- New World Medical, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Mar 11, 2022 · IPR2021-00066 · APJ Robert A Pollock · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1–11 are anticipated by Quintana and obvious over Quintana; the Board did not reach the Jacobi ground.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner filed a motion to exclude evidence (Paper 38); Petitioner opposed (Paper 41); and Patent Owner filed a reply in support of its motion (Paper 43). Petitioner also filed a motion to exclude evidence (Paper 39); Patent Owner opposed (Paper 40); and Petitioner filed a reply in support of its motion (Paper 42). We addressed (and denied) the parties’ motions to exclude in Paper 49.” slip op. at 3
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“We “conclude[d] that the better course is to have a complete record of the evidence,” and, therefore, denied Petitioner’s Motion, but also explained that “to the extent that Dr. Condon’s testimony and Patent Owner’s reliance thereon ventures into areas the witness has conceded he either does not understand or has inadequately analyzed,” we would accord it little weight, as distinguished “from that relating to Dr. Condon’s technical expertise in, for example, anatomy, eye surgery, and his own reading of evidence.” Order 13. Therefore, it is through this lens that we consider and analyze Dr. Condon’s testimony here.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 22 (citing Ex. 1003 ¶ 24). On page 18 of our Institution Decision, we provisionally accepted Petitioner’s proposed definition, which was not opposed by Patent Owner, and is consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’544 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). As Patent Owner expressly agrees with our analysis, we apply Petitioner’s proposed definition here. See PO Resp. 11, n.4. C.” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“1. “A device useable to create an opening in the trabecular meshwork of the eye” Independent claim 1 is directed to “[a] device useable to create an opening in the trabecular meshwork of the eye” and having a “foot member . . . advanceable, tip first, through Schlemm’s Canal to facilitate performance of a surgical procedure using the surgical instrument.” Ex. 1001, 23:4–5, 23:18–20. As an initial matter, we consider the preamble of claim 1 limiting here because a device that “create[s] an opening in the trabecular meshwork” recites or, at a minimum, implies, “essential structure or steps” required for the insertion and advancement of the instrument through Schlemm’s Canal as set forth in [1.d]. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).8” slip op. at 26
Patent outcomesUS 9,999,544 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,999,544 - Intel Corporation v. Parkervision, Inc.All claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01265 · APJ Bart A Gerstenblith · IPR · Final written decision
Claim 3 is unpatentable under §103 over Tayloe and the TI Datasheet; the Board did not reach the Tayloe and Kawada ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“proposes that it be construed to mean “an element that stores a nonnegligible amount of energy from an input electromagnetic (EM) signal.” Pet. Reply 10. Petitioner contends that its proposed construction expressly tracks the definition provided in the ’551 patent for “storage element,” which the parties agree is synonymous with “storage module.” Id.; see id. at 10 n.2. In particular, Petitioner asserts that the ’551 patent states: “Storage modules . . . refer to systems that store non-negligible amounts of energy from an input EM signal.” Id. (quoting Ex. 2007, 66:65–67). Petitioner notes that the ’551 patent also states that “the ‘goal of the storage modules’ is ‘to store non-negligible amounts of energy transferred from the EM signal’” and that the patent “specifically distinguishes storage elements from holding elements on this basis.” Id. at 10–11 (quoting Ex. 2007, 66:59–67 (“Holding modules . . . identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of ‘holding’ a voltage value. Storage modules . . . on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal.”)). Thus, Petitioner contends “‘storage element’ should be construed accordingly.” Id. at 11 (citation omitted).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Owner fails to “establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. In particular, neither Patent Owner nor Dr. Steer makes any attempt to establish nexus with the elements recited in claim 3 based on a presumption of co-extensiveness or otherwise. Each instance in which Dr. Steer mentions claim 3, he only ties the discussion to energy transfer systems or energy sampling in general, which is based on Patent Owner’s proposed claim construction that we do not adopt. See, e.g., Ex. 1022 ¶¶ 229 (“energy transfer (energy sampling) system – of claim 3”), 230 (“energy sampling as set forth in claim 3”), 233 (“[u]sing energy sampling . . . as set forth in claim 3”), 234 (“energy sampling as set forth in claim 3”), 235 (same), 236 (same), 237 (“using the energy transfer (energy sampling) system of claim 3”), 238 (same), 239 (“energy sampling system as set forth in claim 3”). Thus, we find that Patent Owner fails to establish that a presumption of nexus is warranted and similarly fails to establish nexus absent the presumption. Accordingly, for the reasons above, Patent Owner has not satisfied its burden to establish nexus. See WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999) (patent owner “bears the burden of showing that a nexus exists”).” slip op. at 64
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - PTAB · Jan 13, 2022 · IPR2021-01136 · APJ Ulrike W Jenks · IPR · Institution
The Board instituted review of claims 1 and 2 on the § 103 ground over Popplewell and Sazani, finding a reasonable likelihood that the claims would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We determine that the Popplewell article relied upon by Petitioner in this proceeding is the same or substantially the same as the art previously presented to the Office. As noted by Patent Owner, Popplewell was cited in an IDS and indicated as being considered by the Examiner during prosecution. Prelim. Resp. 1, 16; Ex. 2012, 2; Ex. 2007, 15. Moreover, Popplewell is discussed in the Specification of the ’461 patent as prior art in which “a technique for skipping exon 53 with a high efficiency has not yet been established.” Ex. 1001, 2:55–56, 3:5–6. This is sufficient under the under the first part of the Advanced Bionics framework. As explained in Advanced Bionics, “[p]reviously presented art includes art made of record . . . such as on an [IDS].” Advanced Bionics at 7–8. We further note that the Popplewell ’212 reference that formed the basis of the Examiner’s rejection during prosecution appears to include substantially similar disclosures as Popplewell, including with regard to the 25-mer PMO-A, which form the primary basis for Petitioner’s unpatentability arguments in this proceeding. See, e.g., Ex. 1023 ¶ 87 (“When tested and compared directly at 300 nM doses by nucleofection, PMO-G, PMO-H and PMO-A were most active producing in the order of 60% exon skipping”). To be sure, we recognize that the Examiner does not appear to have specifically considered, nor did Patent Owner otherwise highlight during prosecution, Popplewell’s or Popplewell ’212’s teachings regarding the viability of PMO-A. We address this failure under the second part of the Advanced Bionics framework.” slip op. at 23
- Other 314aInstitution denied discretionary otherDenied
“2. 35 U.S.C. § 314(a). Patent Owner contends that we should exercise our discretion to deny institution under § 314(a) because of a Mutual Confidentiality Agreement between the parties. Prelim. Resp. 65–73. Patent Owner argues that filing a petition for inter partes review violates the Agreement’s forum selection clause, which requires all potential actions to be filed in the United States District Court for the District of Delaware. Id. at 66–68 (citing Ex. 2026 § 1). Patent Owner acknowledges that the District of Delaware has already denied Patent Owner’s Motion for Preliminary Injunction seeking withdrawal of this and related Petitions due to the Agreement. See id. at 67– 68. Nevertheless, Patent Owner argues that the Board should deny this Petition so that the Federal Circuit can address the issue on appeal. Id. at 74. Finally, Patent Owner argues that considerations of efficiency, fairness, and the merits favor discretionary denial. Id. at 71–73. Petitioner responds that “[t]he Board has consistently refused to interpret and enforce contractual forum-selection clauses in deciding whether to institute post-grant proceedings.” Reply 6–7 (citing Samsung Elecs. Co. v. NuCurrent, Inc., IPR2019-00861, Paper 15, 20 (PTAB Feb. 7, 2020); Bally Gaming, Inc. v. New Vision Gaming & Dev., Inc., CBM2018- 00006, Paper 47, 7–8 (PTAB June 19, 2019); Dot Hill Sys. Corp. v. Crossroads Sys., Inc., IPR2015-00822, Paper 18, 6–10 (PTAB Sept. 17, 2015)). Petitioner further contends that the District of Delaware has already denied Patent Owner’s request for preliminary injunction on this issue, finding that the Agreement indicates that the parties intended to allow IPRs to proceed. Id. at 7 (citing Ex. 1103, 5). We have considered Patent Owner’s arguments related to the forum selection clause in the parties’ Agreement. We determine, however, that the particular facts of this case, including the District of Delaware’s denial of a preliminary injunction, do not warrant exercise our discretion to deny institution on this basis.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that the challenged claims of the ’461 patent are unpatentable. We therefore institute trial on all challenged claims under the ground raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (Indicating that a decision whether to institute an inter partes review “require[s] a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.”); 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have a Ph.D. in chemistry, biochemistry, cell biology, genetics, molecular biology, or an equivalent, and several years of experience with AOs for inducing exon skipping. A POSA would also have familiarity with methods for making and testing the safety and efficacy of such AOs, both in vitro and in vivo, and the use of AOs for inducing exon skipping in the context of medical conditions, such as DMD, that may be treated by administering such AOs. Further, a POSA would have knowledge of and experience with chemical modifications that may be incorporated into AOs, such as modifications to the backbone and/or nucleobases of the AOs, and the potential impact of those modifications on the utility of the AOs. Pet. 28–29 (citing Ex. 1097 ¶¶ 91, 92). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. Prelim. Resp. 14. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here.” slip op. at 14
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,407,461 - PTAB · Jan 13, 2022 · IPR2021-01138 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 1–12 based on the §103 ground combining Popplewell and Sazani.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which that subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). 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 that 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) (internal quotations and citations omitted). slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“325(d), the Board applies a two-part framework: (1) first, we determine whether the same or substantially the same art previously was presented to the Office, or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, we examine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 8.” slip op. at 39
- Other 314aInstitution denied discretionary otherDenied
“institution under § 314(a) because of a Mutual Confidentiality Agreement between the parties. Prelim. Resp. 71. Patent Owner argues that filing a petition for inter partes review violates the Agreement’s forum selection clause, which requires all potential actions to be filed in the United States District Court for the District of Delaware. Id. at 66–67 (citing Ex. 2026 § 1). Patent Owner acknowledges that the District of Delaware has already denied Patent Owner’s Motion for Preliminary Injunction seeking withdrawal of this and related Petitions due to the Agreement. See id. at 68. Nevertheless, Patent Owner argues that the Board should deny this Petition so that the Federal Circuit can address the issue on appeal. Id. at 73. Finally, Patent Owner argues that considerations of efficiency, fairness, and the merits favor discretionary denial. Id. at 70–72. Petitioner responds that “[t]he Board has consistently refused to interpret and enforce contractual forum-selection clauses in deciding whether to institute post-grant proceedings.” Reply 6–7 (citing Samsung Elecs. Co. v. NuCurrent, Inc., IPR2019-00861, Paper 15, 20 (PTAB Feb. 7, 2020); Bally Gaming, Inc. v. New Vision Gaming & Dev., Inc., CBM2018- 00006, Paper 47, 7–8 (PTAB June 19, 2019); Dot Hill Sys. Corp. v. Crossroads Sys., Inc., IPR2015-00822, Paper 18, 6–10 (PTAB Sept. 17, 2015)). Petitioner further contends that the District of Delaware has already denied Patent Owner’s request for preliminary injunction on this issue, finding that the Agreement indicates that the parties intended to allow IPRs to proceed. Id. at 7 (citing Ex. 1103, 5). We have considered Patent Owner’s arguments related to the forum selection clause in the parties’ Agreement. We determine, however, that the particular facts of this case, including the District of Delaware’s denial of a preliminary injunction, do not warrant exercise our discretion to deny institution on this basis.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art would have had “a Ph.D. in chemistry, biochemistry, cell biology, genetics, molecular biology, or an equivalent, and several years of experience with AOs for inducing exon skipping” and would “have familiarity with methods for making and testing the safety and efficacy of such AOs, both in vitro and in vivo, and the use of AOs for inducing exon skipping in the context of medical conditions, such as DMD, that may be treated by administering such AOs.” Pet. 31–32 (citing Ex. 1099 ¶ 98). Petitioner also proposes that a person of ordinary skill in the art “would have knowledge of and experience with chemical modifications that may be incorporated into AOs, such as modifications to the backbone and/or nucleobases of the AOs, and the potential impact of those modifications on the utility of the AOs.” Id. at 32 (citing Ex. 1099 ¶ 99). Patent Owner states, “[s]olely for purposes of this IPR, Patent Owner does not dispute Petitioner’s definition of a POSA. To the extent the Board decides to institute this Petition, Patent Owner reserves the right to present a different definition post-institution.” Prelim. Resp. 14. Because Petitioner’s proposed definition is unopposed at this stage of the proceeding and appears consistent with the Specification and art of record, we apply it here.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,647,741 - PTAB · Nov 18, 2021 · IPR2021-00854 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–35 and all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that 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). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–35 of the ’240 patent on all grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A person of ordinary skill in the art . . . would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid 10 Koller, WO 91/02740, published Mar. 7, 1991. Ex. 1016. 11 Robert E. Farrell, Jr., Ph.D., “RNA Methodologies: A Laboratory Guide for Isolation and Characterization,” (3rd Ed., 2005). Ex. 1026. extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 7 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition at this stage. Prelim. Resp. 7. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’240 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner offer any position on the construction of any claim term. See Pet.; Prelim. Resp. 7. On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution. C. Principles of Law” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“and particularly claim 1. Petitioner provides a detailed analysis of where each element of claim 1 is found in Birnboim. Pet. 13–19. Specifically, Petitioner asserts that Birnboim’s Example 3 discloses an aqueous composition comprising the one or more chaotropes, one or more detergents, one or more reducing agents, one or more chelators, and one or more buffers, as recited in the claim. Id. at 13–18. Petitioner also asserts that “Birnboim’s reagents are present in an amount sufficient to perform the claimed functions.” Id. at 18–23 (heading capitalization normalized and underlining omitted).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,669,240 - SAP SE v. Teradata US Inc.InstitutedPTAB · Nov 15, 2021 · IPR2021-00863 · APJ Russell E Cass · IPR · Institution
Instituted review of claims 1–3, 5–9, 11–13, 15, and 17–19 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Data Temperature” Petitioner argues that the term “data temperature” in claims 2–3, 8–9, and 12–13 “includes any value representing the number or frequency of accesses of particular data in storage, either in absolute or relative terms.” Pet. 11–12 (citing Ex. 1001, 8:44–47, 15:37–42, 18:24–27; Ex. 1003 ¶ 34). Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. Prelim. Resp. 17. At this stage of the proceeding, and based on the present record, we adopt Petitioner’s proposed construction of this term.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding, and based on the present record, we determine that Petitioner’s three proposed constructions of “persistent data temperature” are reasonable and, as discussed further below, that Petitioner has established a reasonable likelihood that “persistent data temperature” is disclosed or suggested by the prior art under any of the three constructions. For purposes of institution, we need not determine which of these three proposed constructions is correct; however, the parties may address this issue further if appropriate during the trial. 3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience.” Pet. 9 (citing Ex. 1003 ¶ 30). According to Petitioner, the person of ordinary skill would have been familiar with “DRAM cache, flash or other solid-state storage device[s], tape, optical media, and other well-known storage types,” “[c]oncepts of data ‘temperature,’” “[m]ulti-level storage tiers and managing data storage between volatile devices (e.g., cache) and non-volatile devices (e.g., disk) based on temperature,” and “[w]ell-known concepts such as volatile storage, non-volatile storage, and data persistency.” Id. at 9–10 (citing Ex. 1005, 2:23–38, 5:65–6:3, 21:33–43, 25:21–62; Ex. 1010 ¶¶ 3–4; Ex. 1004 ¶¶ 18– 52; Ex. 1001, 8:7–13). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 17. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’623 patent and the asserted prior art of record.” slip op. at 10
- Expert testimonyPetitioner expert creditedOther
“sufficiently established that Morris inherently discloses this element based on the evidence of record. Petitioner does not point to specific portions of Morris that expressly state that storage information associated with storage of data in the disk drive (such as temperature values 420 in Figure 4) are provided to the cache, or that indicate that this step is necessarily present in Morris’s system. For example, it appears that there might be other places for storing temperature information or other ways of providing that information to the cache. Additionally, Dr. Long does not explain why one of ordinary skill would have “necessarily” understood that Morris’s process would have checked data HEADER 410 in Figure 4 to see if it contained a temperature value, and then used this temperature value as part of the Figure 2 steps, rather than obtaining the temperature value from another source. However, we determine that, for purposes of institution, Petitioner has sufficiently shown that element 1.3 would have been obvious over Morris. Petitioner’s obvious argument is supported by Dr. Long’s testimony that, when using data temperature to determine whether data should be stored in the cache (as reflected in Figure 2), it would have been obvious to “check[] the data ‘HEADER’ (410 in FIG. 4) to see if it contained a ‘temperature value’ (420 in FIG. 4), and then us[e] this temperature value as part of the FIG. 2 steps.” Ex. 1003 ¶ 51. As Dr. Long explains, data objects 400 with headers 410 and temperature values 420 in Figure 4 are “stored on a disk drive.” Id. ¶ 46. Dr. Long further testifies that one of ordinary skill “would have recognized the expressly disclosed ‘temperature value’ variable” 420 stored on the disk “as the best measure of a given data object’s temperature and the first place to check for whether a disk-stored data object had an associated temperature.” Id. “Given the express disclosure of this [temperature value] variable” 420, Dr. Long continues, it “would have been a natural choice” for the person of ordinary skill in the art to use it “when evaluating whether to cache data being read from the disk,” and one of ordinary skill would have had a reasonable expectation of success in doing so. Id. Contrary to Patent Owner’s argument, this testimony provides logical reasons why one of ordinary skill would have provided the temperature value from the disk to the cache, and is not merely “conclusory.” We reach a similar determination as to Petitioner’s obviousness argument based on the process for determining whether data should be deleted from the cache in Morris’s Figure 3. Petitioner’s argument is supported by Morris’s statement that “[t]he data temperature is stored with the data object in the cache,” and Dr. Long’s testimony that it would have been obvious to have “this data temperature in the cache originate[] from the ‘temperature value’ retrieved from the disk when originally storing the data in the cache.” Ex. 1004 ¶ 53; Ex. 1003 ¶ 54. Dr. Long further explains that “it would have been obvious to implement the Morris system in this way because the temperature maintained on the disk was the most natural source for the value of the data temperature stored in the cache,” and one of ordinary skill “would have used that approach with a reasonable expectation of success.” Ex. 1003 ¶ 54. “In fact,” according to Dr. Long, “given that the temperature value was persistently stored with the data on the disk,” the disk “was the only logical source for a reliable temperature value when deciding whether to load the data into the cache,” because “[a]ny other source would have risked being inaccurate or out of date and would have needlessly and redundantly stored the temperature in another location.” Id. This testimony provides logical reasons why one of ordinary skill would have provided the temperature value on the disk to the cache.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,720,623 - SAP SE v. Teradata US Inc.InstitutedPTAB · Nov 15, 2021 · IPR2021-00861 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–16 and all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Based on the present record, we do not find Patent Owner’s proposed construction supported by the intrinsic evidence. The ordinary meaning of “manage the storage of data in the volatile storage” does not require limiting the number of copies of the data in the volatile storage, and Patent Owner does not argue to the contrary. Turning to the language of the other claims, we note that claim 5, which depends from claim 1, specifically includes additional language stating that the data is stored “only in one of two portions of the volatile storage,” but claim 1 does not include such language. The use of this additional limitation in dependent claim 5 suggests that the inventors did not intend it to be included within claim 1’s broader language reciting “manag[ing] the storage of data in the volatile storage.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315–16 (Fed. Cir. 2005) (en banc) (“the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim”). Turning to the ’923 patent specification, the portions of the specification Patent Owner relies on appear to discuss a preferred embodiment of the invention, rather than limiting the invention itself. The portions of columns 14 and 15 upon which Patent Owner relies discuss Figure 3 which, the specification explains, “depicts a volatile storage 300 that uses a persistent temperature-based storage management technique as well as a conventional storage management technique in accordance with one embodiment.” Ex. 1001, 14:48–51 (emphasis added); see id. at 5:5–8 (also describing Figure 3 as being “in accordance with one embodiment” of the invention). Interpreting claim 1 to require maintaining only a single copy of a data portion in either the first portion or second portion, where that language does not exist in claim 1, would be tantamount to reading a limitation from a preferred embodiment into the claims, which would be improper. See Philips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Patent Owner does not identify any portions of the specification suggesting that limiting the number of copies of the data in the volatile storage is a necessary part of the invention, or that the inventors intended to expressly or impliedly define “manage the storage of data in the volatile storage” to include this requirement. Consequently, at this stage of the proceeding, we do not adopt Patent Owner’s proposed construction requiring that “manag[ing] the storage of data in the volatile storage” requires “coordinating placement of data into and out of the volatile storage so as to limit the number of copies of the data in the volatile storage.” The parties may further address the meaning of this claim phrase during the trial, if appropriate.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working 2 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience as it typically involves at least two years of additional study focused exclusively on computer science, as well as a thesis or project spanning several terms to implement a substantial project.” Pet. 12–13 (citing Ex. 1003 ¶ 31). According to Petitioner, the person of ordinary skill would have “understood the advantages of partitioning a volatile memory into multiple different sections (e.g., buffer pools) and applying multiple different storage management (e.g., cache replacement) policies to those different sections, and known how to implement such designs.” Id. at 13 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 14. For purposes of institution, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’923 patent and the asserted prior art of record.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage of the proceeding, Petitioner has made a sufficient showing that Lee discloses this claim element. Paragraph 17 of Lee discloses the use of a temperature-based storage management technique and a non-temperature-based storage management technique (the LRU replacement policy), and that both “may be used to manage a cache.” Ex. 1004 ¶ 17. Based on the present record, Petitioner sufficiently shows that Lee’s disclosure of using these techniques “to manage a cache” involves “manag[ing] the storage of data in” the cache, because both techniques operate in order to control what data is stored in the cache. We do not find Patent Owner’s argument persuasive because it is based on Patent Owner’s proposed construction of “manag[ing] the storage of data in the volatile storage” to require “limit[ing] the number of copies of the data in the volatile storage,” which we do not adopt. See § II.A.2, supra. Consequently, we determine that, on the record before us, Petitioner’s cited evidence sufficiently supports its contentions regarding this limitation.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,851,923 - PTAB · Nov 12, 2021 · IPR2021-00860 · APJ Robert A Pollock · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all petitioned grounds because Petitioner showed 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
“Birnboim, Mori, and Farrell, Petitioner provides a detailed analysis of where each claim element is found in the cited references and discusses why one of ordinary skill in the art would have been motivated to combine those elements with a reasonable expectation of success. See e.g., Pet. 34–42 (discussing motivation to combine and reasonable expectation of success with respect to claim 1). For the purpose of institution, we focus on independent claim 1.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner asserts that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 10 citing Ex. 1002, ¶¶34–35. Patent Owner presently does not dispute Petitioner’s proposed definition. Prelim. Resp. 6. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’256 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C. Claim Construction” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionPlain and ordinary meaningDecided for petitioner
“According to Petitioner, we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use,” which, in the context of the instant claims, refers to “the aqueous composition before it is mixed with a sample.” Pet. 8 (citing Ex. 1029; Ex. 1002 ¶ 38). Patent Owner neither contests Petitioner’s definition of “stock solution” nor requests that we construe any other claim term, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock” solution as Petitioner proposes. In section II.D.4, below, we note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning. D. Ground 1: Obviousness in View of Birnboim, Mori, and Farrell” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner provides reasoned bases for why one of ordinary skill in the art would have combined the cited references to arrive at the claimed invention. See Pet. 34–42 (citations omitted). Summarizing its arguments, Petitioner concludes that one of ordinary skill in the art would have been motivated to prepare solutions comprising a chaotrope, a detergent, a reducing agent, a chelator, a shortchain alkanol, and a buffer (with the associated acid and base) at a pH of 5–7 with a reasonable expectation that, when combined with a biological sample, the solution would denature proteins, inactivate nucleases, and kill pathogens, all without degrading nucleic acids of the sample. Ex. 1002, ¶151. The POSA would have been motivated to use Mori’s surfactants or defoaming agents along with Farrell’s nuclease-free water in Birnboim’s stock solution and would have had a reasonable expectation of success in doing so. Ex. 1002, ¶¶137–152.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,683,256 - Netflix Inc. / Hulu, LLC v. Divx, LLCNo claims unpatentablePTAB · Sep 9, 2021 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1, 5, 8, 9, 13–15, 18, and 21–23 were not shown unpatentable because Kaku was not established as analogous art.
RulingsFinal written decision- Obviousness (§103) › Analogous artNot shown unpatentableNon analogous artNot shown unpatentable
“A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subject matter, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. In re Bigio, 381 F.3d at 1325. The field of endeavor test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention. Bigio, 381 F.3d at 1325–27. A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Clay, 966 F.2d at 659.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for three claim terms, including the term “trick play functionality.” Pet. 22–23. Patent Owner argues for construction of the related claim term “the first and second indexes enabling trick play functionality.” See PO Resp. 41–49. We determine that it is not necessary to provide an express interpretation of any of those claim terms because construction of the proposed terms does not impact our determination that Petitioner has not shown that one of the prior art references is analogous to the claimed invention. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9
- ExcludeMotion to exclude, deniedNot reached
“Under the particular circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, we have determined that Petitioner has not demonstrated by a preponderance that Kaku is analogous prior art to the ’792 patent and do not reach Petitioner’s arguments on the motivation to combine Kaku with Zetts or Seo. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 34
- Strike new argumentNew argument disregardedGranted
“As discussed above (supra § III.E.4.a), Petitioner’s papers fail to link Dr. Reader’s declaration testimony on the level of ordinary skill in the art to the analogous art inquiry and fail to identify a field of endeavor for the ’792 patent. We therefore agree with Patent Owner that Petitioner’s demonstrative slide 53 presents improper new arguments that have not been previously made. See Paper 38, 2 (“The parties may only rely upon evidence that has been previously submitted in the proceeding and may only present arguments that have been previously made in the submitted papers. No new evidence or arguments may be presented at the hearing.”), 5 (“Demonstratives are not a mechanism for making new arguments.”). We therefore sustain Patent Owner’s objections. We note, however, that demonstratives are not evidence. See id. at 5 (“Demonstrative exhibits used at the hearing are not evidence, nor will they be relied upon as evidence. Rather, demonstratives are visual aids to a party’s oral presentation regarding arguments and evidence previously presented and discussed in the papers”); CTPG 84 (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). In this Final Written Decision, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record, not on the demonstratives.” slip op. at 35
Patent outcomesUS 8,472,792 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,792 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308
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.