- PTAB · Mar 30, 2023 · IPR2023-00026 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claims 1 and 5 are anticipated by Prevost-2006.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We understand “filled” to have a broad plain and ordinary meaning. That is, “filled” broadly embraces the circumstances where something is fully filled or partially filled. Here, Petitioner’s declarant, Dr. Hoare, provides an opinion that is consistent with our understanding of the regular meaning of the word. Pet. 23; Ex. 1002, ¶ 142. We understand that Patent Owner’s position essentially contends that “filled” does not include “fully filled”—arguing that Prevost-2006 does not describe the extent to which the core material “filled” the shell structure, or that Petitioner does not show sufficiently that “filled” means “completely occupies.” Prelim. Resp. 8–10; Ex. 2001, ¶ 39. As an initial matter, we observe that neither Petitioner’s nor Patent Owner’s declarant directs us to information that would help us understand why an ordinarily skilled artisan would have understood “filled” to exclude the circumstance of being completely filled. Because of this, for purposes of deciding whether to institute review, we see no reason to interpret “filled” in a manner inconsistent with the term’s plain and ordinary meaning, which broadly includes the circumstance of being completely filled. Patent Owner is free to develop this issue in timely filed response to the Petition. On this record, however, we preliminarily find that Prevost-2006 meets the “completely occupies” limitation of claim 1 because its fiber is described as a shell structure that is “filled” with a core structure. Ex. 1010, 345, 349. That circumstance distinguishes Provost-2006 from the Lee reference, which unlike Provost-2006 concerned “hollow fibers” and, during examination, was overcome by an amendment that added the “completely occupies” limitation. Prelim. Resp. 9 (quoting Ex. 1004, 616) (emphasis omitted).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We understand “filled” to have a broad plain and ordinary meaning. That is, “filled” broadly embraces the circumstances where something is fully filled or partially filled. Here, Petitioner’s declarant, Dr. Hoare, provides an opinion that is consistent with our understanding of the regular meaning of the word. Pet. 23; Ex. 1002, ¶ 142. We understand that Patent Owner’s position essentially contends that “filled” does not include “fully filled”—arguing that Prevost-2006 does not describe the extent to which the core material “filled” the shell structure, or that Petitioner does not show sufficiently that “filled” means “completely occupies.” Prelim. Resp. 8–10; Ex. 2001, ¶ 39. As an initial matter, we observe that neither Petitioner’s nor Patent Owner’s declarant directs us to information that would help us understand why an ordinarily skilled artisan would have understood “filled” to exclude the circumstance of being completely filled. Because of this, for purposes of deciding whether to institute review, we see no reason to interpret “filled” in a manner inconsistent with the term’s plain and ordinary meaning, which broadly includes the circumstance of being completely filled. Patent Owner is free to develop this issue in timely filed response to the Petition. On this record, however, we preliminarily find that Prevost-2006 meets the “completely occupies” limitation of claim 1 because its fiber is described as a shell structure that is “filled” with a core structure. Ex. 1010, 345, 349. That circumstance distinguishes Provost-2006 from the Lee reference, which unlike Provost-2006 concerned “hollow fibers” and, during examination, was overcome by an amendment that added the “completely occupies” limitation. Prelim. Resp. 9 (quoting Ex. 1004, 616) (emphasis omitted). Claim 5 further recites that “a cell or cell culture is contained in the micro gel fiber.” As we observe above, Prevost-2006 discloses that its “hollow fibers were filled with islets [cells] suspended in agarose.” Ex. 1010, 345; Pet. 24. Thus, on this record, we also find that Prevost-2006 discloses the claimed microfiber containing “a cell or cell culture” within the micro gel fiber. Accordingly, we determine that Petitioner has established a reasonable likelihood that it “would prevail with respect to” claim 1 and claim 5 based on anticipation by Provost-2006. 35 U.S.C. § 314(a). To provide guidance to the parties and streamline the issues for trial, we discuss below the other challenges asserted in the Petition.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“For example, Petitioner does not identify a reason why an ordinarily skilled artisan would have combined the teachings of double-layer and single-layer fibers. We recognize that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Nevertheless, to support a conclusion of obviousness when combining the teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we have doubts that Petitioner provides sufficient reasons an ordinarily skilled artisan would have combined the teachings of the multiple references asserted in this challenge to achieve the claimed invention or would have reasonably believed they would have been successful in doing so. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (showing of a motivation to combine references must include evidence that a skilled artisan would have reasonable expectation of success in doing so).” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“We have concerns about whether Petitioner shows sufficiently that Nelson- 603’s disclosures would have led an ordinarily skilled artisan to create an “alginate-alginate bicomponent fiber.” Petitioner’s arguments and Dr. Hoare’s opinions contain similar wording and do not explain adequately why an ordinarily skilled artisan would have created such a fiber—beyond Nelson-603’s general disclosure that “it will be apparent to those of skill in the art that variations may be applied to the compositions and methods.” Pet. 39–40; Ex. 1002, ¶¶ 162, 199, 120; Ex. 1011, 12:57–66; 33:58–66. Without additional evidence and reasoning, we assign Dr. Hoare’s testimony on this issue little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (designated: February 10, 2023) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). On this record, that general instruction is not sufficient to establish that Nelson-603 would have prompted an ordinarily skilled artisan to modify any fiber disclosed in the reference to achieve the claimed invention.” slip op. at 15
§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,785,195 - PTAB · Feb 2, 2023 · IPR2022-01094 · APJ Scott A Daniels · IPR · Institution
Instituted IPR on claims 3–12 and 15–18 on all petition grounds; the Board found a reasonable likelihood of success on at least one claim and rejected the § 315(b) time-bar challenge.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Apple and Petitioner. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. Accordingly, based on the totality of the evidence of record and our analysis above, we conclude for purposes of this Decision that Apple is not an RPI or in privity with Petitioner, and thus Petitioner is not time-barred under Section 315(b).” slip op. at 35
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“circumstances discussed above, and further considering the controlling legal authority discussed above, we determine for purposes of this Decision that the evidence establishes that Apple is not a real party-in-interest. Apple initiated and is presently involved in an IPR proceeding challenging claims of the ’039 patent. We have not been directed to any persuasive evidence that Apple needs, wants, funds, controls, or benefits from a second, later-filed petition, such as the one before us. Apple has its own, earlier filed, IPR proceeding pending before the Patent Trial and Appeal Board. Based on the record before us there is no evidence that this IPR proceeding was filed at Apple’s behest. We recognize that Apple will derive some benefit if the claims of the ’039 patent are determined to be unpatentable in a post-grant proceeding at the PTO, or found invalid by a district court. This derived benefit does not, however, make Apple an RPI to this proceeding. See WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1321 (Fed. Cir. 2018) (stating in the context of the broader concept of privity that “[a]s a general proposition, we agree with the Board that a common desire among multiple parties to see a patent invalidated, without more, does not establish privity”). determination in Uniloc 217, “[w]ithout such evidence of control, in addition to no evidence of joint funding, or even any evidence of substantial coordination between the parties as to their respective decisions to bring these proceedings, a finding that [a non-party to this IPR proceeding] is an RPI of or in privity with [Petitioner] here would be improper.” Uniloc 2017, 989 F.3d at 1029.” slip op. at 29
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION We determine Petitioner has established a reasonable likelihood of prevailing in showing that one or more claims are unpatentable over the cited prior art. That said, Petitioner’s remaining obviousness challenges McCalley, are best left for trial after full development of the record. 37 C.F.R. § 42.108(c); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (“Equal treatment of claims and grounds for institution purposes has pervasive support in SAS.”). We therefore institute trial on all claims and all challenges included in the Petition. Our factual findings and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review of the ’039 patent is hereby instituted as to claims 3–12 and 15–18 on all grounds set forth in the Petition; and” slip op. at 58
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’039 patent “would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1006 ¶ 26). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’039 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 36
Claim construction§ 103 obviousnessPatents in suitUS 8,620,039 - PTAB · Feb 2, 2023 · IPR2022-01093 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1, 2, 13, 14, 19, and 20 on all petition grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Game & Tech. Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1349 (Fed. Cir. 2019) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)). Thus, Petitioner bears the burden of establishing that no RPI or privy was served with a complaint alleging infringement more than one year prior to the May 31, 2022, filing date (see Paper 3) of the Petition in this proceeding. slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“circumstances discussed above, and further considering the controlling legal authority discussed above, we determine for purposes of this Decision that the evidence establishes that Apple is not a real party-in-interest. Apple initiated and is presently involved in an IPR proceeding challenging claims of the ’039 patent. We have not been directed to any persuasive evidence that Apple needs, wants, funds, controls, or benefits from a second, later-filed petition, such as the one before us. Apple has its own, earlier filed, IPR proceeding pending before the Patent Trial and Appeal Board.” slip op. at 28
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“As to analogous art, we consider two criteria when evaluating whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In support, Petitioner’s declarant, Mr. Lipoff, testifies that a person of ordinary skill in the art would have implemented Sanford’s check to determine whether a user is enrolled, or not, in Hsu’s system for several reasons. Ex. 1006 ¶¶ 111–114. First, Mr. Lipoff explains, “in most instances, a POSITA would not want to enroll a user who already enrolled . . . [r]e-enrollment also consumes unnecessary system resources, takes time, and is generally undesirable.” Id. ¶ 112. Second, Mr. Lipoff explains that “checking whether a user is enrolled helps prevent fraud whereby an unauthorized user is able to overwrite the fingerprint of an authorized user by using the authorized user’s user number or account number.” Id. ¶ 113. Also, Mr. Lipoff testifies that “checking whether a user is enrolled also makes the system more user-friendly. If the user is enrolled, the user can seamlessly proceed with biometric verification.” Id. ¶ 114. On this record, we find persuasive Petitioner’s explanations for a motivation to combine Hsu and Sanford. Sanford, as Mr. Lipoff testifies persuasively, describes how a person of ordinary skill in the art would construct a system to check to see if a user is enrolled, or not, in a biometric identity verification system before determining a further course of action. Id. ¶¶ 98–100. In addition, Mr. Lipoff provides several reasons why a person of ordinary skill in the art would look to Sanford for “the simple and straightforward way to determine whether such user has been enrolled [and] to check if the user’s data is already stored in Hsu’s database.” Id. ¶ 115; see also KSR, 550 U.S. at 420 (explaining that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”).” slip op. at 57
Claim construction§ 103 obviousnessPatents in suitUS 8,620,039 - PTAB · Jan 5, 2023 · IPR2022-01314 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on all asserted grounds against all claims 1–20, including the First-Allowed and Second-Allowed Claims.
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 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . 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 information presented in the Petition, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing that at least one claim of the ’268 Patent is unpatentable. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 6. The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner does not seek express construction of any claim terms. See Pet. 6. We determine that we do not need to provide an express construction for any claim terms for purposes of this Decision. slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,796,268 - PTAB · Jan 5, 2023 · IPR2022-01261 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–10 and 12–20 on all asserted grounds, finding a reasonable likelihood that FedEx would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–10 and 12–20 of the ’109 Patent is unpatentable. Accordingly, we institute an inter partes review of all challenged claims on all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). See Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018);7 see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). IV. ORDER It is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims of claims 1–10 and 12–20 of the ’109 Patent is instituted commencing on the entry date of this Decision; and” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 4. The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner does not seek express construction of any claim terms. See Pet. 5. We determine that we do not need to provide an express construction for any claim terms for purposes of this Decision.” slip op. at 9
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,181,109 - PTAB · Jan 5, 2023 · IPR2022-01252 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on claims 1–15, 17–30, and 32–34 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been 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 of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner does not seek express construction of any claim terms. See Pet. 5. We determine that we do not need to provide an express construction for any claim terms for purposes of this Decision.” slip op. at 9
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,847,029 - PTAB · Jan 5, 2023 · IPR2022-01219 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on all challenged claims and asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’920 patent on the grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 4–5 (citing Ex. 1003 ¶ 21). The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been 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 of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“reciting the types of information stored in the “memory device” of claim 1, Petitioner provides alternative mappings based on Keillor either alone or in combination with Morimoto. Pet. 17–21 (citing Ex. 1004, 7:18–43, 11:12– 39, 15:40–54; Ex. 1005, 2:7–67, 5:1–40, 9:31–10:8, 10:65–11:7, Fig. 4). According to Petitioner, “[t]he POSITA would have recognized that this combination would enhance the information provided to users of Keillor’s system looking to track and ensure delivery of shipments.” Pet. 8 (citing Ex. 1003 ¶ 82). The Petition provides several reasons that Petitioner contends would have motivated a POSITA to make the Keillor-Morimoto combination and cites teachings from both references and its declarant’s testimony as support for those reasons. Pet. 8–11; Ex. 1003 ¶¶ 85–94.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,482,920 - PTAB · Jan 5, 2023 · IPR2022-01117 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–9, 11–26, and 28–30 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’731 patent on the grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 5 (citing Ex. 1003 ¶ 21). The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner contends that the claim phrase “at least one of . . . and,” which is recited, inter alia, in each of the independent claims, should be construed as “only one item from the list, or any combination of items in the list,” arguing that such construction is consistent with the use of that phrase throughout the ’731 patent specification and in statements made by the applicant during prosecution. Pet. 6 (citing Ex. 1001, 8:29–36, 9:9–19, 11:53–13:55; Ex. 1002, 144–45 (’731 patent prosecution file); Ex. 1003 ¶¶ 70–72). Petitioner further contends that no express constructions are necessary for any other claim terms and that all claim terms should be construed according to the Phillips standard. Id. at 5–6. Based on the current record and without any opposition from Patent Owner, we see no need for express construction of any term at this stage of the proceeding.” slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,253,731 - PTAB · Jan 3, 2023 · IPR2022-00971 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–7, 9, 13, and 19 on all petitioned grounds, finding a reasonable likelihood that Gelvin anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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 arguments and evidence presented by Petitioner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“record, and does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See gen. Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’771 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner argues that even though the Board construed these terms under the broadest reasonable standard in the Motorola IPR, “[f]or purposes of this Petition, the Phillips standard does not require any different construction, and Petitioner’s proffered grounds are consistent with the above constructions.” Id. at 11. Patent Owner does not provide any express claim constructions nor dispute Petitioner’s proposed constructions from the Motorola IPR. At this preliminary stage of the proceeding, at least for the sake of consistency at institution, we rely on the Board’s earlier constructions in the Motorola IPR. We acknowledge that Patent Owner has not yet provided any substantive claim construction in its Preliminary Response, however Patent Owner has the opportunity to address this matter in its Patent Owner’s Response should it desire to do so.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“We consider Patent Owner’s argument, and agree to an extent, that Gelvin describes the PDA in Figure 5 as “coupl[ing] to the Internet 599 through a service provider that specializes in low-rate communications,” rather than through WINS network architecture 500. Ex. 1005, 9:48–50. But read in context, Gelvin does not appear limited to this embodiment. For example, after describing the three ways that Gelvin’s WINS network architecture 500 can couple to the internet, Gelvin broadly describes that “[t]he WINS vehicle internetwork of an embodiment includes functionality that enables convenient and secure coupling of diverse networks and devices.” Id. at 9:58–60. Also, Gelvin explains other ways in which the vehicle network connects with the Internet. Gelvin for instance, describes with respect to Figure 6 that “[i]n operation, the vehicular network 602 tries to select the most cost-effective communication alternative that provides the desired level of service.” Id. at 10:20–22. When connecting to an external ISP (Internet Service Provider), Gelvin explains that one option is “the ISP uses the vehicle’s cellular phone number to attempt to establish a coupling over the telephone network, and tunnel the packet through. While the cell associated cost, and thus the reason for attempting other means of communication.” Id. at 10:35–40. Gelvin’s disclosure does not, on the record at this stage of the proceeding, appear limited to the PDA communicating via the internet on its own network. Particularly, where Gelvin provides various embodiments and communication methods and explains that given the WINS architecture, “[p]otentially, any number of available methods of communication can be attempted.” Id. at 10:40–41.” slip op. at 20
Claim construction§ 102 anticipationPatents in suitUS 7,382,771 - 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
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.