• Neurocrine Biosciences, Inc. v. Spruce Bosciences, Inc.Institution denied
  PTAB · Dec 10, 2021 · PGR2021-00088 · APJ John G New · PGR · Institution

  The Board denied institution on all five grounds, finding the petition did not show any challenged claim was likely unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 324, the Board “may not authorize a post-grant review to be instituted unless … the information presented in the petition … if such information is not rebutted would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the Petition, the Preliminary Response, and the evidence presently before us, we determine that Petitioner has failed to demonstrate that it is more likely than not that it would prevail in establishing the unpatentability of at least one challenged claim of the ’908 patent. We consequently deny institution of post-grant review.” slip op. at 2

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

    “The Specification expressly teaches that, with respect to the clinical phase 2 trial described in Example 4, “Patients will have overnight [pharmacokinetic/pharmacodynamics] PK/PD assessments performed at baseline, which include an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose.” Ex. 1001 col. 42, ll. 12–16. This is the same quotation and clinical trial relied upon by Dr. Barnes in his Declaration, and is the only definition of a “baseline” in the ’908 patent. See Ex. 1002, 36–37. We note that placebos were evidently not employed in the phase 2 clinical study of Example 4.3 Given the sole exemplary description of “baseline” in Example 4 of the Specification, we construe the claim term reciting “reduced by at least 10% from baseline” as meaning “a reduction of at least 10% in the level of ACTH (claim 1) or 17-OHP (claim 11) compared to measurements of ACTH or 17-OHP made prior to, and/or at the beginning of, administration of the drug.”” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “likely than not that independent claims 1 and 11 are anticipated by Grigoriadis. “For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” Therasense, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1332–33 (Fed. Cir. 2010). The single clinical trial taught by Example 6 of Grigoriadis does not establish a baseline value for patients against which to compare the data obtained from patients receiving 300 mg or 600 mg of the test drug, NBI- 77860 (verucerfont). See Ex. 1006 ¶¶ 90–94. Specifically, Example 6 does not establish a baseline “which include[s] an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose,” as disclosed by the ’908 patent. See Ex. 1001, col. 42, ll. 12–16. We therefore conclude that Grigoriadis fails to disclose expressly the limitations of claims 1 and 11 severally reciting “wherein [the] … hormone … level in the human is reduced by at least 10 % from baseline.”” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “A reference may anticipate if a claim limitation that is not expressly disclosed is inherently disclosed because it “is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010); see also Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (holding that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question”).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,849,908
• Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.Institution denied
  PTAB · Dec 10, 2021 · IPR2021-01043 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 20–22, 24, 25, 27, and 28 were obvious over Benson, Terentyev, and Sequeira.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In analyzing the obviousness of a combination of prior art elements, it can be important to identify a reason that would have prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “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.” Id. at 420. Accordingly, a party who petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations and citations omitted).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny institution of inter partes review in this case under 35 U.S.C. § 314(a), because of the parallel district court litigation. Prelim. Resp. 2–11; Sur-reply 1–5. Because we have considered the merits of the Petition and decline to institute an inter partes review on that basis, we need not determine whether it would be appropriate to discretionarily deny the Petition under § 314(a).” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that at the time of the invention, a person of ordinary skill in the art (“POSITA”) would be a person with a Bachelor of Science degree in engineering (e.g., chemical, electrical, computer, mechanical, petroleum engineering), computer science, or an equivalent degree, or at least two years of experience in the field of computer programming, working with computer systems, user interfaces, and control systems. Pet. 15 (citing Ex. 1003 ¶¶ 79–81). Petitioner further asserts that “[a]dditional education could compensate for less practical experience and vice versa.” Id. Patent Owner does not address the level of skill in the art, or otherwise dispute Petitioner’s assertion. See generally Prelim. Resp.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,672,154
• Momentum Dynamics Corporation v. Witricity CorporationInstitution denied
  PTAB · Dec 10, 2021 · IPR2021-01165 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Stark, alone or with Mecke, rendered them obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “But limitations 1[c] and 1[d] have to be met together, not separately in disparate disclosures of Stark. To meet limitation 1[c], Petitioner relies on the parameters of the working prototype that was constructed by the author of Stark and described in Chapter 7 of Stark. Pet. 33–37. The Q1 = Q2 = 1000 notion is in a separate section for developing an intuition where ω1 ≠ a common resonant frequency among all coils. Id. at 174. Regarding its constructed prototype, Stark specifically states: “At this point, it remains to tune the four coils such that they are all resonating at the same frequency.”4 Id. at 190. Further, in Chapter 8, where Stark specifically discusses measurements from the prototype, Stark reveals that the Qs designed into the prototype are: Q1 = 32, Q2 = 34; Q1 = 23, Q2 = 22; Q1 = 29, Q2 = 26. Id. at 206, 212, 215. The prototype was not designed or implemented with Q1 = Q2 = 1000. Thus, Petitioner has not shown satisfaction of limitations 1[c] and 1[d], by relying on the disclosure of Q1 = Q2 = 1000.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “On this record, and for reasons discussed below, the disclosures cited by Petitioner are not consistent with numerous other express disclosures of Stark. Petitioner has over-simplified Stark’s disclosure as well as engaged in selective picking and choosing of Stark’s teachings. “It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one skilled in the art.” Bausch & Lomb, Inc. v. Barnes- Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986) (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)). “The relevant portions of a reference include not only those teachings which would suggest particular teachings which would lead such a person away from the claimed invention.” In re Mercer, 515 F.2d 1161, 1166 (CCPA 1975). Petitioner’s selectively picking and choosing without an adequate explanation amounts to a critical deficiency of the Petition. Petitioner does not identify testimony of Dr. Young which would explain the various contrary disclosures of Stark.” slip op. at 17

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,741,734
• Bluecatbio Ma Inc. v. Yantai Ausbio Laboratories Co., Ltd.No claims unpatentable
  PTAB · Dec 9, 2021 · PGR2020-00051 · APJ Elizabeth M Roesel · PGR · Final written decision

  Petitioner failed to prove claims 1, 3–5, 7, 10–12, and 14–20 unpatentable because the Gyro Washer was not shown to drive all or nearly all expelled liquid to the drain.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that Patent Owner’s additions are supported by the ’063 Patent. Patent Owner directs us to portions of the Specification that discuss immunoassays, magnetic bead assays, and cellular assays, as well as the need to avoid cross-contamination for these types of reactions. PO Resp. 14; Ex. 1001, 1:24–28, 3:43–45; 3:63–66, 4:25–32, 13:25–50, 15:52– 16:2, 19:41–59. We find that these disclosures support Patent Owner’s contention that a POSA would have been aware of the operational requirements of reaction vessel unit washing devices, methods used to cross-contamination. For these reasons, we apply Petitioner’s definition of a POSA as modified by Patent Owner’s additions. Pet. 16; PO Resp. 15.4” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that its proposed construction stays true to the claim language. PO Sur-reply 5. As just discussed, “the expelled liquid on the inner surface of the housing” refers back to an earlier part of the claim that recites that rotating the rotor (referred to in claim 12 as inner surface of the housing. Ex. 1001, 24:5–8, 25:5–7. Claims 1 and 12 recite “the expelled liquid” without any modifier, such as “at least some.” In our view, Patent Owner’s proposed construction is consistent with the claim language because the antecedent for “the expelled liquid” is the liquid that is expelled from the reaction vessel onto the inner surface of the housing, not merely some portion of that liquid. Nothing in the claim language suggests that “the expelled liquid on the inner surface of the housing” is divisible, with some of the liquid being driven by the wind to the drain and some of the liquid not being driven by the wind to the drain. For example, we see no support in the claim language for Petitioner’s argument that “the first expelled milliliter qualifies as ‘liquid . . . expelled,’ and the second milliliter also qualifies as ‘liquid . . . expelled,’ and so on.” Pet. 20 (citing Ex. 1006 ¶ 65). Although “all or nearly all” is not expressly recited in the claim, neither is “some.” As between these two constructions, “all or nearly all” more closely aligns with the language and structure of claims 1 and 12, including the antecedent for “the expelled liquid on the inner surface of the housing,” which in our view refers to the undivided whole of the liquid.6” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “5. Weighing the Evidence For all of the foregoing reasons, we determine that Petitioner has not shown persuasively that the Gyro Washer generates a wind that drives to the drain “all or nearly all of the liquid expelled from the reaction vessel onto the inner surface of the housing,” as required by our claim construction. More particularly, we find that the photos and observations of the Gyro Washer and microplates after completion of a wash cycle, as discussed in subsection 2 above, show that a substantial amount of the liquid expelled from a microplate onto the inner surface of the housing is not driven by the wind to the drain of the Gyro Washer. We find that this evidence outweighs the other evidence relied upon by Petitioner to show that the wind limitation is met, including the videos and observations of the Gyro Washer in operation, as discussed in subsection 1 above, Petitioner’s droplet experiments, as discussed in subsection 3 above, and Petitioner’s bucket experiments, as discussed in subsection 4 above.” slip op. at 48

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “dependent claim 10, Petitioner contends that it would have been obvious to use an aspiration pump with the Gyro Washer. Pet. 104–105 (relying on evidence that a Gyro Washer was sold with an aspiration pump). For dependent claims 7 and 17, Petitioner contends that it would have been obvious to modify the Gyro Washer so that the rotor is rotated in a second rotational direction. Pet. 105–108, 114. For method claims 12 and 14–17, Petitioner contends that, even in the absence of Mr. Yagi’s demonstrations of the Gyro Washer at the 2009 and 2010 trade shows, the method of using the Gyro Washer would have been obvious in view of the device itself and that the limitations claims 12 and 14–16 are satisfied by the natural, ordinary, and intended use of the Gyro Washer. Pet. 108–114. Petitioner’s contentions do not remedy the deficiencies in Petitioner’s arguments and evidence addressing the wind limitation, as discussed above. Accordingly, we determine that Petitioner has not met its burden to show that claims 7, 10, 12 and 14–17 would have been obvious in view of the Gyro Washer.” slip op. at 51

  Patent outcomesUS 10,338,063 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,338,063
• Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.Institution denied
  PTAB · Dec 9, 2021 · IPR2021-01018 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the Parties’ briefs and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review. slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “identified by Petitioner at all, let alone as a plot of toolface orientation versus time. Rather, Haci discloses that toolface orientation data is displayed elsewhere on the driller’s screen: “Screen 71 includes a tool face indicator 73, which displays the tool face angle . . . .” Ex. 1006, 6:25–26. Haci also discloses what is shown in its display: “[G]raphical display 113 shows plots of differential pressure vs. time 115 and torque vs. time 117 for the driller.” Id. at 7:5–7. To support its contentions, Petitioner does little more than cite to its annotated version of Haci Figure 3 and the Schaaf Declaration, which in large measure presents the same conclusory assertions advanced in the Petition. See Pet. 43–46; Ex. 1005 ¶¶ 126–133. Such speculation is inadequate to support Petitioner’s contentions. Neither Petitioner nor Mr. Schaaf support adequately the contention that an ordinarily skilled artisan would interpret the “small dots” identified by Petitioner in Haci Figure 3 as “a plot of toolface vs. time.” Pet. 44–46; Ex. 1005 ¶¶ 128–133. For example, neither Petitioner nor Mr. Schaaf explains why Haci’s disclosure describes toolface orientation data being displayed to the user via tool face indicator 73 (Ex. 1006, 6:25–26), but fails to discuss the alleged toolface orientation data in graphical display 113. Similarly, neither Petitioner nor Mr. Schaaf explains why Haci’s disclosure describes graphical display 113 as presenting differential pressure data and torque data (id. at 7:5–7), but fails to discuss the alleged toolface orientation data.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review in view of the Texas litigation. Prelim. Resp. 30–51; Prelim. Sur-reply 1–5. Because we have considered the merits of Petitioner’s challenges and decline to institute inter partes review on that basis, we need not determine whether it would be appropriate to exercise our discretion to deny institution of inter partes review under § 314(a).” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have had a Bachelor’s of Science degree in engineering (e.g., mechanical, petroleum, or chemical engineering) or an equivalent degree” and through education or experience, would have 2 The parties have not directed us to any such objective evidence. “familiarity with directional drilling principles.” Pet. 16 (citing Ex. 1005 ¶ 71). Patent Owner does not contest Petitioner’s definition or offer a definition of its own. See generally Prelim. Resp. We find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’593 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,802,634
• Sattler Tech Corporation v. Yaqi LyuInstitution denied
  PTAB · Dec 9, 2021 · PGR2021-00095 · APJ Scott A Daniels · PGR · Institution

  The Board denied institution of PGR challenging the sole claim because Sattler had filed a civil action challenging that claim’s validity before filing the petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

    “Sattler filed this Petition for post grant review of the ’645 patent on June 9, 2021. Approximately two months prior, on April 15, 2021, Sattler filed the Virginia lawsuit seeking a declaratory judgment that the claim of the ’645 patent is invalid based on prior art sales and activity prior to October 18, 2019. See Ex. 3002; see also Ex. 3001 ¶¶ 15, 25(a). Because the Board may not institute a post grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed, we deny the Petition in all respects. See 35 U.S.C. § 325(a)(1).” slip op. at 3

  • BurdenDenied

    “Sattler filed this Petition for post grant review of the ’645 patent on June 9, 2021. Approximately two months prior, on April 15, 2021, Sattler filed the Virginia lawsuit seeking a declaratory judgment that the claim of the ’645 patent is invalid based on prior art sales and activity prior to October 18, 2019. See Ex. 3002; see also Ex. 3001 ¶¶ 15, 25(a). Because the Board may not institute a post grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed, we deny the Petition in all respects. See 35 U.S.C. § 325(a)(1).” slip op. at 3

  Discretionary denial
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 9, 2021 · IPR2021-01119 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim, chiefly because the cited art did not disclose tessellated tiles.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any challenged claim. We therefore do not institute inter partes review as to any of the challenged claims of the ’518 patent.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “interest, the area tile map represented by a set of tile subareas that includes one or more tessellated tiles from a tessellated tile map” or “identify[ing] a tile subarea . . . wherein one or more tessellated tiles within the identified tile subarea are associated with one or more AR content objects.” As Patent Owner points out, there is no discussion in Altman of tessellated tiles. Prelim. Resp. 16. While it is true that Altman discusses map tiles, there is no disclosure in Altman of how those tiles are arranged, much less whether they are “tiles fitted together to cover an area without gaps.” Id. at 18–19. The portions of Altman relied on by Petitioner do not support its argument that Altman discloses tessellated tiles. Thus, for example, paragraph 37 of Altman, cited by Petitioner, mentions “map tiles” but provides no description of what they are or how they are arranged. Ex. 1003 ¶ 37. Similarly, paragraph 43 of Altman, also cited by Petitioner, describes the map tiles as “image files of maps with varying degrees of granularity,” but does not provide any description of how the tiles are arranged. Id. ¶ 43. Nor does Figure 2A of Altman or its description in the text demonstrate that Altman’s map is made up of tessellated tiles. Prelim. Resp. 17. Petitioner does not support its argument that because Altman’s Figure 2A shows “a large geographic area covering multiple towns with no gaps in map coverage” that “a person of ordinary skill would have understood that each layer or the area map as a whole . . . constitutes a tessellated tile map.” Pet. 24. As Patent Owner points out, individual map tiles can be used to display certain areas of a map without being sets of tessellated tiles. Prelim. Resp. 18. And even if individual tiles were used in Altman’s maps, nothing in Altman discloses or suggests that there are no gaps between the tiles. Id. at 18–19.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “Altman with CaveLie.” Pet. 46 (citing Zyda Decl. ¶¶ 305–311). Petitioner explains that “[a person of ordinary skill] would have naturally looked to CaveLie for further implementation details on the tessellated tiles already disclosed in Altman.” Id. at 46–47 (emphasis added). Patent Owner responds that “there is no citation to anything in these references themselves to support this argument, which is apparently based on hindsight.” Prelim. Resp. 36. We agree with Patent Owner that Petitioner has failed to demonstrate a sufficient motivation to combine Altman with CaveLie, other than hindsight. As indicated in the argument from the Petition just quoted, Petitioner’s rationale for combining Altman and CaveLie proceeds on the assumption that Altman discloses tessellated tiles, for which CaveLie allegedly provides “further implementation details.” Pet. 46–47. However, in our analysis of Altman, we conclude that Petitioner has not demonstrated sufficiently that Altman teaches or suggests tessellated tiles. See supra, Section III.B.1.c.” slip op. at 25

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the “tessellated tiles” limitations. Dr. Zyda’s testimony tracks the arguments in the Petition closely. See Zyda Decl. ¶¶ 160–162. As support for his conclusion (id. ¶ 160) that “Altman discloses that the map tiles can be tessellated tiles,” Dr. Zyda cites the same disclosures from Altman (Ex. 1003 ¶¶ 37, 43, and Fig. 2A) as does the Petition. See Pet. 23 (citing Ex. 1003 ¶¶ 37, 43). As just discussed, those disclosures do not describe how the tiles in Altman are arranged and do not support the contention that they are tessellated tiles. Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that these map tiles are tessellated tiles” cites paragraph 43 of Altman for support. See Zyda Decl. ¶ 161. For the reasons given supra, that paragraph in Altman does not support this conclusion. Moreover, Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that each layer or [sic] the area tile map [in Altman] as a whole (considering all layers collectively) constitutes a tessellated tile map” (Zyda Decl. ¶ 161) cites no supporting evidence. Our Trial Practice Guide cautions that “[e]xpert testimony . . . cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (November 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We are not persuaded by Dr. Zyda’s speculations on what persons of ordinary skill would have known (including those discussed supra) because either they are not properly supported by the cited evidence, or they do not cite any evidentiary support at all.” slip op. at 23

  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,664,518
• Apple, Inc. v. Alivecor, Inc.Instituted
  PTAB · Dec 8, 2021 · IPR2021-00972 · APJ David Cotta · IPR · Institution

  Instituted IPR of claims 1–23 on all three asserted §103 grounds; Apple showed a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “We typically take courts’ trial schedules at “face value,” and decline Petitioner’s invitation to speculate that the target date for completion of the ITC Investigation will slip as a result of the COVID-19 pandemic. Fintiv, IPR2020-00019, Paper 15 at 13 (informative). Accordingly, for purposes of analyzing this factor, we assume that the ITC Investigation will conclude on October 26, 2022. We also decline Petitioner’s invitation to assume an earlier date for issuance of our FWD. Although we appreciate Petitioner’s willingness to expedite resolution of this case, Patent Owner raises valid concerns that compressing the reply period will also compress the window for taking depositions. Moreover, the statutory due date for our FWD is triggered by the date of our institution decision and is unaffected by the date on which Petitioner files its reply. See 35 U.S.C. § 316(a)(11). Given that our FWD in this case is due seven weeks after the targeted completion of the ITC Investigation, we determine that this factor weighs marginally in favor of exercising our discretion to deny institution.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner shows, based on this preliminary record, where each of the limitations of the challenged claims is taught or suggested by the combination of Shmueli and Osorio. Pet. 11–64. Petitioner’s assertions above are backed by the cited prior art and by the testimony of its declarant, Dr. Chaitman. Id.; see also Ex. 1003 ¶¶ 68–150. On this preliminary record, we determine that Petitioner’s arguments and evidence are sufficient for purposes of institution. We focus our discussion on Patent Owner’s arguments that Petitioner has not sufficiently supported a motivation to combine Shmueli and Osorio and that Shmueli and Osorio do not disclose “key elements” of the independent claims. Prelim. Resp. 30–42.” slip op. at 36

  • Skill levelSkill level board ownOther

    “As such, Dr. Chaitman would appear to qualify as one of ordinary skill in the art under Patent Owner’s proposed definition. Given Patent Owner’s focus on “specialized engineering skills necessary for the design, configuration, and operation of portable computing devices,” however, we note that we consider the weight of his, or any other expert’s opinions, in light of the strengths and weaknesses of their background. We further note that the research and development of medical devices is often the work of a multidisciplinary team, and courts and tribunals have frequently identified the hypothetical person of ordinary skill as a composite or team of individuals with complementary backgrounds and skills. See, e.g., AstraZeneca Pharm. LP v. Anchen Pharm., Inc., No. 10-CV-1835 JAP TJB, 2012 WL 1065458, at *19, *22 (D.N.J. Mar. 29, 2012), aff'd, 498 F. App’x 999 (Fed. Cir. 2013) (collecting cases); Apotex Inc. v. Novartis AG, IPR2017-00854, Paper 109 at 10–11 (PTAB July 11, 2018) (collecting cases). In the present case, such a team might include specialists in electrical engineering, mechanical engineering, biomedical engineering, computer science, and cardiology. In this respect, Patent Owner’s expert does not discount the benefit of a background in cardiology. In particular, Dr. Efimov testifies that although a cardiologist may or may not possess the specialized engineering skills to understand the design, configuration, and operation of the subject technology, “a degree in biomedical or electrical engineering (or an equivalent), and/or extensive experience working with arrhythmia detection tools would also be necessary” Ex. 2001 ¶¶ 52–53 (emphasis added).9 Indeed, considering that the claims of the ’941 patent relate to, e.g., “method[s] of cardiac monitoring” to “confirm a presence of the arrhythmia,” we find it reasonable that one of ordinary skill in the art would encompass a multidisciplinary team including a cardiologist. Ex. 1001, 17:1–18. In view of the above, we provisionally define one of ordinary skill in the art as a multidisciplinary team comprising persons with advanced degrees in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology. The parties are welcome to further address the level of ordinary skill in the art at trial. C. Claim Construction” slip op. at 25

  • Expert testimonyPetitioner expert creditedOther

    “cardiac arrhythmia as opposed some other heart condition. Id. at 31–32. In this respect Patent Owner’s declarant, Dr. Efimov, testifies that Shmueli makes no attempt to define “irregular heart condition” with any specificity, and “one can only speculate” as to its meaning because “numerous conditions can be considered heart irregularities: normal autonomic nervous system control, autonomic dysfunction, heart failure, ischemia, myocardial infarction, heart block, etc.” Ex. 2001 ¶ 69. At this stage of the proceeding, however, we credit Dr. Chaitman’s testimony that Shmueli discloses “both detecting the ‘irregular heart condition’ based on PPG data and confirming the diagnosis with an ECG measurement.” Ex. 1003 ¶ 54 (citing Ex. 1004, Abstract, Fig. 8; 8:23–28). And although Shmueli “offers an expansive definition of the ‘irregular heart condition,’” one of ordinary skill in the art would have understood this term as referring to arrhythmia, which is “one of the most obvious (if not the most obvious) types of ‘irregular heart condition[s]’ that can be determined using PPG and ECG data.” Id. Considering the present record, Petitioner has established sufficiently that one of ordinary skill in the art would have understood Shmueli’s use of “irregular heart condition” as referring to—or at a minimum, encompassing—arrhythmia, and, thus, disclosing the detection of arrhythmia. See Pet. 13–14 (citing, e.g., Ex. 1003 ¶ 54).” slip op. at 37

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,638,941
• Apple, Inc. v. Alivecor, Inc.Instituted
  PTAB · Dec 8, 2021 · IPR2021-00971 · APJ Robert A Pollock · IPR · Institution

  The Board instituted IPR on claims 1–30 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, (“Trial Practice Guide”).6 We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. Upon consideration of these factors, we decline to exercise our discretion to deny the Petition. A. Whether the Court Granted a Stay or Evidence Exists That One May Be Granted if a Proceeding is Instituted” slip op. at 10

  • Skill levelSkill level board ownOther

    “skill in the art under Patent Owner’s proposed definition. Given Patent Owner’s focus on “specialized engineering skills necessary for the design, configuration, and operation of portable computing devices,” however, we consider the weight of his, or any other expert’s opinions, in light of the strengths and weaknesses of their background. We further note that the research and development of medical devices is often the work of a multidisciplinary team, and courts and tribunals have frequently identified the hypothetical person of ordinary skill as a composite or team of individuals with complementary backgrounds and skills. See, e.g., AstraZeneca Pharm. LP v. Anchen Pharm., Inc., 2012 WL 1065458, at *19, *22 (D.N.J. Mar. 29, 2012), aff'd, 498 F. App’x 999 (Fed. Cir. 2013) (collecting cases); Apotex Inc. v. Novartis AG, IPR2017-00854, Paper 109 at 10–11 (PTAB July 11, 2018) (collecting cases). In the present case, such a team might include specialists in electrical engineering, mechanical engineering, biomedical engineering, computer science, and cardiology. In this respect, Patent Owner’s expert does not discount the benefit of a background in cardiology. In particular, Dr. Efimov testifies that although a cardiologist may or may not possess the specialized engineering skills to understand the design, configuration, and operation of the subject technology, “a degree in biomedical or electrical engineering (or an equivalent), and/or extensive experience working with arrhythmia detection tools would also be necessary.” Ex. 2001 ¶¶ 52–53 (emphasis added).10 Indeed, considering that the ’731 patent “relates to methods and systems for managing health and disease such as cardiac diseases including arrhythmia and atrial fibrillation,” we find it reasonable that one of ordinary skill in the art would encompass a multidisciplinary team including a cardiologist. In view of the above, we provisionally define one of ordinary skill in the art as a multidisciplinary team comprising persons with advanced degrees in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology. The parties are welcome to further address the level of ordinary skill in the art at trial.” slip op. at 27

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we need only construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage of the proceeding, no term requires construction. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). The parties are, of course, welcome to address the meaning of any relevant claim term at trial. D. Ground 1: Obviousness over Shmueli” slip op. at 29

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “At this stage of the proceeding, however, we credit Dr. Chaitman’s testimony that, “Shmueli discloses both detecting the ‘irregular heart condition’ based on PPG data and confirming the diagnosis with an ECG measurement.” Ex. 1003 ¶ 48 (citing Ex. 1004, Abstract, Fig. 8; 8:23–28). And although Shmueli “offers an expansive definition of ‘irregular heart condition,’” one of ordinary skill in the art would have understood this term as referring to arrhythmia, “which is one of the most obvious (if not the most obvious) types of ‘irregular heart condition[s]’ that can be determined using PPG and ECG data.” Id. (citing, Ex. 1016, 6081; Ex. 1020, Abstract, 44:29– 32; Ex. 1011, Abstract; Ex. 1023, 2; Ex. 1047, 320–321; Ex. 1001, 1:40–42; Ex. 1004, 8:11–13, 15:3–5) (alteration in original). Considering the present record, Petitioner has established sufficiently that one of ordinary skill in the art would have understood Shmueli’s use of “irregular heart condition” as referring to—or at a minimum, encompassing—arrhythmia, and, thus, disclosing the detection of arrhythmia. See Pet. 10–12 (citing, e.g., Ex. 1003 ¶ 48).” slip op. at 33

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,595,731
• Apple, Inc. v. Alivecor, Inc.Instituted
  PTAB · Dec 8, 2021 · IPR2021-00970 · APJ Robert A Pollock · IPR · Institution

  The Board instituted IPR on claims 1–20 under the asserted obviousness grounds based on Shmueli and Osorio, with Hu for claims 7–9 and 17–19.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “and merely argues that Petitioner does not rely on Hu to correct the alleged deficiencies of Shmueli–Osorio combination of Ground 1. Prelim. Resp. 42– 43. As discussed above, however, we do not find Petitioner’s arguments with respect to Ground 1 deficient for the purposes of institution. Accordingly, on this record, Petitioner has shown sufficiently that one of ordinary skill in the art would have considered at least one claim of the ’499 patent obvious for the reasons set forth in the Petition.” slip op. at 47

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “grounds, arguments, and/or evidence than the ITC Investigation. Although Patent Owner argues that the prior art cited in the Petition has “already entered the ITC case,” that argument was made before Petitioner narrowed the number of prior art references it intended to rely upon, as required by the ITC’s Order Setting Procedural Schedule. Ex. 2006; Ex. 1057. Currently there does not appear to be any overlap in arguments or evidence between the two proceedings. Moreover, we agree with Petitioner that its stipulation mitigates to some degree concerns of duplicative efforts and possibly conflicting decisions between the Board and the ITC. Indeed, Petitioner’s stipulation echoes the one cited in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, which the Board determined weighed “marginally in favor of not exercising discretion to deny institution.” IPR2019-01393, Paper 24 at 16 (PTAB June 16, 2020) (informative). Finally, we agree with Petitioner that this proceeding will likely include claims that are not at issue in the ITC Investigation. We are not persuaded by Patent Owner’s argument that Petitioner has failed to explain why the narrowed set of claims would be substantially different than those challenged in the IPR petition because, based on the ITC’s Order Setting Procedural Schedule, Patent Owner had yet to narrow the number of asserted claims as of the deadline for Petitioner to brief this issue. See Ex. 3001 (email from the Board authorizing the parties to brief discretionary denial issues, setting a deadline of October 25, 2021 for Petitioner to file its” slip op. at 18

  • Skill levelSkill level board ownOther

    “frequently identified the hypothetical person of ordinary skill as a composite or team of individuals with complementary backgrounds and skills. See, e.g., AstraZeneca Pharm. LP v. Anchen Pharm., Inc., 2012 WL 1065458, at *19, *22 (D.N.J. Mar. 29, 2012), aff'd, 498 F. App’x 999 (Fed. Cir. 2013) (collecting cases); Apotex Inc. v. Novartis AG, IPR2017-00854, Paper 109 at 10–11 (PTAB July 11, 2018) (collecting cases). In the present case, such a team might include specialists in electrical engineering, mechanical engineering, biomedical engineering, computer science, and cardiology. In this respect, Patent Owner’s expert does not discount the benefit of a background in cardiology. In particular, Dr. Efimov testifies that although a cardiologist may or may not possess the specialized engineering skills to understand the design, configuration, and operation of the subject technology, “a degree in biomedical or electrical engineering (or an equivalent), and/or extensive experience working with arrhythmia detection tools would also be necessary” Ex. 2001 ¶ ¶ 51–52 (emphasis added). Indeed, considering that the ’499 patent “relates to methods and systems for managing health and disease such as cardiac diseases including arrhythmia and atrial fibrillation,” we find it reasonable that one of ordinary skill in the art would encompass a multidisciplinary team including a cardiologist. In view of the above, we provisionally define one of ordinary skill in the art as a multidisciplinary team comprising persons with advanced degrees in electrical engineering, mechanical engineering, biomedical engineering, computer science, and/or cardiology. The parties are welcome to further address the level of ordinary skill in the art at trial.” slip op. at 28

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we need only construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Patent Owner notes that claim terms “heart rate sensor” and those relating to “alert” are at issue in the related ITC Investigation but neither party proposes any construction here. See Prelim. Resp. 29 (citing Ex. 2009). At this stage of the instant proceeding no term requires construction. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). The parties are, of course, welcome to address the meaning of any relevant claim term at trial. D. Ground 1: Obviousness over Shmueli and Osorio” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,572,499

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.