e.g., Prelim. Reply 3; Ex. 1001, 5:47–58, Fig. 10, 11:8–10, 11:40–42, Fig. 23, 9:40–45, 10:1–19, Fig. 24, claims 2, 3; Ex. 1004, 42–44, 66–67, 126–27. Patent Owner seeks to ignore the Specification and Examiner’s use of the term “extension” in connection with structures other than the central ramp (see, e.g., Prelim. Sur-reply 4), but on this record nothing indicates that the patentee intended a special definition for the term “extension” in the context of the central ramp. For purposes of this Decision, we apply the plain and ordinary meaning of the term “extension,” i.e., “an addition to a main structure.” See Ex. 3001, 4. This construction is consistent with the broad use of the term “extension” in the Specification to refer to a variety of additions to a main structure having a variety of shapes.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“Petitioner’s annotated excerpt of Chung’s Figure 1 (reproduced above on the left) does not appear to show that extension/dovetail (32) extends in a longitudinal direction from the expansion portion (yellow). Instead, it terminates in the longitudinal direction at or before the edges of the expansion portion (yellow). Additionally, on this record, we find that the annotated excerpt of Chung’s Figure 2 is inconclusive as to whether extension/dovetail (32) extends in a longitudinal direction from the expansion portion (yellow). Based on the excerpt of Chung’s Figure 2, it is equally likely that the structures colored blue and yellow terminate in the same plane, as shown in Patent Owner’s further annotated excerpt of Chung’s Figure 2, reproduced below: Prelim. Resp. 77. In Patent Owner’s further annotated excerpt of Chung’s Figure 2 reproduced above, Patent Owner demonstrates that Chung’s dovetail (blue) protrudes in a direction (shown by the blue dashed arrow) that is acute to the longitudinal axis (red dashed line), but does not appear to extend in a longitudinal direction past the plane where the expansion portion (yellow) terminates. See id. On this record, we find Patent Owner’s interpretation of Chung Figure 2 more plausible than Petitioner’s.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,845,731 - PTAB · Mar 3, 2023 · IPR2022-01359 · APJ Michael A Valek · IPR · Institution
The Board instituted inter partes review of claims 1, 3, 4, and 6–15 on all asserted obviousness grounds based on Park, Kim, Williams, and, for claims 11–13, Hileman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETION UNDER 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise discretion to deny institution under Fintiv6 “due to the advanced state of the parallel District 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective after the filing of the applications to which the ’191 patent claims priority. Therefore, we apply the pre-AIA version of the statute. 2 WO 01/11523 A1, published Feb. 15, 2001 (Ex. 1005) (“Park”). 3 KR2003-0085802, published Nov. 7, 2003 (Ex. 1007). The Petition relies on a certified translation of this Korean language reference (Ex. 1006), which we refer to herein as “Kim.” 4 WO 2008/052013 A2, published May 2, 2008 (Ex. 1008) (“Williams”). 5 US 2003/0040944 A1, published Feb. 27, 2003 (Ex. 1009) (“Hileman”). 6 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). Court proceeding.” See Prelim. Resp. 4–15. Petitioner contends that the Fintiv factors do not favor discretionary denial here. See Pet. 71–74. After considering the parties’ arguments and the circumstances of this case, we decline to exercise discretion to deny institution under 35 U.S.C. § 314(a). In particular, Petitioner has stipulated that if inter partes review is instituted it will not pursue the invalidity grounds raised in the Petition or any other ground that reasonably could have been raised in the Delaware litigation. Ex. 1033, 1. The Director has provided guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1013, 3, 7.7 That guidance applies here.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner’s argument is not persuasive. Even assuming the Examiner considered the particular disclosures Patent Owner cites in Angert, Petitioner has sufficiently shown that Park and Kim provide additional teachings that are material to the challenged claims. For example, the Petition relies on Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed of the delivery of their order” that they can “interactively view, in real-time.” See, e.g., Pet. 18, 34–35 (quoting Ex. 1005, 4:27–32, 48:18–20). Moreover, the Petition relies on Kim’s teaching that in addition to providing images of the delivery, a delivery agent can utilize a digital camera in mobile communication terminal to send images of the product to the customer so they “can confirm whether the product ordered is identical to the product being delivered.” Id. at 19 (citing Ex. 1006, 1–2). As explained in our analysis of Ground 1 below, such teachings are material to Petitioner’s patentability challenges. We see no corollary to these teachings in Angert nor does Patent Owner otherwise identify any similar teachings or arguments the Examiner previously considered. See generally Prelim. Resp. 44–46. For these reasons, the Petition does not present the same or substantially the same art or arguments as that previously presented to the Office. Because the first part of the Advanced Bionics framework has not been met, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s showing is sufficient to establish a reasonable likelihood that it will prevail in demonstrating that claims 1 and 14 are obvious over Park, Kim, and Williams. Patent Owner’s arguments against institution in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) in August 2009 (the earliest alleged priority date) would have been someone knowledgeable and familiar with the electronic commerce arts that are pertinent to the ’191 patent. That person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce. Lack of work experience can be remedied by additional education, and vice versa. Pet. 13 (citing Ex. 1003 ¶ 24). Patent Owner offers a similar description of a POSITA. Prelim. Resp. 19. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision. Moreover, we do not perceive any meaningful difference between the parties’ respective descriptions of the level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,202,191 - PTAB · Mar 3, 2023 · IPR2022-01358 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 12, 14, 18, 19, and 21–28 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“After considering the parties’ arguments and the circumstances of this case, we decline to exercise discretion to deny institution under 35 U.S.C. § 314(a). In particular, Petitioner has stipulated that if inter partes review is instituted it will not pursue the invalidity grounds raised in the Petition or any other ground that reasonably could have been raised in the Delaware litigation. Ex. 1033, 1. The Director has provided guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1013, 3, 7.8 That guidance applies here.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner’s argument is not persuasive. Even assuming the Examiner considered the particular disclosures Patent Owner cites in Angert, Petitioner has sufficiently shown that Park and Kim provide additional teachings that are material to the challenged claims. For example, the Petition relies on Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed of the delivery of their order” that they can “interactively view, in real-time.” See, e.g., Pet. 18, 34–35 (quoting Ex. 1005, 4:27–32, 48:18–20). Moreover, the Petition relies on Kim’s teaching that in addition to providing images of the delivery, a delivery agent can utilize a digital camera in mobile communication terminal to send images of the product to the customer so they “can confirm whether the product ordered is identical to the product being delivered.” Id. at 19 (citing Ex. 1006, 1–2). As explained in our analysis of Ground 1 below, such teachings are material to Petitioner’s patentability challenges. We see no corollary to these teachings in Angert nor does Patent Owner otherwise identify any similar teachings or arguments the Examiner previously considered. See generally Prelim. Resp. 44–46. For these reasons, the Petition does not present the same or substantially the same art or arguments as that previously presented to the Office. Because the first part of the Advanced Bionics framework has not been met, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On the current record, we disagree with Patent Owner and find that Petitioner has articulated a sufficient rationale for combining the references. Petitioner asserts, supported by the testimony of its declarant and teachings in Park and Kim, that the combination would “enhance the reliability of the delivery” and “increase customer satisfaction” by providing a “a sensory cue of a visual comparison between the product to be delivered and the desired product.” See Pet. 20–23 (citing exhibits). Petitioner also explains that the problem Kim’s product confirmation functionality is intended to address is “particularly acute” for perishable items such as food, which Park teaches its system is designed to deliver. Id. at 21. Petitioner acknowledges that adding Kim’s functionality would add time to the delivery process, but argues that “[a]ny additional time . . . could be absorbed into the desired hour delivery time of Park” or “alternatively, a POSITA would have recognized that the confirmation teachings of Kim could be provided as an option to the user with an advisory message to the user that such confirmation may add time to his or her order.” Id. at 23–24. Petitioner’s rationale is reasonable on the current record. While Park is focused on providing fast delivery, it would seem that a POSITA would also understand that delivering the wrong product is likely to cause an even greater delay then the additional time necessary to for the delivery agent to send a product image and receive customer confirmation. See Pet. 23 (urging that incorporating Kim’s functionality “would reduce the likelihood in Park that the delivery agent made an incorrect delivery, thereby saving resources in the Park system (e.g., by preventing the delivery of goods that would need to be returned and/or refunded”) (citing Ex. 1003 ¶ 56; Ex. 1021, 3:4–53). Moreover, Petitioner’s argument that the product confirmation functionality could be presented as an option so as to balance the competing desire for fast delivery would seem to be a reasonable exercise of a POSITA’s ordinary creativity. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill in also a person of ordinary creativity, not an automaton.”).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 13–14 (citing Ex. 1003 ¶ 24). Patent Owner offers a similar description of a POSITA. Prelim. Resp. 18–19. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision. Moreover, we do not perceive any meaningful difference between the parties’ respective descriptions of the level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,115,067 - PTAB · Mar 3, 2023 · IPR2022-01357 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6, 9, 10, 14–17, 21, 22, and 24–26 based on a reasonable likelihood that claims 1, 24, and 26 are obvious over Park and Kim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Instacart submits that one skilled in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa. Pet. 14 (citing Ex. 1003 ¶ 24). Consumeron responds that one skilled in the art “would have been someone with a background in electrical engineering, computer science, or the like and two years of working with platforms for the acquisition and delivery of products.” Prelim. Resp. 18. At this stage, we discern no meaningful difference between the levels of skill in the art espoused by the parties, given that working in the field of electronic commerce necessarily entails working with platforms for the acquisition and delivery of products. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 4
- Prior constructionPrior construction adoptedDecided for patent owner
“Notably, however, the district court did not adopt Consumeron’s proposed construction for this term. Instead, in a claim construction order dated January 18, 2023,6 the district court construed “mobile delivery agent system” to mean “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” Ex. 1034, 1. In doing so, the district court expressly rejected Consumeron’s argument that an MDAS requires a “mobile computing device” and “the use of the internet.” Ex. 1035, 17. At this stage, we see no reason to depart from the district court’s careful and comprehensive analysis of this term. See id. at 13–17. Thus, for purposes of this proceeding, we adopt the district court’s construction of “mobile delivery agent system.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree with Consumeron that Instacart fails to articulate a sufficient reason for combining Park and Kim. Instacart asserts, with support from its declarant, that combining the teachings of Park and Kim would “enhance the reliability of the delivery” and “increase customer satisfaction” by “provid[ing] the sensory cue of a visual comparison between the product to be delivered and the desired product.” See Pet. 23 (citing Ex. 1003 ¶¶ 55; Ex. 1006, 1). Instacart also explains that the problem Kim’s product confirmation functionality is intended to address is “particularly acute” for perishable food items, which Park’s system is designed to deliver. Id. at 22 (citing Ex. 1003 ¶ 54; Ex. 1005, 1:11–21; Ex. 1006, 1–2; Ex. 1014, 2; Ex. 1022, 2–3). And although adding Kim’s functionality would add time to Park’s delivery process, Instacart notes that “[a]ny additional time . . . could be absorbed into the desired hour delivery time of Park” or “alternatively, a POSITA would have recognized that the confirmation teachings of Kim could be provided as an option to the user with an advisory message to the user that such confirmation may add time to his or her order.” Id. at 25 (citing Ex. 1003 ¶ 57). We find Instacart’s rationale for the asserted combination to be reasonable on the current record. Although Park is focused on providing fast delivery, one skilled in the art would have understood that delivery of an unacceptable product to the customer is of greater concern in terms of “cost and efficiency” than any additional time needed for the delivery agent to receive customer confirmation of an acceptable product. See, e.g., Ex. 1003 ¶ 56.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We have considered the parties’ arguments and determine that the circumstances of this case do not warrant discretionary denial of the Petition. In particular, because Instacart has submitted a Sotera stipulation (Ex. 1033), we will not discretionarily deny institution under § 314(a) in view of the parallel district court action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7 (addressing impact of Sotera stipulation on the exercise of § 314(a) discretion). In addition, contrary to Consumeron’s assertion, neither Park nor Kim are sufficiently cumulative of Angert to warrant discretionary denial under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 2020 WL 740292, *3–4 (PTAB Feb. 13, 2020) (precedential). That is because Park and Kim provide additional material teachings not disclosed by Angert that include, for example, Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed” of their order that they can “interactively view, in real-time” (Ex. 1005, 4:27–32, 48:18–20) and Kim’s teaching that a delivery agent can utilize a digital camera in a mobile communication terminal to send images to the customer so they “can confirm” that the product ordered is identical to the product being delivered (Ex. 1006, 1–2). Consumeron does not identify any similar teachings in Angert. See Prelim. Resp. 46–47. Thus, we decline to exercise our discretion under § 325(d).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,628,835 - PTAB · Mar 3, 2023 · IPR2022-01356 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1, 4, 5, 8, 9, and 13–17, finding a reasonable likelihood that claims 1 and 13 are obvious over Park and Kim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa. Pet. 13 (citing Ex. 1003 ¶ 24). Consumeron responds that one skilled in the art “would have been someone with a background in electrical engineering, computer science, or the like and two years of working with platforms for the acquisition and delivery of products.” Prelim. Resp. 19. At this stage, we discern no meaningful difference between the levels of skill in the art espoused by the parties, given that working in the field of electronic commerce necessarily entails working with platforms for the acquisition and delivery of products. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 4
- Prior constructionPrior construction adoptedDecided for petitioner
“Notably, however, the district court did not adopt Consumeron’s proposed construction for this term. Instead, in a claim construction order dated January 18, 2023,5 the district court construed “mobile delivery agent system” to mean “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” Ex. 1034, 1. In doing so, the district court expressly rejected Consumeron’s argument that an MDAS requires a “mobile computing device” and “the use of the internet.” Ex. 1035, 17. At this stage, we see no reason to depart from the district court’s careful and comprehensive analysis of this term. See id. at 13–17. Thus, for purposes of this proceeding, we adopt the district court’s construction of “mobile delivery agent system.” 2. “real time” Consumeron proposes that the term “real time” be construed to mean “data that is passed along as it is gathered.” Prelim. Resp. 22–23. The district court agreed with that proposed construction. See Ex. 1034, 2; Ex. 1035, 22–26. At this stage, we see no reason to question the district court’s construction. As such, we adopt the district court’s construction of “real time.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“been motivated to combine the teachings of Park and Kim. See Prelim. Resp. 33–39. According to Consumeron, one skilled in the art would not have undertaken ‘to modify Park’s system with Kim’s technique because it directly undermine[s] Park’s requirement for ‘extremely fast and efficient’ delivery based on optimized routing algorithms used to determine delivery manifests” and “waiting for customer confirmation defeats Park’s intended goal.” Id. at 34. Consumeron also contends that Instacart “fails to show how this time [i.e., the time to send a product image and receive confirmation from the user] would even be factored into Park’s routing algorithms.” Id.; see also id. at 37–38 (“Petitioner’s bare-bone contention that Kim’s technique would only take two minutes to implement finds no evidentiary support from the record.”). We disagree with Consumeron that Instacart fails to articulate a sufficient reason for combining Park and Kim. Instacart asserts, with support from its declarant, that combining the teachings of Park and Kim would “enhance the reliability of the delivery” and “increase customer satisfaction” by “provid[ing] the sensory cue of a visual comparison between the product to be delivered and the desired product.” See Pet. 22 (citing Ex. 1003 ¶¶ 55; Ex. 1006, 1). Instacart also explains that the problem Kim’s product confirmation functionality is intended to address is “particularly acute” for perishable food items, which Park’s system is designed to deliver. Id. at 21 (citing Ex. 1003 ¶ 54; Ex. 1005, 1:11–21; Ex. 1006, 1–2; Ex. 1014, 2; Ex. 1022, 2–3). And although adding Kim’s functionality would add time to Park’s delivery process, Instacart notes that “[a]ny additional time . . . could be absorbed into the desired hour delivery time of Park” or “alternatively, a POSITA would have recognized that the confirmation teachings of Kim could be provided as an option to the user with an advisory message to the user that such confirmation may add time to his or her order.” Id. at 23–24 (citing Ex. 1003 ¶ 57). We find Instacart’s rationale for the asserted combination to be reasonable on the current record. Although Park is focused on providing fast delivery, one skilled in the art would have understood that delivery of an unacceptable product to the customer is of greater concern in terms of “cost and efficiency” than any additional time needed for the delivery agent to receive customer confirmation of an acceptable product. See, e.g., Ex. 1003 ¶ 56.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Consumeron argues that we should exercise discretion to deny institution under § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 4–15. Consumeron also argues that we should exercise discretion to deny institution under 35 U.S.C. § 325(d) because Park and Kim are substantially the same as another reference previously considered during prosecution of the ’594 patent, namely, Angert.11 Id. at 43–45. Instacart disputes that discretionary denial is warranted under either § 314(a) or § 325(d). See Pet. 67–73. We have considered the parties’ arguments and determine that the circumstances of this case do not warrant discretionary denial of the Petition. In particular, because Instacart has submitted a Sotera stipulation (Ex. 1033), we will not discretionarily deny institution under § 314(a) in view of the parallel district court action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7 (addressing impact of Sotera stipulation on the exercise of § 314(a) discretion). In addition, contrary to Consumeron’s assertion, neither Park nor Kim are sufficiently cumulative of Angert to warrant discretionary denial under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 2020 WL 740292, *3–4 (PTAB Feb. 13,” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,244,594
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.