- PTAB · Oct 28, 2014 · IPR2013-00266 · APJ Christopher L Crumbley · IPR · Final written decision
The Board denied entry of substitute claims 20–26 as obvious, and granted cancellation of challenged claims 1, 2, 4, 11, 12, 17, 18, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“1. the cleavable linker and the protecting group are cleavable under identical conditions Proposed substitute claim 20 recites, inter alia, “a base that is linked to a detectable label via a cleavable linker,” a “protecting group attached via the 3' oxygen atom” of the nucleotide, and a step of “removing the label and the protecting group of the nucleotide . . . under a single set of chemical cleavage conditions.” Mot. 2 (emphasis added). These limitations are similar to those present in original claim 1, which we construed in our Decision on Institution. Specifically, we construed removal of the label and the protecting group under a single set of conditions “to mean what its plain language indicates: removal of the label and the protecting group under a single set of conditions.” Dec. 6. Neither of the parties contested this construction subsequent to institution, and we discern no reason to modify our initial construction for the purposes of this decision. Proposed claim 20 also requires that the cleavable linker comprise a disulfide linkage, but does not specify the protecting group. Thus, “a single set of chemical cleavage conditions,” under the broadest reasonable interpretation standard, limits the structure of the protecting group to one which can be cleaved under the same conditions as a disulfide linkage, but does not require a specific structure, such as a disulfide linkage.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2004 ¶ 84. There is no testimony, however, that the stated results were due to the claimed nucleotide rather than the reducing agent. While Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, he does not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir. 2013). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable over the prior art considered in this Decision. The Motion to Amend is DENIED to the extent that it requests entry of substitute claims 20–26.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,346 - PTAB · Sep 17, 2014 · IPR2014-00315 · APJ Lora M Green · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement; the petitioner withdrew its rehearing request.
RulingsOther- RehearingOther
“We note that we denied institution of inter partes review on July 8, 2014. Paper 14. Petitioner, however, filed a Request for Rehearing Pursuant to 37 C.F.R. § 42.71 of our decision not to institute trial, and that Request has not yet been decided. Thus, the possibility that trial may be instituted still remains. Petitioner also withdraws its Request for Rehearing in view of the joint motion to terminate. Based on the facts of this case, it is appropriate to enter judgment.2 Therefore, the joint motion to terminate the proceeding is GRANTED.” slip op. at 2
NonePatents in suitUS 8,318,738 - PTAB · Jul 21, 2014 · IPR2013-00430 · APJ Lora M Green · IPR · Order
The Board granted the parties’ joint motions to terminate and terminated the proceedings without a final written decision on the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“JUDGEMENT Termination of the Proceedings 37 C.F.R. § 42.73 The parties have requested that these trial proceedings be terminated pursuant to a settlement. On July 10, 2014, we authorized the parties to file joint requests to terminate and to file the settlement agreement as business” slip op. at 1
- Adverse judgmentOther
“2014. Papers 9, 8, and 9. The briefing and discovery processes have not been completed in these proceedings, and the panel has not yet decided the merits of the proceedings. The parties have identified other related matters involving the patents at issue between Alcon Research, Ltd. (“Alcon”), and other parties, but indicate that there are no other related proceedings between the Patent Owner, Alcon, and Petitioner, Apotex Corp., and the patents at issue in these proceedings. Papers 57, 2; 55, 2; and 55, 2. Under these circumstances, we determine that it is appropriate to enter judgment3 and terminate the trials without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 8,388,941 - PTAB · Jun 26, 2014 · IPR2014-00084 · APJ Lora M Green · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding following settlement, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A decision by the Board to institute a trial was entered on April 1, 2014. Paper 12. This matter, however, is in the preliminary stages. The parties have not identified any other related matters. Under these circumstances, we determine that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On June 20, 2014, we authorized the parties to file a joint request to terminate and to file the settlement agreement as business confidential information under 37 C.F.R. § 42.74(c). Paper 15. On June 20, 2014, the parties filed a joint motion to terminate, as well as a joint motion requesting that the joint settlement agreement be treated as business confidential information and sealed. Papers 16 and 17; see also 35 U.S.C. § 317; 37 C.F.R. § 42.72. With their motion to terminate and seal, the parties also filed a copy of a written settlement agreement. Ex. 1018.” slip op. at 2
NonePatents in suitUS 8,361,235 - PTAB · Nov 21, 2013 · IPR2013-00234 · APJ Lora M Green · IPR · Order
The Board granted the parties’ joint motion and terminated the instituted proceeding under their settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A decision by the Board to institute a trial was entered on September 25, 2013. Paper 17. This matter, however, is in the preliminary stages. The parties have not identified any other related matters between them. Under these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On November 15, 2013, the Board authorized the parties to file a joint request to terminate the proceeding and to file the settlement agreement as business confidential under 37 C.F.R. 42.74(c). Paper 32. On that same day, the parties filed a joint motion to terminate, Paper 30, and to treat the settlement agreement as business confidential, Paper 31.1 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. With their motion to terminate and to treat the settlement agreement as business confidential, the parties also filed a copy of a written settlement agreement. Paper 31 (Exhibit A).” slip op. at 2
None - PTAB · Nov 19, 2013 · IPR2013-00197 · APJ Lora M Green · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“A decision by the Board to institute a trial was entered on September 23, 2013. Paper No. 16. This matter, however, is in the preliminary stages. The parties have not identified any other related matters between them. Under these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On, November 7, 2013, the Board authorized the parties to file a joint request to terminate and to file the settlement agreement as business confidential under 37 C.F.R. 42.74(c). Paper No. 23. On, November 11, 2013, the parties filed a joint motion to terminate and to treat the settlement agreement as business confidential.1 Paper No. 22. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. With their motion to terminate and to treat the settlement agreement as business confidential, the parties also filed a copy of a written settlement agreement. Paper No. 22, Ex. 2001 (Confidential Exhibit a A).” slip op. at 2
NonePatents in suitUS 8,204,561 - PTAB · Jul 15, 2013 · IPR2013-00245 · APJ Lora M Green · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary proceeding and terminated it before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“This case is in the preliminary proceeding1 stage; no decision whether to institute a trial has been made. Based on the facts of this case, it is appropriate to enter judgment.2 Therefore, the joint motion to terminate the proceeding is GRANTED.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On July 3, 2013, and pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74, the parties filed a copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be separate from the patent file. In addition, the parties filed a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317.” slip op. at 1
NonePatents in suitUS 5,743,190
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.