• Hyperbranch Medical Technology, Inc. v. Incept LLCAll claims unpatentable
  PTAB · Apr 9, 2018 · IPR2016-01836 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 1–6 and 8–12 are unpatentable as obvious under § 103 over Rhee ’500 or Rhee ’587, each combined with Bass or Tse.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Upon review of the parties’ respective definitions of a person of ordinary skill in the art, we adopt Petitioner’s definition as a person with either: (1) a Ph.D. in the field of chemistry, polymer chemistry, chemical engineering, materials science and/or a related field and having at least one year of educational or work experience in the synthesis and development of biocompatible polymer materials; (2) a bachelor’s degree in in [sic] the field of chemistry, polymer chemistry, chemical engineering, materials science and/or a related field and at least two years of work experience in the synthesis and development of biocompatible polymer materials; or (3) any education and experience equivalent to (1) or (2). Pet. 22 (citing Ex. 1003 ¶ 49). We find that Patent Owner’s definition of the ordinarily skilled artisan, i.e., a person having “a Ph.D. degree, or equivalent education, in polymer chemistry, or a bachelor of science degree in chemistry or a closely related field and several years of experience in the development and manufacture of polymer materials for use as tissue sealants,” PO Resp. 15–16 (citing Ex. 2006 ¶ 27), does not differ materially from Petitioner’s definition. Furthermore, our analysis would be the same under either parties’ definition.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “1. “visualization agent” In its Petition, Petitioner proposed interpretations of certain claim terms. Pet. 18–22. The Board determined in its Institution Decision, however, that only the term “visualization agent” required express interpretation. Inst. Dec. 8 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). The Board set forth the broadest reasonable interpretation of “visualization agent” as “an agent that reflects or emits light at a wavelength detectable to a human eye so that a human eye may visualize the hydrogel coating.” Id. at 9. Neither party challenges that interpretation. See, e.g., Third Tr. 6:15–17. We have reassessed that determination in light of the arguments and evidence adduced at trial, and maintain that determination based on the full record.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotation omitted). “Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. Here, we determine that the preamble phrase “suitable to coat a tissue of a patient” is not merely a statement of purpose, but instead represents the “essence or a fundamental characteristic of the claimed invention.” Vizio, Inc. v. Int’l Trade Com’n, 605 F.3d 1330, 1340 (Fed. Cir. 2010). In Vizio, the Federal Circuit held that a preamble reciting “for decoding” certain data “is properly construed as a claim limitation” because the apparatus and method claims reciting that preamble “would have little meaning without the intended objective of decoding.” Id. at 1341. Similarly here, we determine that the method step of claim 1—namely, mixing reactive nucleophilic precursor species, electrophilic precursor species, and a visualization agent—would have little meaning without the intended objective of forming a hydrogel coating on the tissue of a patient. Put differently, there would be no reason to perform the method step of claim 1 but for forming a hydrogel coating on the patient’s tissue. See Ex. 1001, 39:56–40:2 (claim 1) (providing that the reactive precursors crosslink after contact with the tissue to form a hydrogel in the form of a coating). Thus, we determine that “suitable to coat a tissue of a patient” is limiting in this case because it gives “life and meaning” to method claim 1. We further find that the arguments and evidence in this case show that skilled artisans would reasonably interpret “suitable to coat a tissue of a patient” as encompassing a biocompatibility requirement. Although Petitioner correctly notes that “[n]one of challenged claims recite the term ‘biocompatible,” Petitioner acknowledges that skilled artisans understand “that hydrogels are, by their nature as water-swelled materials, known to be biocompatible.” Pet. Suppl. Br. 4–5. Petitioner’s expert, Dr. Lowman, declared that “biocompatibility is presumed as a fundamental aspect of the claimed and disclosed inventions.” Ex. 2018 ¶ 40. And in his deposition, Dr. Lowman testified that skilled artisans would understand “biocompatible” to mean that the hydrogel composition is “suitable for use and tolerated by a patient.” Ex. 2019, 13:2–11 (emphasis added). Thus, we agree with Patent Owner that “suitable to coat a tissue of a patient” reasonably encompasses a biocompatibility requirement for the hydrogel composition. slip op. at 12

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

    “3. Motivation to combine the prior art references and reasonable expectation of success Even “[i]f all elements of the claims are found in a combination of prior art references,” “the factfinder should further consider whether a person of ordinary skill in the art would [have been] motivated to combine those references, and whether in making that combination, a person of ordinary skill would have [had] a reasonable expectation of success.” Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 833 (Fed. Cir. 2015). The “motivation to combine” and “reasonable expectation of success” factors are subsidiary requirements for obviousness subsumed within the Graham factors. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).” slip op. at 28

  Patent outcomesUS 7,009,034 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,009,034
• Coherus Biosciences Inc. v. Abbvie Biotechnology Ltd.All claims unpatentable
  PTAB · Jun 9, 2017 · IPR2016-00188 · APJ Toni R Scheiner · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over van de Putte and Kempeni because the prior art supplied motivation and a reasonable expectation of success for the claimed dosing regimen.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “art as of June 8, 2001—the priority date of the ’135 patent, of which the ’680 patent is a continuation. Petitioner and Dr. Baughman explain that a skilled artisan would possess the skill sets of both a physician treating RA patients and a pharmacokineticist with experience in monoclonal antibodies. Pet. 28; Ex. 1006 ¶ 15; Ex. 1007 ¶ 12, 13. Dr. Baughman describes the ordinarily skilled physician as an M.D. with at least three years of experience treating RA patients, including with one or more anti-TNFα biologic agents. Ex. 1006 ¶ 15; see Pet. 28; Ex. 1007 ¶ 12 (Dr. O’Dell agreeing with Dr. Baughman’s definition of the skilled physician). Dr. Baughman describes the ordinarily skilled pharmacokineticist as having a Ph.D. in pharmacokinetics or a related field, and at least three years of experience with the pharmacokinetics and pharmacodynamics of biologic agents, either in industry or academia. Ex. 1006 ¶ 15; see Pet. 27. Patent Owner’s experts Dr. Gibofsky and Dr. Vinks apply Petitioner’s and Dr. Baughman’s description of the ordinary artisan. Ex. 2065 ¶¶ 53–54; Ex. 2069 ¶¶ 101– 103. We adopt that description of the level of ordinary skill in the art, because it is the description that both parties have applied in this proceeding and it is reflected by the prior art of record.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). On the other hand, “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, the steps of the method, dosage amount, timing, route of administration, and active component are all specified in the body of the claim. The phrase “reducing the signs and symptoms of rheumatoid arthritis,” therefore, merely recites an intended use. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (statements of intended use typically do not limit the scope of a claim because they “usually do no more than define a context in which the invention operates”). Stated another way, the claims do not expressly recite any particular level of efficacy, meaningful or otherwise. Rather, the claims require administering the antibody in a particular dosage amount, by a particular route, at a particular interval—to a patient with moderately to severely active rheumatoid arthritis.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “2. “40 mg dosage unit form” According to the ’680 patent, “dosage unit form” “refers to physically discrete units suited as unitary dosages for the mammalian subjects to be treated; each unit containing a predetermined quantity of active compound[.]” Ex. 1001, 23:9–12. Petitioner contends, “[b]ased upon this definition, a ‘40 mg dosage unit’ form would encompass a syringe filled with 40 mg of D2E7.” Pet. 17.” slip op. at 9

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

    “Patent Owner does not challenge Petitioner’s showing that the prior art discloses each element of claims 1–4. See generally PO Resp. Based on the full trial record, we determine that van de Putte and Kempeni collectively disclose each limitation of the challenged claims. That is, we agree with Petitioner that van de Putte discloses all of the elements of claims 1–4, with the exceptions of biweekly dosing, and administering the antibody in combination with methotrexate. As explained above, van de Putte discloses a study in which RA patients received weekly doses of 20, 40, or 80 mg of D2E7, or placebo, via subcutaneous self-administration over the course of three months. Ex. 1004, 1. D2E7, therefore, was administered in a pharmaceutically acceptable composition, in unit dosage form. Id. Further, D2E7 is a known recombinant human anti-TNFα antibody having the six CDRs and heavy chain constant region required by claims 1–4, and the amino acid sequences for the variable light and variable heavy chain regions required by claims 2 and 4. Ex. 1001, 3:40–42 (explaining that D2E7 is “described in U.S. Pat. No. 6,090,382, incorporated in its entirety herein by reference”); see Ex. 1008, 2:59–67. Petitioner also shows, by a preponderance of the evidence, that Kempeni accounts for the differences between van de Putte and the recited biweekly dosing frequency required by all of the challenged claims, as well as administering the antibody with methotrexate. Specifically, Kempeni describes a study in which patients received D2E7 via intravenous injection every two weeks for at least 6 months (i.e., 24 weeks), and also teaches that “D2E7 is safe and effective . . . in combination with methotrexate when administered by single and multiple intravenous and subcutaneous injections.” Ex. 1003, 2, 3.” slip op. at 15

  Patent outcomesUS 9,017,680 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,017,680
• Orstar Industrial Co., Ltd. v. Cosmo Lighting Inc.All claims unpatentable
  PTAB · Jan 13, 2017 · IPR2015-01787 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Popovich and Lin-US, and over Popovich, Lin-US, and Lin-CN.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific experience in the packaging of optoelectronic devices as is argued by Patent Owner. We also are not persuaded that the level of ordinary skill in the art requires education in the form of a Master Degree in Material Sciences, Electrical Engineering, or Mechanical Engineering, as is argued by Patent Owner. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of technical education is required, at the level of an Associate Degree (two year college program) in Physics, Electrical Engineering, Mechanical Engineering, or Industrial Engineering. We find that the level of ordinary skill in the art is that of one having at least an Associate Degree or Bachelor’s Degree in Physics, Mechanical Engineering, Electrical Engineering, or Industrial Engineering, plus 1–4 years of working experience with semiconductor electronic device packaging or printed wiring board assembly. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Patent Owner has not articulated a persuasive reason for giving Dr. Pugliandla’s testimony little or no weight. Petitioner submits other evidence contrary to Dr. Denbaars unsupported assertion that LED’s are never encapsulated in glass. Reply 8 (citing Ex. 1022). For example, Exhibit 1022 is a journal article, dated 2006 and titled “Optical characteristics of spherical glass encapsulated LEDs.” Ex. 1022, Title. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’978 patent would be required to have specific experience in the packaging of optoelectronic devices as opposed to electronic packaging in general. We are, thus, not persuaded that Dr. Pugliandla’s answers, during deposition, to two questions about the material used for transparent encapsulation is wrong or that the entirety of his testimony should be given little or no weight based on this disagreement. In fact, Dr. Pugliandla is highly qualified in the area of electronic packaging. Dr. Pugliandla has several degrees, including a Ph.D. in chemistry. Reply 8–9; Ex. 1002 ¶ 9. He spent many years working in the areas of electronic packaging and surface mount technology, has taught courses in electronic packaging, and has served as a member of the Board of Directors for the National Surface Mount Technology Association. Id. at ¶¶ 12–18. We are persuaded that Dr. Pugliandla’s education and experience is relevant to the issues discussed in the ’978 patent. Moreover, given the subject matter of the ’978 patent and Dr. Pugliandla’s experience in electronic packaging, we do not find his admitted lack of direct experience in optoelectronic device packaging (see Ex. 2002, 38:15–22) as basis to accord his testimony little or no weight. On this record, we still credit the testimony of Dr. Pugliandla over the contrary testimony of Dr. Stephen P. Denbaars (Dr. Denbaars)6 about whether glass is commonly used as transparent material to encapsulate LEDs or never used to encapsulate LED. An expert does not have to have direct hands-on design experience on a subject to know what existed as a common technique on that subject.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “C. Claim Construction We construe all terms, whether or not expressly discussed here, using the broadest reasonable construction in light of the ’978 patent specification. 37 C.F.R. § 42.100(b). For purposes of the Institution Decision, we expressly construed the following terms: (1) “contact-pad area” as “an opening in an insulating layer of a conducting wire where electrical contact can be made”; and (2) “encapsulating” as “enclosing.” Decision 8–15. In the post-institution briefs, Patent Owner disputes only the construction of “encapsulating.” For purposes of this decision, therefore, we continue to apply the construction of “contact-pad area” as set forth above and we address the construction of the term “encapsulating” below. We construe all other terms using the broadest reasonable construction in light of the ’978 patent specification.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Thus, the only relevant question is whether we should append the phrase “on all sides” to our construction. We are not persuaded that encapsulating components requires that each and every side of the components be surrounded by encapsulating material. In other words, when only a subset of surfaces of a device is exposed to the environment, the plain and ordinary meaning of encapsulate would include covering only those exposed surfaces with encapsulating material. The ’978 patent supports this understanding by describing the process of encapsulating the components in Figure 6 as “a layer of transparent package 5 is further applied to an outer side of every paired first and second contact-pad areas 13, 23 on the first and second conducting wire 1, 2 and the surface mounted light emitting component 3 bonded thereto . . . .” Ex. 1001, 4:63–5:15 (emphasis added). This understanding is also consistent with the ’978 patent’s stated goal of encapsulation, preventing the components “from electrically contacting with an external environment,” “protect[ing] the surface mounted light emitting components 3 against failure due to contacting with external dust and particles,” and strengthening the connections by “protecting . . . against damage and separation . . due to external impact.” Id. Ex. 1002 ¶ 46 (“The use of encapsulating materials to [improve the ruggedness and reliability] is a common practice in the electronic assembly industry, and was commonly practiced for decades prior to the critical date of the ’978 patent.”); see also, Ex. 2001 ¶¶ 65–67 (Dr. Denbaars testifying that without full enclosure, a device would not be protected from the environment); Ex. 2002, 46:4–19 (Dr. Puligandla testifying similarly). The relevant components are fully protected from the external environment when the surfaces exposed to such environment are covered by encapsulating material. We, therefore, continue to give the term “encapsulating” its plain and ordinary meaning: enclosing the exposed surfaces of the recited components. We do not construe the term encapsulating, however, to require covering all component surfaces by encapsulating material.” slip op. at 15

  Patent outcomesUS 7,926,978 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,926,978
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Rehearing granted
  PTAB · Nov 22, 2016 · IPR2015-00711 · APJ James T Moore · IPR · Rehearing

  Rehearing was granted, and claim 25 was held unpatentable as obvious over Hauwiller, the Background of the ’867 patent, and Shibusawa.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “After considering the arguments in the Request for Rehearing and reconsidering the evidence of record, we agree with Petitioner that the reasoning in our Final Decision misapprehended what is required by claim 25. Claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Applying this corrected understanding of claim 25, we also now agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’867 patent, and Shibusawa.” slip op. at 4

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

    “Applying this corrected understanding of claim 25, we also now agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’867 patent, and Shibusawa. As summarized above, Petitioner presented evidence that Shibusawa discloses a map of measurements of soil electrical conductivity, and that combining Shibusawa’s teachings with Hauwiller’s system would have been obvious because electrical conductivity testing is a relatively efficient method for determining soil properties. Pet. 45–46; Ex. 1004, 20:11–16, 23:14–17; Ex. 1009 ¶ 80. As Petitioner points out, the subject matter recited in claim 25 is similar to that of claims 7 and 14, and we determined in our Final Decision that Petitioner’s contentions regarding the obviousness of those claims were persuasive. See Req. Reh’g 5; Dec. 39–40.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 7,343,867
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Rehearing granted
  PTAB · Nov 22, 2016 · IPR2015-00709 · APJ Timothy J Goodson · IPR · Rehearing

  Rehearing granted; claim 25 held unpatentable as obvious over Hauwiller, the Background of the ’912 patent, and Shibusawa.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “was based on a misapprehension of what is required by claim 25. Req. Reh’g 6. Specifically, Petitioner argues that claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Id. at 1. Petitioner points out that claim 25 requires that the soil electrical conductivity map is used for the calculation of the “site-specific measures of the soil nutrient existing in the field.” Id. at 2. Claim 15 requires that the map of site-specific field characteristic data generated using a satellite image of the agricultural field is used in the calculation of the map of “site-specific soil nutrient amount needed to produce at each site a maximum possible crop yield.” Ex. 1001, 12:7–12. In other words, the map of soil electrical conductivity recited in claim 25 is used in the first calculating step of claim 15, not the second calculating step that uses a map generated through satellite imaging. After considering the arguments in the Request for Rehearing and reconsidering the evidence of record, we agree with Petitioner that the reasoning in our Final Decision misapprehended what is required by claim 25. Claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Applying this corrected understanding of claim 25, we also agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’912 patent, and Shibusawa. As summarized above, Petitioner presented evidence that Shibusawa discloses a map of measurements of soil electrical conductivity, and that combining Shibusawa’s teachings with Hauwiller’s system would have been obvious because electrical conductivity testing is a relatively efficient method for determining soil properties. Pet. 47; Ex. 1004, 20:11–16, 23:14–17; Ex. 1009 ¶ 80. As Petitioner points out, the subject matter recited in claim 25 is similar to that of claims 7 and 14, and we determined in our Final Decision that Petitioner’s contentions regarding the obviousness of those claims were persuasive. See Req. Reh’g 5–6; Dec. 34.” slip op. at 4

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

    “reconsidering the evidence of record, we agree with Petitioner that the reasoning in our Final Decision misapprehended what is required by claim 25. Claim 25 does not require satellite imaging to create a map of soil electrical conductivity. Applying this corrected understanding of claim 25, we also agree that Petitioner established by a preponderance of the evidence that claim 25 would have been obvious in view of Hauwiller, the Background of the ’912 patent, and Shibusawa. As summarized above, Petitioner presented evidence that Shibusawa discloses a map of measurements of soil electrical conductivity, and that combining Shibusawa’s teachings with Hauwiller’s system would have been obvious because electrical conductivity testing is a relatively efficient method for determining soil properties. Pet. 47; Ex. 1004, 20:11–16, 23:14–17; Ex. 1009 ¶ 80. As Petitioner points out, the subject matter recited in claim 25 is similar to that of claims 7 and 14, and we determined in our Final Decision that Petitioner’s contentions regarding the obviousness of those claims were persuasive. See Req. Reh’g 5–6; Dec. 34.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 7,171,912
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Some claims unpatentable
  PTAB · Aug 17, 2016 · IPR2015-00709 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–24 are unpatentable as obvious; Petitioner did not show claim 25 would have been obvious.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Dr. Johannsen, testifies that a person of ordinary skill in the field of this invention “would have had at least a Bachelor of Science degree in Agricultural Systems Management, Agriculture, Agronomy, or a related degree and would have had several years of experience with precision farming.” Ex. 1009 ¶ 16. Patent Owner’s declarant, Dr. Heiniger, testifies that a person of ordinary skill in this field would have “at least a Bachelor of Science degree in agronomy or a related field, and at least a Masters Degree in a discipline that involves engineering systems using remote sensing data or comparable work experience. Such a person would have had some practical experience integrating these remote sensing systems.” Ex. 2033 ¶ 18; see also PO Resp. 26 (same). Although Dr. Heiniger’s position is not exactly the same as Dr. Johannsen’s, Dr. Heiniger adds that the “[d]ifferences between who Dr. Johannsen and I view as a person of ordinary skill in the art are not material to my opinions . . . .” Ex. 2033 ¶ 19. The differences between Dr. Johannsen’s and Dr. Heiniger’s articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Dr. Heiniger’s definition of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “In the Decision to Institute, we construed the phrase “calculating a map”5 in claims 1, 6, 8, 13, 15, 17–19, and 24 to mean “performing calculations to produce a map.” Dec. to Inst. 7. With respect to the phrase “maximum possible crop yield” in claims 1, 8, and 15, we declined to adopt Petitioner’s proposed construction of “yield goal” and instead applied the ordinary and customary meaning of the claim language. Id. at 8–9. We further determined that no other claim term required express construction. Id. at 9. Following institution, neither party challenged those constructions or proposed other terms for construction. Therefore, for the reasons explained in the Decision to Institute, we maintain the constructions set forth therein. 5 We understand the phrase “calculating a map” to have the same construction, regardless of whether it appears as “calculating . . . a map,” “calculate . . . a map,” or “calculating a map.”” slip op. at 6

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

    “calculating nitrogen needs for a field.” Ex. 1001, 1:39–40. Hauwiller’s system is open to a variety of recommendation equations, as Patent Owner’s declarant agrees. See Ex. 1006, 8:36–48, 9:18–21, 9:34–38, 13:30–35, 13:39–45; Ex. 1020, 8:11–16. This openness supports the obviousness of employing within Hauwiller’s system a conventional equation (or certain aspects of a conventional equation) such as the one set forth in the Background of the ’912 patent. Further, while the conventional equation includes several variables, a basic teaching of the equation is that in calculating the fertilizer recommendation, the amount of nitrogen already present should be subtracted from the nitrogen needed to realize the yield goal. See Ex. 1001, 1:39–50. Dr. Johannsen’s testimony that “subtraction of existing nutrients from the nutrient amount was a conventional thing to do particularly because it helps reduce leaching due to over fertilization” is consistent with this understanding of the conventional equation. See Ex. 1009 ¶ 71. We also recognize that the ’912 patent describes the equation as being a conventional approach for calculating nitrogen needs “for a field” rather than for a specific site within the field. Ex. 1001, 1:39–40. But Hauwiller recognizes that “[d]esired yield potential varies depending upon the soil characteristics by location” and, for that reason, describes the desirability of constructing “a yield goal map for creating an application map based upon site specific yield goals.” Ex. 1006, 9:32–41 (emphasis added). Thus, Hauwiller teaches the advantages and desirability of a site specific approach. We agree with Petitioner that the “subtracting” step would have been obvious by applying the teachings of the equation in the Background of the ’912 patent to the site-specific approach of Hauwiller. The evidence supports Petitioner’s contentions summarized above, and we agree with Petitioner that claim 15 would have been obvious based on Hauwiller and the prior art described in the Background of the ’912 patent, even taking into account the secondary considerations discussed in Section II.E. below. We have considered Patent Owner’s arguments to the contrary, but we do not find them persuasive for the reasons discussed below.” slip op. at 12

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We agree with Petitioner that Patent Owner has not shown the required nexus between the alleged objective indicia of nonobviousness and the merits of the claimed invention. Although the agreements between Petitioner and the former owner of the ’912 patent convey rights under the ’912 patent, they involve significantly more than the pertinent licenses. The 2008 and 2011 agreements convey licenses to a broader portfolio of U.S. and Canadian patents as well as copyrights, trademarks, and a domain name. Ex. 2022, 4–6; Ex. 2023, 4–6. Moreover, the licenses to intellectual property are just one facet of these agreements, the primary purpose of which is “to set forth the terms upon which Geosys shall provide sales, marketing and support for Field InSite as part of the Geosys FarmSat Platform.” Ex. 2022, 2; Ex. 2023, 2. Similarly, the 2012 agreement conveys rights beyond the ’912 patent. Ex. 2024, 2–3. Patent Owner does not point to, and we do not find, any portion of these agreements assigning a particular royalty rate or value for the ’912 patent. Given the breadth of the agreements and the absence of evidence or explanation from Patent Owner concerning nexus, any determination of how much of the value of the agreements is attributable to the ’912 patent would be speculative. See In re Cree, 818 F.3d 694, 703 (Fed. Cir. 2016). Further, the 2012 agreement calls for a lump sum payment for all of the rights conveyed, the amount of which is less than a reasonable estimate of potential litigation costs. Ex. 2024, 2–3. This detracts further from Patent Owner’s argument that the agreements support the nonobviousness of the ’912 patent. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907– 08 (Fed. Cir. 1985) (noting that licensing programs “are not infallible guides to patentability. They sometimes succeed because they are mutually beneficial to the licensed group or because of business judgments that it is cheaper to take licenses than to defend infringement suits, or for other reasons unrelated to the unobviousness of the licensed subject matter.”). Patent Owner’s argument based on its acquisition of the ’912 patent is also unpersuasive. The evidence that Patent Owner cites in support of that argument shows only that The Mosaic Company filed and subsequently dismissed a Canadian patent infringement suit against Patent Owner. See Exs. 2025, 2026.8 Patent Owner does not cite to the agreement by which ownership of the ’912 patent was transferred, nor does Patent Owner provide the details of that agreement. The evidence Patent Owner relies on does not support Patent Owner’s argument that its decision to acquire the ’912 patent constitutes objective evidence of nonobviousness of the ’912 patent. Finally, the commercial success argument Patent Owner presents in a” slip op. at 36

  Patent outcomesUS 7,171,912 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,171,912
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting, Inc.All claims unpatentable
  PTAB · Aug 17, 2016 · IPR2015-00708 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious under § 103 over the three instituted combinations of Hauwiller, the patent Background, and, for specified claims, Dickson or Shibusawa.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The differences between Dr. Johannsen’s and Dr. Heiniger’s articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Dr. Heiniger’s definition of the level of ordinary skill in the art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningOther

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute, we construed the phrase “calculating a map”4 in claims 1–3, 12, 14, 20–22, and 28 to mean “performing calculations to produce a map.” Dec. to Inst. 6–7. With respect to the phrase “maximum possible crop yield” in claims 1, 14, and 20, we declined to adopt Petitioner’s proposed meaning of that term as “yield goal” and instead applied the ordinary and customary meaning of the claim language. Id. at 7–8. We further determined that no other claim term required express construction. Id. at 8. Following institution, neither party challenged those constructions or proposed other terms for construction. On the record now before us, we do not discern reason to deviate from the constructions set forth in the Decision to Institute.” slip op. at 5

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

    “a “conventional method” that is used for calculating nitrogen needs for a field. Ex. 1001, 1:39–40. Hauwiller’s system is open to a variety of recommendation equations, as Patent Owner’s declarant agrees. See Ex. 1005, 8:36–48, 9:18–21, 9:34–38, 13:30–35, 13:39–45; Ex. 1020, 8:11–16. This openness supports the obviousness of employing within Hauwiller’s system a conventional equation (or certain aspects of a conventional equation) such as the one set forth in the Background of the ’620 patent. Furthermore, while the conventional equation includes several variables, a basic teaching of the equation is that in calculating the fertilizer recommendation, the amount of nitrogen already present should be subtracted from the nitrogen needed to realize the yield goal. See Ex. 1001, 1:39–50. Dr. Johannsen’s testimony that “subtraction of existing nutrients from the nutrient amount was a conventional thing to do particularly because it helps reduce leaching due to over fertilization” is consistent with this understanding of the conventional equation. See Ex. 1008 ¶ 71. We also recognize that the ’620 patent describes the equation as being a conventional approach for calculating nitrogen needs “for a field” rather than for a specific site within the field. Ex. 1001, 1:39–40. But Hauwiller recognizes that “[d]esired yield potential varies depending upon the soil characteristics by location” and, for that reason, describes the desirability of constructing “a yield goal map for creating an application map based upon site specific yield goals.” Ex. 1005, 9:32–41 (emphasis added). Thus, Hauwiller teaches the advantages and desirability of a site-specific approach. We agree with Petitioner that the “subtracting” step would have been accomplished by applying the teachings of the equation in the Background of the ’620 patent to the site-specific approach of Hauwiller. The evidence supports Petitioner’s contentions summarized above, and we agree with Petitioner that all of the features of claims 1 and 20 are disclosed in Hauwiller and the prior art described in the Background of the ’620 patent, and that there is adequate reason to combine the teachings of the prior art. We have considered Patent Owner’s arguments to the contrary, but we do not find them persuasive for the reasons discussed below.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We have considered Patent Owner’s and Dr. Heiniger’s opposing views. We observe that Dr. Heiniger does not explain adequately the basis of his opinion that, despite the teachings of the prior art, a person of ordinary skill in the art would have “thought that yield data from previous years would not work for that purpose” because a skilled artisan would have viewed yield data as “fundamentally different” from a measure of biomass. See Ex. 2033 ¶ 167. We also do not discern that either Patent Owner or Dr. Heiniger adequately considers that, in view of the teachings of the prior art, one of ordinary skill in the art would have known that “leaf area index” is a known measure of biomass. See Ex. 1001, 1:63–65. In that regard, they do not explain why a skilled artisan would not understand readily that leaf area index constitutes the type of field history data and previous crop information that Hauwiller contemplates as useful in developing a map for a given field. Accordingly, on the record before us, we conclude that Petition has shown where all the features of claims 2 and 21 are found in the prior art, and that there is articulated reasoning why a person of ordinary skill in the art would have combined the teachings of Hauwiller and the Background of the ’620 patent. Patent Owner’s and Dr. Heiniger’s general views to the contrary, in our view, do not account appropriately for how a skilled artisan would have understood the teachings of the prior art.” slip op. at 23

  Patent outcomesUS 6,889,620 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,889,620
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCRehearing denied
  PTAB · Jul 13, 2016 · IPR2014-01555 · APJ James T Moore · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving claims 1, 2, 7–12, 14–17, 19, 21–24, 31–42, and 44 unpatentable, and corrected the judgment to include claim 44.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A. Rehearing Requests A rehearing request for a final decision is governed by 37 CFR § 42.71 (d), which provides that a party dissatisfied with a decision must specifically identify all matters believed to have been misapprehended or overlooked, and the place where each matter was previously addressed.5 We therefore consider Patent Owner’s request for rehearing to determine whether we misapprehended or overlooked a matter, and whether it makes a difference to our determination in the Final Written Decision.” slip op. at 5

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

    “In our final written decision we observed that “‘intimately and entirely coated’ mean[s] exactly what it says. In other words, it means the embodiment shown in Figs. 1a through 1c of the ʼ558 patent drawings and associated discussion in the written description portion of the specification.” Paper 50, 23. In doing so, we relied principally on the intrinsic evidence of record in the specification. On rehearing, Patent Owner asserts that the claim interpretation used by the Board is not part of the record and was not presented by Petitioner. Reh’g Req. 3. We are not persuaded by this argument. First, the Patent Owner itself advocated in the Patent Owner’s response that Kinoshita did not contain oxidation catalyst species “intimately and entirely coated with an absorber.” Paper 29, 19–20. Second, the Board is not bound by the Petitioner and Patent Owner’s interpretation of the claim language, which may have inherent favoring of a particular interpretation for strategic reasons, as discussed in the final written decision. See Paper 50, 23. Patent Owner states that it has had no opportunity to address the claim construction and that it is fundamentally unfair and unreasonable that Patent Owner has not had a chance to address this claim construction. Reh’g Req. 2–3. We take such a statement seriously. However, we are unable to discern how the Board overlooked or misapprehended any fact or argument, let alone how the claim interpretation adversely affected the outcome of this proceeding for the Patent Owner.” slip op. at 8

  • BurdenDecided for petitioner

    “loading, Hoekstra has insufficient catalyst to form a continuous layer, and there is no evidence the method of Hoekstra results in all platinum being entirely covered. Id. at 11–12. As we have not interpreted claim 1 as requiring a continuous catalyst layer, we are unpersuaded by the first assertion. As to the second, we relied upon evidence from Hoekstra example 1, Dr. Crocker, and Dr. Farrauto. For example, Dr. Farrauto testified that barium oxide completely coated the platinum group metal. Ex. 1003A. More specifically, Dr. Farrauto testified: 39. Hoekstra also discloses that prior to calcining the platinum group metal-impregnated carrier material, the composite is further impregnated with a compound of an alkaline earth metal in solution with a reducing agent. Ex. 1005 at col. 3, ln. 51-55. The reducing agent prevents the leaching of the platinum group metal component from the carrier into the alkaline earth metal solution. See Ex. 1005 at col. 1, ln. 37-59; col. 3, ln. 55-59; col. 5, ln. 4-8. 40. Because the platinum group metal component does not leach from the carrier, the alkaline earth metal compound will be coated over the platinum group metal component. Ex. 1003, 11–12. We also specifically noted that Hoekstra describes this prevention of leaching. Hoekstra explicitly states in describing the result of process steps described in Example 1 that “[t]his example demonstrates that the inclusion of a reducing agent, e.g., hydrazine hydrate, obviates leaching of the platinum group metal component from the carrier material during the second impregnation step [i.e., adding a barium oxide layer].” Ex. 1005, col. 5:4–8 (italics added).” slip op. at 10

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

    “evidence that claims 1, 7, 8, 12, 14, 21, 22, 32–35, and 38–42 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b) and claims 9–11 and 23 of the ʼ558 patent are unpatentable under 35 U.S.C. § 103(a). (Ground 2, Hoekstra). Paper 50, 78. We also determined that Petitioner established by a preponderance of the evidence that claims 33–40, 42, and 44 of the ʼ558 patent are anticipated by Kinoshita. (Ground 3, Kinoshita). Id. at 79. We additionally determined that Petitioner established by a preponderance of the evidence that claims 1, 2, 7–10, 14, 15, 17, 19, 24, 31, 33–37, 39, and 40 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b). (Ground 4, Inui). Id. We finally determined that Petitioner established that claims 1, 7, 8, 14–17, 19, and 31 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b) and that claims 21–23 of the ʼ558 patent are unpatentable under 35 U.S.C. § 103(a). (Ground 5, Stiles). Id.” slip op. at 4

  Claim construction§ 102 anticipation
  Patents in suitUS 5,451,558
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01555 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–2, 7–12, 14–17, 19, 21–24, and 31–42 are unpatentable based on the grounds sustained in the final written decision.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDecided for petitioner

    “Unlike Corning, the inherency theory matured during cross- examination of Patent Owner’s witness, Dr. Crocker. Ultimately, in our view, Dr. Crocker agreed that no platinum migrated to the alkali metal layer—based on an analysis with a correct “0.018” number. The Reply evidence, consistent with Dr. Crocker’s testimony, agreed that a correct number is “0.018” and on that basis, Petitioner’s witness agreed with Dr. Crocker. Further, unlike Corning, a whole new theory of anticipation did not arise in the first instance with the Reply; rather, it was essentially developed during cross-examination of Patent Owner’s witness.” slip op. at 74

  • ExcludeMotion to exclude, deniedMixed

    “The fact that evidence is filed with a reply does not mean the evidence is per se inadmissible. The exhibits relate to the issue of whether there is a typographical error in Example 1 of Hoekstra, i.e., is “2.018” a typographical error which should be “0.018.” In presenting the Petition, Petitioner’s witness Dr. Farrauto explained why he felt Hoekstra’s Example 1 anticipates claim 1 of the ʼ558 patent. Dr. Crocker, Patent Owner’s witness, disagreed with Dr. Farrauto’s explanation.” slip op. at 73

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “While the matter of assigning the weight to be given to the testimony of the two witnesses in this case is a close call, based on the direct and crossexamination testimony with respect to Kinoshita and its Example 3, and to the extent that there is a conflict between Dr. Crocker’s testimony and that of Dr. Farrauto, we credit the testimony of Dr. Crocker over that of Dr. Farrauto. However, even if one were to find the testimony of Dr. Crocker and Dr. Farrauto evenly balanced, then a preponderance of the evidence on inherency does not emerge. Under those circumstances, the party with the burden of proof cannot be said to have proved its case. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir. 1988) (where a party is under a burden to establish a fact by a preponderance of the evidence and where the evidence is so evenly balanced that no preponderance emerges, the party having the burden of persuasion necessarily loses). We are also concerned that Example 3 does not describe enough detail to indicate clearly whether there is enough potassium to cover the platinumimpregnated alumina. Ex. 2002 ¶ 32.” slip op. at 51

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

    “We hold that “intimately and entirely coated” mean exactly what it says. In other words, it means the embodiment shown in Figs. 1a through 1c of the ʼ558 patent drawings and associated discussion in the written description portion of the specification. We appreciate why both parties would prefer a broader construction, i.e., “intimately and entirely coated” means (1) coated with a monolayer where catalytic action would occur through diffusion (our construction) as well as (2) direct contact with the combustion gas without diffusion. Petitioner would favor a broader construction because Takeshima anticipates a direct contact embodiment. Patent Owner would favor a broader construction because more “material” might infringe claim 1. Takeshima Figs. 5(A) and 5(B) describe an embodiment where the exhaust gas directly contacts the catalyst. A direct contact embodiment does not fall within the scope of claim 1 of the ʼ558 patent. Accordingly, Takeshima does not describe the “intimately and entirely coated” limitation of claim 1.” slip op. at 23

  Patent outcomesUS 5,451,558 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,451,558
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCSome claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01557 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1, 5, 6, 9, 10, 12, 16, and 39 are unpatentable under § 103; claims 41, 45, 46, and 49 were not shown unpatentable because the combinations did not disclose an indicator reporting the …

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter” slip op. at 24

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “1. Claim 1 Claim 1 is not as narrow as Patent Owner would have us believe. It covers reducing “particulate matter” (i.e., “small particles of solid or liquid suspended in a gas”). These are precisely the “particulate matters” described by MECA. See Ex. 1008A, Figure 6, renumbered page 15—discussed in more detail above.” slip op. at 24

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

    “Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter reduced particulate matter to very low levels. Ex. 1008A, renumbered page 15, Figure 6. Patent Owner is using a known filter for its intended purpose to obtain an expected result—reduction in particular matter.” slip op. at 24

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

    “3. Conclusion We hold that Petitioner has established by a preponderance of the evidence that the subject matter of claim 1 would have been obvious to a person having ordinary skill in the art. Patent Owner has not argued the separate patentability of dependent claims 5, 9, and 39. Accordingly, those claims fall with claim 1. We hold that Petitioner has not established by a preponderance of the evidence that the subject matter of claim 41 would have been obvious.” slip op. at 30

  Patent outcomesUS 7,951,346 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,951,346

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.