- Kamada, Ltd. v. Grifols Therapeutics Inc.All claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00899 · APJ Tina E Hulse · IPR · Final written decision
Claims 1–5, 10–21, 26–28, 32, and 33 are unpatentable as anticipated by Ralston or obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner argues that a skilled artisan would have had an advanced degree in biochemistry or a related discipline, and would have had at least several years of experience in development, testing, and implementing commercial-scale protein purification methods from human plasma. PO Resp. 16. As an initial matter, we note that the claims do not require large-scale or commercial-scale protein purification. Moreover, not all claims require plasma-derived API. Accordingly, we determine that a person of ordinary skill in the art would have had at least a Master’s Degree in chemistry or biochemistry and at least 35 years of experience in protein purification.8 We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). 8 Patent Owner alleges that Petitioner’s declarants are not qualified to opine on the merits of this proceeding because they have no experience with plasma-derived protein purification. PO Resp. 16– 24. In light of our decision that a person of ordinary skill in the art does not require plasma-protein purification experience, we are not persuaded that Petitioner’s declarants are not qualified, and will accord their testimony appropriate weight.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“solution can cause contaminating proteins to precipitate. Pet. Reply 4; PO Resp. 28. The dispute is whether the broadest reasonable interpretation of “precipitation” encompasses removal of proteins that adsorb to lipid removal agents like Hyflo Supercel®. We determine that it does. As an initial matter, we note that Patent Owner’s declarants offer little to no persuasive evidence in support of their opinions regarding how a person of ordinary skill in the art would interpret “precipitation.” See Ex. 2016 ¶¶ 34–36, 40–43 (failing to cite persuasive evidence in support of opinions); Ex. 2017 ¶¶ 22–24, 27– 28, 30–31 (same). Under our rules, unsupported expert testimony may be given little to no weight. See 37 C.F.R. § 42.65(a) (stating opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (finding a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“an aqueous solution comprising steps (a) through (e). Petitioner asserts that Ralston discloses precipitation step (a) because Ralston teaches that LRA adsorbs contaminating proteins, which together form a precipitate that is removed by filtration or centrifugation. Pet. 11; Ex. 1002, 10:47–48, 10:53–56; Ex. 1010 ¶ 16, App’x I. Petitioner also asserts that Ralston teaches passing the purified solution through an anion exchange resin that binds API (i.e., step (b)), eluting API from the anion exchange resin (i.e., step (c)), and passing the eluted solution through a cation exchange resin (i.e., step (d)). Pet. 11–12; Ex. 1002, 4:53–57; Ex. 1010 ¶ 16, App’x I. Finally, Petitioner asserts that Ralston discloses collecting a flow-through from the cation exchange resin that contains API (i.e., step (e)). Pet. 12; Ex. 1002, 5:40–48. We determine that Petitioner has shown by a preponderance of the evidence that Ralston discloses each limitation of claim 1.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We are not persuaded. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Although “known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness,” United States v. Adams, 383 U.S. 39, 52 (1966), we are not convinced that Ralston’s description of Coan as “disadvantageous” would discourage a skilled artisan from modifying Ralston’s purification method by adding Coan’s PEG precipitation. Ralston states that PEG precipitation is disadvantageous because “PEG will also precipitate hepatitis [sic] B virus.” Ex. 1002, 3:50–51. Ralston then states that “[a]lthough viruses are typically inactivated in a heat pasteurization step following purification of API, precaution must be taken, and patients must therefore be immunized before receiving treatments.” Id. at 3:51–54. Both Petitioner and Patent Owner’s declarants agree, however, that a person of ordinary skill in the art would have understood in 1999 that virus removal or viral inactivation was a required step of purifying API. Ex. 2011, 81:24–82:10 (Scandella); Ex. 1034, 75:12–21 (Fournel); Ex. 1032; 105:3–10 (Travis). Thus, we are not persuaded that a skilled artisan, reading this passage of Ralston, would have been discouraged from using PEG precipitation, because a skilled artisan would have already been aware of the need for viral inactivation and the precautions that should be taken. Patent Owner also notes that Ralston states that Coan’s combined process of PEG precipitation along with a concentration step involving phosphate buffer and DEAE SEPHAROSE is “quite lengthy” and the “final product is only 60% active and only 80% pure.” Ex. 1002, 3:55–59. Accordingly, Patent Owner argues that a person of ordinary skill in the art would be discouraged from following the path set out in Coan, would be led in a direction divergent from the path taken by the applicant, or would not incorporate Coan’s PEG precipitation step because it would render the result inoperable. PO Resp. 45–46. We do not find Patent Owner’s argument persuasive. Ralston does not “criticize, discredit, or otherwise discourage” the use of Coan’s PEG precipitation along with Ralston’s purification process with anion and cation exchange resins. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)) (holding that for a reference to teach away, it must state more than a general preference for an alternative invention, it must “‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”). Rather, Ralston characterizes Coan’s “combined process” as lengthy with an 80% pure final product. Ex. 1002, 3:55–59. Thus, although Ralston may teach away from the use of Coan’s entire process, we are not convinced that a person of ordinary skill in the art reading Ralston would be discouraged from using Coan’s PEG precipitation step in light of the benefits discussed above.” slip op. at 23
Patent outcomesUS 6,462,180 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,462,180 - 10x Genomics, Inc. v. The University Of ChicagoInstitution deniedPTAB · Nov 16, 2015 · IPR2015-01163 · APJ Tina E Hulse · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9 and 11 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–9 and 11. Accordingly, we decline to institute an inter partes review of those claims.” slip op. at 2
- Skill levelSkill level board ownOther
“For purposes of this Decision, we do not discern an appreciable difference between Petitioner and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Patent Owner does not indicate how many years of experience a “researcher interested in microfluidics” would have. Accordingly, we determine that a person of ordinary skill in the art would have at least a bachelor’s degree in chemistry, physics, chemical engineering, bioengineering, or mechanical engineering, or a related discipline, with at least four or five years of relevant experience. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this stage of the proceeding, we find Patent Owner’s proposed construction more persuasive because it is more consistent with the Specification’s definition of “plugs.” The Specification states: “‘Plugs’ in accordance with the present invention are formed in a substrate when a stream of at least one plug-fluid is introduced into the flow of a carrier-fluid in which it is substantially immiscible.” Ex. 1001, 9:27–30. To further limit the claim term, Petitioner relies on the Specification’s disclosure of other optional characteristics of a plug. For example, the Specification states that the plug’s “cross-section should be substantially similar to the cross-section of the channels in which they are formed.” Id. at 9:34–37 (emphasis added). The Specification also states that the carrier fluid “preferably” wets the walls of the channels and, “[i]f this condition is satisfied, the plug . . . remains separated from the walls by a thin layer of the carrier-fluid.” Id. at 20:59–63 (emphasis added). Because neither of these disclosures expressly limits the “plugs” of the claimed invention, we decline to include these limitations from the Specification in the broadest reasonable interpretation of the claim term. Accordingly, on the current record, we determine the broadest reasonable interpretation of the term “plugs of the aqueous fluid” to be “volumes of aqueous fluid formed when a stream of aqueous fluid is introduced into the flow of a substantially immiscible carrier-fluid.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. Remaining Claim Terms Petitioner proposes constructions for other claim terms of the ’193 patent. Based on the current record, however, we determine that the remaining claim terms need not be construed explicitly for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,304,193 - 10x Genomics, Inc. v. The University Of ChicagoInstitution deniedPTAB · Nov 16, 2015 · IPR2015-01158 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 would have been obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not explained why a person of ordinary skill in the art would have had a reasonable expectation of success combining Haff’s capillary tube PCR device with Quake’s microfluidic system to amplify a substrate in droplets. Simply stating that it would have been “routine” is insufficient. To the extent Petitioner relies on the background information to support a reasonable expectation of success, Petitioner fails to explain any connection between the two. For example, if conducting PCR in a stream of reaction mixture in a microfluidic device was known, Petitioner has not explained why, with that knowledge, it would have been routine to conduct PCR in droplets in a microfluidic device. Moreover, even though Haff describes conducting PCR in a capillary tube device, neither Petitioner nor its declarant explains how the conditions for conducting PCR in microfluidic droplets would differ, or why a person of ordinary skill in the art would consider conducting PCR in microfluidic droplets to be “routine.”” slip op. at 18
- Skill levelSkill level board ownDecided for patent owner
“in the art. Petitioner contends that a person of ordinary skill in the art would have had a Ph.D. in chemistry, biochemistry, mechanical engineering, or a related discipline, with two years of experience in using, designing or creating microfluidic devices. Pet. 3. Alternatively, Petitioner asserts that a skilled artisan would have had an M.S. or bachelor’s degree in one of those disciplines with four or five years of additional relevant experience, respectively. Id. Patent Owner disagrees with Petitioner’s definition, arguing that Petitioner overstates the level of ordinary skill in the art in the 2002 time frame. According to Patent Owner, a person of ordinary skill in the art would have been a researcher interested in microfluidics with at least a bachelor’s degree in a “hard science,” such as chemistry, physics, chemical engineering, bioengineering, or mechanical engineering. Prelim. Resp. 15. For purposes of this Decision, we do not discern an appreciable difference between Petitioner and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Patent Owner does not indicate how many years of experience a “researcher interested in microfluidics” would have. Accordingly, we determine that a person of ordinary skill in the art would have at least a bachelor’s degree in chemistry, physics, chemical engineering, bioengineering, or mechanical engineering, or a related discipline, with at least four or five years of relevant experience. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (Claim limitations must be read “in light of the specification as it would be interpreted by one of ordinary skill in the art.”). The Specification describes the plug broadly as being “formed in a substrate when a stream of at least one plug-fluid is introduced into the flow of a carrier-fluid in which it is substantially immiscible.” Ex. 1001, 10:3–6. We agree with Patent Owner that this is a defining attribute of the claimed plug and that the Specification describes further details as preferred embodiments. According to the Specification, the size of the plug may vary depending on the relative flowrates of the aqueous fluid and the carrier fluid, but “should be substantially similar to the cross-section of the channels in which they are formed.” Id. at 10:10–13, 22:35–37. Separation of the aqueous fluid from the channel wall is also described in an optional manner as occurring when the preferred condition of the carrier-fluid wetting the walls is satisfied. Id. at 21:35–41. The carrier fluid is described as “substantially immiscible” with the plug optionally being “surrounded by a non-polar or hydrophobic fluid such as an oil” or “encased by one or more layers of molecules that comprise both hydrophobic and hydrophilic groups or moieties.” Id. at 10:5–6, 22–31. Accordingly, for purposes of this decision, we adopt Patent Owner’s proposed construction for the term “plug of the aqueous fluid” because it includes the property of the carrier fluid for the plug being substantially immiscible without also incorporating specific embodiments described in the Specification.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“the ’407 patent is microfluidic devices and Haff is “directed to a system for dealing with ‘larger volumes’ of fluids.” Prelim. Resp. 26–28. Patent Owner also argues that Haff is not reasonably pertinent to the problems being addressed in the ’407 patent. Id. at 28–29. We are not persuaded. Although Haff does not disclose the use of PCR in microfluidic devices, we do not believe such disclosure is necessary to consider Haff to be analogous art. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380–81 (Fed. Cir. 2007). On the current record, we find that Haff’s disclosure of PCR in larger-volume capillary tube devices logically would have commended itself to the inventors’ attention when considering methods of conducting PCR in smaller microfluidic devices. In other words, we find that the inventors logically would have considered how PCR is conducted in capillary tube devices to figure out how to scale down the reaction for microfluidic devices.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,329,407 - 10x Genomics, Inc. v. The University Of ChicagoInstitution deniedPTAB · Nov 16, 2015 · IPR2015-01156 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 would have been obvious over Haff and Quake, or claim 6 over Haff, Quake, and Ramsey.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Despite that background information, we determine that Petitioner has not explained why a person of ordinary skill in the art would have had a reasonable expectation of success combining Haff’s capillary tube PCR system with Quake’s microfluidic system to amplify a substrate in droplets. Simply stating that it would have been “routine” is insufficient. To the extent Petitioner relies on the background information to support a reasonable expectation of success, Petitioner fails to explain any connection between the two. For example, if conducting PCR in a stream of reaction mixture in a microfluidic device was known, Petitioner has not explained why, with that knowledge, it would have been routine to conduct PCR in droplets in a microfluidic device. Moreover, even though Haff describes conducting PCR in a capillary tube device, neither Petitioner nor its declarant explains whether the conditions for conducting PCR in microfluidic droplets would differ, or why a person of ordinary skill in the art would consider conducting PCR in microfluidic droplets to be “routine.” Petitioner contends that a skilled artisan would have had a reasonable expectation of success because Quake teaches how to obtain encapsulated aqueous plugs with a single substrate molecule. Pet. 34. But even with that teaching, Petitioner has not explained why that—or any teaching in Haff or Quake—would establish a reasonable expectation of success in providing conditions that are suitable to conduct PCR in a microfluidic plug.” slip op. at 16
- Skill levelSkill level board ownDecided for patent owner
“For purposes of this Decision, we do not discern an appreciable difference between Petitioner and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Patent Owner does not indicate how many years of experience a “researcher interested in microfluidics” would have. Accordingly, we determine that a person of ordinary skill in the art would have at least a bachelor’s degree in chemistry, physics, chemical engineering, bioengineering, or mechanical engineering, or a related discipline, with at least four or five years of relevant experience. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this stage of the proceeding, we find Patent Owner’s proposed construction more persuasive because it is more consistent with the specification’s definition of “plugs.” The specification states: “‘Plugs’ in accordance with the present invention are formed in a substrate when a stream of at least one plug-fluid is introduced into the flow of a carrier-fluid in which it is substantially immiscible.” Ex. 1001, 9:27–30. To further limit the claim term, Petitioner relies on the specification’s disclosure of other optional characteristics of a plug. For example, the specification states that the plug’s “cross- section should be substantially similar to the cross-section of the channels in which they are formed.” Id. at 9:34–37 (emphasis added). The specification also states that the carrier fluid “preferably” wets the walls of the channels and, “[i]f this condition is satisfied, the plug . . . remains separated from the walls by a thin layer of the carrier-fluid.” Id. at 20:59–63 (emphasis added). Because neither of these disclosures expressly limits the “plugs” of the claimed invention, we decline to include these limitations from the specification in the broadest reasonable interpretation of the claim term. Accordingly, on the current record, we determine the broadest reasonable interpretation of the term “plugs of the aqueous fluid” to be “volumes of aqueous fluid formed when a stream of aqueous fluid is introduced into the flow of a substantially immiscible carrier-fluid.”” slip op. at 7
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“analogous art because the field of the ’148 patent is microfluidic devices, and Haff involves larger volumes of fluids. Prelim. Resp. 26–28. Patent Owner also argues that Haff is not reasonably pertinent to the problems being addressed in the ’148 patent. Id. at 28–30. We are not persuaded. Although Haff does not disclose the use of PCR in microfluidic devices, we do not believe such disclosure is necessary to consider Haff to be analogous art. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380–81 (Fed. Cir. 2007). On the current record, we find that Haff’s disclosure of PCR in larger-volume capillary tube devices logically would have commended itself to the inventors’ attention when considering methods of conducting PCR in smaller microfluidic devices. In other words, we find that the inventors logically would have considered how PCR is conducted in capillary tube devices to figure out how to scale down the reaction for microfluidic devices.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,822,148 - Coalition For Affordable Drugs Vi LLC v. Celgene CorporationInstitution deniedPTAB · Nov 16, 2015 · IPR2015-01169 · APJ Jacqueline Wright Bonilla · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–10 unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“for the reasons explained below, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any claim challenged in the Petition. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“relation to treating the same condition (ENL).” Pet. 32–33 (citing Ex. 1007, ¶¶ 112–115). We are not persuaded, however, that Piper sufficiently teaches or suggests that AH 13, AH 14, or EM 12 would be useful to treat ENL. Piper discloses that ENL involves two mechanisms of action, and, therefore, suggests that compounds exhibiting both activities (as measured in the two assays) might be useful to treat ENL. Such compounds include D, L- and Dthalidomide (expressly disclosed in Piper as useful to treat ENL), AH 3, and AH 20. We are not persuaded that Piper teaches or suggests sufficiently that any other disclosed compounds active in only one or neither assay, such as AH 13, AH 14, or EM 12, would have been effective in treating ENL.” slip op. at 13
§ 103 obviousnessPatents in suitUS 5,635,517 - Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentablePTAB · Nov 2, 2015 · CBM2014-00148 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–18 and 20–23 are unpatentable; claim 19 was not shown unpatentable because Gerson does not disclose its product identification code and quantity limitations.
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“discloses every limitation of claims 12–16 and 18. For example, with respect to claim 12, Petitioner asserts, with supporting testimony from Dr. Shamos, that Gerson discloses (1) a “payment authorization source” (i.e., bank or other financial institution) configured to authorize payment for a transaction; (2) a “payment resolution module” (i.e., central processing computer) in communication with the bank or other financial institution; (3) a “hand-held device” (i.e., user’s mobile phone) in communication with the central processing computer that transmits an authorization request (i.e., payment transaction) to the central processing computer; and (4) a “confirmation device” (i.e., POST) that receives an “authorization code” (i.e., transaction-specific authorization code) from the user and authorizes the transaction in response to validating the authorization code. -140 Pet. 69–73; see Ex. 1003, 83–90. Petitioner further argues that Gerson necessarily includes an “I/O interface” because the central processing computer transmits (i.e., outputs) the transaction-specific authorization code to the mobile phone via a “wireless telecommunications link,” and such transmission requires an I/O interface between the mobile phone and central processing computer. -140 Pet. 71–72 (citing Ex. 1005, 6 (ll. 8–14)). We also have reviewed Petitioner’s arguments and evidence for the other challenged claims, and are persuaded that Petitioner has met its burden of demonstrating anticipation by a preponderance of the evidence. Based on all of the evidence of record, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 12–16 and 18 are anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20
- Skill levelSkill level board ownOther
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18
Patent outcomesUS 7,273,168 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,273,168 - Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentablePTAB · Nov 2, 2015 · CBM2014-00140 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–18 and 20–23 are unpatentable: claim 17 is indefinite, claims 12–16 and 18 are anticipated by Gerson, claims 1–11 and 20–23 are obvious over Gerson and Wronski, and claims 1–5, 7–16, 18, and 20–23 …
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Petitioner has not shown that Gerson discloses, expressly or inherently, a hand-held device providing a product identification code and product quantity (in addition to the transaction amount), and we do not find any such disclosure in the reference. The mobile phone in Gerson only provides the purchase amount. See Ex. 1005, 3 (ll. 22–23), 7 (ll. 6–13). Further, Petitioner’s assertion that it “would have been obvious” to also provide a product identification code and product quantity is insufficient to prove anticipation. See -140 Pet. 79–80; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). Based on all of the evidence of record, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 19 is anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20
- Skill levelSkill level board ownDecided for petitioner
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18
Patent outcomesUS 7,273,168 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,273,168 - Biomune Company v. Merial, University Of Saskatchewan, And The Queen’S University Of BelfastAdverse judgmentPTAB · Oct 30, 2015 · IPR2015-00254 · APJ Robert A Pollock · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1–6 after Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(4), “[a]bandonment of the contest” is construed as a request for adverse judgment. Accordingly, we interpret Patent Owner’s Response as a request for adverse judgment. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims is appropriate.” slip op. at 2
NonePatents in suitUS 6,517,843 - Roche Molecular Systems Inc. v. Illumina, Inc.Institution deniedPTAB · Oct 30, 2015 · IPR2015-01091 · APJ Lora M Green · IPR · Institution
The Board denied joinder and denied institution on claims 1–22, citing substantially the same arguments previously presented and the petition’s belated, duplicative filing.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“circumstances of each proceeding. See Unified Patents, Inc. v. Personalweb Techs., LLC and Level 3 Commc’ns, LLC, Case IPR2014-00702, slip. op. at 4 (PTAB Jan. 13, 2015) (Paper 12). In the instant proceeding, we agree with Patent Owner that joinder with IPR2014-01093 would not promote the efficient resolution of those proceedings. After carefully considering both Petitioner’s and Patent Owner’s evidence and argument, we deny Petitioner’s Motion for Joinder. As noted by Patent Owner, Roche announced the acquisition of Ariosa at least as early as December 2, 2014. Ex. 2017. And as also noted by Patent Owner, at that time, Roche was aware that “Ariosa . . . [was] embroiled in a number of patent infringement lawsuits, including with . . . Illumina[ ] and Illumina’s Verinata Health business, and Roche will continue to defend the company in court, Zambrowski said, adding that Roche ‘went into this agreement with our eyes wide open.’” Id. Given that Petitioner had announced the acquisition of Ariosa as early as December 2, 2014, noting that it went into the agreement to acquire Ariosa with its eyes wide open, Petitioner has not provided a persuasive reason as to why it waited until April 24, 2015, to file the instant Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We approach our discretion to deny a petition on a case-by-case basis. As explained above, one factor that favors denial of the instant Petition is that it raises “substantially the same” arguments as the Petition in IPR2014- 01093. 35 U.S.C. § 325(d). We have compared the prior art and arguments raised in the instant Petition to those raised in the Petition filed in IPR2014- 01093. Based on the information presented, we are persuaded that the instant Petition raises, at minimum, “substantially the same . . . arguments” that “previously were presented to the Office” in the Petition filed in IPR2014-01093. 35 U.S.C. § 325(d). That is one factor, contributing to the totality of circumstances in this case, that informs our decision to exercise our discretion to deny the Petition.” slip op. at 14
- Other 314aInstitution denied discretionary otherInstitution denied
“Another factor that tips the balance in favor of denying institution of inter partes review is the timing of the filing of the instant Petition. As noted by Patent Owner, Petitioner had the advantage of the Patent Owner’s response in IPR2014-01093 (Prelim. Resp. 20), as well the depositions of Patent Owner’s expert in that proceeding, which were conducted by counsel for Roche (id. at 8). Essentially, the only reason that Petitioner has provided for waiting until April of 2015 to file the instant Petition is that it did not complete its acquisition of Ariosa until January 12, 2015. However, as discussed above, Petitioner was aware of the possibility of acquiring Ariosa as early as June of 2014, and announced its acquisition as early as December of 2014. Petitioner has not provided any persuasive reason as to why it could not have filed the Petition earlier, much less why the Petition could not have been filed within one month of institution of IPR2014-01093. On this record, we are persuaded that our resources are better spent addressing matters other than Petitioner’s belated, and essentially, second attempt to raise a plurality of duplicative grounds against the same patent claims. See Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when deciding whether to take action in a particular matter, an agency must determine whether its resources are best spent on one matter or another). Petitioner provides no persuasive reason why we should institute inter partes review in light of the above facts. Based on the totality of circumstances before us, we exercise our discretion and deny institution of inter partes review. 35 U.S.C. §§ 314(a), 316(b), 325(d); 37 C.F.R. § 42.108(b).” slip op. at 15
Discretionary denialPatents in suitUS 7,955,794 - Mylan Pharmaceuticals Inc. v. Nissan Chemical Industries, Ltd.Institution deniedPTAB · Oct 20, 2015 · IPR2015-01069 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution on claims 1 and 2 because Petitioner did not show a reasonable likelihood of success on its obviousness or anticipation grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of the above, we are not persuaded that there is a reasonable likelihood that Petitioner would prevail at trial with respect to at least one claim of the ’336 patent on either of their obviousness challenges.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We are not convinced that the steps needed to go from fluvastatin ultimately to pitavastatin constituted routine optimization. The process of modifying fluvastatin to pitavastatin would have required a number of chemical alterations, each having a number of possible combinations. Rather, we find that the process of modifying fluvastatin to pitavastatin would have required significant guesswork and variation of a number of parameters to achieve the end result. Prelim. Resp. 2646. For example, if we focus on the modification of the isopropyl group to a cyclopropyl group alone, the prior art does not clearly direct a person of ordinary skill in the art to a cyclopropyl group, let alone the placement of a cyclopropyl group at the 2 position of a quinoline ring. As provided in the Petition,” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. The Petition fails to explain adequately why the genus of Picard meets the test for a genus-to-species anticipation. See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (“It is well established that the disclosure of a genus in the prior art is not necessarily a disclosure of every species that is a member of that genus.”). For example, Petitioner has not established a “pattern of preferences” in Picard that points to the pitavastatin calcium species of the claims. See Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1377 (Fed. Cir. 2006) (requiring the genus disclosure to disclose a “pattern of preferences” that reads onto the species claim in order for anticipation to be found). Accordingly, we are not persuaded that there is a reasonable likelihood that Petitioner would prevail at trial with respect to at least one claim of the ’336 patent, based on anticipation of claims 1 and 2 by Picard.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,856,336
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.