- 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 - Early Warning Services, LLC v. Fintech Innovation Associates LLCAdverse judgmentPTAB · Feb 17, 2023 · PGR2022-00046 · APJ Robert L Kinder · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed the sole challenged claim, which the Board cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id.” slip op. at 3
None - PTAB · Jan 5, 2023 · PGR2022-00046 · APJ Robert L Kinder · PGR · Institution
The Board instituted PGR on the design claim, finding PayPal more likely than not anticipates and renders the claim obvious; it also instituted on all other petition grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324(a) (2018), which provides that review may not be instituted unless “the information presented in the petition,” if “not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Applying that standard, for reasons explained below, we grant the Petition and institute a post-grant review of the challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner further asserts that “[t]he designer of ordinary skill would be someone with a background in designing animated GUI’s, such as animated GUI’s that facilitate financial transactions.” Id. at 64 (citing Ex. 1003 ¶ 109). Based on the record before us, we adopt Petitioner’s identification of the ordinary observer and designer of ordinary skill in the art for purposes of this Decision because they are consistent with the disclosures of the asserted prior art references and the ’453 patent, supported by witness testimony, and unopposed by Patent Owner at this juncture.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“portion with animated [GUI].” Ex. 1001, code (57). “Petitioner proposes that the ’453 Patent claim should be construed as a display screen portion with an animated graphical user interface displaying a series of images including the elements shown in non-broken lines in FIGS. 1-4,” and “in accordance with its explicit statements that the broken lines and the dot lines ‘form[] no part of the claimed design’ and that ‘[t]he process or period in 8 Petitioner refers to a graphical user interface as a GUI. which one image transitions to another image forms no part of the claimed design.’” Pet. 43–44. For purposes of this Decision, we agree with Petitioner’s proposed construction that the claim encompasses a display screen portion with an animated graphical user interface displaying a series of images including the elements shown in non-broken lines and agree that the broken lines and dot lines in the figures form no part of the claimed design. See id. To the extent that the features of the claimed design require further discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner explains that PayPal was publicly accessible because “MPEP § 2128 states that YouTube videos ‘can be sources of prior art, provided the public accessibility requirements . . . are met,’” where “‘[p]rior art disclosures on the Internet . . . are considered to be publicly available as of the date the item was publicly posted,” and, here, PayPal is a YouTube video that was publicly posted on April 8, 2021 “and has received over 107,000 views,” with “a corresponding April 8, 2021 article posted by CNET [having] linked to this video.” Pet. 20 (citing MPEP § 2128; Ex. 1028). Petitioner also points out that “persons interested and having ordinary skill in cashless payment applications could locate PayPal exercising reasonabl[e] diligence . . . by searching the Internet for videos concerning QR code payment systems payments,” and that “PayPal has been viewed over 100,000 times, suggesting that PayPal is a well-known payment system and that persons interested and having ordinary skill in cashless payment applications could have easily located PayPal.” Id. at 20–21. Petitioner argues that PayPal qualifies as “otherwise available to the public” prior art because “the U.S. Patent & Trademark Office’s training materials specifically list YouTube videos as prior art that should be considered ‘otherwise available to the public’ under 35 U.S.C. § 102 (a)(1) . . . [,] [a]nd the evidence described above confirms that PayPal was otherwise available to the public as of its publication date of April 8, 2021.” Pet. 21 (citing Ex. 1032, 15). Based on the record before us, we determine it is more likely than not that PayPal qualifies as prior art, either as a printed publication or as otherwise available to the public.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness - 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 - 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 - PTAB · Oct 26, 2021 · IPR2021-00816 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–26 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We weigh this factor against exercising our discretion to deny institution. We acknowledge that some of the investment by the parties in the ITC will carry over to the parallel district court litigation. However, there appears to have been very little work already completed in the parallel district court litigation, e.g., no substantive decisions on validity have been made, and claim construction briefing is not scheduled to begin until after the deadline for a decision on institution in this proceeding. Based on the record before us, we determine that the district court is not likely to expend substantial resources in the parallel district court litigation before we issue our final decision. For the reasons set forth above, we determine that this factor weighs against our exercise of discretion to deny institution.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“in IPR’1317 and IPR’1318. See id. at 2 (“Regeneron is asserting the same prior art references from the original IPRs, which were never addressed on the merits.”). Accordingly, many of the General Plastic factors are not directly applicable to the situation before us. Patent Owner argues that the current petition could have been avoided if Petitioner would have brought the ITC dismissal to our attention in Petitioner’s then-pending request for rehearing. Prelim. Resp. 8; Sur- Reply 2. As noted above, however, the plain language of 37 C.F.R. § 42.71(d) states that a request for rehearing should argue issues that were “previously addressed in a motion.” Further, a party may “file a single request for rehearing,” but only within “30 days of the entry of a final decision.” 37 C.F.R. § 42.71(d). Thus, although the Board has allowed additional evidence and briefing during other unrelated rehearing proceedings (see Sur-Reply 2), our rules do not mandate such a course of action. In this instance, Petitioner was still within the one-year statutory deadline for filing another petition for inter partes review. As such, we do not find anything inherently wrong with the course of action taken by Petitioner.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Accordingly, we determine that Sigg, Lam, and Boulange are materially different and not cumulative under Becton, Dickinson factors (a) and (b). Regarding Becton, Dickinson factor (d), which is “the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art,” we determine the primary arguments before us do not overlap. A main issue before us is whether the distinct disclosures in Sigg and Lam are sufficiently enabling to teach terminally sterilizing a VEGF antagonist-filled syringe. No such issue was before the Examiner. Accordingly, we determine that there is little or no overlap between the manner in which Petitioner relies on the prior art and the positions taken by the Examiner during examination. For the above reasons, we determine that Sigg, Lam, and Boulange are not the same or substantially the same as the prior art previously 26 presented to the Office under Becton, Dickinson factors (a), (b), and (d). In view of the above, we determine that Petitioner’s art and arguments are not the same or substantially the same as the art and arguments previously presented to the Office.” slip op. at 26
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“ordinary skill in the art based on the combination of Sigg, Boulange, and USP789. Petitioner persuasively shows how each element of claim 1 is taught by the combination of references and provides sound reasoning for the combination of references. Pet. 31–47. Further, the current objective evidence of nonobviousness related to secondary considerations have not been shown to have a nexus to the claims. The combination of Sigg and Boulange teaches that pre-filled syringes may be made of glass because Boulange discloses a syringe comprising a glass barrel and a piston (i.e., stopper) that would work in Sigg’s device. See Pet. 41–42 (citing Ex. 1008, 9:21–35, 13:11–12; Ex. 1003 ¶ 192). Sigg also teaches a pre-filled terminally sterilized syringe containing a VEGF-antagonist for intravitreal injection with a nominal maximum fill volume of between 0.5 mL and 1 mL. Ex. 1003 ¶ 159. The current record establishes that the claim limitation “2 particles >50 μm” comes from the USP-789 standard, which is an accepted standard for ophthalmic drugs such a VEGFantagonist solution intended for intravitreal use. Ex. 1019; Ex. 1003 ¶¶ 90– 92. We are persuaded by Mr. Koller that, because Sigg discloses a PFS with ranibizumab, a known VEGF-antagonist solution intended for intravitreal use, Petitioner has established a reasonable likelihood that it would have obvious to a POSITA that the VEGF-antagonist solution in Sigg must comply with the USP-789 standard. Ex. 1003 ¶ 92. As for the limitation requiring about 1 μg to 100 ug silicone oil and a specific break loose force (less than about 11 N), Sigg does not disclose any particular break loose force, but Boulange discloses several tests of “friction force B” of various syringes. Ex. 1008, 15:6–8. Further, Table 7 in 60 Boulange discloses the break loose force test results for syringes A and C, which comprised 40 μg of silicone oil on the internal surface and with pistons that were not coated with Parylene C. Id. at 20:15–17, Table 7. We find persuasive on this record and for institution the Table 7 disclosure of the results of syringe B1, which was also siliconized with 40 μg of silicone oil on the internal surface but (unlike A and C) also has a coating of Parylene C on the piston. Id. Notably, in each case, Table 7 shows that the break loose force at time zero was below the claimed 11 N. Id. On this record, we find sufficient for institution Petitioner’s arguments that Boulange discloses multiple stopper configurations that a POSITA would have been motivated to combine with Sigg. See Pet. 37–40. Notably, the claims of the ’631 patent are silent as to any potential stopper coating. On this record, we also find Petitioner’s reasoning and evidentiary” slip op. at 60
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,220,631 - Intel Corporation v. Hera Wireless S.A.All claims unpatentablePTAB · Mar 12, 2020 · IPR2018-01543 · APJ John A Hudalla · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over both instituted grounds; the motion to amend with substitute claims 3 and 4 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“an inter partes review of claims 1 and 2 of U.S. Patent No. 8,295,400 B2 (Ex. 1001, “the ’400 patent”). Paper 2 (“Pet.”). Patent Owner, Hera Wireless S.A. (“Patent Owner”), filed a Preliminary Response. Papers 6, 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 14, 2019, as to all challenged claims and all grounds of unpatentability. Paper 12 (“Dec. on Inst.”).” slip op. at 1
- Skill levelDecided for petitioner
“Level of Ordinary Skill in the Art In the Decision on Institution, we determined that a person of ordinary skill in the art would have had a Master’s degree in Electrical Engineering, at least 2–4 years of academic or industry experience designing and implementing digital wireless communication systems, and familiarity with the family of IEEE 802.11 standards. Dec. on Inst. 13–14 (citing Ex. 1002 ¶ 53). Neither party disputes our determination. We discern no reason to change our determination and apply it for purposes of this Decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“TGn-Sync.” Id. (citing Ex. 1002 ¶¶ 212–216). Given TGn-Sync’s express reliance on earlier 802.11 standards (see, e.g., Ex. 1003, 3, 16, 17) and Dr. Wicker’s unrebutted testimony about how TGn-Sync is an extension of 802.11a (see Ex. 1002 ¶¶ 212–216), we are persuaded that an ordinarily skilled artisan would have had reasons to combine the references to make the claimed subject matter.” slip op. at 26
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We are persuaded that 802.11a qualifies as prior art under § 102(b) based on Mr. Grenier’s unrebutted testimony. 802.11a’s initial publication date of December 30, 1999, is more than one year before the U.S. filing date of the application that led to the ’400 patent, which is September 9, 2005. Ex. 1001, code (22); Ex. 1032 ¶ 11.” slip op. at 15
Patent outcomesUS 8,295,400 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,295,400 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02144 · APJ Robert L Kinder · IPR · Rehearing
Rehearing was granted in all four proceedings, and review was instituted on all challenged claims and grounds, except claims 12 and 20, which were disclaimed.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“’569 patent was entitled to priority and adequately disclosed by the ’894 Provisional.8 Claim 11 requires “disabling golf cart movement towards the predetermined area further comprises disabling golf cart movement except in a reverse direction,” and Petitioner contends that this limitation was not adequately supported in the ’894 Provisional. Petitioner argues that we improperly weighed competing expert testimony at this phase of the proceeding to resolve the disputed issue in favor of Patent Owner. Specifically, Petitioner argues:” slip op. at 8
- Adverse judgmentAdverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
§ 102 anticipationPatents in suitUS 7,480,569
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.