• LG Display Co., Ltd. / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentable
  PTAB · Dec 18, 2015 · IPR2014-01096 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 15 and 27 are unpatentable as obvious over Pristash and over Kobayashi in view of Pristash.

  RulingsFinal written decision

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

    “persuaded us that applying the Phillips standard would affect our determination of this case. In fact, throughout this proceeding, Patent Owner has taken no position on claim construction. Prelim. Resp. 4; PO Resp. 6. The only claim term the Board construed in its Institution Decision is the term “deformities,” appearing in both challenged claims. Paper 11, 4. It was Petitioner who asserted that the ʼ370 patent “expressly defines” the term to mean “any change in the shape or geometry of the panel surface and/or coating or surface treatment that causes a portion of light to be emitted.” Pet. 7 (citing Ex. 1001, col. 4, ll. 36–40). Patent Owner did not oppose that construction. Hearing Tr. 45:20–25. In fact, Patent Owner pointed out that the construction of “deformities” proffered by Petitioner was agreed to and adopted by the district court. PO Resp. 7; Hearing Tr. 47:7–15. Patent Owner’s counsel agreed at the oral hearing that the expiration of the ʼ370 patent has no impact on that construction. Id. at 47:1– 18. Nor does Patent Owner seek any other particular constructions in light of the ʼ370 patent’s expiration. Id. at 46:9–19. In short, Patent Owner points to nothing that would change if the Phillips standard were applied. In light of the foregoing, we see no reason to modify our previous construction of “deformities” based either on the expiration of the ʼ370 patent or positions of the parties as developed during the trial, and adopt that construction for this Final Written Decision. Nor do we see the need to make any further constructions of the claims for the purposes of this decision that would be affected by the expiration of the ʼ370 patent or the Phillips standard.” slip op. at 5

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

    “2. Analysis Petitioner contends that it would have been obvious to combine Pristash’s transition region with Kobayashi. Pet. 47. Petitioner asserts that this combination would have been obvious because “transition devices were known at the time for mixing and spreading light from the light source to the light guide.” Id. The Escuti Declaration (¶¶ 230–33) provides additional support for this contention.” slip op. at 22

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

    “We are not persuaded by Patent Owner’s arguments attempting to distinguish Pristash. Instead, we are convinced by Petitioner’s arguments, citations to the Pristash disclosure, and the testimony of its expert, Dr. Escuti, that Pristash describes a panel that meets this limitation. Specifically, Pristash, taken as a whole, discloses in Figures 5 and 6 the combination of prismatic deformities with other deformity types (e.g., lenticular) on the same side of the light emitting panel as this claim requires. We are supported also in this conclusion by the testimony of Mr. Werner, who agreed that a lens is a different type of deformity than a prism. Werner Dep. 111:12–17. At oral argument, Patent Owner’s counsel asserted that Pristash does not meet this limitation because prismatic surface 48 in Figure 6 is not a “deformity” as the claims require, but is itself the surface of the panel. Hearing Tr. 49:7–10. We are not persuaded by this argument. There is no requirement in the claims that the deformities be on separate surfaces, only that they be on the same side of the panel. Moreover, the ʼ370 patent specifically refers to “prismatic surfaces, depressions or raised surfaces of various shapes” as examples of light extracting deformities. Ex. 1001, col. 5, ll. 57–60. We credit also Petitioner’s evidence, summarized supra (which Patent Owner does not challenge), that the other elements of claim 15 are found in Pristash. We conclude, therefore, that Petitioner has demonstrated, by a preponderance of the evidence that claim 15 would have been obvious over Pristash.” slip op. at 15

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

    “D. Real Party-in-Interest Patent Owner contends that the Petition is insufficient for failure to name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 15. The identical argument was raised in Patent Owner’s Preliminary Response. Prelim. Resp. 18. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties in interest. Paper 11, 16–17. Patent Owner’s Response relies on the same arguments and evidence that we considered in our Institution Decision. For the reasons stated there, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest.” slip op. at 24

  Patent outcomesUS 7,537,370 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,537,370
• 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
• Christie Digital Systems USA, Inc. v. Cascades Projection LLCAdverse judgment
  PTAB · Dec 16, 2015 · IPR2015-01342 · APJ Howard B Blankenship · IPR · Adverse judgment

  The Board entered adverse judgment against Patent Owner on claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 and terminated the proceeding.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (37 C.F.R § 42.73(b)(2)). No claim remains to be adjudicated in this proceeding. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 of the ’347 patent; and” slip op. at 2

  None
  Patents in suitUS 7,688,347
• Hewlett-Packard Company v. Yyz LLCAdverse judgment
  PTAB · Dec 16, 2015 · CBM2015-00050 · APJ Richard E Rice · CBM · Adverse judgment

  The Board granted adverse judgment based on Patent Owner’s abandonment and cancelled claims 51, 52, and 55–57 of U.S. Patent No. 7,603,674 B2.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b)(4), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for such an adverse judgment include abandonment of the contest. We find that Patent Owner’s actions and admissions, as set forth in the Motion, constitute abandonment of these CBM Proceedings, and we determine based on such abandonment that Patent Owner has requested adverse judgment under 37 C.F.R. § 42.73(b)(4) in both proceedings.” slip op. at 2

  None
  Patents in suitUS 7,603,674
• Hewlett-Packard Company v. Yyz LLCAdverse judgment
  PTAB · Dec 16, 2015 · CBM2015-00049 · APJ Richard E Rice · CBM · Adverse judgment

  The Board granted adverse judgment based on Patent Owner’s abandonment and ordered claims 22–23, 27–29 of the ’749 patent and claims 51–52, 55–57 of the ’674 patent cancelled.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b)(4), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for such an adverse judgment include abandonment of the contest. We find that Patent Owner’s actions and admissions, as set forth in the Motion, constitute abandonment of these CBM Proceedings, and we determine based on such abandonment that Patent Owner has requested adverse judgment under 37 C.F.R. § 42.73(b)(4) in both proceedings.” slip op. at 2

  None
  Patents in suitUS 7,062,749
• 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
• Microsoft Corporation v. Proxyconn, Inc.All claims unpatentable
  PTAB · Dec 9, 2015 · IPR2012-00026 · APJ Thomas L Giannetti · IPR · Remand

  On remand, claims 1, 3, 6, 7, 9, 10, 22, and 23 are unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.

  RulingsRemand decision

  • RemandOther

    “permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5

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

    “Finally, we note that persuasive evidence of a rationale to combine DRP and Mattis is found in the Long Declaration. IPR2013-00109, Ex. 1013, 10–16. Proxyconn does not challenge this evidence. We, therefore, conclude that, taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 6, 7, and 9 of the ʼ717 patent would have been obvious over DRP and Mattis and are not patentable.” slip op. at 13

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

    “Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11

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

    “We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device.” slip op. at 17

  Patent outcomesUS 6,757,717 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,757,717
• Microsoft Corporation v. Proxyconn, Inc.All claims unpatentable
  PTAB · Dec 9, 2015 · IPR2013-00109 · APJ Thomas L Giannetti · IPR · Remand

  On remand, the Board held claims 1, 3, 6, 7, 9, 10, 22, and 23 unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.

  RulingsRemand decision

  • RemandDecided for petitioner

    “permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5

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

    “Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11

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

    “dispute this assertion. Instead, Proxyconn asserts that it should prevail simply because the Board’s decision was based on a “rejected claim construction.” PO Remand Br. 8. We are not persuaded by this argument. Instead, we are persuaded that Perlman meets the “receiver” and “sender” limitations of the claims, even under Proxyconn’s construction of “sender/computer” and “receiver/computer.” Perlman discusses an illustrative network embodiment using routers. See supra. A router is an intermediary device and, under Proxyconn’s construction, might not be considered a “sender” or “receiver.”7 Nevertheless, we agree with Microsoft that the disclosure of Perlman is not confined to networks using routers, but expressly applies to “any type of distributed system requiring efficient synchronization of the contents of data bases stored on nodes of a computer network.” Pet. Remand Br. 8; Ex. 1003, col. 8, ll. 57–60. Perlman’s express disclosure of nodes is referred to in Microsoft’s Petition at pages 32–33, 35, 37, and 39. And Proxyconn’s Patent Owner Response states, “Perlman discloses a sending node that broadcasts a database identifier to a plurality of receiver nodes, and updates the receiver nodes so that all of the nodes are synchronized.” PO Resp. 29.” slip op. at 15

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

    “We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device. Proxyconn contends that “at no point” did Microsoft attempt to show that Santos had a “receiver/computer” without intermediaries. PO Remand Br. 13. This argument is unavailing. Microsoft contended in its claim charts accompanying the Petition that Santos provided such a receiver/computer. As stated in the claim charts: “Receiver implementation is an ‘Intel-based PentiumII’ computer running Linux Operating system (Santos § 3.4, ¶ 1).” Ex. 1001, 6. We, therefore, conclude that taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 22 and 23 of the ʼ717 patent are anticipated by Santos.” slip op. at 17

  Patent outcomesUS 6,757,717 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,757,717
• 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

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.