• Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing denied
  PTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3

  Claim construction
  Patents in suitUS 6,538,908
• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

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

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

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

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• Hutchinson Technology Inc. / Hutchinson Technology Operations (Thailand) Co., Ltd. v. Nitto Denko CorporationInstitution denied
  PTAB · Dec 5, 2017 · IPR2017-01499 · APJ Melissa A Haapala · IPR · Institution

  The Board denied institution on claims 1–4 and 6 because Petitioner did not show a reasonable likelihood of proving anticipation or obviousness on the asserted grounds.

  RulingsInstitution decision

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

    “We find that the cited evidence does not support Petitioner’s position that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017)” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) 1 Figure 2A does show a trace that extends from the ends of lines 71, 72, 73, 74, but Petitioner maps this trace to the claimed “fourth line” and not the “eighth line.” See Pet. 21–22. (“The Board reviewed the evidence presented by the parties, and chose not to credit Skky’s expert testimony. . . we discern no reversible error in that choice.”). Furthermore, we agree with Patent Owner that even if Dr. Coughlin’s testimony is correct that the identified line should be connected with the buried conductive island (Ex. 1007 ¶ 96), Petitioner fails to explain how a line that connects to the buried conductive island meets the claim limitation “extends to be branched from the other end of said fifth line or the other end of said sixth line” (emphasis added).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In view of our analysis, we do not find it necessary to construe any terms for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  Claim construction
  Patents in suitUS 7,923,644
• Guardant Health, Inc. v. Foundation Medicine, Inc.Rehearing denied
  PTAB · Nov 8, 2017 · IPR2017-01170 · APJ Richard J Smith · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving instituted review of claims 65, 66, 72, 73, 75–77, and 80–85 based on its reasonable-likelihood determination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “According to the ’830 patent, the term “bait” is defined as including “a nucleic acid molecule . . . which can hybridize to (e.g., be complementary to), and thereby allow capture of a target nucleic acid.” Ex. 1001, 28:47–50. Patent Owner acknowledges that “both primers and baits hybridize to a complementary portion of the target nucleic acid.” Req. Reh’g. 3 (citing Prelim. Resp. 30). However, Patent Owner does not explain or otherwise persuasively address why the subject nucleic acids in Shah are not included within that definition of “bait.” We did not overlook Patent Owner’s explanation of why, in its view, “primers” are not “baits.” Rather, at this stage of the proceeding, we found such explanation unpersuasive as we stated in the Decision. Dec. 13. (stating “we are not persuaded that the definition of the term ‘bait,’ as set forth in the ’830 patent, does not include primers”). Moreover, because we did not overlook Patent Owner’s explanation, we find no basis to reconsider the disclosures of Shah.” slip op. at 4

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

    “We did not overlook and/or misapprehend Patent Owner’s argument. We expressly addressed that argument with respect to bait sets (i) and (ii) by stating that “we find that choosing bait sets that select somatic mutations that appear at a frequency of about 5% or less and at a frequency of about 10% or higher is taught or suggested by the combined teachings of Levin and Shah.” Dec. 17 (emphasis added); see also Dec. 20 (“Having considered the arguments and evidence, we are persuaded at this stage of the proceeding that Petitioner has sufficiently shown that the limitations of claim 65 are taught or suggested by, or would have been obvious in view of, the combined teachings of Levin and Shah.”). Moreover, contrary to Patent Owner’s argument, the fact that the Decision may not recite the words “used together” does not indicate that we overlooked and/or misapprehended Patent Owner’s argument. See Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017) (stating “this court has said on multiple occasions that failure to explicitly discuss every issue or every piece of evidence does not alone establish that the tribunal did not consider it”) (citing cases).” slip op. at 5

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

    “We did not overlook and/or misapprehend Patent Owner’s argument; rather, we considered it and found it unpersuasive. See Dec. 13 (stating “on this record, we find that Levin’s disclosure of multiple baits would include multiple bait sets”). In particular, we found that Levin teaches the use of multiple bait sets, not one bait set as argued by Patent Owner. See id. Furthermore, Patent Owner’s argument that all of the baits in Levin were “designed in precisely the same way” was based on Levin’s statement that “[b]aits were designed in a tiling fashion with minimal overlap to span the entire protein-coding region of each transcript.” See Prelim. Resp. 28 (citing Ex. 1010, 2). However, that statement suggests the design of multiple different baits that would include multiple different bait sets.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 9,340,830
• Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronNo claims unpatentable
  PTAB · Oct 18, 2017 · IPR2016-00908 · APJ Kamran Jivani · IPR · Final written decision

  Petitioner did not prove claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 unpatentable over the instituted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The levels of ordinary skill proposed by the parties do not differ significantly. Both parties’ proposed descriptions require at least an undergraduate degree in electrical engineering or related technical field, and both value industry experience (although Petitioner quantifies this experience as two to three years). We adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition. We further find the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 8

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “testimony of Dr. Cairns that the combination is not predictable and not one that would have been made by a skilled artisan. Ex. 2010 ¶¶ 102– 103. Dr. Cairns relies on the ’183 Patent’s statements that its detection circuit “operates at a higher frequency than prior art touch sensing circuits,” which “is not a benign choice” relative to the prior art detection circuits. Id. ¶ 103 (quoting Ex. 1001, 8:9–14). Dr. Cairns further relies on the ’183 Patent’s description of testing required to identify ideal frequency ranges as further evidence that the combination of prior art elements is not predictable and not one that would have been made by a skilled artisan. Id. ¶¶ 103–104. We credit the testimony of Dr. Cairns on this point over the testimony of Dr. Subramanian because Dr. Cairns’ testimony is more fully developed and is supported by record evidence. For instance, Dr. Subramanian offers no explanation of why one would have found incorporating Gerpheide’s monitoring of oscillator frequencies, calculation of new frequencies, and use of newly-calculated frequencies “to be a predictable and common sense implementation.” Ex. 1002 ¶ 72; see also Ex. 1017 ¶ 8. Rather, Dr. Subrarmanian recites a potential benefit of the combination—namely “to allow the combined Ingraham I-Caldwell system to reject electrical interference regardless of its frequency without expensive nulling circuitry.” Id. Conversely, Dr. Cairns proffers the testing described in the ’183 patent as evidence that identifying the ideal frequency ranges for use in the claimed invention was not a predictable combination of prior art elements. Ex. 2010 ¶¶ 103–104.” slip op. at 20

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

    “On this evidentiary record, we are not persuaded one of ordinary skill in the art would have combined Gerpheide with Ingraham I and Caldwell to arrive at claim 40. Gerpheide is related to a single point input device, such as those used to provide data input in lieu of a mouse or stylus. Ex. 1012, 1:10–14, 1:19–20, 2:61–3:12. Like the ’183 patent, Ingraham I and Caldwell disclose capacitive response keypads. Ex. 1007. 1:5–9, 2:19–20; Ex. 1009, 1:6–9, 1:42– 44, 2:45–48. The ’183 patent describes monitoring electrical interference across a single electrode and varying the frequency of an oscillator frequency based on an interference measurement. Ex. 1001, 6:13–18, 8:22–9:33. Conversely, the ’183 patent describes “a multiple touch pad circuit” including “an array of touch circuits.” Id. at 18:34–46. The ’183 patent seeks to overcome the problem of unintended actuation of these touch circuits when such circuits are placed in dense arrays. Id. at 3:65–4:3. Recognizing guard rings and sensitivity adjustments “have gone a considerable way in allowing touch switches to be spaced in comparatively close proximity,” the ’183 patent addresses the remaining problem of surface contamination across the keypad. Id. at 4:14–18. The considerations described in the ’183 patent, Ingraham I, and Caldwell related to the close proximity of touch circuits in a keypad are wholly absent from Gerpheide. Petitioner relies on Dr. Subramanian’s testimony that an ordinarily skilled artisan would have looked to Gerpheide “for its teachings regarding electrical interference nullification in touch systems by measuring interference and adjusting the oscillator output frequency based on the measured interference.” Reply 7. Dr. Subramanian’s testimony, however, is conclusory on this point. See Ex. 1002 ¶¶ 69–72. The relevant portion of Dr. Subramanian’s testimony offers only that one would have found incorporating Gerpheide “to be a predictable and common sense implementation to allow the combined Ingraham I-Caldwell system to reject electrical interference regardless of its frequency without expensive nulling circuitry.” Ex. 1002 ¶ 72. It is not sufficient to demonstrate that each of the components in a challenged claim is known in the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Although Petitioner has identified in Gerpheide “teachings regarding electrical interference nullification in touch systems” (Reply 7), Petitioner and Dr. Subramanian fail to address fully—in the face of Petitioner’s evidence to the contrary, including Dr. Cairn’s testimony and Rympalski—why an ordinarily skilled artisan would look to such teachings in Gerpheide with a reasonable expectation of success for combining them with Ingraham I and Caldwell.” slip op. at 18

  Patent outcomesUS 5,796,183 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,796,183
• On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11

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

    “Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20

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

    “Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25

  Patent outcomesUS 6,212,079 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,212,079
• Coherus Biosciences, Inc. v. Abbvie Biotechnology Ltd.Institution denied
  PTAB · Sep 7, 2017 · IPR2017-01009 · APJ Michelle N Ankenbrand · IPR · Institution

  The Board denied institution on claims 16–19 and 24–30 because Petitioner did not show a reasonable likelihood of proving obviousness over the cited combination.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). 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.” 35 U.S.C. § 314(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “that, as of November 30, 2007, a person of ordinary skill in the art “would have had an advanced degree in biology, biochemistry, or chemistry (or related discipline)” and “at least two years of experience preparing formulations of proteins suitable for therapeutic use.” Pet. 22–23 (citing Ex. 1302 ¶¶ 62–63). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill, which we adopt for purposes of this decision. See Prelim. Resp. 13 (“For the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art.”). We also find, for purposes of this decision, that the prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the appropriate level of ordinary skill in art).” slip op. at 7

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

    “Petitioner proposes that we construe the phrase “does not comprise a buffering system.” Pet. 23–24. Although Patent Owner does not dispute Petitioner’s proposed construction at this stage of the proceeding (see Prelim. Resp. 13), neither party identifies a dispute that turns on the meaning of the phrase “does not comprise a buffering system.” See generally Pet.; Prelim. Resp. Thus, we determine that no claim term requires construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7

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

    “buffer system of the 2003 HUMIRA formulation based on Fransson’s teachings, we find that Fransson neither discloses nor suggests removing the buffer system from a formulation. To the contrary, as Patent Owner points out, Fransson describes all of its formulations as including a buffer. Prelim. Resp. 33–34. Specifically, Fransson states that the tested formulations “were prepared by mixing disodium phosphate, monosodium phosphate, and sodium chloride in water for injection to give isotonic solutions of different pH and buffer concentration. hIGF-I was added to some of the solutions by ultrafiltration.” Ex. 1304, 1012–13. Petitioner does not explain adequately how that express teaching of buffered formulations, with no disclosure of any tested formulations without a buffer, would have prompted the ordinary artisan to eliminate buffer from the 2003 HUMIRA formulation. Moreover, in summarizing the results of its study, Fransson explains that although an intermediate phosphate buffer concentration of 10 mM resulted in less injection pain than a higher buffer concentration of 50 mM, further reducing the phosphate buffer concentration to 5 mM “did not reduce pain further.” Id. at 1014. In other words, Fransson teaches that reducing the buffer concentration below a particular threshold concentration provides no additional pain reducing benefit. That disclosure fails to support Petitioner’s assertion, and Dr. Radtke’s testimony (Ex. 1302 ¶ 86), that Fransson would have prompted the skilled artisan to eliminate Humira’s buffer system to reduce injection site pain.” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,085,619
• Coherus Biosciences, Inc. v. Abbvie Biotechnology Ltd.Institution denied
  PTAB · Sep 7, 2017 · IPR2017-01008 · APJ Michelle N Ankenbrand · IPR · Institution

  The Board denied institution on claims 16–19 and 24–30 because Petitioner did not show a reasonable likelihood that either asserted §103 combination would succeed.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). 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.” 35 U.S.C. § 314(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art. Petitioner contends that, as of November 30, 2007, a person of ordinary skill in the art “would have had an advanced degree in biology, biochemistry, or chemistry (or related discipline)” and “at least two years of experience preparing formulations of proteins suitable for therapeutic use.” Pet. 22 (citing Ex. 1202 ¶ 64). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill, which we adopt for purposes of this decision. See Prelim. Resp. 15 (“For the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art.”). We also find, for purposes of this decision, that the prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the appropriate level of ordinary skill in art).” slip op. at 7

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

    “Petitioner proposes that we construe the phrase “does not comprise a buffering system.” Pet. 22–23. Although Patent Owner does not dispute Petitioner’s proposed construction at this stage of the proceeding (see Prelim. Resp. 15), neither party identifies a dispute that turns on the meaning of the phrase “does not comprise a buffering system.” See generally Pet.; Prelim. Resp. Thus, we determine that no claim term requires construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 8

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

    “buffer system of the 2003 HUMIRA formulation based on Fransson’s teachings, we find that Fransson neither discloses nor suggests removing the buffer system from a formulation. To the contrary, as Patent Owner points out, Fransson describes all of its formulations as including a buffer. Prelim. Resp. 33–34. Specifically, Fransson states that the tested formulations “were prepared by mixing disodium phosphate, monosodium phosphate, and sodium chloride in water for injection to give isotonic solutions of different pH and buffer concentration. hIGF-I was added to some of the solutions by ultrafiltration.” Ex. 1219, 1012–13. Petitioner does not explain adequately how that express teaching of buffered formulations, with no disclosure of any tested formulations without a buffer, would have led the ordinary artisan to eliminate buffer from the 2003 HUMIRA formulation.” slip op. at 16

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,085,619
• Coherus Biosciences Inc. v. Abbvie Biotechnology Ltd.Institution denied
  PTAB · Sep 7, 2017 · IPR2017-00823 · APJ Tina E Hulse · IPR · Institution

  The Board denied institution on claims 16–19 and 24–30 because Petitioner did not show Gokarn ’011 anticipated them.

  RulingsInstitution decision

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

    “2. Analysis Anticipation requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). “To establish inherency, the extrinsic evidence ‘must make clear” slip op. at 9

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

    “2. Analysis Anticipation requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). “To establish inherency, the extrinsic evidence ‘must make clear” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “skill in the art of pharmaceutical antibody formulation would have had an advanced degree in biology, biochemistry, or chemistry (or related discipline) with at least two years of experience preparing formulations of proteins suitable for therapeutic use. Pet. 20 (citing Ex. 1102 ¶¶ 61–62). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 10. On this record, we adopt Petitioner’s uncontested definition of the level of ordinary skill in the art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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 › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest reasonable construction standard to inter partes review proceedings). Under that standard, and absent any special definitions, we generally give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine that it is unnecessary to expressly construe any claim terms for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

  Claim construction§ 102 anticipation
  Patents in suitUS 9,085,619
• Coherus Biosciences, Inc. v. Abbvie Biotechnology Ltd.Institution denied
  PTAB · Sep 7, 2017 · IPR2017-00822 · APJ Susan L C Mitchell · IPR · Institution

  The Board denied institution because Coherus did not show a reasonable likelihood that claims 16–19 and 24–30 were anticipated by Gokarn PCT or obvious over Gokarn PCT and the Humira Label.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). 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.” 35 U.S.C. § 314(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we deny the Petition and do not institute an inter partes review.” slip op. at 2

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

    “Petitioner proposes that we construe the phrase “does not comprise a buffering system,” which appears in independent claim 16, to encompass formulations that have a de minimis amount of buffer components. Pet. 19– 20. Although Patent Owner does not dispute Petitioner’s proposed construction at this stage of the proceeding, it suggests that construction of this term is unnecessary at this stage. See Prelim. Resp. 11. Because Petitioner does not identify a dispute we need to resolve that turns on the meaning of the phrase “does not comprise a buffering system,” see generally Pet., we determine that no claim term requires construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art. Petitioner contends that a person of ordinary skill in the art “would have had an advanced degree in biology, biochemistry, or chemistry (or related discipline)” and “at least two years of experience preparing formulations of proteins suitable for therapeutic use.” Pet. 18–19 (citing Ex. 1002 ¶ 61–62). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill, which we adopt for purposes of this decision. See Prelim. Resp. 11 (“For the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art.”). We also find, for purposes of this decision, that the prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the appropriate level of ordinary skill in art).” slip op. at 7

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

    “self-buffering proteins, especially in regard to adalimumab. Although Gokarn PCT describes self-buffering protein formulations, it repeatedly emphasizes that empirical data is needed to determine the buffering capacity of any particular protein. See Ex. 1003, 31:14–28 (stating “the buffer capacity of self-buffering protein formulations in accordance with the invention preferably is determined empirically by both acid titration and base titration over a given range of pH change from the desired pH of the composition”); id. at 36:10–14 (stating empirical measurements of protein buffer capacities are preferred); see also id. at 36:29–38:9 (describing determining protein buffer capacity from pH titration curves). Gokarn PCT does describe methods of predicting protein buffer capacity, but cautions that “[s]uch calculations generally will be of less utility and less accurate than empirical determinations of protein buffer capacity, in accordance with the methods described elsewhere herein. But they can be useful to provide rough maximum estimates of the buffer capacity of proteins in solution.” Id. at 40:15–18; see also id. at 38:10–14 (stating while “empirical determinations as described herein are generally a crucial aspect of formulating self-buffering compositions in accordance with various aspects and preferred embodiments of the invention, theoretical and computations methods also can be productively employed to guide the design, manufacture, and use of such compositions (in conjunction with empirical determinations)”). Gokarn PCT explains why empirical data is so crucial in determining protein buffer capacity: Conformational folding typically partitions large polypeptides and proteins in polar solvents into exposed solvent-accessible regions and more or less non-polar core regions that have little or no contact with the ambient environment. Folding produces many environments between these two extremes. Furthermore, the micro environment around a given amino acid side chain in a protein typically is affected by one or more of: solvent effects; binding of ions, chelation; complexation; association with co-factors; and post-translational modifications; to name just a few possibilities. Each of these can influence the pKa of a given amino acid ionization in a protein. The pKas for specific residues in a given protein, thus, can vary dramatically from that of a free amino acid. Id. at 38:26–39:2. No such empirical data is provided for adalimumab. See generally Ex. 1003; Prelim. Resp. 16. Rather, Gokarn PCT only provides examples of four different self-buffering proteins: Ab-hOPGL, Ab-hB7RP1, Ab-hCD22, and Ab-hIL4R. Prelim. Resp. 5 (citing Ex. 1003, 74:19–80:24).” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,085,619

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.