• Torrent Pharmaceuticals Limited / Apotex, Inc. et al. v. Novartis AG And Mitsubishi Pharma Corp.All claims unpatentable
  PTAB · Sep 24, 2015 · IPR2014-00784 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over Chiba and Aulton; the motion to amend with proposed claims 33–64 is denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “institute an inter partes review of claims 1–32 of U.S. Patent No. 8,324,283 B2 (“the ’283 patent,” Ex. 1001). Paper 2 (“Pet.”).1 On December 1, 2014, the Board instituted trial to review patentability of the challenged claims. Paper 11 (“Dec. on Inst.”). Apotex, Inc. and Mylan Pharmaceuticals Inc. (“Apotex,” or, together with Torrent, “Petitioners”) filed a separate Petition also seeking to institute an inter partes review of claims 1–32 of the ’283 patent. IPR2015-00518, Paper 1 (“IPR-518 Pet.”). This second Petition was accompanied by a motion seeking joinder with the trial that had been instituted in IPR2014-00784. IPR2015-00518, Paper 2 (“IPR-518 Joinder Mot.”). On February 17, 2015, the Board instituted trial in IPR2015-00518 and joined the proceedings in IPR2014-00784 and IPR2015-00518. IPR2015-00518, Paper 8 (“IPR-518 Dec.”).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276–79 (Fed. Cir. 2015). Under that standard, absent any special definitions, we assign claim terms their ordinary and customary meaning, as understood by a person of ordinary skill in the art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we do not construe several terms for which constructions were proposed in the Petition but about which the parties do not disagree.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Where the prior art teaches the claimed invention, a claim is not rendered patentable by virtue of being motivated in the inventors’ minds by a newly-discovered advantage of the prior-art combination; allowing such a claim to stand “would remove from the public that which is in the public domain.” In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979); see also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”). Here, Patent Owners argue that the newly discovered low-dose instability of fingolimod when mixed with common excipients motivated the inventors’ choice of the allegedly less common mannitol as an excipient. PO Resp. 12–15 (citing Ex. 2043 ¶¶ 14–19, 22, 24–36). As explained above, though, it does not matter that the prior art failed to recognize this advantage of a fingolimod-mannitol combination. “[T]he motivation in the prior art to combine the references does not have to be identical to that of the [patentee] to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).” slip op. at 14

  Patent outcomesUS 8,324,283 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,324,283
• Torrent Pharmaceuticals Limited / Apotex, Inc. et al. v. Novartis AG And Mitsubishi Pharma Corp.All claims unpatentable
  PTAB · Sep 24, 2015 · IPR2015-00518 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over Chiba and Aulton; Patent Owners’ motion to amend with claims 33–64 is denied.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “discovered a new advantage of a combination of prior-art ingredients is not sufficient to render the claims of the ’283 patent patentable, as long as there was some reason to combine the prior-art teachings that those ingredients should be used. Patent Owners argue that Petitioners have failed to prove such a reason to combine, PO Resp. 41–49, but the record establishes otherwise. First, Chiba teaches that a person of ordinary skill in the art would have been able to identify or easily determine excipients that would have been compatible with fingolimod. Ex. 1006, 11:24–28 (“pharmaceutically or physiologically acceptable carriers or excipients for use with the . . . compounds noted herein are known in the art or can be readily found by methods and tests known in the art”). Second, Aulton teaches that mannitol is not only a known diluent for direct compression manufacturing, but also commonly used in wet granulation, which Aulton teaches is “the most widely used method for pharmaceutical materials.”12 Ex. 1021, 39–41, Table 18.1. This combination of teachings already strongly suggests that mannitol likely would have been a target of investigation for a person of ordinary skill in the art interested in finding an excipient compatible with fingolimod, but there is additional evidence of the reason to combine fingolimod and mannitol.” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for petitioner

    “and mannitol shows unexpected results. “It is the established rule that ‘objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed. Cir. 2014) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). This is as true for evidence of unexpected results as it is for any other type of objective evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“the applicant’s showing of unexpected results must be commensurate in scope with the claimed range”); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980) (“In order to establish unexpected results for a claimed invention, objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.”). The evidence of unexpected results made of record is not commensurate in scope with claim 19. First, according to Patent Owners, the claimed combination was stable at low doses of fingolimod, even though combinations of fingolimod and other excipients were unstable at those same low doses. PO Resp. 54; see also id. at 11–15 (citing Ex. 2042 ¶¶ 39–40; Ex. 2043 ¶¶ 14–19, 22, 24–36) (describing difference in results between low-dose fingolimod-mannitol mixtures and mixtures of low doses of fingolimod with other excipients). But, as Petitioners note, Reply 3–4 (citing Ex. 1031 ¶ 85; Ex. 2271, 50:21– 51:919), claim 19 is not limited to any particular dose or dose range of fingolimod. Instead, claim 19 recites only a solid oral dosage form containing mannitol and either fingolimod or a pharmaceutically acceptable salt of fingolimod. Ex. 1001, 18:7–10. Thus, even if the stability of the mannitol-fingolimod combination at low doses was unexpected, it is insufficient to support a legally significant finding of unexpected results. Second, Patent Owners argue that the stability achieved with mannitol “is superior to other choices [of excipient] to a surprising extent,” given that “mannitol preserves 4.5 to 11 times as much fingolimod as lactose, microcrystalline cellulose, and starch.” PO Resp. 54 (citing Ex. 2007 ¶¶ 12– 13). This evidence of unexpected results suffers from the same flaw discussed above. See Reply 17 (citing Ex. 1031 ¶ 85). Not only is this evidence limited to low doses of fingolimod, it is limited to a single, specified dose, 0.25 mg. Ex. 2007, 5 (stating that testing was performed using 25 µL of a 10 mg/mL drug substance solution). As such, it is evidence of unexpected results only across a tiny portion of the unlimited dose range 19 A public version is available at Ex. 2276, 50:21–51:9. of claim 19, which is insufficient to support a finding of unexpected results.20” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia no nexusDecided for petitioner

    “We find Petitioners’ argument persuasive. If objective indicia of nonobviousness are “due to an element in the prior art, no nexus exists.” Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (discussing commercial success). Here, the evidence of long-felt need shows that there was a need merely for a solid oral multiple sclerosis medication, not specifically for a medication of the form recited in claim 19. But the general need for a solid oral multiple sclerosis medication was 21 Patent Owners are reminded that 37 C.F.R. § 42.23(a) requires a Response to “comply with the content requirements for motions,” and 37 C.F.R. § 42.22(a)(2) requires motions to include “a detailed explanation of the significance of the evidence.” satisfied in the prior art. In 1999, Chiba itself suggested treating multiple sclerosis using a solid oral form of fingolimod. Ex. 1006, 6:26–49, 8:19–26. In addition, teriflunomide, marketed in solid tablet form as Aubagio®, was known in the prior art at least by April 1, 2002, when it was disclosed to be useful for treating multiple sclerosis when administered in tablets or capsules. Ex. 1037, at [22], 1:19–30, 2:60–3:2, 5:1–21; Ex. 2045 ¶ 63.22 Similarly, a capsule form of dimethyl fumarate for the treatment of multiple sclerosis, marketed as Tecfidera™, Ex. 1070, 2, was disclosed in U.S. Patent No. 6,509,376 B1, issued January 21, 2003. Ex. 1097, at [45], 2:64–67, 4:25–27, 4:31–33. Because the prior art contained solid oral multiple sclerosis treatments using active ingredients other than fingolimod, the fingolimod claimed in claim 19 was not necessary to satisfy any long-felt need for a solid oral multiple sclerosis treatment. Nor was the mannitol recited in claim 19: the evidence of record shows that sugar alcohols were not necessary to make even fingolimod suitable for oral administration. Ex. 2271, 250:10– 251:15.23 Accordingly, claim 19 did not solve any need for a solid oral multiple sclerosis treatment that was not already solved in the prior art.” slip op. at 24

  • Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseObjective indicia no nexusDecided for petitioner

    “Industry praise must be linked to the patented invention. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010). Again, if objective indicia of nonobviousness are “due to an element in the prior art, no nexus exists.” Tokai Corp., 632 F.3d at 1369. Here, the evidence shows that what was praised about Gilenya was not the specific formulation recited in claim 19, but rather the general fact that Gilenya was a solid oral multiple sclerosis medication. As discussed above, however, a solid oral multiple sclerosis formulation was known in the prior art, so there is no nexus between the claimed invention and the industry praise.” slip op. at 26

  Patent outcomesUS 8,324,283 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 8,324,283
• Finjan, Inc. v. Fireeye, Inc.Some claims unpatentable
  PTAB · Jul 10, 2015 · IPR2014-00344 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–4, 6–8, 19, 20, 22–25, and 27–29 are unpatentable under §103; claim 21 was not shown unpatentable because the Chen ground did not establish the replayer limitation.

  RulingsFinal written decision

  • BurdenMixed

    “determine Petitioner’s arguments are not persuasive. Although Chen discloses forwarding suspicious packets to a clone, Petitioner has not explained sufficiently how forwarding packets teaches or suggests “configuring a replayer to transmit . . . data to the virtual machine.” Moreover, Petitioner does not explain how Chen’s logging disclosure (Ex. 1009, 2–3) applies to configuring a replayer. At the oral hearing, Petitioner was asked to explain its reliance on Chen for this limitation.” slip op. at 31

  • Skill levelSkill level board ownDecided for petitioner

    “2. Level of Ordinary Skill in the Art The parties agree that a person of ordinary skill in the art would have the following education and/or experience: a recent degree in a field such as computer science or computer networking and two or more years of experience in the computer networking or computer security industry. PO Resp. 17; Ex. 1030 ¶ 33. “Alternatively, in lieu of recent formal education, a person of ordinary skill in the art would have had six or more years of relevant experience in the computer networking or computer security industry.” Id. This level of ordinary skill in the art is consistent with the ordinary skill reflected in the prior art of record, which is directed to computer networking and computer security systems. For example, Venezia and Kaeo both disclose intrusion-detection-systems. Ex. 1005; Ex. 1006. With this level of ordinary skill in mind, we now turn to the analysis” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “1. flag or flagging (Claims 1 and 19) For the purposes of our Decision to Institute, we determined that the broadest reasonable interpretation of the terms “flag” and “flagging” is “identify” and “identifying.” Dec. 7. Neither party disputes this interpretation. Pet. 5; PO Resp. 12. Based on the complete record now before us, we discern no reason to change the interpretation; thus, we adopt our previous analysis and interpret “flag” and “flagging” to mean “identify” and “identifying,” respectively.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Next, Patent Owner argues that Petitioner has not provided a reason for why a person of ordinary skill in the art would modify Venezia to (1) flag for replay and (2) include an analysis environment. PO Resp. 25– 26. Nonetheless, Petitioner has explained sufficiently how Venezia teaches both flagging for replay and an analysis environment. Thus, Petitioner does not rely on a modification of Venezia to disclose these features. Additionally, we are persuaded that Petitioner has provided sufficient rationale to combine the teachings of Kaeo and Venezia. Pet. 26. These rationales include combining Venezia’s replay features with Kaeo’s IDS to minimize false positives in Kaeo’s IDS through further verification of suspicious packets with Venezia’s replay. Id. Accordingly, based on the evidence and arguments presented, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that claims 1 and 19 would have been obvious over Kaeo and Venezia.” slip op. at 22

  Patent outcomesUS 8,291,499 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,291,499
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.

  RulingsFinal written decision

  • BurdenMixed

    “Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17

  Patent outcomesUS 6,163,775 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,163,775
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner

    “Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24

  Patent outcomesUS 6,163,775 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,163,775
• Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentable
  PTAB · Jan 27, 2015 · IPR2013-00469 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–37 are unpatentable: claims 1, 6, 7, 17, 18, 20–22, and 36 over Wright Jr.; claims 1–37 over Wright Jr. and Goodman.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, at least 2 years of experience with the design and programming of patient monitoring systems, and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 23. Patent Owner’s declarant, Dr. Yadin David, disagrees with the above assertion, asserting instead that a person of ordinary skill in the art would not have had the 1 year of experience with the design and programming of networked systems. Ex. 2007 ¶ 23. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Goodman reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to the configuration of communications systems, such as electronic or wireless systems and personal computer systems for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1003, 3:5059; see also id. at 6:125 (describing the features of the computer-implemented technology at issue in Goodman). With this level of ordinary skill in” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “patent as described in the Decision on Institution. Patent Owner explains that Petitioner “filed a new petition seeking inter partes review of related U.S. Patent No. 7,587,469” in which Petitioner “advances a very different construction” for the term “script program.” PO Resp. 5–6. However, Petitioner does not advance a different construction for the term “script program” in this proceeding. We adopt our previous analysis for the non-disputed claim terms, and interpret these terms as follows: Term Interpretation “script program” a program that contains a set of instructions that is capable of being executed and interpreted “data merge program” a program that combines two or more sets of data into one “pointer” an identifier that indicates the location of an item “script assignment unit” a program that associates a script program with an individual See ’468 Dec. on Inst. 5–9.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Nonetheless, where there is an attempt to show obviousness over a single reference, there also must be a showing of a suggestion or motivation to modify the teachings of that reference to achieve the claimed invention. Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining obviousness with respect to whether a single piece of prior art could be modified to produce the claimed invention invokes an inquiry into whether a person having ordinary skill in the art would have had a reason to so modify the prior art reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness challenge relying on such a modification to bridge the difference between the prior art and the claimed invention must be supported by articulated reasoning with rational underpinning to explain why the person of ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). For example, Petitioner relies on knowledge of one of ordinary skill to meet the “one or more databases” limitation. Petitioner explains that user responses are stored on the personal computer in a tab-delimited format for use with a database. Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches that a form can be selected from a list of existing forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary skill would be aware of the ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that one way to store such a list of forms would be to store them in a computer database that’s accessible on the computer”). Given that the use of databases was well within the skill of one of ordinary skill, and given that the form data in Wright Jr. is stored in tab-delimited format, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that a person of ordinary skill in the art would have made the modification to store Wright Jr.’s forms in a database.” slip op. at 12

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Evidence of commercial success, however, “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”). If a patent owner is able to show a sufficient nexus, “the burden shifts to the challenger to prove that the commercial success is instead due to other factors extraneous to the patented invention, such as advertising or superior workmanship.” J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). Patent Owner has not established a sufficient nexus between the claimed monitoring system, method, or apparatus and the alleged commercial success of the Health Buddy. Patent Owner argues that the success of the Health Buddy was “directly attributable to the invention of the ’192 patent.” PO Resp. 24 (citing Ex. 2007 ¶¶ 81, 83, 88–89, 99). Patent Owner and Dr. David, however, do not provide any analysis of how the Health Buddy allegedly embodied the challenged claims, or explain in any detail why it was the unique characteristics of the claimed monitoring system, method, or apparatus that drove sales. Instead, Dr. David” slip op. at 34

  Patent outcomesUS 7,516,192 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,192

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