- Beone Medicines USA, Inc. / Beigene, Ltd. v. Pharmacyclics LLCAll claims unpatentablePTAB · May 1, 2025 · PGR2024-00009 · APJ Sheridan K Snedden · PGR · Final written decision
Claims 1–8, 12, and 20 are unpatentable for lack of written description under § 112(a); the Board did not reach the enablement, anticipation, or obviousness grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.200(b). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Moreover, “claim terms need only be construed ‘to the extent necessary to resolve the controversy.’” See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties agree that the preamble of the claims should be limiting and that the terms “optionally substituted fused heterocyclic ring system” and “irreversible” BTKIs should be construed consistent with the definitions provided in the Specification. Pet. 42–45; see also id. at 42 (citing Ex. 1001, 19:57–20:7 (defining “optionally substituted” or “substituted”), 14:51–52 (defining “fused”), 15:66–16:21 (defining “heterocycle”), 14:36–44 (defining “ring” and “ring system”), 26:23–25 (defining “irreversible Btk inhibitor”); PO Resp. 26.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.200(b). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Moreover, “claim terms need only be construed ‘to the extent necessary to resolve the controversy.’” See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties agree that the preamble of the claims should be limiting” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable
“To satisfy written description for the claimed genus of iBTKIs, the Specification must describe either a representative number of members of the genus or structural features common to the members of the genus with enough precision that a POSA can visualize or recognize the members of the genus. See Ariad, 598 F.3d at 1350. Patent Owner concedes that the Specification does not describe a representative number of members of the genus, stating “this is a common structural features case.” Tr. 65:25–66:3. We, therefore, focus our analysis on whether the Specification adequately describes common structural features of the genus. We find that it does not.” slip op. at 30
Patent outcomesUS 11,672,803 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,672,803 - Aardevo North America, LLC v. Agventure B.V.Institution deniedPTAB · May 1, 2025 · IPR2025-00136 · APJ Jeffrey N Fredman · IPR · Institution
Institution of inter partes review was denied for claims 1–10 because Petitioner did not establish a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that on the current record Petitioner has not shown that it has a reasonable likelihood that it would prevail on these obviousness grounds. XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5. XIII. CONCLUSION After reviewing the information presented in the Petition and the Preliminary Response, we determine that, based on the evidence of record, Petitioner has not established a reasonable likelihood that claims 1–10 of the ’841 patent are unpatentable. XIV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), institution of an inter partes review of all challenged claims on all grounds presented in the Petition is denied.” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“However, neither Petitioner nor Dr. Jansky provide specific data on the record before us showing the actual measured homozygosity of either of the inbred lines, US-W 5309 and US-W 5315. And Phumichai experimentally demonstrates that Dr. Jansky’s assumption that theoretical heterozygosity reduction of 50% per generation is not necessarily accurate, stating the “observed average percentage of reduction of heterozygosity per generation (38.4% or 38.5%) was lower than the theoretically expected value of 50%.” Ex. 1005, 982. Indeed, Phumichai disclosed that the “SOPH [Section-based observed percentage of heterozygosity] decreased steadily from the original 100% in 99H2–1 (S0) to the family means of 62.4% in 3H2 (S1), 37.9% in 3H3 (S2).” Id. at 981. That is, Phumichai experimentally shows that in an S2 generation of a potato line, the heterozygosity was 37.9%, resulting in homozygosity of about 62.1%, below the 75% theoretically expected and the 75% required by claim 1 of the ’841 patent. Therefore, the evidence of record does not show that the S2 generation of potato lines in Jong necessarily satisfies the homozygosity recitation in claim 1 of the ’841 patent, and so cannot establish on the record before us that Jong inherently teaches this limitation.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentableNot shown unpatentable
“Owner is telling. Petitioner does not refute Patent Owner’s evidence of objective indicia. On the current record, the objective indicia evidence is compelling. As to long felt need, Patent Owner cited evidence on record before the Examiner that showed a persistent need recognized by ordinarily skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). For example, Dr. Huang states “This research is the breakthrough we have been waiting for since nearly a century . . . This is crucial for the potato breeding worldwide.” Ex. 2009, 687. There is no evidence that this long-felt need was satisfied by another before Appellant’s invention. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .”). Lastly, Dr. Lindhout explains that this invention satisfies the long-felt need, stating “I have discovered, and disclosed in the present application for patent, how a fertile homozygote in” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,140,841 - PTAB · Apr 25, 2025 · IPR2024-01419 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted IPR of claims 1–9 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Chee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We analyze the asserted grounds of unpatentability in accordance with these principles to determine whether Petitioner has met its burden to establish a reasonable likelihood of success at trial.” slip op. at 13
- BurdenDecided for petitioner
“Having considered the parties’ positions and evidence of record, summarized above, we determine that the information presented in the Petition establishes that Petitioner has shown sufficiently a reasonable likelihood of succeeding with respect to at least claim 1 challenged in Ground I. Petitioner provides sufficient support on the record before us to provide a reasonable likelihood of succeeding in showing that claim 1 is anticipated by Chee.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededDecided for petitioner
“tags,” and “locus of origin” need be addressed at this stage of the proceeding. We determine that no express construction of “consensus base call” is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 1. “Set of [Unique] Differentiator Tags” Petitioner asserts that both “set of differentiator tags” as used in claim 1 and “set of unique differentiator tags” as used in claim 9 should be given the same construction—“set of prepared tags where each tag includes a unique sequence as compared to the other tags.” See Pet. 16 (citing Ex. 1005 ¶ 89; Ex. 1001, 28:25–29, 28:53–57). Petitioner further asserts that “[t]hese unique differentiator tags are associated with target nucleic acids so that each nucleic acid is uniquely identifiable.” Pet. 16. Petitioner also points to the prosecution history of the ’730 patent in which Petitioner asserts the Patent Owner argued and the Board acknowledged that each differentiator tag is unique. Id. at 16–17. Petitioner concludes that “[a]n interpretation of ‘differentiator tags’ to include non-unique tags is not possible, and if it were, Applicant disclaimed any interpretation that would allow non-unique tags.” Id. at 17.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having considered the parties’ positions and evidence of record, summarized above, we determine that the information presented in the Petition establishes that Petitioner has shown sufficiently a reasonable likelihood of succeeding with respect to at least claim 1 challenged in Ground I. Petitioner provides sufficient support on the record before us to provide a reasonable likelihood of succeeding in showing that claim 1 is anticipated by Chee.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,840,730 - Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - PTAB · Apr 11, 2025 · IPR2024-01498 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood of unpatentability on multiple obviousness grounds, while declining institution under Ground 9 at the preliminary merits stage.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented by the parties, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of claims 1–19 of the ’752 patent is unpatentable.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“summarized above, we determine that Petitioner has established a reasonable likelihood of prevailing in showing that claims 1 and 4–14 are obvious over the combination of Native and Bianchi ’254. In particular, we are persuaded by Petitioner that the combination of Native and Bianchi ’254 discloses a deodorant stick comprising each element of claims 1 and 4–14. Pet. 41–50. We also find that Petitioner has shown sufficiently on the record before us that a person of ordinary skill in the art would have had a reasonable expectation of success to implement Bianchi ’254’s hardness range in Native’s formula. Here, we credit Dr. Michniak-Kohn’s testimony that a person of ordinary skill in the art would have understood how to adjust hardness using the structurants in a deodorant composition. Ex. 1002 ¶ 41, 191–192.” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“biased testimony from an employee” and the Petition therefore lacks sufficient evidence to establish the images provided in the Squatch declaration as containing prior art printed publication material. Id. at 27–28 (citing Finnigan Corp. v. ITC, 180 F.3d 1354, 1366 (Fed. Cir. 1999) (“[T]he law has long looked with disfavor upon invalidating patents on the basis of mere testimonial evidence absent other evidence that corroborates that testimony.”); Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1377-78 (Fed. Cir. 2018) (“corroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.”). 3. Discussion Having considered the parties’ positions and evidence of record, summarized above, we find Patent Owner to have, at this stage of the proceeding, the better position.. Accordingly, we determine that there is insufficient evidence to indicate a reasonable likelihood that Petitioner will prevail in establishing that that claims 15–19 would have been obvious over the combination of Squatch and Sturgis for the reasons set forth in the Preliminary Response and summarized above. However, we will make our final determination on these issues on the full record developed during this proceeding. See Hulu LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29, 11 (PTAB Dec. 20, 2019) (precedential) (“To prevail in a final written decision in an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.”).” slip op. at 30
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“35 U.S.C. § 325(d). Prelim. Resp. 29–38. In determining whether to deny institution under § 325(d), we use the following two-part framework: (1) 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, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17– 18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 32
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,844,752 - Kinderfarms LLC v. Genexa Inc.All claims unpatentablePTAB · Mar 24, 2025 · PGR2023-00051 · APJ Deborah Katz · PGR · Final written decision
Claims 1–24 are unpatentable as obvious under § 103 over FR458 with the ’4666 patent and WO133; claims 1–17 are also unpatentable over WO742 with the ’4666 patent and WO133.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ positions about the level of ordinary skill in the art are similar. (See Pet., 13–14; see PO Resp., 10–12.) In light of the parties’ arguments and evidence, we determine that the ordinarily skilled artisan would have had a bachelor of science degree in a relevant life sciences field, such as chemistry, biochemistry, or pharmacy, with at least three to four years of work or laboratory experience in pharmaceutical formulations and would have had access to team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals. (See Pet. 13–14; see PO Resp. 10–12; see Dec. 6–7.) Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’795 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although Petitioner puts forth constructions for terms in the claims of the ’795 patent, Patent Owner argues that we need not expressly construe any terms to resolve the controversy between the parties. (See Pet. 14–19; see PO Resp. 12.) Except as indicated below, we agree that express construction of the claim terms is not required because the parties do not materially dispute the meanings of the terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Limitation (c) of claim 1 recites “syrup formulation” once and then “syrup” by itself twice. The parties agree that two recitations of “syrup” by itself mean and are synonymous with “syrup formulation.” (See Tr. 15:16– 19 (counsel for Petitioner: “[T]he term, syrup, by itself, means the formulation. And for that reason, we--it’s our position that it’s the syrup formulation that has the specific viscosity requirements as well as the other features that we discussed.”); 31:17–20 (counsel for Patent Owner: “But those wherein clauses, what it’s referring to, the syrup formulation and the syrup -- it was all to a complete to a final formulation, right, it’s not just the agave syrup. Everybody here recognizes and understands that from that perspective.”).) Thus, the parties agree that the “viscosity of less than 1500 centipoise at about 22 degrees” limits the final “pharmaceutical syrup formulation for oral administration,” not the “agave syrup” limitation in limitation (b) of claim 1.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner argues further that Dr. Crowley testifies that, “[g]enerally, suspensions having a viscosity in the range of 20 to 150 cP are considered readily pourable,” but that this range is well below the viscosity range of 200–900 cP taught in WO133 and the preferred viscosity range of 1000–3000 cP taught in the ’4666 patent. (See PO Resp. 45 (quoting Ex. 1003 ¶ 59).) Dr. Crowley testifies that “increasing the viscosity of a suspension formulation has been shown to impair the dissolution characteristics of immediate release acetaminophen” and that, “[w]ith respect to suspensions for oral administration, having a higher viscosity is generally not desirable.” (Ex. 1003 ¶ 59.) According to Patent Owner, this is a “teaching away” because Petitioner’s own expert testimony demonstrates a motivation not to combine the acetaminophen formulation of FR458- Example 1 with the 1000-3000 cP range of the ’4666 patent and the 200-900 cP range of WO133 since by his own admission doing so would yield bad results (i.e., impairing the dissolution characteristics of the acetaminophen) and generally undesirable higher viscosity. (PO Resp. 46 (citing Berkland Decl., Ex. 2009 ¶ 148).) Dr. Crowley’s cited testimony, however, is about general characteristics of suspensions for oral administration, whereas the WO133 refers specifically to sweetened analgesic formulations. (See Ex. 1006, 8:1– 3 (“The viscosity of the acetaminophen composition generally ranges from about 200–900 centipoise, preferably from about 300–700 centipoise.”); see Pet. Reply 8–9.) As Petitioner notes, Dr. Crowley also testifies that the viscosity of 29 commercially available, pediatric liquid oral antibiotic formulations were measured and determined to range from 20 to 1,780 cP” and that “[t]he viscosity of Children’s Tylenol has been reported to be less than 1,000 centipoise at shear rates between 0.05 and 0.2 reciprocal seconds.” (Ex. 1005 ¶ 58.) Thus, we are not persuaded that Dr. Crowley’s testimony contradicts the teachings regarding viscosity of analgesic formulations in the cited prior art.” slip op. at 23
Patent outcomesUS 11,617,795 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 11,617,795 - Deere & Company v. David’S Dozer V-Loc System, Inc.Institution deniedPTAB · Mar 18, 2025 · IPR2024-01442 · APJ Robert J Silverman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any other authorized submissions) “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.”” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposal for the level of ordinary skill in the art differs from that of Petitioner, primarily because Patent Owner contends that such a person of ordinary skill would have a certain degree of experience relating specifically to skid steers, or similar machinery, and their hydraulic systems. See Prelim. Resp. 8–10 (citing Ex. 2001 ¶ 31). Insofar as we understand the significance of Patent Owner’s concerns about the differences between the parties’ proposals, these differences do not bear upon the issues addressed herein. Accordingly, for the purposes of the present Decision, we adopt Petitioner’s proposed definition of the relevant level of ordinary skill in the art. Further, with regard to the issues addressed in this Decision, Petitioner’s proposed description of the level of ordinary skill in the art appears to be consistent with the level of skill indicated by the ’300 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner. Petitioner argues that “Patent Owner made the deliberate choice to claim broadly,” eschewing “structural limitations that would have expressly or implicitly required the hydraulic of Element [1.4] to differ from the hydraulic of Element [1.5].” Reply 7. Further, Petitioner argues that “Patent Owner chose to generically recite ‘a hydraulic’ in each of Elements [1.4] and [1.5] without distinguishing labels, identifiers, or qualifiers.” Id. To the contrary, the two recited “hydraulic[s]” are distinguished by the language surrounding and modifying each instance in the method of claim 1. Indeed, the recitations of distinct operations performed by each “hydraulic,” in the claimed method, further support the understanding these are distinct and different structures. Additionally, as Patent Owner contends (see Prelim. Resp. 16), each instance of “hydraulic” is introduced with the indefinite article “a” — a signal that the two instances of “a hydraulic” do not refer to the same structure. See Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct components’ of the patented invention.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see also CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“As Patent Owner argues, Petitioner’s proposed combination of Funk and Lewis “would interfere with the intended operation of the Funk control system to move the lift arms up and down in response to inter alia changes in the height signal.” Prelim. Resp. 20. This scenario is similar to that in Tec Air, 192 F.3d at 1356, which involved a claimed injection-molding technique that used screw-threaded adjustable plugs accessed from the inner, cavity-facing, side of the mold. The proposed combination included a prior art reference disclosing adjustment members accessed from the opposite, outer, side of the mold, and having a non-threaded smooth tip that extended through the mold and into the cavity. Id. at 1360. The Federal Circuit held that the prior art reference was properly determined to teach away from the claimed invention, because “no screw driver would be able to turn the smooth-headed screws from the cavity-side of the mold,” hence the proposed “combination would be inoperable for its intended purpose.” Id. Likewise, the proposed combination in the present matter teaches away from the subject matter of claim 1, because it would “immobilize [Funk’s] main arm,” and its associated hydraulic cylinder 18, “leaving just ‘one’ of Funk’s two adjustment mechanisms — blade tilt — available for grade control” (Pet. 10), thereby decreasing the system’s accuracy (see Ex. 2001 ¶¶ 113– 14) and negating the very technique that Funk relies upon to achieve its stated goal. See Ex. 1004 ¶ 7 (“[O]ne object of the present invention is to provide an automatic leveling control system that is sufficiently accurate for preparing the ground prior to the construction of concrete floors and foundations.”)” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Markman · KSR · GrahamPatents in suitUS 10,533,300 - PTAB · Mar 7, 2025 · IPR2024-01353 · APJ Tawen Chang · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of unpatentability over Kanan and Neri, with Famulok for claim 16.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2012) (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). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314(a).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the current record, for purposes of this Decision, we apply Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’848 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)). We note, 8 “POSA” refers to “person of ordinary skill in the art.” Pet., cover page. experience indefinitely with no upper bound. Therefore, we do not apply this aspect of Petitioner’s definition. C. Claim Construction” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“As an initial matter, two criteria determine whether prior art is analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). We find that, at this stage of the proceeding, Petitioner has sufficiently shown that Kanan and Neri are and/or are reasonably pertinent to the problem which the inventor is involved, in particular “encoding individual members of a library of chemicals with unique nucleotide sequences that can later be detected and analyzed to determine the identification of the members involved in the interaction.” Pet. 17.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“argument does not undermine Petitioner’s challenge at this stage. In particular, Petitioner has explained that the modification of Kanan with Neri’s self-assembly sequence would “reduce the time to synthesize a library where all members can interact.” Pet. 18 (citing Ex. 1005 ¶¶ 97–101). Similarly, Petitioner has explained the reason for including a “coding region” for each library member, i.e., to “provide a unique nucleic acid identification sequence for each conjugate that can be identified downstream,” as for instance taught by Neri. Id. at 30 (citing Ex. 1005 ¶ 97). Finally, Petitioner has explained “a POSA . . . would . . . add the d-spacer taught in Neri, as this prevents the identification sequence element of pool B members from interacting with the identification sequence element of supports Petitioner’s contentions and that testimony is, at present, substantively unrebutted. On the record before us, and at this preliminary stage of the proceeding, we do not find Petitioner’s asserted motivations to be improperly disparate or based on hindsight. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (explaining that reconstruction of prior art is not improper “so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”). To the extent Patent Owner is also arguing that Petitioner’s assertions regarding reasonable expectation of success are unsupported, Prelim. Resp. 24, the argument is similarly unavailing. Petitioner has pointed to teachings in Neri and the knowledge of an ordinarily skilled artisan to support its assertions. Pet. 21–23 (citing, e.g., Ex. 1005 ¶¶ 104–105, 149, 171, 183 and Ex. 1011 ¶¶ 10, 82 to explain why an ordinarily skilled artisan would have reasonably expected success in applying, to Kanan’s small molecules, Neri’s “method of preparing organic molecules, peptides, and oligomeric proteins linked to an oligonucleotide that results in stable self-assembled associated oligonucleotides”). In this regard, we note that “the expectation of success need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).” slip op. at 25
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,883,848 - PTAB · Mar 5, 2025 · IPR2024-01111 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that claims 1 and 9 would be obvious over Gallagher and Schofield.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Texas litigation, but significant work still remains to be done. See Ex. 2004. Moreover, we agree that Petitioner filed the Petition expeditiously. See 2nd Prelim. Reply 4. Accordingly, the facts underlying this factor weigh strongly against exercising our discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 9 would have been obvious in view of the combination of Gallaher and Schofield.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proposes a definition for any claim term. See Pet. 6; Prelim. Resp. 4–5. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial as permitted by our rules. slip op. at 19
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner has not advanced persuasive evidence to put into dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’328 patent in the Texas Litigation. Prelim. Sur-reply 4–5. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. at 5. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,671,328 - PTAB · Mar 5, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claim 15 based on Gallagher and Lumia, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Holistic Assessment of the Fintiv Factors On this record, after weighing all of the factors and taking a holistic view, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we determine that the circumstances presented weigh against exercising our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the Texas litigation.” slip op. at 16
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’255 patent in the Texas Litigation. Prelim. Sur-reply 4. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 15 would have been obvious in view of the combination of Gallagher and Lumia.” slip op. at 31
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 12–14 and 17–23. Prelim. Resp. 1; Ex. 2002. Based on our review of Exhibit 2002, we determine that a disclaimer of claims 12–14 and 17–23 of the ’255 patent under 35 U.S.C. § 253(a) has been filed with the Office as of December 9, 2024. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 12–14 and 17–23 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 12–14 and 17–23. As a result, the remaining challenged claim is claim 15 (“the challenged claim”).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,335,255
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.