• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. 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 11

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

    “C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. 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. Matal, 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)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Aurobindo Pharma USA, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9

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

    “Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11

  • BurdenNot shown unpatentable

    “Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19

  Patent outcomesUS 6,866,866 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,866,866
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01628 · APJ Stacy B Margolies · IPR · Final written decision

  Petitioners did not show claim 11 unpatentable under either § 103 ground because they did not establish a persuasive motivation to combine Usui and Gong.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2010 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–20; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” be explicitly construed. PO Br. 6–16; PO Resp. 8–9. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Gong. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition and its fine-grained protection domains like that described in Gong. See Ex. 2010 ¶¶ 210, 211, 223, 224. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 21– 26. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand “is exacerbated by the fact that a mobile terminal is a ‘resource scarce’ environment that is limited in size, memory, and power”).” slip op. at 30

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01622 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Petitioners did not establish a persuasive motivation to combine Usui and Oaks, including for claim 4’s ground adding Spencer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2009 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–22; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” and “identification of requesting application domain software” be explicitly construed. PO Br. 6–17; PO Resp. 7–11. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Oaks. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “explanation for why, simply because the two references are in the same field of endeavor, a skilled artisan would have had reason to make the proposed combination. See Ex. 1301 ¶ 173. Nor do Petitioners or Dr. Malek elucidate what design incentives would have prompted a skilled artisan to use the finegrained security control of Oaks with the mobile phone platform of Usui, given the design constraints of less memory and resources of a mobile phone. See, e.g., Ex. 1010, 5; Ex. 2014, 14, 25; Ex. 2015, 8. Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition like that described in Oaks. See Ex. 2009 ¶¶ 90 (security manager does not exist in J2ME), 185. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 17. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand “is exacerbated by the fact that a mobile terminal is a ‘resource scarce’ environment that is limited in size, memory, and power”).” slip op. at 27

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01605 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Petitioners failed to establish a persuasive motivation to combine Usui and Gong, including for claim 4’s ground with Spencer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2003 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–22; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” and “identification of requesting application domain software” be explicitly construed. PO Br. 6–17; PO Resp. 7–11. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Gong. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “general field of endeavor and, as recognized by the Supreme Court, known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.” Pet. 29–30 (citing Ex. 1201 ¶ 175) (emphasis omitted). Petitioners’ declarant, Dr. Malek, repeats this statement from the Petition but fails to provide any additional explanation for why, simply because the two references are in the same field of endeavor, a skilled artisan would have had reason to make the proposed combination. See Ex. 1201 ¶ 175. Nor do Petitioners or Dr. Malek elucidate what design incentives would have prompted a skilled artisan to use the fine-grained security control of Gong with the mobile phone platform of Usui, given the design constraints of less memory and resources of a mobile phone. See, e.g., Ex. 1010, 5; Ex. 2014, 14, 25; Ex. 2015, 8. Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition and its fine-grained protection domains like that described in Gong. See Ex. 2003 ¶¶ 187, 188, 200, 201. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 17– 18. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand” slip op. at 29

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01359 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–3 and 5–7 were not shown unpatentable because Petitioner failed to establish that Hiroi taught the claimed voice delay for synchronizing voice and text.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’426 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 36–49; Ex. 2098 ¶¶ 123–41. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’426 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization 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 petitioner constructionOther

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user,” recited in claims 1 and 5, as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We agree with and adopt Petitioner’s contentions as to how the combination of Engelke ’482 and Engelke ’405 teaches the identified limitations of claim 1. See Pet. 21–30. We also determine that a person of ordinary skill in the art at the time of the invention would have combined Engelke ’482 and Engelke ’405 in the manner asserted. In particular, we agree with Petitioner that combining the disclosure in Engelke ’405 of sending both voice and text to an assisted user who is hard of hearing with the re-voicing relay of Engelke ’482, which only provides text to an assisted user, would have been the application of a known technique to improve similar devices in the same way, and a combination of prior art elements according to known methods to yield predictable results. See Pet. 37–42, 44–45 (citing KSR, 550 U.S. at 416; Ex. 1012 ¶¶ 62–69).” slip op. at 13

  Patent outcomesUS 6,493,426 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,493,426
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 9, 2016 · IPR2015-01358 · APJ William V Saindon · IPR · Final written decision

  Claim 1 was not shown unpatentable because Petitioner did not establish a sufficient rationale to combine Engelke ’482 and Engelke ’405.

  RulingsFinal written decision

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

    “reasonable interpretation in light of the specification of the patent. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable interpretation standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire” slip op. at 5

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

    “We understand Patent Owner’s argument to be that a person of ordinary skill in the art would not have considered it obvious to follow the teachings of Engelke ’405 in this particular situation, because one of the main benefits taught by Engelke ’405 is to provide voice in addition to text so that non-deaf users can benefit more from voice-to-text services. Here, however, an assisted user does not need the hearing user’s voice to be provided because the assisted user already can hear the hearing user, as they are in close physical proximity (in order to use the personal interpreter). Thus, although a person of ordinary skill in the art might consider Engelke ’405 because it teaches to improve devices for the deaf such as Engelke ’482, we are not persuaded that a person of ordinary skill in the art would have considered it obvious to apply it in this situation. The reason is that the hearing user’s voice would already be present, such that providing that voice again, i.e., when applying the teaching of Engelke ’405, appears to be unnecessary and, as Patent Owner’s declarant suggests, potentially disruptive. Ex. 2098 ¶ 58. Engelke ’405 would not provide the solution to the problem it was intended to solve—the voice is there already. Petitioner offers insufficient reason or evidence explaining why a person of ordinary skill in the art would have considered it obvious to proceed to combine the references nonetheless, in view of this situation.” slip op. at 10

  • Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable

    “design need or market pressure that indicates it would have been obvious to try to modify the personal interpreter of Engelke ’482 to have simultaneous voice and text as shown in Engelke ’405. An obvious to try rationale generally requires some identification of “a design need or market pressure to solve a problem” before looking at the “finite number of identified, predictable solutions.” See KSR, 550 U.S. at 421. A key of the obvious to try rationale is that the design need or market pressure is what drives a person of ordinary skill in the art to consider the identified, predictable solutions. In other words, the need is addressed by the solutions. Here, the need identified by Petitioner is to upgrade devices previously intended for the deaf to be used for the hard of hearing. See Pet. 38. We agree that this is an identified need in the art. The solutions identified by Petitioner, however, are text alone, VCO, and text-enhanced telephony. Id. at 38–39. Notably, only one of these solutions, text-enhanced telephony, actually addresses the identified need of upgrading devices to include features specifically for hard of hearing users. Text only and VCO are for deaf users. Ex. 1003, 1:25–40 (describing text-only devices for the deaf); Ex. 1012 ¶ 64 (Mr. Occhiogrosso testifying that VCO “allowed a deaf but speaking person to . . . respond directly to the hearing user in voice”). The problem with Petitioner’s rationale is that it is based upon the identification of a finite set of identified, predictable solutions to a need where, in fact, two out of the three so-called solutions in the set are not actually solutions at all, because they do not address the need. In this way, Petitioner’s articulated rationale, as a whole, is internally inconsistent and, for that reason, unpersuasive.” slip op. at 13

  Patent outcomesUS 7,006,604 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,006,604
• Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.

  RulingsFinal written decision

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

    “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). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23

  Patent outcomesUS 8,452,646 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,452,646

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.