• American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCInstitution denied
  PTAB · Dec 28, 2015 · CBM2015-00153 · APJ Michael P Tierney · CBM · Institution

  The Board denied institution for claims 1–16 because those originally issued claims had been cancelled or amended during reexamination; it did not reach the merits.

  RulingsInstitution decision

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

    “We are persuaded that the particular facts of this proceeding counsel against institution. Our decision whether to institute a covered business method patent review must be based on the claims of the ’402 patent as it exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims 1–16, which Patent Owner has either cancelled or amended during ex parte reexamination. See Ex. 3001. Original claims 1–16, as challenged by Petitioner, no longer exist, and any decision as to the patentability of original claims 1–16 we might reach in this proceeding would be moot and purely advisory. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting a covered business method patent review in this proceeding. 37 C.F.R. § 42.1(b). In denying institution, we do not reach the merits of the unpatentability arguments in the Petition, and express no opinion on those arguments at this time. Furthermore, based on the current record, we agree with Patent Owner that Petitioner is not prejudiced as they may elect to file a new Petition directed to the amended claims.3” slip op. at 8

  Discretionary denial
  Patents in suitUS 8,423,402
• Coalition For Affordable Drugs Vii LLC v. Pozen Inc.Institution denied
  PTAB · Dec 17, 2015 · IPR2015-01344 · APJ Jacqueline Wright Bonilla · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–19 unpatentable over the asserted obviousness combinations or by anticipation.

  RulingsInstitution decision

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

    “Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–19 of U.S. Patent No. 8,858,996 B2 (Ex. 1001, “the ’996 patent”). Pozen Inc. (“Patent Owner”) filed a Preliminary Response. Paper 14 (“Prelim. Resp.”).1 Under 35 U.S.C. § 314, we may not institute an inter partes review “unless . . . 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 2

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

    “The specification of the ’996 patent does not define expressly the term “inhibit.” Considering the ordinary and customary meaning of the term in view of the specification and the claims themeselves, however, we construe “inhibit” to mean prevent (stop), hinder, or restrain. Ex. 1035, 2; Ex. 1036, 49; Ex. 2006, 3; Ex. 2007, 3. For example, claim 1 of the ’996 patent recites that “release of at least a portion” of napoxin “is inhibited unless the pH” is 3.5 or higher (emphasis added). Claim 12 recites a “coating that inhibits release of said naproxen from said core layer unless said dosage form is in a medium with a pH of 3.5 or higher” (emphasis added). Thus, “inhibits” refers to preventing, hindering, or restraining the release of naproxen “unless” the dosage form is exposed to a pH of 3.5 or higher. The use of “unless” in claim 1 and 12 and “at least a portion” in claim 1 indicates that the terms “inhibited” and 7 “inhibits” in the claims do not encompass a “slowing down” of a release when the pH is below 3.5 (which would make “at least a portion” superfluous in claim 1), but rather refers to no release of “at least a portion” (claim 1) or all (claim 12) of the drug “unless” the dosage form is at a pH of 3.5 or higher.” slip op. at 7

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

    “We agree that Petitioner has not established that the teachings of Goldman, Remington, and Lindberg would have given an ordinary artisan a reason to formulate a tablet with the structural and functional features required by the challenged claims. Although Goldman discloses a combination dosage form comprising a PPI and NSAID (discussed above), Petitioner does not point to anything in Goldman that describes or suggests adequately why one would have prepared, for any reason, a composition as claimed, where at least some PPI (i.e., esomeprazole) is released regardless of pH and the release of at least some NSAID (i.e., naproxen) is inhibited unless the pH is 3.5 or higher (e.g., via a coating). Moreover, although Goldman incorporates Remington’s discussion of oral solid dosage forms by reference (Ex. 1004, 6:26–33), Petitioner does not identify anything in Goldman that points to any particular dosage form 14 among the many disclosed by Remington. Goldman’s citation to Remington generally in relation to “[v]arious conventional techniques for preparing medicament tablets or caplets” does not persuade us that an ordinary artisan would have made the connection that Petitioner contends. Id.; Pet 11, 14– 16, 22–25. Nor does Petitioner explain adequately how Lindberg remedies the deficiencies discussed above in relation to Goldman and Remington.” slip op. at 14

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116, slip op. at 9 (Paper 8) (PTAB Apr. 22. 2014); see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed. Cir. 2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date). Nonetheless, a petitioner first must raise the issue by identifying, specifically, the features, claims, and ancestral applications allegedly lacking written description support for the claims based on the identified features. Focal Therapeutics, 24 Case IPR2014-00116, slip op. at 10 (Paper 8). Then, the patent owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. Id. Here, Petitioner cites nothing in the record to support its assertions regarding a lack of written description in the pre-2003 applications, other than to refer to those pre-2003 applications generally. Pet. 47–51. When asserting a “break in priority,” Petitioner does not identify, specifically, the features or claims that allegedly lack written description support. Instead, Petitioner discusses in very general terms what “the ’996 Patent claims are broad enough to encompass” and what the “pre-2003 applications disclose” (id. at 50–51) without referring to any specific challenged claim or providing specific citations to any specification at issue. Even if we assume Petitioner adequately raises the issue, however, we are persuaded that Patent Owner provides a sufficient showing of entitlement to the filing date of at least the ’216 application (the ’255 Publication), in a manner that is commensurate in scope with the points and contentions raised by Petitioner. For example, Patent Owner points to paragraphs 10, 13, and 82 in the ’255 Publication. Prelim. Resp. 35–38 (citing Ex. 1008 ¶¶ 10, 13, 82). Paragraph 10 describes a release of NSAID that “minimizes the adverse effects of the NSAID on the gastroduodenal mucosa.” Ex. 1008 ¶ 10 (emphasis added). Similarly, paragraph 13 describes “preferably provid[ing] for coordinated drug release” that 25 “reduces the deleterious effects of the NSAID on the gastroduodenal mucosa.” Id. ¶ 13 (emphasis added). Paragraph 13 also describes a “most preferred form” where an inner core is “surrounded by a polymeric barrier coating that does not dissolve unless the surrounding medium is at a pH of at least 3.5.” Id. (emphasis added). Paragraph 82 in Example 7 also refers to a coordinated delivery dosage that provides “the delayed release” of naproxen. Id. ¶ 82 (emphasis added). Although we recognize that the ’255 Publication (and indeed the ’996 patent specification itself) does not use the exact words “at least a portion” in relation to a release of naproxen, the ’255 Publication “does not have to describe exactly the subject matter claimed.” Vas–Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). Rather, the description must “‘reasonably convey[] to the artisan that the inventor had possession at that time of the later claimed subject matter.’” Id. at 1563 (quoting Ralston Purina Co. v. Far– Mar–Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Thus, we consider whether the ’255 Publication as a whole conveys to one of ordinary skill in the art, either explicitly or inherently, that the inventors of the ’996 patent invented the subject matter claimed in the challenged claims. Reiffin v. Microsoft, 214 F.3d 1342, 1346 (Fed. Cir. 2000) (citing Vas–Cath, 935 F.2d at 1563). Here, words such as “minimizes,” “reduces,” and “delayed” in paragraphs 10, 13, and 82 in the ’255 Publication, as well as disclosure of 26 different preferred forms in paragraph 13, indicate that the inventors possessed a dosage form and/or coordinated drug release where a portion (e.g., a small portion) of the NSAID (e.g., “most preferred NSAID” naproxen (Ex. 1008 ¶ 12)) was released when the pH of the medium was below 3.5, even if most or nearly all of the drug was not released until the pH was 3.5 or higher. See, e.g., id. ¶ 13 (also stating in one sentence that in “a preferred embodiment, the unit dosage form is a multilayer tablet, having an outer layer comprising the acid inhibitor and an inner core which comprises the NSAID” without referring to when or under what conditions NSAID is released). Moreover, every species in a genus need not be described in order for the genus to meet the written description requirement. Regents of U. California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997) (citing Utter v. Hiraga, 845 F.2d 993, 998–99 (Fed. Cir. 1988)). In this case, the genus at issue has two easily identified species, i.e., inhibiting the release of all or a portion of a drug unless a pH is reached, as opposed to a complex chemical genus, for example, encompassing a large number of possible species. Id.; see also Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352 (Fed. Cir. 2011) (stating that whether disclosure of a species supports a genus “depends upon the state of the art and the nature and breadth of the genus,” finding sufficient support where the genus consisted of only two species). We are persuaded that the ’255 Publication as a whole conveys to one of ordinary skill in the that the inventors of the ’996 patent” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,858,996
• Sensus USA, Inc. v. Certified Measurement, LLCInstitution denied
  PTAB · Dec 11, 2015 · IPR2015-01439 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 43 unpatentable over any asserted ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’453 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’453 patent.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner contends that Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner. See Ex. 2001. Patent Owner argues: A hallmark of indemnity or insurance agreements that are available to satisfy part or all of a judgment or to reimburse payments of same is an ability for the insurer or indemnitor to control over [sic] aspects of the litigation, including the defense and maintenance of an inter partes review which seek[s] to invalidate the subject patent. Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.1 Accordingly, we decline to deny the Petition on this basis. D. The References Petitioner relies on the following references: U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”); U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”); U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,” slip op. at 3

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

    “Petitioner does not propose a construction for “augmented measurement” aside from stating that it “is described in the individual claims of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that generating an “augmented measurement” requires effecting some combination of the elements recited in the claim—the first signal, the second signal, and the third signal. See Pet. 27 (asserting that Cox disclosing “combining” the previously recited elements of the claim in arguing that Cox teaches “generating an augmented measurement”). Thus, both Petitioner and Patent Owner recognize that generating an augmented measurement requires combining specified elements of the claim. We agree. The parties’ recognition that an augmented measurement requires combining specified elements of the claim is consistent with the specification of the ’453 patent. The ’453 patent explains that an “augmented measurement comprising the cleartext time plus the physical measurement” is created by adding a physical measurement of any physical parameter or event to a time. Ex. 1001, 7:66–8:2.” slip op. at 13

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

    “Petitioner’s argument is not persuasive because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements. Petitioner’s cited portions of Bishop fail to disclose how position P is generated aside from stating that “position P of the ship is determined to an accuracy of + 2 nm . . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner, however, has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship. Petitioner’s citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a combined message, which Bishop designates as IS + P + T1, and then enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s testimony includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements. See 37 C.F.R. § 42.65(a). Accordingly, on this record, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,289,453
• Bioactive Laboratories v. BTG International Inc.Institution denied
  PTAB · Dec 10, 2015 · IPR2015-01305 · APJ Toni R Scheiner · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “on May 29, 2015, requesting an inter partes review of claims 1–22 of U.S. Patent No. 8,048,414 B1 (Ex. 1001, “the ’414 patent”). BTG International Inc. (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”) on September 11, 2015.1 We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “As discussed above, however, in an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. The specification of the ’352 patent (which matured from the ’629 application), like the specification of the ’414 patent, discloses that “lethality-neutralizing . . . tests clearly established that the F(ab) fragment antibodies and IgG produced by the processes of this invention afford . . . protection against venom-induced pathophysiology” (Ex. 1004, 4:53–57), and that “F(ab)2 fragments [produced according to the invention] should also afford . . . protection against venom-induced pathophysiology” (id. at 4:66– 67). In addition, the specification of the ’352 patent, like the specification of the ’414 patent, discloses that “IgG, F(ab) fragments and F(ab)2 fragments often have separate utilities” and “F(ab) and F(ab)2 fragments may sometimes be used together.” Id. at 1:61–63. We are not persuaded that Petitioner has shown that the ’629 priority application (or the ’352 patent) fails to provide proper written descriptive support or enablement for claim 1. In a nutshell, we agree with Patent Owner that “construing the limitation to include compositions in which the Fab or Fab/F(ab)2 fragments do not neutralize the lethality of Crotalus venom is not reasonable in light of the specification.” Prelim. Resp. 25. That is, we agree that “[p]roperly construed, the claims cover a composition” slip op. at 10

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

    “As discussed above, however, in an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. The specification of the ’352 patent (which matured from the ’629 application), like the specification of the ’414 patent, discloses that “lethality-neutralizing . . . tests clearly established that the F(ab) fragment antibodies and IgG produced by the processes of this invention afford . . . protection against venom-induced pathophysiology” (Ex. 1004, 4:53–57), and that “F(ab)2 fragments [produced according to the invention] should also afford . . . protection against venom-induced pathophysiology” (id. at 4:66– 67). In addition, the specification of the ’352 patent, like the specification of the ’414 patent, discloses that “IgG, F(ab) fragments and F(ab)2 fragments often have separate utilities” and “F(ab) and F(ab)2 fragments may sometimes be used together.” Id. at 1:61–63. We are not persuaded that Petitioner has shown that the ’629 priority application (or the ’352 patent) fails to provide proper written descriptive support or enablement for claim 1. In a nutshell, we agree with Patent Owner that “construing the limitation to include compositions in which the Fab or Fab/F(ab)2 fragments do not neutralize the lethality of Crotalus venom is not reasonable in light of the specification.” Prelim. Resp. 25. That is, we agree that “[p]roperly construed, the claims cover a composition” slip op. at 10

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

    “We agree with Patent Owner on this point—Chang explicitly characterizes both the Fab fragments and the purified antibody as “valuable tools for an immunochemical approach to the elucidation of the toxic nature 16 of snake venom” (Ex. 1005, 7), but only the purified antibody is mentioned in connection with “the therapy of snake bites” (id.), despite Chang’s observation that “[t]he specific neutralizing capacity of F I [the fraction containing Fab fragments] was even higher than that of the purified antibody” (id. at 4, Table II).” slip op. at 16

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,048,414
• Neptune Generics, LLC. v. Auspex Pharmaceuticals, Inc.Institution denied
  PTAB · Dec 9, 2015 · IPR2015-01313 · APJ Lora M Green · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under § 103(a).

  RulingsInstitution decision

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

    “An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–10. Accordingly, we decline to institute an inter partes review of the challenged claims.” slip op. at 2

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

    “We recognize that an obvious analysis requires us to consider whether an ordinary artisan would have had a reasonable expectation of success, not absolute predictability of success. In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988). We agree with Patent Owner, however, that Petitioner has not demonstrated that the ordinary artisan would have combined Fogelman with Miwa with a reasonable expectation of arriving at the invention claimed by the ’317 patent. Although Fogelman teaches that ODV may account for 90% of the pathway for intrinsic clearance of VF (Ex. 1003, 483), Fogelman 9 Amanda Yarnell, Heavy Hydrogen Drugs Turn Heads, Again, 87(25) Chem, Eng. News 36–39 (2009). teaches also that ODV has a receptor affinity profile similar to its parent compound VF (id. at 481). As noted by Patent Owner (Prelim. Resp. 32), Petitioner has not explained, through evidence or adequate scientific reasoning, why the ordinary artisan would have wanted to prevent the metabolism of VF to its pharmaceutically active metabolite, ODV. Stated differently, because ODV is a desired metabolite, as it has the same pharmacological activity as its parent compound, VF, Petitioner has not explained why the ordinary artisan would have had a reason to prevent VF from being metabolized to ODV, rather than only preventing metabolism to a non-active metabolite, or make a substitution that would prevent the further metabolism of ODV.” slip op. at 13

  • Obviousness (§103) › KSR rationalesNot shown unpatentable

    “We agree. In In re O’Farrell, the Federal Circuit set forth two situations in which an “obvious to try” rationale was usually applied improperly. In re O’Farrell, 853 F.2d at 903. The first improper situation was to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters are critical or no direction as to which of many possible choices is likely to be successful.” Id. The second improper situation was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” Id.; see also In re Kubin, 561 F.3d 1351, 1358–1360 (Fed. Cir. 2009) (noting that the rationale in O’Farrell was “affirmed in the logical inverse” in KSR, 550 U.S. at 417, in a statement that “§103 bars patentability unless ‘the improvement is more than the predictable use of prior art elements according to their established functions.’”). Based on the above framework, we conclude that it would not have been obvious to try to achieve the invention of claim 1 of the ’317 patent. As noted by Patent Owner (Prelim. Resp. 35), and not disputed by Petitioner (see Pet. 10–11), there are approximately 227-1, or 124,217,727 deuterated forms of VF, minus some number of forms which are equivalent due to symmetry or rotatable bonds. Although Petitioner contends that as P-450 enzymes act on two main sites of VF—that is, -OCH3 and –N(CH3)2, arguing that it would have been obvious to deuterate only those sites (Pet. 10–11)—as discussed above, the ordinary artisan would not have had a reasonable expectation that deuteration of those sites would result in enhanced bioavailability and maintaining the activity of VF for a longer period of time. Thus, the ordinary artisan would be left with trying the over 100,000,000 possible deuterated forms of VF until possibly arriving at a successful result.” slip op. at 20

  • Additional discoveryAdditional discovery, deniedDenied

    “III. PENDING MOTIONS Patent Owner filed a Motion for Additional Discovery (Paper 9). In addition, Petitioner filed a Motion to Seal (Paper 18), as well as a Motion to Expunge Paper 17 (Paper 19). We grant Petitioner’s Motion to Expunge. We deny Patent Owner’s Motion for Additional Discovery as moot in view of our denial of the Petition. Finally, as we did not rely on the material Petitioner sought to seal, we decline to address the merits of the Motion to Seal. Petitioner is authorized to file a motion to expunge any material that it seeks to keep confidential within thirty (30) days of the date of this decision, or within thirty (30) days of a decision on rehearing, if rehearing is requested.” slip op. at 22

  § 103 obviousness
  Patents in suitUS 7,456,317
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision

  Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).

  RulingsFinal written decision

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

    “In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22

  Patent outcomesUS 6,754,195 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 6,754,195
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00548 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 4–6, 10, and 13–20 are unpatentable as obvious; claims 2 and 11 were not shown unpatentable because the petition did not establish their variable-length header adjustment limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “Fischer teaches that the comparators in coherent demodulator 114 convert a “‘spread spectrum modulated’ analog signal into a digital signal,” as opposed to “other analog signals.” See PO Resp. 13. To the contrary, Fischer states that “[t]he communicators preferably transmit and receive messages over a wireless physical layer provided by a direct-sequence, spread spectrum (DSSS) radio data link.” Ex. 1004, 14:24–27. Fischer further explains that “[s]ince many of the signals in the coherent demodulator 114 are analog signals, the coherent demodulator 114 includes comparators to establish digital waveforms.” Ex. 1004, 16:58–60. As shown in Figure 5 of Fischer, the coherent demodulator 114 is followed by spread spectrum correlator and decoder 130, which “handles the demodulator 114 output to regenerate the unspread data.” Ex. 1004, 17:58– 60. Thus, we agree with Petitioner, as supported by Prof. Ding, that a person of ordinary skill in the art “would have understood Fischer to describe that the demodulator 114 converts the analog DSSS modulated messages received by antennas 100/102 to digital signals and outputs these digital DSSS modulated messages in I and Q format to spread spectrum correlator and decoder 130.” Reply 3–4; Ex. 1013 ¶ 5.” slip op. at 18

  • Skill levelOther

    “3. Claims 1, 10, and 17 Petitioner argues that each of independent claims 1, 10, and 17 is unpatentable as obvious over Fischer and Nakamura. Pet. 15–26. Notwithstanding the fact that claim 1 recites “means” for performing identified functions, whereas claims 10 and 17 do not recite “means” limitations, the three claims recite similar subject matter, and Petitioner advances the same reasoning in its analysis of all three claims. Id. Patent Owner’s Response also generally addresses claims 1, 10, and 17 collectively in a similar manner. PO Resp. 10–31. Although our analysis below primarily focuses on claim 1, our determinations with respect to claim 1 apply for the same reasons to the identified similar limitations of claims 10 and 17.” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “The Petition makes no mention of Nakamura in its discussion of the additional limitations of claims 2 and 11. Yet in reply, Petitioner argues that “[i]n view of Fischer’s variable length preambles, a [person of ordinary skill in the art] would have found it obvious to utilize Nakamura’s timer function and its repetitive duration function.” Reply 15. Petitioner may not rely on a new argument asserting that Nakamura teaches the additional limitations for claims 2 and 11 presented for the first time in its Reply. Moreover, Petitioner fails to address how either Fischer or Nakamura teaches means for adjusting means for timing when Fischer contains no timer, and when the timer of Nakamura is described as being based on a predetermined period of time. See Ex. 1005, 6:31–36 (“timer 34 permits the switch 14 to transfer from terminal A to terminal B after the lapse of predetermined time”); see also Ex. 2006, ¶¶ 83–84. Petitioner’s contention that “Nakamura’s timer is also flexible” is insufficiently supported by any reference to either Nakamura or the declaration of Prof. Ding. See Reply 16–17; see also Ex. 1013 (no discussion of claims 2 or 11). Petitioner has not demonstrated that the features of claims 2 or 11 are disclosed by the combination of Fischer and Nakamura. 5. Claims 4, 5, 6, 13, 14, 16, and 18–20 Petitioner has persuasively shown that each of the additional limitations of dependent claims 4, 5, 6, 13, 14, 16, and 18–20 are taught by the combination of Fischer and Nakamura. For example, claims 4, 14, and 19 all require a “single monolithic device.” Petitioner has shown that Fischer RF modem 96 is a single monolithic device, and that Fischer communicator 60 is a circuit contained on a single monolithic device that includes RF modem 60. See Pet. 27–28; Ex. 1003 ¶¶ 41–42. Petitioner has also shown that RF modem 96 includes coherent demodulator 114 that provides in-phase and quadrature data outputs that are responsive to an analog signal that has in-phase and quadrature components, corresponding to the requirements of an analog signal “in the form of in-phase and quadrature components” as recited in claims 5 and 16. See Pet. 28–29; Ex. 1003 ¶ 38. With respect to the limitations of claims 6, 16, and 20 requiring PN modulation and phase shift keyed modulation, Petitioner has shown that Fischer discloses RF modem 96 supports BPSK or QPSK, and that it would have been obvious to implement direct sequence spread modulation by using PN modulation. See Pet. 29; Ex. 1003 ¶¶ 34, 37. We are also persuaded that Fischer discloses the “antenna selection circuitry” as recited in claim 13 and the “serial data stream” as recited in claim 18. See Pet. 30–31; Ex. 1003 ¶ 40. Patent Owner does not substantively dispute Petitioner’s assertion that Fischer teaches each of these limitations.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Patent Owner contends that “[i]f reliability alone is the concern,” then “the most reliable method is to use BPSK for the entire packet (as taught by Fischer).” PO Resp. 38. We are not, however, persuaded that “reliability alone is the concern.” Nakamura and Fischer clearly teach a benefit to using both BPSK and QPSK consisting of improved reliability for BPSK with enhanced speed from QPSK. Thus, we find Patent Owner’s contention that those of skill “would not look beyond the teachings of Fischer” unpersuasive. See id. Likewise, Patent Owner’s contention that Fischer already teaches improved reliability by using longer preambles has no bearing on whether one of ordinary skill in the art would have also looked to Nakamura for other means of improving reliability. See id. at 39. We find that Petitioner articulates sufficient reasoning with rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).” slip op. at 28

  Patent outcomesUS 5,712,870 mixed
  § 103 obviousnesscites KSR
  Patents in suitUS 5,712,870
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–10, 13, 18, and 23 are unpatentable under § 103; claims 4, 11–12, 14–17, and 19–22 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPrinted publication establishedDecided for petitioner

    “A reference is established to be a “printed publication” “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.” In” slip op. at 8

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

    “the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system” because “Wu itself references the 802.11a standard as a multi-carrier OFDM scheme that is able to achieve data rates that are faster than the 802.11b transmission rates used in the Wu system.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner contends that [w]ith this motivation in mind a [person of ordinary skill in the art] would have recognized that adding the multi-carrier 802.11a modulation scheme to the modulation schemes already available in the Wu system would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme[,] and supports that contention with testimony by Dr. Almeroth. Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as disclosed by Böhnke. Id. at 49. Böhnke “relates to the mapping of data and pilot symbols in an OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced below. Figure 2 illustrates a sequence that includes a first OFDM modulated signal S1, a midamble MA that can be OFDM modulated or single-carrier modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The midamble can be used for the transmission of pilot symbols, which “are necessary for a channel estimation such as to effect coherent detection of e.g. OFDM-modulated signals,” and such pilot symbols can be created by a single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9, col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation obtained from the single-carrier training sequence to detect multi-carrier OFDM symbols by matching bandwidth and performing synchronization. Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke channel-estimation techniques “provide a way to combine a high-rate, multicarrier OFDM data transmission scheme with a single carrier training sequence” and that [w]ith this background, a [person of ordinary skill in the art] investigating options for including the multi-carrier 802.11a standard in the Wu system would have appreciated that Bohnke’s channel estimation techniques could be applied to Wu’s single-carrier 802.11b preamble and used for acquisition of data modulated according to multi-carrier 802.11a.” slip op. at 12

  • BurdenMixed

    “We agree with Patent Owner that Petitioner’s analysis of claim 22, which recites separate single-carrier and multi-carrier receivers, as well as a switch coupled to such receivers, is deficient. Petitioner’s assertion that claim 22 is unpatentable for “reasons similar to those explained in regards to claims 1-3 and 5” insufficiently addresses these limitations, which do not appear in claims 1–3 or 5. Pet. 58.” slip op. at 23

  Patent outcomesUS 6,754,195 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,754,195
• Zhejiang Yankon Group, Ltd. v. Cordelia Lighting, Inc.Institution denied
  PTAB · Nov 25, 2015 · IPR2015-01420 · APJ Jacqueline T Harlow · IPR · Institution

  The Board denied institution because Zhejiang Yankon Group failed to identify Yankon-US as a real party-in-interest, and a corrected petition would be time-barred.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied

    “Because Cordelia provides sufficient rebuttal evidence that reasonably brings into question the accuracy of Yankon-China’s identification of real” slip op. at 17

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “E. Corrected Petition Would Be Time-Barred The Petition was accorded a filing date of June 16, 2015. Paper 3, 1. At this stage of the proceeding, correction of the Petition to include Yankon- US as a real party-in-interest would require assignment of a new filing date. See 37 C.F.R. § 42.106(b). Granting Yankon-US a new filing date would be futile in this instance because, even if corrected, the earliest filing date that could be accorded to the Petition would fall outside the one-year time bar for pursuing inter partes review set forth in 35 U.S.C. § 315(b). III. ORDER In consideration of the foregoing, it is ORDERED that the Petition is DENIED and no trial is instituted.” slip op. at 19

  Discretionary denial
  Patents in suitUS 8,454,204
• United States Department Of Homeland Security v. Larry GoldenRehearing denied
  PTAB · Nov 17, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place denial of substitute claims 154–156 because they were broader, lacked written description support, and were not shown patentable over the prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” Id. The 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 in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “three independent reasons: (1) substitute claims 154–156 are impermissibly broader than the claims they replaced; (2) Patent Owner failed to show written description support for substitute claims 154–156 as a whole; and (3) Patent Owner failed to show that claims 154–156 were patentable over the prior art of record. Final Dec. 15–21 (improper broadening), 21–22, (written description), 22–31 (prior art of record). Therefore, to succeed on this Rehearing Request, Patent Owner must show that we misapprehended or overlooked matters in reaching each of these determinations. Patent Owner has not done so. We address Patent Owner’s arguments in detail below.” slip op. at 3

  • ScopeDenied

    “In any event, this priority date argument does not contain any reason why our determination that substitute claims 154–156 are broader in scope than cancelled claims 11, 74, and 81 that they seek to replace was in error. Reh’g Req. 4–5. To the extent that Patent Owner does contest our finding that the claims are broader in scope, we do not find it persuasive because Patent Owner does not show amending a claim to replace a particular species with an entire genus would not be broadening. Thus, this argument regarding priority date does not persuade us that we erred in denying Patent Owner’s motion to amend.” slip op. at 4

  • 112 supportDenied

    “B. Lack of Written Description Support Patent Owner argues that we should also excuse Patent Owner’s failure to identify written description support for the entire claim because of the “special circumstances” discussed above. Reh’g Req. 2–3. Without determining whether such an exception exists for the requirement of providing written description support for the entire claim, Patent Owner fails to identify anywhere in the Patent Owner Response or Motion to Amend where this argument was raised. Because the argument was not raised, we could not have misapprehended or overlooked it. Thus, we determine that Patent Owner has failed to show that we erred in our determination that the Motion to Amend failed to show written description support for the claim as a whole.” slip op. at 5

  § 102 anticipation

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.