- PTAB · Jan 24, 2023 · IPR2022-01325 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–20; Petitioner showed a reasonable likelihood that claim 13 would have been obvious over Hakim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’930 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’930 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA”) would have had a bachelor’s degree in mechanical engineering or a related field, with at least two years of professional experience working in bottle manufacturing. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of bottle manufacturing, less professional experience is needed to attain the ordinary level of skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner proposes formal construction of any term. See Pet. 7; see also generally Prelim. Resp. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner gives no reason why a skilled artisan would have relocated Hakim’s air valve from the lower right corner (see Ex. 1005, Fig. 4e (depicting “vent” at the lower right corner)) to the location in Petitioner’s annotated figure, reproduced above and circled in red. We agree with Patent Owner that “Petitioner does not explain why its cherry-picked located marked by a red circle is consistent with Hakim’s directive to locate the air valve ‘at the bottom of the bottle nipple.’” Prelim. Resp. 15 (citation omitted); see also Ex. 1005, 13, 28. Although Mr. Goldman provides a reason why a skilled artisan would not have located the valve at the top of the teat (Ex. 1003 ¶ 81), Mr. Goldman provides no reason for relocating the valve to its proposed location. We further agree that the proposed location would appear to promote leaking by transplanting the air valve—‘a slit or cross-cut’ in a shallow surface depression . . . from a protected location at the ‘bottom rim,’ which is ‘covered by the hard portion of [a] screw cap,’ . . . to an exposed location amongst Hakim’s teething bumps, where the valve would be susceptible to inadvertent actuation by an infant squeezing or gnawing on the nipple. Prelim. Resp. 17 (citing Ex. 1005, 29–30). Accordingly, Petitioner fails to show a reasonable likelihood that a skilled artisan would have had reason to modify Hakim by relocating its vent valve to satisfy an “air valve extending through said nipple and disposed (i) radially inwardly from the collar and (ii) above the flange,” as recited in claim 1.” slip op. at 18
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,952,930 - PTAB · Dec 20, 2022 · IPR2022-01138 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds after finding a reasonable likelihood that claims 1 and 7 would have been obvious based on Goss.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’397 patent on all challenges set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that both House and Goss were at least considered by the Examiner, even if the Examiner never discussed the references or relied on them in any manner. See Ex. 1001, code (56) (listing both House and Goss among the references cited, and identifying Goss as cited by the Examiner). Under these circumstances, we find the first part of the Advanced Bionics framework satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art references.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner provides very little argument or evidence in support of its motivation to combine argument in the Petition. See Pet. 46. We note that Petitioner does not explain why a “PHOSITA would understand that there is a rational underpinning to combine” Goss and House or cite to any declarant support for its argument. See id. Based on the limited argument, evidence, and explanation provided by Petitioner, on the current record, we question whether Petitioner establishes sufficiently that one of ordinary skill in the art would have had a reason to modify Goss with the teachings of House. Even if Petitioner fails to establish adequately a motivation to combine the references, that does not end our analysis. A “patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016); see also Game & Tech Co. v. Activision Blizzard Inc., 926 F.3d 1370, 1381 (Fed. Cir. 2019). For the limitations in independent claims 1 and 7, Petitioner does rely on House, but only as an additional reason why the references disclose a limitation in question. See Pet. 46–61 (relying on Goss for every limitation in claims 1, 3–8, 10–16, and 18). Based on our review of the Petition, Petitioner sets forth an analysis based on Goss alone for at least claims 1 and 7, within the context of its second challenge based on Goss and House. See id. Although Petitioner may not need to rely on a combination of Goss and House for the limitations of independent claims 1 and 7, the additional reliance on House may buttress Petitioner’s arguments as to these and other claims. Consequently, the motivation to combine issue may impact whether Petitioner ultimately prevails as to this challenge. The parties may address the motivation to combine issue further during trial.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“adequately that Goss discloses the surface area limitation. We have also reviewed Petitioner’s arguments and evidence as to the remaining limitations of claims 1 and 7. Based on our review of the current record, Petitioner establishes sufficiently that Goss discloses or renders obvious all of the limitations of claims 1 and 7 for the reasons provided by Petitioner. See Pet. 46–51, 53–55. Accordingly, Petitioner establishes a reasonable likelihood that independent claims 1 and 7 would have been obvious based on Goss alone. We have also reviewed Petitioner’s arguments and evidence as to dependent claims 2–6 and 8–19. See Pet. 62–68. Patent Owner does not separately address the dependent claims. Prelim. Resp. 29–36. Because we institute inter partes review as to the independent claims 1 and 7, we also institute inter partes review as to dependent claims 2–6 and 8–19. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Because Petitioner relies on Goss for every limitation in dependent claims 3–6, 8, 10–16, and 18, the Petition sets forth a challenge based on Goss alone for these claims as well as claims 1 and 7. See Pet. 49–61. These challenges, as well as the challenge to claims 1–19 based on a combination of Goss and House set forth in the Petition, are part of the instituted grounds at issue during the trial. See id. at 46–61; SAS, 138 S.Ct. at 1359–60. We note that Petitioner relies exclusively on House for dependent claims 2, 9, 17, and 19, and any deficiency in Petitioner’s showing as to the motivation to combine Goss and House may impact whether Petitioner can establish the obviousness of those claims, apart from whether House discloses the limitations in question. See Pet. 51, 53, 55, 60–61 (relying on House as disclosing the limitations in dependent claims 2, 9, 17 and 19).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,026,397 - PTAB · Dec 5, 2022 · IPR2022-01107 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1 and 7 are anticipated by Goss and instituting the remaining asserted grounds as well.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Goss was at least considered by the Examiner, even if the Examiner never discussed the references or relied on it in any manner. See Ex. 1001, code (56) (listing Goss among the references cited). Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art reference.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’397 patent on all challenges set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Petitioner proposes constructions for the terms “filler material,” “clump strength,” “clumping agent,” and “wetting agent.” Pet. 17. Patent Owner does not dispute Petitioner’s constructions for these terms, but argues that these constructions are unnecessary to resolve any controversy in this proceeding. Prelim. Resp. 12–13. Based on our review of the current record, we agree with Patent Owner that we need not formally construe any claim terms to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record, including the prior art. See Prelim. Resp. 12; GPAC Inc., 57 F.3d at 1579. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,026,397 - Neuroderm Ltd. v. Abbvie Inc.InstitutedPTAB · Nov 14, 2022 · PGR2022-00040 · APJ Cynthia M Hardman · PGR · Institution
The Board instituted PGR on claims 1–17 based on all asserted grounds, finding the petition showed they more likely than not lacked written description support and enablement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons explained below, we find that Petitioner has met the threshold showing for post-grant review of claims 1–17 with respect to the first challenge (written description support for the claimed genus). On that basis, we institute post-grant 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 on all of the challenged claims . . . .”). We address this challenge first, then provide the parties guidance on Petitioner’s second written description challenge (support for carbidopa itself).” slip op. at 19
- Skill levelSkill level board ownOther
“Ex. 1006, 1 (citations omitted). Accordingly, when considering the ’507 patent’s purpose, the type of problems encountered in the art, and prior art solutions to those problems, it is clear that with respect to levodopa/carbidopa treatments for Parkinson’s Disease, the pharmaceutical formulation and its resulting pharmacokinetics and patient experience are intertwined, thus supporting a requirement that a person of ordinary skill in the art have knowledge or experience in each of these areas. See, e.g., Indivior Inc. v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1345 (Fed. Cir. 2019) (finding no clear error in district court’s compromise measure of level of ordinary skill in the art as a team comprising different skill sets). In view of the above considerations, we preliminarily find that a person of ordinary skill in the art would be a member of a team that includes person(s) with (a) a Ph.D. in a field related to the development of pharmaceuticals (for example, pharmacology, pharmacokinetics, pharmaceutics, pharmaceutical chemistry, organic chemistry, biochemistry, molecular biology, medicinal chemistry, formulation development, or a related field), or equivalent degree, and 2–4 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, or a B.S. or M.S. degree in a field related to the development of pharmaceuticals, or equivalent degree, and 4–6 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, and (b) a medical degree or equivalent degree with experience in treating patients with Parkinson’s disease. In subsequent briefing, should the parties propose any differences from the team approach articulated above, they should support their proposal and address the impact, if any, of the differences on the pertinent disputes in this proceeding. Any final determination on the level of ordinary skill in the art will be made on the full trial record.” slip op. at 15
- Expert testimonyPetitioner expert creditedOther
“Additionally, based on their statements of qualifications and curricula vitae, for purposes of this Decision we find Drs. LeWitt and Sloan qualified to provide technical opinions from the perspective of a person of ordinary skill in the art. Ex. 1003 ¶¶ 1–10, pp. 87–119 (Dr. LeWitt’s statement of qualifications and curriculum vitae); Ex. 1004 ¶¶ 1–11, pp. 45–71 (Dr. Sloan’s statement of qualifications).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with the parties that the express definition provided during prosecution should be adopted. See, e.g., Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341, 1346–47 (Fed. Cir. 2001) (construing claims in accordance with definition provided in declarations submitted during prosecution). Accordingly, we preliminarily construe the term “a compound comprising levodopa” in accordance with the full definition Dr. Okun provided during prosecution, i.e., “any molecule with a levodopa core moiety including levodopa itself, as well as prodrugs, salts, and hydrates of levodopa.”” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,091,507 - PTAB · Sep 14, 2022 · IPR2022-00691 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood of obviousness based on Goss, Winkleman, and House.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under these circumstances, we find the first part of the Advanced Bionics framework is not satisfied because the Petition sets forth prior art and arguments that are not the same or substantially the same as that considered by the Examiner during prosecution. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. §325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’393 patent on all challenges set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 33 (citing Ex. 1006 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record, including the prior art. See Prelim. Resp. 11; In re GPAC Inc., 57 F.3d at 1579. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Based on our review of the record and the parties’ arguments, we determine that “removably clumpable” in independent claims 1 and 10 refers to a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test” in addition to the other aspects of the “removably clumpable” definition provided in the specification. See Ex. 1001, 5:24–36. This is the same conclusion we reached in IPR2022-00206, which addresses the same issues raised here. See AMCOL, IPR2022-00206, Paper 9, at 9–13. As we noted in that Decision, the paragraph containing the phrase “a clump strength ≤ 1.33 using the Standard Drop Method Test” appears within the “Definitions” section of the specification, and the use of the term “i.e.” just prior to the phrase signals an intent to define the limitation. See id. at 9–10; Ex. 1001, 3:63, 5:24–36.6 We also pointed out that the ’393 patent’s 5 Patent Owner further argues that Petitioner expressly acknowledges the correct definition of “removably clumpable,” but fails to apply it in its proposed construction or apply it to the prior art. Prelim. Resp. 19–21; Surreply 1–3. Petitioner argues that it properly incorporated the narrower definition in its analysis. See Reply 1–3. We address Petitioner’s challenges as to the “removably clumpable” limitation in our discussion of the merits below. 6 Relevant case law supports this interpretation of “i.e.” in the specification. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d, 1322 1334 (Fed. Cir. 2009) (“As the court correctly reasoned, the specification’s use of ‘i.e.’ signals an intent to define the word to which it refers, . . . and that definition was not limited to the embodiment being discussed.”); Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1327–28, 1330 (Fed. Cir. 2003) (holding that the specification’s use of “i.e.” defined the limitation); SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1201 (Fed. Cir. 2013) (finding that reading “‘beads (i.e., two-dimensions)’ as definitional comports with the plain language of the specification as a whole and the inventors clearly expressed Example 26, which discloses a clump strength of ≤ 1.33 at the 24-hour mark but clump strengths above 1.33 at the three other time periods, still falls within the scope of the definition of “removably clumpable.” AMCOL, IPR2022-00206, Paper 9 at 11–12. The “definitional paragraph” relied on by Patent Owner notes that “[a] litter material having a clump strength of ≤1.33 using the Standard Drop Method Test (described below) [at] 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed by exposure to a liquid is removably clumpable.” Ex. 1001, 5:28–33 (emphasis added); Prelim. Resp. 17–18 (referring to “definitional paragraph” that includes this language). Use of the disjunctive “or” in that sentence indicates that a litter having the required clump strength at any of the listed time intervals falls within the scope of “removably clumpable.” Based on the foregoing, we again conclude that “removably clumpable” in independent claims 1 and 10 requires, at a minimum, a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed.” Ex. 1001, 5:28–32 (emphasis added).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,439,393 - Rideco Inc. v. Via Transportation, Inc.InstitutedPTAB · Sep 1, 2022 · IPR2022-00740 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–13, 15, and 17–20, finding a reasonable likelihood that at least one challenged claim is unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial. Fintiv, Paper 11 at 5–16. The Director of the USPTO issued, on June 21, 2022, an Interim Procedure regarding the application of Fintiv factors for purposes of determining whether to exercise discretion to deny a petition. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceeding with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure states: “[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3. Petitioner stipulates that “if the Board institutes the Petition on the same grounds presented, then it will not seek resolution in the district court of any ground of invalidity raised in the Petition or that could have been raised in the Petition.” Pet. 68; see also Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use 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 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III(C)(5), first paragraph)).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’411 patent. Accordingly, we institute an inter partes review of claims 1–13, 15, and 17– 20 of the ’411 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention (“POSITA” or “PHOSITA”) “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 4–5 (citing Ex. 1003 ¶ 37). “For the purpose of [the] Preliminary Response only, Patent Owner does not dispute Petitioner’s definition.” Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’411 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,197,411 - Rideco Inc. v. Via Transportation, Inc.InstitutedPTAB · Jun 28, 2022 · IPR2022-00286 · APJ Richard H Marschall · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of prevailing on obviousness over Lambert, Poykko, and McCall.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“When a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. See Sotera, Paper 12 at 18–19. With such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation. For these reasons, the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Id. at 7. The Interim Procedure “applies to all proceedings pending before the Office,” and therefore governs our treatment of Petitioner’s Sotera 6 Petitioner’s stipulation refers to “any ground of invalidity raised in the Petition or that could have been raised in the Petition” while the stipulation in Sotera refers to “any ground raised or that could have been reasonably raised in an IPR,” but we view the language as similar enough to fall within the scope of Sotera’s analysis. Reply 4; Sotera, Paper 12 at 18–19. Petitioner arguably stipulates to a broader prohibition than the petitioner in Sotera because Petitioner’s stipulation may encompass grounds that it could not have reasonably raised in the Petition. 7 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf stipulation here. Id. at 9. Petitioner’s stipulation tracks the language of the Sotera stipulation that the Interim Procedure addresses and we “will not discretionarily deny institution” when Petitioner submits such a stipulation.8 Id. at 7. Because our analysis of Petitioner’s stipulation alone requires us to not exercise our discretion to deny institution under § 314(a), we need not address the parties’ remaining arguments as to application of the Fintiv factors to the facts in this case.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37). Patent Owner “does not dispute Petitioner’s definition.” Prelim. Resp. 23. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’824 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Under these circumstances, where the parties now agree that the ordinary meaning should apply to the claim limitations in question and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning to those same claim limitations in this proceeding. We therefore apply the plain and ordinary meaning to “virtual bus stops” and “real-time.” In addition, we decline Patent Owner’s request that we deny institution based on alleged inconsistencies between Petitioner’s “ordinary meaning” interpretation urged here versus Petitioner’s rejected proposed constructions in the district court litigation as a sufficient basis to deny institution. As to the construction of dependent claim 8, we need not reach Petitioner’s arguments to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also establishes sufficiently, based on the current record, that it would have been obvious to combine Lambert’s system with Poykko’s teaching to store a database of potential pickup and dropoff locations in memory, with those “virtual bus stops” accessed by Lambert’s server. See Pet. 25–26; Ex. 1005 ¶ 48. As Petitioner puts it, “it would have been obvious to a PHOSITA to similarly configure Lambert’s server to access memory including a database of stopping points associated with the rideshare system’s coverage area when dynamically selecting pickup and dropoff locations.” Id. at 26; Ex. 1003 ¶ 168. Petitioner’s assertions are adequately supported, at this stage of the proceeding, by Poykko and declarant testimony. See id. at 25–28 (citing Ex. 1003 ¶¶ 167–172). Similarly, Petitioner’s assertion that the combination of Lambert, Poykko, and McCall discloses the remaining limitations of claim 1 finds adequate support in the current record. See id. at 28–44.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,816,824 - Restem, LLC. v. Jadi Cell, LLCInstitutedPTAB · Apr 20, 2022 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–15 over all asserted grounds, finding a reasonable likelihood that Petitioner would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’176 patent on the grounds raised in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as to patentability of claims for which inter partes review is instituted. Any final decision will be based on the record, as fully developed during trial.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15 (citing Ex. 1007 ¶¶ 19–24). Patent Owner does not comment on the characterization offered by Petitioner or offer one of its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’176 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Prelim. Resp. 16. Patent Owner cites Ex. 1001 6:32–34, noting that the patent specification “expressly defines ‘isolated cell’ as ‘[referring] to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.’” Id. As neither party references any prosecution history related to interpretation of this claim term, we look only to the claim itself and the specification as intrinsic evidence. DePuy Spine, 469 F.3d at 1014. Claim 1 recites “an isolated cell prepared by a process comprising . . . ” Ex. 1001 at 19:6. As Patent Owner notes, the patent specification states “the term ‘isolated cell’ refers to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.” Id. at 6:32–34. The remainder of the citations Petitioner cites relate to additional steps for isolating the cell, or characteristics of the cell, such as the markers expressed or not expressed, but do not further elucidate the meaning of “an isolated cell” itself. Dr. Olsen’s testimony reiterates the content of these citations but does not add any additional information or explanation. Ex. 1007 ¶¶ 67–68. Given the definition provided in the specification, we interpret “an isolated cell,” consistent with Patent Owner’s definition, to mean “one or more cells isolated from the subepithelial layer of a mammalian umbilical cord.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“the Wharton’s Jelly, epithelium, etc.” and that, without evidence that the recited markers are expressed/not expressed as recited, there is no inherent disclosure. Prelim. Resp. 22, 25, 28–29 (citing Ex. 2022 ¶ 162). Patent Owner is correct that an ultimate finding of anticipation requires such confirmation, but, for purposes of institution, our standard is a reasonable likelihood. 35 U.S.C. § 314(a). Due to the breadth of claim 1, Majore’s method must produce only one cell having the recited limitations to anticipate. Petitioner’s expert testifies that production of such cells would be inherent by Majore. See Ex. 1007 ¶ 97 (“Majore’s protocol would produce a population of adherent cells that necessarily and inevitably comprise the cells of the subepithelial layer.”). And, although we recognize that the burden of persuasion does not rest on Patent Owner, Dr. Burger’s testimony, which focuses heavily on the differences in methodology between Majore and the ’176 patent disclosure and Petitioner’s alleged failure of proof, is not persuasive at this stage to overcome the evidence presented by Petitioner. See Ex. 2002 ¶¶ 137–163. Indeed, both Majore and the ’176 patent disclose umbilical cord tissue cut into sections and placed into environments fostering cell culture and replication. Ex. 1011 at 18, Ex. 1001 at 13:57–14:5. Both methods encourage and result in adherent cells growing on a plastic growth surface awash in culture media. Id. On this record, Petitioner has provided sufficient factual basis to establish a reasonable likelihood that Majore’s explant method of dissecting umbilical cord, culturing cells, and growing adherent cells would have produced (or did produce) at least one cell with the recited limitations. In this regard, we credit the testimony of Dr. Olsen that the isolated cells disclosed in Majore are MSCs cultured from umbilical cord tissues including the subepithelial layer, which have migrated to the periphery of the cut tissue and adhered to the tissue culture vessel. Ex. 1007 ¶¶ 95–97. That Majore discloses genetic markers with similar expression/non-expression to the markers recited in claim 1 is further evidence that at least some cells were cultured from the subepithelial layer. Id. ¶ 99. Moreover, even if we gave weight to the process limitations construed as requested by Patent Owner (Prelim. Resp. 13–20), the limitations are sufficiently broad as to read on Majore with the exception of the express/non-expressed markers. With regard to markers not examined by Majore, we credit Dr. Olson’s statement that “the cells obtained by Majore’s protocol necessarily and inevitably comprise the same cells produced by the process steps of claim 1[A] and 1[B]” and that the skilled artisan would have understood that the marker expression pattern would be identical for those cells. Id. ¶ 101.16 The evidence on this issue is subject to final determination on a more complete record developed through trial.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,803,176 - Lti Flexible Products, Inc. D/B/A Boyd Corporation v. The Regents Of The University Of CaliforniaInstitutedPTAB · Jan 11, 2022 · IPR2021-01189 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that MacDonald anticipates claims 1–13 and that MacDonald with Ding renders claims 2, 3, and 7 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, Reply, and Sur-reply and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–13 of the ’728 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“figures and substantively identical specifications. See Pet. 16, 26; Prelim. Resp. 21; Ex. 1012 ¶¶ 75–76. We agree with Petitioner that the Specifications of the parent applications, MacDonald, and the ’728 patent (“the common Specification”) do not disclose expressly the claimed pitch range of 5–500 microns. We also agree with Petitioner that the pitch range must be derived from the disclosed values of diameter of the pillars and spacing between pillars. Pet. 3, 18–22; Ex. 1012 ¶¶ 98–112, 123–129. We further agree with Petitioner that none of the derived pitch ranges aligns perfectly with the claimed pitch range. Pet. 21, 23; Ex. 1012 ¶ 120. Petitioner presents sufficient argument and evidence that the common Specification may not provide sufficient “blaze marks” for the claimed pitch range and that the derived pitch ranges may not reasonably convey to one of ordinary skill in the art the claimed pitch range. Pet. 17–26; Ex. 1012 ¶¶ 92– 140. Patent Owner disputes, at least, whether the common Specification provides adequate “blaze marks” and whether the derived pitch ranges would reasonably convey the claimed pitch range. Prelim. Resp. 11–18. The parties’ dispute presents a factual issue that would benefit from a fuller record developed at trial. Gen. Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1371 (2018) (“Sufficiency of written description is a question of fact.”).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artOther
“Petitioner contends that MacDonald is prior art under § 102(a)(1) because MacDonald was published a year before the filing date of the application that issued as the ’728 patent. Pet. 7. If the ’728 patent is entitled to the benefit of the filing dates of the PCT and ’111 applications (collectively, “the parent applications”), then MacDonald would not qualify as prior art, as argued by Patent Owner. Prelim. Resp. 27–28.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“3. Claims 1–13 Petitioner argues with citations to MacDonald and declarant testimony that, because MacDonald has the same figures and substantively same Specification, MacDonald anticipates independent claims 1 and 9. Pet. 26– 37, 53–58. In particular, for the claimed pitch range, Petitioner argues that, because MacDonald discloses pillar spacings between 1–500 microns and pillar diameters between 5–500 microns, MacDonald discloses, at least, two pitches of 6 microns and 253.5 microns, both of which are in the claimed pitch range. Id. at 36 (citing Ex. 1012 ¶¶ 176–178). For dependent claims 2–8 and 10–13, Petitioner argues with citations to MacDonald and declarant testimony that MacDonald discloses all their limitations. Id. at 37–53, 58– 62. Other than the arguments discussed above regarding written description and effective filing date, Patent Owner does not argue that Petitioner fails to show that MacDonald discloses the limitations of claims 1 and 9. See generally Prelim. Resp. Patent Owner also does not provide separate arguments for the challenged dependent claims. See generally id. Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its anticipation challenge of dependent claims 1– 13.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,309,728
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.