- PTAB · Apr 18, 2023 · IPR2022-00123 · APJ Zhenyu Yang · IPR · Final written decision
The Board cancelled original claim 1 and denied substitute claim 2 for lack of written-description support; it did not reach the obviousness or enablement grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill is inappropriate because it “requires qualifications that exclude even the sole inventor of the ’190 Patent, Dr. Edward Neuwelt.” MTA Opp. 1. According to Petitioner, Dr. Neuwelt is “a neurosurgeon,” not a pediatric oncologist, and lacks the requisite “at least 2 years” experience in platinum-based therapies. Id. (citing Ex. 1003, 18; Ex. 1038, 98:9–17, 100:15–101, 4). We agree with Petitioner. It is well settled that inventors are typically persons skilled in the field of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner presents persuasive evidence to show that under Patent Owner’s proposed definition of the level of ordinary skill, Dr. Neuwelt, the sole inventor, would not qualify as an ordinarily skilled artisan, because he is not a pediatric oncologist, even though he is considered “one of the world leading experts on this compound [STS] and otoprotection” and “an expert in the area of [STS] as a . . . drug to use in children with medulloblastoma.” Ex. 1038, 98:9–17, 99:17–18, 101:18–102:13.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Paragraph 102 of Dr. Rassekh’s Declaration, however, does not support Patent Owner’s assertion. Instead, Dr. Rassekh testifies that [t]he stratum of previous craniospinal radiation therapy contained 8 participants: 2 of the 4 (50%) participants receiving STS had hearing loss compared to 4 of the 4 (100%) participants not receiving STS, and none of the hearing loss assessments were changed at the 1 year follow up period. (Ex. 1001 at 20: 28-32, 47-50.) Ex. 2024 ¶ 102. Dr. Rassekh offers no opinion on how many osteosarcoma patients with prior cranial irradiation and how many medulloblastoma patients with prior cranial irradiation had hearing loss.” slip op. at 20
- 112 supportMotion to amend, deniedDenied
“In sum, we find the disclosures of the ’243 application that Patent Owner relies on do not provide sufficient written-description support for the ototoxicity efficacy limitation.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“F. Petitioner’s Asserted Unpatentability Grounds In light of our determination above that Patent Owner has not shown sufficient written-description support for proposed substitute claim 2 in the ’243 application, we do not reach the grounds of unpatentability set forth in Petitioner’s Opposition. See Revised MTA Opp. 17–25 (alleging non-enablement and obviousness).” slip op. at 26
§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,596,190 - PTAB · Aug 12, 2020 · PGR2019-00032 · APJ David Cotta · PGR · Final written decision
The Board granted cancellation of claim 8 and denied entry of substitute claim 11 because Petitioner showed it would have been obvious over Omura, Tsuji, and the knowledge of a person of ordinary skill.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we agreed with the position Patent Owners took in their Preliminary Response – i.e, that the focus of the challenged claims was enzyme-based biosensors and thus the POSA would have more than just a familiarity with enzyme-based biosensors and protein chemistry. Inst. Dec. 8–9. Accordingly, based on the record before us at the time, we accepted the definition provided in Patent Owners’ Preliminary Response, which was consistent with the level of skill reflected in the asserted prior art references and in the specification of the ‘987 patent. 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 the art). Neither party challenges the identification of the POSA set forth in our Institution Decision. See generally, R. Mot.; Opp.; Reply; Sur-reply. Additionally, we find that the fully developed trial record supports the POSA identification we made in our Institution Decision. Accordingly, in this decision, we apply the identification of the POSA set forth in our Institution Decision. Inst. Dec. 9.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this decision, we need not expressly construe any claim terms.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“first, substitute claim 11 would have been obvious over Omura in view of the knowledge of the POSA, and second, substitute claim 11 would have been obvious over the combination of Omura and Tsuji in view of the knowledge of the POSA. Opp. 7–24. We have considered the question of patentability in view of all the evidence and arguments presented in this proceeding. Based on the record developed during this proceeding, we determine that Petitioner has shown by a preponderance of the evidence that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA. Because Petitioner has proven that substitute claim 11 would have been obvious, as discussed in detail below, we do not consider whether Patent Owners’ motion otherwise complies with the statutory and regulatory requirements for a motion to amend. See, 35 U.S.C. § 326(d)(1)(B) (requiring that the amendment propose a “reasonable number of substitute claims” and requiring that the substitute claims do “not enlarge the scope of the claims of the patent or introduce new matter”); 37 C.F.R. § 42.221 (additionally providing, inter alia, that a motion to amend “may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial”). Similarly, because we have determined that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA, as discussed in detail below, we do not reach the question of whether substitute claim 11 would also have been obvious over only Omura in view of knowledge of the POSA.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“includes “research experience and/or knowledge in enzymology . . . and biosensors,” we agree with Petitioner that it would have been obvious to a POSA to substitute FAD-conjugated glucose dehydrogenase derived from the claimed strain of Aspergillus oryzae for FAD-conjugated glucose dehydrogenase derived from Aspergillus terreus as disclosed in Omura.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,976,125 - PTAB · Jun 26, 2014 · IPR2014-00560 · APJ Hyun J Jung · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00560 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties stated in their joint motion that they have settled their dispute and have reached agreement to terminate this inter partes review. Paper 10, 2. Patent Owner has not yet filed a preliminary response or a waiver under 37 C.F.R. § 42.107. We are persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and” slip op. at 2
NonePatents in suitUS 5,592,555 - PTAB · May 2, 2014 · IPR2014-00229 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In the motions to terminate, the parties state that they have settled their dispute with respect to the patents involved in the proceedings, and have reached agreement to terminate these proceedings. Paper 9, 1. Furthermore, the joint motion indicates that the parties have agreed to dismiss Petitioner and other real parties-in-interest identified by 2 IPR2014-00229, Paper 9; IPR2014-00230, Paper 10, IPR2014-00231, Paper 9. 3 IPR2014-00229, Ex. 1047; IPR2014-00230, Ex. 1047, IPR2014-00231, Ex. 1047. 4 IPR2014-00229, Paper 10; IPR2014-00230, Paper 11, IPR2014-00231, Paper 10. 5 IPR2014-00229, Paper 7; IPR2014-00230, Paper 8; IPR2014-00231, Paper 7.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,131,121 - PTAB · May 2, 2014 · IPR2014-00230 · APJ Stacey G White · IPR · Order
The Board granted the joint motions to terminate the proceedings as to all parties and granted the requests to keep the settlement agreement confidential.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,108,704 - PTAB · May 2, 2014 · IPR2014-00231 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; FURTHER ORDERED that the parties’ joint requests that the settlement agreement (Ex. 1047) be treated as business confidential information, kept separate from the file of the involved patents, and made available only to Federal 6 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Government agencies on written request, or to any person on a showing of good cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.” slip op. at 3
NonePatents in suitUS 6,009,469 - PTAB · Apr 16, 2014 · IPR2013-00435 · APJ Bryan F Moore · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00435 without a final written decision after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“proceeding, along with a true copy of their written settlement agreement, made in connection with the termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 18; Ex. 1010. The parties also filed a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 19. The joint motion to terminate indicates that the settlement agreement requires the parties to terminate this inter partes review and the related district court actions involving U.S. Patent No. 8,449,289. Paper 18 at 2.” slip op. at 2
NonePatents in suitUS 8,449,289 - PTAB · Mar 25, 2014 · IPR2013-00497 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2013-00497 and terminated the proceeding without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the facts of this case, it is appropriate to enter judgment1 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. It is ORDERED that the joint motion to terminate IPR2013-00497 is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 2
NonePatents in suitUS 8,305,840 - PTAB · Mar 25, 2014 · IPR2013-00355 · APJ Sally C Medley · IPR · Order
The Board granted the joint motion to terminate IPR2013-00355 and terminated the proceeding without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board instituted trial on December 12, 2013. Paper 13. At this juncture of the proceeding, the Board does not have before it full briefing on the trial issues and the Board has not entered a final decision.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is ORDERED that the joint motion to terminate IPR2013-00355 is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 2
NonePatents in suitUS 8,305,840 - PTAB · Mar 25, 2014 · IPR2013-00496 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2013-00496 and terminated the proceeding without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the facts of this case, it is appropriate to enter judgment1 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. It is ORDERED that the joint motion to terminate IPR2013-00496 is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 2
NonePatents in suitUS 8,305,840
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.