- Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Nov 15, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Rehearing
The Board dismissed Valve Corporation’s request for rehearing of the final written decision as moot after correcting the requested typographical errors in an errata.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision,” or “Dec.”) in this case. Paper 46 (“Reh’g Req.”). In the request for rehearing, Petitioner seeks correction of certain typographical errors. Reh’g Req. 1–2. Those errors have been corrected in an errata (Paper 47). It is: ORDERED that Petitioner’s Request for Rehearing is dismissed as moot. slip op. at 2
NonePatents in suitUS 9,089,770 - Netapp, Inc. v. Realtime Data LLCInstitution deniedPTAB · Nov 14, 2017 · IPR2017-01354 · APJ Kamran Jivani · IPR · Institution
The Board denied institution of NetApp’s petition challenging claims 1, 2, 9, 10, 15, 17, 20, and 24, exercising discretion under § 314(a) based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“IPR2016-01357 Paper 19, 16 (citations omitted). We recognize that these General Plastic factors typically have been used to analyze situations in which the same party files multiple petitions challenging the same patent. However, our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) is not limited to situations where the same party files multiple petitions, and we find that the General Plastic factors provide a useful framework for analyzing the facts and circumstances present in this case, in which a different petitioner filed a petition challenging a patent that had been challenged already by previous petitions. Applying the General Plastic factors to the present Petition, we conclude that the circumstances present here warrant discretionary denial of institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“provides that the “Director[3] may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” “Congress did not mandate that an inter partes review must be instituted under certain” slip op. at 8
Discretionary denialPatents in suitUS 9,054,728 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Pfizer, Inc. v. Biogen, Inc.Institution deniedPTAB · Nov 13, 2017 · IPR2017-01166 · APJ Jacqueline T Harlow · IPR · Institution
The Board denied institution on the sole claim, claim 1, because Pfizer did not show a reasonable likelihood of proving obviousness without the Rituxan Label as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the ultimate burden of persuasion to prove unpatentability by a preponderance of the evidence, as well as the initial burden of production to establish the existence of prior art that renders the claims unpatentable. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015). In this regard, we have often required a petitioner to make a threshold showing that the reference relied upon was publicly accessible as a printed publication prior to the effective filing date of a challenged patent. See, e.g., Mylan Pharms. v. Boehringer Ingelheim Int’l GmbH, Case IPR2016-01566, slip op. at 10–12 (PTAB Feb. 3, 2017) (Paper 15) (finding that purported “printed package insert” was not a printed publication); Frontier Therapeutics, LLC v. Medac Gesellschaft Fur Klinische Spezialpraparate MBH, Case IPR2016-00649, slip op. at 22 (PTAB Sept. 1, 2016) (Paper 10) (same).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The Federal Circuit has held that “public accessibility” is “the touchstone” in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Accordingly, in view of the above, we determine that Petitioner has failed to establish sufficiently in the Petition that the Rituxan Label was publically accessible as of the critical date of August 11, 1998. Thus, on this record, the Rituxan Label fails to qualify as prior art under 35 U.S.C. § 102, and Petitioner has not established a reasonable likelihood of prevailing in demonstrating the obviousness of claim 1 without the Rituxan Label.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art at the time of the invention would have been “a practicing oncologist with at least an M.D. degree and several years of experience treating patients with NHL and/or researching treatments for NHL, including with chemotherapeutic drugs.” Pet. 10 (citing Ex. 1002 ¶ 15). Patent Owner does not address Petitioner’s position on this matter and does not propose its own description for a person of ordinary skill in the art at the time of the invention. At this stage in the proceeding, we determine that Petitioner’s description of the level of ordinary skill in the art is supported by the current record. Moreover, we have reviewed the credentials of Dr. Ozer (Ex. 1002, Attachment A), and, at this stage in the proceeding, we consider him to be qualified to opine on the level of skill and the knowledge of a person of ordinary skill in the art at the time of the invention. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,329,172 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 9, 2017 · CBM2017-00003 · APJ Karl D Easthom · CBM · Rehearing
The Board denied Facebook and Instagram’s rehearing request, maintaining that the patent was ineligible for CBM review because no existing challenged claim required financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“only for a patent that is a covered business method patent.” (Emphasis added). A patent is eligible for CBM review if it has at least one claim directed to a covered business method. Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Response to Comment 8).” slip op. at 4
- Adverse judgmentOther
“Pet.”) requesting covered business method (“CBM”) patent review of claims 1–7 of the ’810 patent under Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner, Skky, LLC, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With its Preliminary Response, Patent Owner provided evidence (Ex. 2001) that it filed with the Office a statutory disclaimer of claim 5 of the ’810 patent pursuant to 37 C.F.R. § 1.321(a). Prelim. Resp. 2 (citing Ex. 2001). After the Preliminary Response, Petitioner filed a Preliminary Reply to Patent Owner’s Preliminary Response, as authorized by the panel pursuant an e-mail request by Petitioner, to address the consequences of Patent Owner’s disclaimer of claim 5. Paper 7 (“Pet. Prelim. Reply”). In slip op. at 2
NonePatents in suitUS 9,219,810 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 9, 2017 · CBM2017-00006 · APJ Karl D Easthom · CBM · Rehearing
The Board denied rehearing and maintained its denial of CBM institution because, after the statutory disclaimers, no challenged claim required a financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“proceeding only for a patent that is a covered business method patent.” (Emphases added). In other words, the decision at the time of institution is based upon on what “is a covered business method patent,” id. (emphasis added), instead of what was “a covered business method patent” prior to the disclaimer. See also AIA § 18(d)(1) (using the present tense “claims”); 37 C.F.R. § 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant review will be instituted based on disclaimed claims”). Petitioner’s proposed rule would require the Director to institute a CBM patent review “for a patent that is [not] a covered business method patent,” contrary to AIA § 18(a)(1)(E).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“284 (2011) (“AIA”) created a transitional program for the Board to conduct post-grant reviews of a limited set of patents designated as “covered business method patents.” AIA § 18(a). The AIA defines a “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Id. § 18(d)(1). Thus, in order to institute a CBM review proceeding, the statute requires a patent that claims a particular type of method or apparatus. See Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370, 1381 (Fed. Cir. 2017) (“Necessarily, the statutory definition of a CBM patent requires that the patent have a claim that contains, however phrased, a financial activity element.” (emphasis added)); Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) (CBM patents “are limited to those with claims that are directed to methods and apparatuses of particular types and with particular uses ‘in the practice, administration, or management of a financial product or service’” (emphasis added)); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (citing previous Board decisions that “properly focuse[d] on the claim language at issue” (emphasis added)). Under AIA § 18(a)(1)(E), “[t]he Director may institute a transitional proceeding only for a patent that is a covered business method patent.” (Emphases added). In other words, the decision at the time of institution is based upon on what “is a covered business method patent,” id. (emphasis added), instead of what was “a covered business method patent” prior to the disclaimer. See also AIA § 18(d)(1) (using the present tense “claims”); 37 C.F.R. § 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant review will be instituted based on disclaimed claims”). Petitioner’s proposed rule would require the Director to institute a CBM patent review “for a patent that is [not] a covered business method patent,” contrary to AIA § 18(a)(1)(E).” slip op. at 5
NonePatents in suitUS 9,215,310 - Department Of Justice v. Discovery Patents, LLCSome claims unpatentablePTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision
Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11
Patent outcomesUS 7,323,980 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,323,980 - Guardant Health, Inc. v. Foundation Medicine, Inc.Rehearing deniedPTAB · Nov 8, 2017 · IPR2017-01170 · APJ Richard J Smith · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving instituted review of claims 65, 66, 72, 73, 75–77, and 80–85 based on its reasonable-likelihood determination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“According to the ’830 patent, the term “bait” is defined as including “a nucleic acid molecule . . . which can hybridize to (e.g., be complementary to), and thereby allow capture of a target nucleic acid.” Ex. 1001, 28:47–50. Patent Owner acknowledges that “both primers and baits hybridize to a complementary portion of the target nucleic acid.” Req. Reh’g. 3 (citing Prelim. Resp. 30). However, Patent Owner does not explain or otherwise persuasively address why the subject nucleic acids in Shah are not included within that definition of “bait.” We did not overlook Patent Owner’s explanation of why, in its view, “primers” are not “baits.” Rather, at this stage of the proceeding, we found such explanation unpersuasive as we stated in the Decision. Dec. 13. (stating “we are not persuaded that the definition of the term ‘bait,’ as set forth in the ’830 patent, does not include primers”). Moreover, because we did not overlook Patent Owner’s explanation, we find no basis to reconsider the disclosures of Shah.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“We did not overlook and/or misapprehend Patent Owner’s argument. We expressly addressed that argument with respect to bait sets (i) and (ii) by stating that “we find that choosing bait sets that select somatic mutations that appear at a frequency of about 5% or less and at a frequency of about 10% or higher is taught or suggested by the combined teachings of Levin and Shah.” Dec. 17 (emphasis added); see also Dec. 20 (“Having considered the arguments and evidence, we are persuaded at this stage of the proceeding that Petitioner has sufficiently shown that the limitations of claim 65 are taught or suggested by, or would have been obvious in view of, the combined teachings of Levin and Shah.”). Moreover, contrary to Patent Owner’s argument, the fact that the Decision may not recite the words “used together” does not indicate that we overlooked and/or misapprehended Patent Owner’s argument. See Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017) (stating “this court has said on multiple occasions that failure to explicitly discuss every issue or every piece of evidence does not alone establish that the tribunal did not consider it”) (citing cases).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Decided for petitioner
“We did not overlook and/or misapprehend Patent Owner’s argument; rather, we considered it and found it unpersuasive. See Dec. 13 (stating “on this record, we find that Levin’s disclosure of multiple baits would include multiple bait sets”). In particular, we found that Levin teaches the use of multiple bait sets, not one bait set as argued by Patent Owner. See id. Furthermore, Patent Owner’s argument that all of the baits in Levin were “designed in precisely the same way” was based on Levin’s statement that “[b]aits were designed in a tiling fashion with minimal overlap to span the entire protein-coding region of each transcript.” See Prelim. Resp. 28 (citing Ex. 1010, 2). However, that statement suggests the design of multiple different baits that would include multiple different bait sets.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 9,340,830 - Amneal Pharmaceuticals, LLC v. Purdue Pharma L.P., The P.F. Laboratories, Inc., And Purdue Pharmaceuticals L.P.All claims unpatentablePTAB · Nov 8, 2017 · IPR2016-01028 · APJ Christopher G Paulraj · IPR · Final written decision
Claim 1 is unpatentable as obvious over Palermo, the Handbook, and McGinity, and also over McGinity, Joshi, Bastin, and the PDR.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“DISCUSSION A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art for the ’976 patent would have “a degree in one or more fields of medicine, chemical engineering, chemistry, pharmaceutical science, polymer chemistry, pharmaceutics, pharmaceutical technology, pharmacokinetics, and/or pharmacology, and/or a number of years of industry training or experience in one or more of those fields.” Pet. 22–23 (citing Ex.1009 ¶ 17). Patent Owner agrees with Petitioner’s proposed level of skill in the art. PO Resp. 25. We, therefore, apply that skill level in our analysis, with the understanding that the level of skill is also reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“The Specification teaches the following: The term “sustained release” is defined for purposes of the present invention as the release of the opioid analgesic from the oral dosage form at such a rate that blood (e.g., plasma) concentrations (levels) are maintained within the therapeutic range but below toxic levels over an extended period of time, e.g., from about 12 to about 24 hours as compared to an immediate release product. Preferably the sustained release is sufficient to provide a twice-a-day or a once-a-day formulation. Ex. 1001, 4:56–64. The use of “e.g.” in the above definition for “sustained release” plainly indicates that a 12 to about 24 hour time period is exemplary. Thus, we decline to limit the claim term as Patent Owner would have us do. Rather, we construe “extended release” as “release of the opioid analgesic from the oral dosage form at a rate such that blood (e.g., plasma) concentrations (levels) are maintained within the therapeutic range but below toxic levels over a period of time longer than that of an immediate release of the opioid analgesic.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We are unpersuaded by Patent Owner’s arguments. Claim 1 is drawn to a dosage form—a composition. Patent Owner does not point out how the recitation of “abuse deterrent” in the preamble modifies the structurally complete dosage form recited in the body of claim 1. See Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“[A] preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’”) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). We conclude, therefore, that the term “abuse deterrent” is a goal of the invention, that is, it is merely a statement of intended use that is not entitled to patentable weight.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the broadest reasonable construction of “PEG applied onto the core matrix” is a “PEG coating of the core matrix.” Petitioner’s proposed construction would read “applied onto the core matrix” (emphasis added) out of the claim, which we decline to do. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006) (noting that claim language “should not [be] treated as meaningless”).” slip op. at 14
Patent outcomesUS 9,060,976 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,060,976 - Amneal Pharmaceuticals, LLC v. Purdue Pharma L.P., The P.F. Laboratories, Inc., And Purdue Pharmaceuticals L.P.All claims unpatentablePTAB · Nov 8, 2017 · IPR2016-01027 · APJ Christopher G Paulraj · IPR · Final written decision
Claim 1 is unpatentable as obvious over McGinity, Joshi, and Palermo.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“DISCUSSION A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art for the ’976 patent would have “a degree in one or more fields of medicine, chemical engineering, chemistry, pharmaceutical science, polymer chemistry, pharmaceutics, pharmaceutical technology, pharmacokinetics, and/or pharmacology, and/or a number of years of industry training or experience in one or more of those fields.” Pet. 24 (citing Ex.1009 ¶ 17). Patent Owner agrees with Petitioner’s proposed level of skill in the art. PO Resp. 26. We, therefore, apply that skill level in our analysis, with the understanding that the level of skill is also reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The Specification teaches the following: The term “sustained release” is defined for purposes of the present invention as the release of the opioid analgesic from the oral dosage form at such a rate that blood (e.g., plasma) concentrations (levels) are maintained within the therapeutic range but below toxic levels over an extended period of time, e.g., from about 12 to about 24 hours as compared to an immediate release product. Preferably the sustained release is sufficient to provide a twice-a-day or a once-a-day formulation. Ex. 1001, 4:56–64. The use of “e.g.” in the above definition for “sustained release” plainly indicates that a 12 to about 24 hour time period is exemplary. Thus, we decline to limit the claim term as Patent Owner would have us do. Rather, we construe “extended release” as “release of the opioid analgesic from the oral dosage form at a rate such that blood (e.g., plasma) concentrations (levels) are maintained within the therapeutic range but below toxic levels over a period of time longer than that of an immediate release of the opioid analgesic.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We are unpersuaded by Patent Owner’s arguments. Claim 1 is drawn to a dosage form—a composition. Patent Owner does not point out how the recitation of “abuse deterrent” in the preamble modifies the structurally complete dosage form recited in the body of claim 1. See Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“[A] preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’”) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed.Cir.1997)). We conclude, therefore, that the term “abuse deterrent” is a goal of the invention, that is, it is merely a statement of intended use that is not entitled to patentable weight.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“iv. “core matrix” The parties agree that the broadest reasonable construction of “core matrix” is “a blended mixture having: (a) PEO having a molecular weight of from about 300,000 to about 5,000,000 daltons, (b) magnesium stearate, and (c) oxycodone or a pharmaceutically acceptable salt of oxycodone.” Ex. 3001. We adopt that agreed-upon construction for purposes of this Decision. v.” slip op. at 14
Patent outcomesUS 9,060,976 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,060,976
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.