• Amneal Pharmaceuticals, LLC / Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-00545 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–26 are unpatentable as obvious over the Advisory Committee Art under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420-21 (2007). As the title, field of the invention, and background discussion in the ’182 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title (54), 1:15–31. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “First, we agree with Petitioner that the preamble language “[a] method of treatment of a narcoleptic patient” in the independent claims is not “necessary to give life, meaning, and vitality” to the claims of the ’182 patent. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The claims recite method steps for controlling distribution of a prescription drug prone to abuse, misuse, or diversion; the claims do not recite treating a patient, administering a compound or drug product for therapeutic effect, or other treatment-related method steps. See, Ex. 1007 ¶ 37. Therefore, we determine the preamble language “[a] method of treatment of a narcoleptic patient” to be non-limiting.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner

    “Second, the wherein clause at issue does not recite a method step. Independent claims 1, 8, and 19 consistently recite method steps using the present participle verb form, “receiving,” “entering,” “checking,” and “authorizing.” The wherein clause, however, recites the GHB drug product “treats” cataplexy, rather than reciting a method step of “treating” cataplexy. The absence of the present participle verb form and the use of a wherein clause indicate an intended use or inherent property of the GHB drug product to treat cataplexy, not a method step. See Credle v. Bond, 25 F.3d 1566, 1572 (Fed. Cir. 1994) (“[B]efore each clause containing an undisputed present participle designating the method steps—‘providing an insert;’ ‘joining two opposed webs’ . . . there is a comma, indicating the beginning of a new, distinct step . . . . There is no such comma preceding ‘flexibly securing.’ This suggests that ‘securing’ is not a present participle signifying a distinct method step.”).” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Briefing Information 3754b1.htm” was posted on the FDA’s website not later than June 17, 2001. Ex. 1018, 5. Petitioner’s Internet Archive evidence further indicates this link led to file links for Orphan Medical’s “Briefing Information” (Ex. 1005 Briefing Booklet) and Xyrem “Video Script 2/2/01” (Ex. 1006) and for the FDA’s “Safety Review” (Ex. 1004 Preliminary Clinical Safety Review), which were posted on the FDA’s website not later than July 1, 2001. Ex. 1019. We also note the URL for the FDA website address in Exhibit 1019 concludes with the code “briefing/3754b1.htm,” which matches the Briefing Information code linked in Exhibit 1018.15 Thus, the Internet Archive evidence supports Petitioner’s contention that the documents of Exhibits 1004–1006 were publicly accessible on the FDA’s website for the Xyrem Advisory Committee not later than July 1, 2001, in accordance with the Federal Advisory Committee Act. slip op. at 28

  Patent outcomesUS 8,589,182 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,589,182
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.

  RulingsFinal written decision

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11

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

    “paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14

  Patent outcomesUS 7,165,927 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,165,927
• Nissan North America, Inc. / Hitachi Automotive Systems, Ltd. v. Diamond Coating Technologies, LLCAll claims unpatentable
  PTAB · Apr 20, 2016 · IPR2014-01546 · APJ Christopher L Crumbley · IPR · Final written decision

  Claim 1 is unpatentable under § 102 as anticipated separately by Menu and Hirochi.

  RulingsFinal written decision

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

    “For these reasons, we determine that the broadest reasonable interpretation of hard carbon thin film in light of the specification is “film containing a significant fraction of sp3-hybridized carbon.” This construction is not inconsistent with that adopted by the District Court,9 and we agree with the court that it excludes graphitic carbon films. While it is unnecessary to determine the exact boundary of the hard carbon film domain, we note that “a significant fraction of sp3” encompasses a wide range of sp3/sp2 ratios that may even be a majority sp2-bonding, extending to at least 75% sp2. 9 We decline to adopt the District Court’s reliance on a 68:30 ratio of sp3/sp2 bonding as indicative of “a significant fraction,” as the Koidl reference upon which that ratio is based is not in the record of this proceeding, nor does it appear to have been cited during the prosecution history of the ’399 patent. Ex. 1001, References Cited.” slip op. at 12

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

    “as anticipated by Menu. Pet. 11–24. To establish anticipation, Petitioner must prove that each and every element in a claim may be found in Menu, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). For the following reasons, Petitioner has established by a preponderance of the evidence that Menu anticipates claim 1.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Upon review of the reference, the expert testimony, and the parties’ arguments, we find that the amorphous carbon structures of Menu are hard carbon thin films. While we agree with Dr. Kaner’s testimony that the general usage of “amorphous carbon films” may encompass both diamond-like and graphitic carbon, we also agree with Dr. Hersam that Menu is using the term in a more limited way, as synonymous with “diamond-like carbon.” See Ex. 2022, 62. Menu discusses “the need for an improved method for fabricating DLC [diamond-like carbon] superlattice structures” (Ex. 1002, 1:38–40), and it is reasonable to conclude that the method disclosed is directed to addressing this need. In addition, as Petitioner points out, Menu refers initially to “amorphous carbon, or ‘diamond-like carbon’ (DLC)” (id. at 1:25–28), implying that the terms are being used synonymously. The reference to Menu’s first-phase outer layers as “rich in sp2 bonds” (id. at 53–56) does not persuade us otherwise. As Petitioner notes, the ’399 patent uses the same terminology when referring to hard carbon films, suggesting that “rich in sp2” does not imply graphitic. Furthermore, as discussed above, there is a wide range of carbon films within the scope of hard carbon thin films, including films having at least 75% sp2 bonding. Such films can reasonably be termed “rich in sp2” bonds, yet still fall within the domain of diamond-like carbon.” slip op. at 16

  • Skill levelNot reached

    “UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NISSAN NORTH AMERICA, INC. and HITACHI AUTOMOTIVE SYSTEMS, LTD., Petitioner,” slip op. at 1

  Patent outcomesUS 6,066,399 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,066,399
• TDK Corporation v. Lambeth Magnetic Structures LLCInstitution denied
  PTAB · Apr 12, 2016 · IPR2016-00013 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6–19, 21–31, 34, 38, and 39 were obvious over the asserted reference combinations.

  RulingsInstitution decision

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

    “It is the Petitioner’s burden to explain how Shen allegedly teaches a bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9

  • BurdenDecided for patent owner

    “It is the Petitioner’s burden to explain how Shen allegedly teaches a bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9

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

    “bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did not carry this burden. Accordingly, the record before us does not establish a reasonable likelihood that Petitioner would prevail in establishing that claims 1 and 27 would have been obvious over Shen and Dill.” slip op. at 9

  • Expert testimonyPetitioner expert discountedOther

    “However, Petitioner has not provided sufficient evidence to show that the described increase in magnetization in Shen is the result of symmetry breaking as opposed to the transition from an (fcc) structure to a (bcc) structure. For example, Petitioner has not identified where in Shen there is a description that an increase in magnetization of the Fe films is due to symmetry breaking. Rather paragraph 4 (5) on page 134 cited by Petitioner generally states that the magnetization of the Fe films sharply increase “in the fcc to bcc transformation regime” and that the increase in magnetization of the transformed bcc films is four to five times larger than the values extrapolated from the low thickness fcc Fe films. Similarly, Petitioner’s expert, Dr. Sinclair, merely states that the “structural transition includes symmetry breaking and causes ‘[t]he magnetization of the transformed bcc Fe films [to sharply increase by] about four to five times larger than the extrapolated value from the low thickness fcc Fe films.”. Ex. 1006, ¶ 52. Dr. Sinclair’s testimony is conclusory and does not present a factual basis for us to conclude that Shen’s increase in magnetization is due to symmetry breaking. Thus, Petitioner has not shown sufficiently whether the increase in magnetization is due to symmetry breaking or a transition from an fcc to a bcc structure.” slip op. at 8

  § 103 obviousness
  Patents in suitUS 7,128,988
• E-Loan, Inc. v. Imx, Inc.All claims unpatentable
  PTAB · Feb 16, 2016 · CBM2015-00012 · APJ James P Calve · CBM · Final written decision

  Claims 7, 8, 26, and 27 are unpatentable under § 101 because they claim the abstract idea of loan processing implemented with generic computers.

  RulingsFinal written decision

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

    “I. BACKGROUND Petitioner E-Loan, Inc. (“E-Loan”) filed a Petition (Paper 1, “Pet.”) seeking a covered business method patent review of claims 7, 8, 26, and 27 of U.S. Patent No. 5,995,947 (Ex. 1001, “the ’947 patent”). Patent Owner IMX, Inc. (“IMX”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324. Based on these submissions, we instituted trial as to claims 7, 8, 26, and 27 of the ’947 patent. Paper 7 (“Dec. to Inst.”). IMX filed a Response. Paper 11 (“PO Resp.”). E-Loan then filed a Reply. Paper 12 (“Pet. Reply”).” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “unconstitutional. PO Resp. 14–16. IMX argues that issued patents are no longer under the jurisdiction of the U.S. Patent and Trademark Office (“USPTO”) and may be set aside, annulled, or corrected only by the courts of the United States, not by the USPTO or PTAB. Id. at 14–15. IMX argues that post-grant proceedings to invalidate patents deprive patent owners of due process and invade the province of Article III courts. Id. at 16. IMX’s arguments are not persuasive in view of the recent decision of the United States Court of Appeals for the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091, 2015 WL 7755665 (Fed. Cir. Dec. 2, 2015), which held that Congress can grant authority to the USPTO to correct or cancel issued patents. MCM Portfolio, 2015 WL 7755665, at *5. Congress has done so by creating inter partes reexamination proceedings, ex parte reexamination proceedings, inter partes review, post-grant review, and covered business method patent review. Id. (citations omitted). As stated with regard to the inter partes review provisions at issue in MCM Portfolio, “Supreme Court precedent demonstrates that these statutes, and particularly the inter partes review provisions, do not violate Article III.” Id.” slip op. at 9

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

    “We interpret “can bid on loan applications” in claim 7 and “capable of submitting bids on loan applications” in claim 26 as “can offer to make loans on loan applications that are pending in the database.” This interpretation is consistent with the claims. Claim 1 recites a method for processing loan applications including “maintaining a database of pending loan applications and their statuses at a database server.” Dependent claim 7 recites “said lender can search the database for particular desired types of loans, and can bid on loan applications.” Ex. 1001, 15:26–27 (emphasis added).” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “E-Loan has established, by a preponderance of evidence, that each of the challenged claims is directed to a fundamental economic or longstanding commercial practice of loan processing. The ’947 patent describes the conventional loan processes as involving large amounts of information that must be collected, compared, evaluated, and disseminated among parties to a transaction so lenders can offer loans at competitive rates. Ex. 1001, 1:9–17. Parties include lenders, borrowers, mortgage brokers, appraisers, regulatory agencies, and mortgage insurance companies. Id. at 1:17–21. Conventional processes required parties to collect nearly all loan application information by hand, transmit it on paper applications, and compare loan information by hand, according to each party’s role of loan evaluation, property appraisal, financial market evaluation, and setting lending rates with rate sheets. Id. at 1:22–27. Thus, parties to a conventional loan transaction monitor loan status and search and modify information in loan applications and loan processes. Claim 1 automates this known method and system of processing loan applications by maintaining a database of pending loan applications and their statuses at a database server where each party to a loan can search and modify that database consistent with their role in the transaction by requests to the server from client devices. Claim 19 recites a system for processing loan applications with a database of pending loan applications including status information and a transaction server for responding to requests of parties to the loan applications to search and modify the database consistent with their roles in the transaction. Whereas conventional loan processing required human beings to collect, compare, evaluate, and disseminate loan applications and loan information by hand, claims 1 and 19 recite the use of a database and transaction server to maintain loan applications so parties can search and modify the loan applications using those computer components instead of using pen and paper to perform these processes.” slip op. at 16

  Patent outcomesUS 5,995,947 unpatentable
  Claim construction§ 101 eligibilitycites Alice
  Patents in suitUS 5,995,947
• Fresenius Kabi USA LLC v. Cubist Pharmaceuticals LLCInstitution denied
  PTAB · Jan 28, 2016 · IPR2015-01572 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the cited purification methods would yield claim 91’s required purity from each of impurities 1–14.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner does not provide sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9

  • BurdenNot shown unpatentable

    “sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9

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

    “daptomycin composition that is “essentially free” of impurities 1 to 14 in view of the disclosures of the ’843 patent, the ’226 patent, Mulligan, Lin II, and Lakey. Pet. 15–31. In support of this argument, Petitioner notes that daptomycin, or LY146032, is an antibiotic intended for therapeutic use. Pet. 19; Ex. 1007, 1:5–8, 1:36–38; Ex. 1005 ¶ 137. Given this therapeutic application, Petitioner contends a person of ordinary skill in the art would have been motivated to increase the purity of daptomycin compositions “as high as possible.” Pet. 24; Ex. 1005 ¶¶ 75 (asserting that high levels of purity for pharmaceutical preparations of antimicrobial agents would have been a target goal for one of ordinary skill in the art), 137. To achieve this goal, Petitioner contends a person of ordinary skill in the art would have accessed the “extensive tool-box” known in the art for purifying lipopeptide biosurfactants. Pet. 16–17, 23. In particular, Petitioner contends that one of ordinary skill in the art would have understood that the methods disclosed in the ’843 patent, the ’226 patent, Lakey, Mulligan, and Lin II could be used to obtain a daptomycin composition with a purity level exceeding 99%. Pet. 17–18, 20.” slip op. at 8

  § 103 obviousness
  Patents in suitUS 8,058,238
• Servicenow, Inc. v. BMC Software, Inc.Institution denied
  PTAB · Jan 26, 2016 · IPR2015-01601 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “4. Conclusion Upon review of Petitioner’s analysis and the testimony of Dr. Lavian, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that independent claims 1 and 6, as well as claims 2–5, 7, and 9–12 depending therefrom, are unpatentable over Miller.” slip op. at 17

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

    “proposed interpretation. The dictionary definitions submitted by Petitioner indicate that “accompanying” may have two potential meanings: physically going along with or being associated with. See Ex. 1011, 4. The term’s usage in claim 1 and the written description of the ’898 patent, however, indicate that the term was meant to mean the former. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms”); Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meaning”). First, claim 1 recites “collecting performance management data having accompanying meta data, the meta data including . . . information indicating operations to be performed on the performance management data,” and “generating output data for display using the collected performance management data according to the information indicating the operations to be performed on the performance management data.” Thus, the performance management data is collected, and that data has accompanying meta data. Reading the claim language in context, the phrase “collecting performance management data having accompanying meta data” suggests that the meta data accompanies the performance management data when the step of collecting is performed (i.e., the meta data travels together with the performance management data being collected). Both the performance management data and the accompanying meta data are collected together in the first claim step, and then output data is generated based on the performance management data “according to” a portion of the meta data in the second step. Interpreting claim 1 to mean that the meta data physically goes along with the performance management data when the performance management data is collected is consistent with the surrounding language of the claim.” slip op. at 7

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

    “claim 1. Pet. 20–28. For example, Petitioner identifies the data provided by the traceroute-helper script (i.e., a 1 if the gateway is working or a 0 if not) in Miller as “performance management data.” Id. at 20–21 (citing Ex. 1003, 10, 16–17). 4 Although Petitioner’s asserted ground as to independent claims 1 and 6 is based on obviousness under 35 U.S.C. § 103(a), Petitioner argues in its Petition that Miller discloses every limitation of the claims, then includes a single sentence stating that Miller “discloses or suggests” every limitation. Pet. 28, 43. Patent Owner contends that the Petition should be denied because Petitioner fails to identify differences between the claimed invention and the prior art under Graham v. John Deere Co., 383 U.S. 1 (1966), and fails to provide any reason why a person of ordinary skill in the art would have modified Miller. Prelim. Resp. 1–9. We need not reach these issues, however, as Petitioner’s asserted ground fails for other reasons explained herein.” slip op. at 12

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

    “claim 1. Pet. 20–28. For example, Petitioner identifies the data provided by the traceroute-helper script (i.e., a 1 if the gateway is working or a 0 if not) in Miller as “performance management data.” Id. at 20–21 (citing Ex. 1003, 10, 16–17). 4 Although Petitioner’s asserted ground as to independent claims 1 and 6 is based on obviousness under 35 U.S.C. § 103(a), Petitioner argues in its Petition that Miller discloses every limitation of the claims, then includes a single sentence stating that Miller “discloses or suggests” every limitation. Pet. 28, 43. Patent Owner contends that the Petition should be denied because Petitioner fails to identify differences between the claimed invention and the prior art under Graham v. John Deere Co., 383 U.S. 1 (1966), and fails to provide any reason why a person of ordinary skill in the art would have modified Miller. Prelim. Resp. 1–9. We need not reach these issues, however, as Petitioner’s asserted ground fails for other reasons explained herein.” slip op. at 12

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,816,898
• Stats LLC v. Hockeyline, Inc.All claims unpatentable
  PTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

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

    “2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18

  Patent outcomesUS 6,725,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,725,107
• Apple Inc. v. THX Ltd.Some claims unpatentable
  PTAB · Jun 9, 2015 · IPR2014-00235 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Tomonori and Sadaie; claim 3 was not shown unpatentable over Tomonori, Virva, and Sadaie.

  RulingsFinal written decision

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

    “In sum, the ’483 patent describes and claims a sound reflecting surface that redirects sound waves output from the speaker towards the elongate output slot, whereas sound damping material absorbs standing waves inside the sound duct. The ’483 patent goes to great lengths to distinguish a sound reflecting surface from a sound damping surface. Furthermore, given that “sound damping material” is different from a “sound reflecting surface” and both are recited as separate claim limitations, it follows that a sound reflecting surface is not made of sound damping material. For the reasons given above, we construe “sound reflecting surface,” in the context of claim 1 and in light of the ’483 patent specification, as “a surface that redirects sound waves output from a speaker, not made of sound damping material.”” slip op. at 12

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

    “2. Other Terms Petitioner proposes to construe additional claim terms. Pet. 11–14. We determine that no express construction of these additional terms is necessary for purposes of this decision.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “suppress standing waves inside a duct. Pet. 44 (citing Ex. 1002 ¶ 112). Dr. Vipperman identifies the reason for Sadaie’s use of side wall sound damping as enabling “the sharpness of a fundamental wave resonance of a standing wave determined by the length of the sound path . . . to be suppressed because a substantial length of the sound path cannot be primarily determined.” Ex. 1002 ¶ 112 (citing Ex. 1003, 14). We agree with Petitioner’s reasoning, therefore, that “[e]xtending the damping material of Tomonori along the sidewalls of the duct,” as taught by Sadaie, would have been one of a limited number of known solutions further minimizing the presence of spurious resonances and standing waves inside the duct. Id. at 45 (citing Ex. 1002 ¶ 113). The quoted statements of Petitioner and Dr. Vipperman with respect to Tomonori and Sadaie are consistent with the principles set forth in KSR.10 Petitioner and Dr. Vipperman provide an analysis of why one of ordinary skill in the art of speaker design would have been motivated by Sadaie’s disclosure of side wall sound damping to modify Tomonori’s narrow sound duct, such that sound damping material forms the sides of the sound duct but not the bottom (sound reflecting) surface. In particular, Dr. Vipperman’s Declaration provides a sufficient analysis to support the obvious modification of Tomonori’s narrow profile speaker, by a speaker designer of ordinary skill, such that “sound damping material form[s] sides of the sound duct” to help suppress the presence of spurious resonances and standing waves inside the duct. Ex. 1002 ¶¶ 112, 113.” slip op. at 28

  Patent outcomesUS 7,433,483 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,433,483
• Baxter Healthcare Corp. / Apatech, Inc. et al. v. Millenium Biologix, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00590 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1, 2, 4, 9, 11, 16–18, 20, 25, 26, 36, 38, 43, and 44 are unpatentable under § 103(a) over the stated combinations of prior art.

  RulingsFinal written decision

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

    “biomaterial compound at the same pace as that found in the natural bone remodeling process. “A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Minton v. Nat'l Ass'n of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). “However, when the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005). Determining whether to give a “whereby” or “wherein” clause patentable weight, if any, is done on a case-by-case basis. Id.; Minton, 336 F.3d at 1381; see also In re Griffin v. Bertina, 285 F.3d 1029, 1033–34 (Fed. Cir. 2002) (holding that the Board did not err by giving limited effect to the “wherein” clauses in an interference count because the wherein clauses “giv[e] meaning and purpose to the manipulative steps” rather than “merely stat[ing] the inherent result of performing the manipulative steps”). We maintain our determination that the “wherein” clauses in this case are “to be given no patentable weight beyond requiring that the recited biomaterial compound be capable of producing the recited intended results when implanted at the specified site.” Dec. 8–9. Patent Owner is attempting to read in structural limitations of the biomaterial compound, such as microporosity and macroporosity, which Patent Owner chose not to recite in claims 1 and 2 of the ’992 patent. Compare Claims 1 and 2 of the ’992 patent, with claims 9 and 18 of the ’992 patent, and claims 1 and 6 of the ’251 patent (referring to “macroporous structure” or “microporous structure”). It is improper to import such structural limitations into a wherein clause that does nothing more than recite an intended result of a positively recited process step. A “macroporous structure,” moreover, is not” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “establish that the progressive removal and replacement of the biomaterial compound necessarily occurs at the same pace as natural bone remodeling. Petitioner’s evidence is sufficient to support the finding that Ruys ’93a’s implanted biomaterial compound would be capable of promoting the progressive removal and replacement of the implanted biomaterial compound primarily through osteoclast and osteoblast activity because of the right chemistry (see Pet. 41–43). Patent Owner’s observations (PO Obs. 1–5) do not change our findings or conclusions. Patent Owner also argues that Ruys ’93a teaches away from the porosity which is required for the biomaterial compound to be capable of progressive removal and replacement in a time frame consistent with natural bone remodeling. PO Resp. 33 (citing Ex. 2026 ¶¶ 94–97), 47–49 (citing Ex. 1003 ¶ 368; Ex. 2026 ¶¶ 64–65). More specifically, Patent Owner argues that Ruys ’93a disparages the properties of porous HA as having low compressive strength, and desires a means for enhancing the bioactivity of HA other than porosity control. Id. at 48 (citing Ex. 1011, 3; Ex. 1014, 5, Ex. 2026 ¶¶ 77–78). Patent Owner argues that “one of skill in the art reading Ruys would have been discouraged from taking the SiCaP of Ruys and adding the structural features that the ’992 inventors determined were required to make the biomaterial capable of bioresorption and rebuilding according to the process of natural bone.” PO Resp. 49 (citing Ex. 2026 ¶¶ 66, 79). Petitioner’s position, however, is not based on modification of the biomaterial compound of Ruys ’93a to render it capable of progressive removal and replacement of the biomaterial compound. Rather, Petitioner’s position is based on Ruys ’93a inherently being capable of such progressive removal and replacement, due to its silicon-substituted CaP chemistry. Accordingly, the focus of Ruys ’93a on silicon doping rather than porosity control to improve bioactivity is immaterial to the obviousness determination in this case.” slip op. at 17

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

    “Patent Owner does not explain how a nexus exists between the asserted long-felt need for a synthetic bone graft material to replace autologous bone and the features of claims 1 and 2. In particular, Patent Owner does not identify to what it attributes the effectiveness of Skelite and/or Actifuse and whether that feature is (i) found in the claims and (ii) a novel element not in the prior art. To the extent that the effectiveness may be attributed to the substitution of silicon, for example, this feature was already present in the prior art as evidenced by Ruys ’93a. To the extent that the effectiveness may be attributed to a macroporous structure, for example, this feature is not claimed in independent claims 1 and 2. Consequently, we are not persuaded by Patent Owner’s contentions in relation to long-felt but unmet need.” slip op. at 21

  • ExcludeNot reached

    “We dismiss Petitioner’s motion as moot, because we do not rely on the objected-to timeline in our final Decision and because, even without excluding Patent Owner’s additional evidence, we have determined that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 2, 4, 9, 11, 16– 18, 20, 25, 26, 38, 38, 43, and 44 of the ’992 patent are unpatentable.” slip op. at 39

  Patent outcomesUS 6,585,992 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,585,992

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.