• Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Some claims unpatentable
  PTAB · Aug 26, 2025 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–17, 20, 21, 24, 26, and 29–31 are unpatentable; claims 25 and 32–34 were not shown unpatentable, and the motion to exclude was dismissed as moot.

  RulingsFinal written decision

  • RemandOther

    “review of claims 1–17, 20, 21, 24–26, and 29–34 of the ’682 patent. Paper 2 (“Pet.”), 1, 3. Patent Owner, Hangzhou DAC Biotech Co., Ltd., filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We initially determined that the information presented in the Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17. Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel (“DRP”). Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Delegated Review Panel vacated our decision and remanded the case to this panel with a revised claim construction for claim 1. Paper 23 (“DRP Dec.”). On August 30, 2024, we instituted an inter partes review after remand from the Director. Paper 25 (“Inst. Dec.”). Patent Owner subsequently filed a Patent Owner Response (Paper 31, “Resp.”), Petitioner filed a Reply (Paper 36, “Reply”), Patent Owner filed a Sur-reply (Paper 44, “Sur-reply”), and Petitioner filed a Sur-sur-reply (Paper 48, “Sur-sur-reply”).” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “I. Patent Owner’s Motion to Exclude Evidence Patent Owner moves to exclude Exhibits 1089 and 1090. Paper 50. As we did not rely on either of Exhibits 1089 or 1090 in deciding this matter, Patent Owner’s motion is dismissed as moot.” slip op. at 96

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

    “For these reasons, Patent Owner’s arguments and cited evidence also” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “function as R2, and the ethyl group may function as R4, which can be a linear alkyl having 1–6 carbon atoms. We note that claim 3 permits R5 and R6 to be absent. For these reasons, the arguments presented in the Petition demonstrate that claim 3 would have been obvious over Singh’s Compound 3 when modified in view of Harris.” slip op. at 73

  Patent outcomesUS 10,131,682 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,131,682
• Life Spine, Inc. v. Globus Medical, Inc.Some claims unpatentable
  PTAB · Mar 20, 2024 · IPR2022-01434 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–9 and 15 are unpatentable over Chung and Olmos-based obviousness grounds; claims 10–14 were not shown unpatentable because the asserted references did not teach the claimed complementary relationship.

  RulingsFinal written decision

  • Expert testimonyOther

    “improperly incorporates-by-reference 12 pages of expert testimony via a single sentence.” PO Sur-reply 16 n.2 (citing Pet. Reply 17, which in turn cites Ex. 1026 (Hatch Decl.) ¶¶ 49–66). We find that many of the paragraphs within the cited range (i.e., Hatch Declaration paragraphs 49–66) appear to have a tenuous connection to the proposition for which Petitioner cites these paragraphs. See Pet. Reply 17. That said, we find that paragraphs 53–55 directly relate to Petitioner’s proposition in the Reply, i.e., that “Petitioner’s experts explain why a [person of ordinary skill in the art] would rely on a cross-sectional view over a perspective view for making the determination in question, because only the cross-sections provide the needed side view directly orthogonal to the positions of the yellow expansion portion and the end of the dovetail.” Id. Accordingly, we find that paragraphs 53–55—the only paragraphs we cite from Petitioner’s range in reaching our conclusion—are not improperly incorporated by reference into Petitioner’s Reply.” slip op. at 66

  • Strike new argumentNew argument consideredDenied

    “provide Petitioner an opportunity to respond under the new construction, and decline to strike Petitioner’s relevant argument and evidence. Cf. Axonics, 75 F.4th at 1383 (“[W]hen the Board adopts a new claim construction following institution, an IPR petitioner must have adequate notice and an opportunity to respond under the new construction.”). Like in Axonics, in its new arguments on Reply, Petitioner here relies on the same embodiment from the same prior art reference that it relies on in the Petition to support the same legal argument, i.e., that Olmos’s Figure 16 embodiment discloses the “complementary with one another” limitation of challenged claims 10– 14. See Axonics, 75 F.4th at 1384; see also Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020) (permitting petitioner to elaborate in reply on an unpatentability theory presented in the petition). Moreover, we permitted Patent Owner to file (and it indeed did file) a sur-reply brief and expert declaration that addressed Petitioner’s new obviousness theories. Accordingly, both parties had adequate notice of our preliminary construction and an opportunity to respond under that new construction. For these reasons, we deny Patent Owner’s motion to strike.” slip op. at 124

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “from the expansion portion. We agree with Patent Owner that the wording of this limitation as a whole requires that the “extension necessarily must protrude beyond a longitudinal end of the expansion portion.” Id. at 11. We also agree with Patent Owner that “[u]nder Petitioner’s tenuous theory, an extension in any direction except 90 or 180 degrees would satisfy the claim language since any such direction has a so-called ‘longitudinal component.’” Id. at 13. For these reasons, we disagree with Petitioner’s argument that the purported “longitudinal component” of Chung’s extension satisfies limitation 1[h].” slip op. at 55

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “would have been motivated to add an extension to the Figure 16 embodiment because “an integrally-formed extension advantageously requires fewer parts, which facilitates both manufacturing and use.” Pet. 118. We agree with Patent Owner that this argument is unavailing. PO Resp. 50. Petitioner’s combination entails adding an extension (from Figure 8) to an embodiment lacking one (Figure 16). We agree with Patent Owner that adding a new component (whether separately or integrally) can in some instances complicate manufacturing/assembly and increase costs. See id. (citing Ex. 2013 (Culbert Decl.) ¶ 115). Petitioner has not sufficiently demonstrated that the proposed combination in this instance would reduce complexity or facilitate the manufacturing process. Accordingly, we do not rely on this argument offered by Petitioner.” slip op. at 106

  Patent outcomesUS 8,845,731 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,845,731
• Infineon Technologies AG v. Amatech Group LimitedSome claims unpatentable
  PTAB · Dec 1, 2023 · IPR2022-00951 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 4–6, and 8–10 are unpatentable as obvious; claims 3 and 11 were not shown unpatentable, and claim 7 was not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8. In addition, we note that we agree with Patent Owner’s statement that the distinction between the parties’ proposals is not material to any dispute before us and we find that our determinations would be the same under either definition of the person of ordinary skill in the art.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that Dr. van der Weide’s cited testimony is of a nature that should lead us to give his testimony no weight. We note that Patent Owner did not move to strike or exclude Dr. van der Weide’s testimony. When considering credibility and weight of evidence below, we consider Dr. van der Weide’s testimony as a whole as well as all other evidence of record and accord it the appropriate weight.” slip op. at 7

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

    “provide an express construction of the full breadth of a claim term. “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). As such, we proceed in line with Federal Circuit case law, which “prescribes—deciding only the issues necessary to resolve the dispute before it.” Nichia Corp. v. DSS, Inc., No. 2022-1704, 2023 WL 7211097, at *3 (Fed. Cir. Nov. 2, 2023) (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). The Federal Circuit has long recognized that “[c]laim construction is a matter of resolution of disputed meanings and technical scope” and that claim construction may be required in an obviousness context “when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution in order to determine obviousness.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). In order to determine whether Petitioner’s obviousness grounds meet their required burden of proof, we need not expressly state the full scope of this claim term. Thus, we are within our authority to proffer a construction that determines the scope of a claim term in a manner sufficient to determine whether the asserted art teaches the claim. In other words, there may be other ways to meet the disputed limitation, but for the purposes of our Decision, it is proper to expressly determine a claim term’s scope only as much as is required to resolve the disputed issues before us.” slip op. at 17

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

    “the invention(s), but rather as examples of some of the embodiments.” Id. at 25:65–26:1; see also id. at 6:18–20 (embodiments “should be construed as illustrative rather than limiting”), 5:22–24 (“non-limiting example”). The Federal Circuit has noted that “[e]mbodiments in the specification—even if there is only one embodiment—cannot limit the scope of the claims absent the patentee’s ‘words or expressions of manifest exclusion or restriction.’” Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (citing Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014)). After reviewing the complete record, we see no such manifest exclusion or restriction in the ’240 patent specification. We decline Patent Owner’s request to limit the claims to the described single-frequency embodiments. See Phillips, 415 F.3d at 1323. We need not provide further express construction of this claim language for purposes of this Decision.” slip op. at 23

  Patent outcomesUS 9,165,240 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,165,240
• JSR Corporation / JSR Life Sciences, LLC v. Cytiva Bioprocess R&D ABSome claims unpatentable
  PTAB · May 18, 2023 · IPR2022-00044 · APJ Ulrike W Jenks · IPR · Final written decision

  Claims 1–3, 5–7, 10–16, 18–20, and 23–30 are unpatentable as obvious; claims 4 and 17 were not shown unpatentable because the art did not establish expected Fab binding.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner asserts that a person of ordinary skill in the art would have had (1) at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, process chemistry, protein chemistry, chemical engineering, molecular and structural biology, biochemical engineering, or similar disciplines; (2) several years of post-graduate training or related experience (including industry experience) in one or more of these areas; and (3) an understanding of the various factors involved in purifying proteins using chromatography.[] Such a person would have had multiple years of experience with affinity ligand design and protein purification. Pet. 9–10 (citing Ex. 1002 ¶¶ 13–14). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. See generally PO Resp. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here.” slip op. at 12

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

    “Petitioner contends that based on Patent Owner’s implicit construction in the district court litigation “that the term ‘the ligand comprising at least two polypeptides’ refers to a multimeric ligand (such as a tetramer) comprised of multiple polypeptides, each of which is a monomer.” Pet. 15 (citing Ex. 1020 ¶¶ 41, 50, 58, 62, 74, 87).” slip op. at 13

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

    “knowledge that any one of the five SPA IgG binding domains are known to bind IgG and can function as a ligand for the purification of antibodies. Linhult and Abrahmsén both expressly suggest that the glycine codon at position 29 can be mutated for an alanine codon in any one of the SPA IgG binding domains E, D, A, B, or C. Ex. 1004, 2; Ex. 1005, 2:32–37. Here, the SPA IgG binding domains comprise a short list of 5 members: E, D, A, B, or C. Of these 5 members, the glycine at position 29 in domain B has already been mutated to an alanine to create a domain Z which has been shown to retain IgG binding activity. Ex. 1004, 6 (Fig. 3). Figure 1A of Linhult is reproduced below. Linhult’s Figure 1A, reproduced above, shows the amino acid alignments of the Z, Z(F30A) and the five homologous domains (E, D, A, B, and C). The three boxes show the α-helices. Ex. 1004, 2; Ex. 1005, Fig. 2. Here, Linhult and Abrahmsén show that the IgG binding domains of SPA – E, D, A, B, and C share many structural similarities. See Ex. 1004, 2 (Fig. 1(a) (reproduced above)); Ex. 1005, 3:25–35. As discussed in our Institution Decision (Dec. 30–31), there are a finite number—five (5)—SPA IgG binding domains and each possesses the dipeptide sequence Asp-Gly known to a be a target for alkaline protein degradation. Therefore, the solution of mutating the glycine at position 29 for an alanine to remove the alkaline sensitive sequence is not a product of innovation, but of ordinary skill and common sense. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364-65 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421). It is well established that [s]tructural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties. In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995).” slip op. at 37

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Neither claim 1 nor claim 14 recite a need to bind the Fab region of an antibody or that the target molecule is Fab. All that is required by these claims is that they adsorb a target molecule and that you can elute the target molecule from the matrix. The target molecule, therefore, can reasonably encompass IgG. Petitioner’s articulated rationale is that there was an expectation that the composition binds antibodies, including monoclonal antibodies, and therefore, would be useful in a process of for isolating antibodies. Petitioner contends that: A POSA would have also reasonably expected such a combination to achieve a process for isolating one or more target compounds using the recited affinity chromatography matrix given the well-known fact that each individual SPA domain, including the C domain, has affinity for antibodies (Ex. 1004, [1]) as well as Abrahmsén’s confirmation that a G29A mutation on SPA “would not interfere with folding [of SPA] or binding to [antibodies]” (Ex. 1005, 5:13-16). (Ex. 1002 ¶131.) Pet. 25; Reply 8 (“‘A POSA would not have been motivated only by Fab-binding ability, as even Dr. Bracewell agreed that ‘a POSA would have understood that it was desirable to purify monoclonal antibodies for therapeutic use in 2006.’(Ex. 1057, 75:17-76:4, 113:23-114:11, 157:24- 158:9; Ex. 1061 ¶29)”). The law does not require that the teachings of the reference be combined for the reason or advantage contemplated by the inventor, as long as some suggestion to combine the elements is provided by the prior art as a whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976); see In re Kemps, 97 F.3d 1427, 1430” slip op. at 44

  Patent outcomesUS 10,343,142 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,343,142
• JSR Corporation / JSR Life Sciences, LLC v. Cytiva Bioprocess R&D ABSome claims unpatentable
  PTAB · May 18, 2023 · IPR2022-00041 · APJ Ulrike W Jenks · IPR · Final written decision

  Claims 1–3, 5–7, 10–16, 18–20, and 23–30 are unpatentable as obvious; claims 4 and 17 were not shown unpatentable because the art did not establish expected Fab binding.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art would have had (1) at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, process chemistry, protein chemistry, chemical engineering, molecular and structural biology, biochemical engineering, or similar disciplines; (2) several years of post-graduate training or related experience (including industry experience) in one or more of these areas; and (3) an understanding of the various factors involved in purifying proteins using chromatography.[] Such a person would have had multiple years of experience with affinity ligand design and protein purification. Pet. 9–10 (citing Ex. 1002 ¶¶ 13–14). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. See generally PO Resp. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here.” slip op. at 13

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

    “According to the Specification, “the present invention . . . relates to a multimeric chromatography ligand (also denoted a ‘multimer’) comprised of at least two Domain C units, or a functional fragments or variants thereof.” Ex. 1001, 7:27–30. The Specification additionally recites that a multimer containing only domain C units can, however, include linkers. Id. 7:39–41. In addition, the Specification describes that “the multimer comprises one or more additional units, which are different from Domain C.” Id. 7: 44–45. Based on these disclosures in the Specification, a multimer is composed of at least two or more monomers. Because Petitioner’s construction is consistent with the ’142 patent’s express construction of the term, and because Patent Owner agrees with Petitioner’s construction, we apply it here.” slip op. at 14

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

    “knowledge that any one of the five SPA IgG binding domains are known to bind IgG and can function as a ligand for the purification of antibodies. Linhult and Abrahmsén both expressly suggest that the glycine codon at position 29 can be mutated for an alanine codon in any one of the SPA IgG binding domains E, D, A, B, or C. Ex. 1004, 2; Ex. 1005, 2:32–37. Here, the SPA IgG binding domains comprise a short list of 5 members: E, D, A, B, or C. Of these 5 members, the glycine at position 29 in domain B has already been mutated to an alanine to create a domain Z which has been shown to retain IgG binding activity. Ex. 1004, 6 (Fig. 3). Figure 1A of Linhult is reproduced below. Linhult’s Figure 1A, reproduced above, shows the amino acid alignments of the Z, Z(F30A) and the five homologous domains (E, D, A, B, and C). The three boxes show the α-helices. Ex. 1004, 2; Ex. 1005, Fig. 2. Here, Linhult and Abrahmsén show that the IgG binding domains of SPA – E, D, A, B, and C share many structural similarities. See Ex. 1004, 2 (Fig. 1(a) (reproduced above)); Ex. 1005, 3:25–35. As discussed in our Institution Decision (Dec. 30–31), there are a finite number—five (5)—SPA IgG binding domains and each possesses the dipeptide sequence Asp-Gly known to a be a target for alkaline protein degradation. Therefore, the solution of mutating the glycine at position 29 for an alanine to remove the alkaline sensitive sequence is not a product of innovation, but of ordinary skill and common sense. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364-65 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421). It is well established that” slip op. at 37

  • Obviousness (§103) › KSR rationalesUnpatentable

    “Here, the teachings of Linhult, Abrahmsén, and Hober suggest mutating the glycine at position 29 for an alanine in any one of the IgG binding domains of E, D, A, B, or C of SPA in order to avoid protein degradation. Ex. 1004, 2; Ex. 1005, 5:4–9. We, therefore, agree with Petitioner that the art expressly suggests that the glycine codon can be mutated for an alanine codon in any one of the SPA IgG binding domains E, D, A, B, or C. Pet. 23 (citing Ex. 1002 ¶¶ 99–111). Attaching any one of SPA mutated IgG binding domains E D A B or C to a matrix using “known ligand-construction methods to yield a predictable result[] (e.g., the claimed affinity chromatography matrix)” would have been obvious. Pet. 25 (citing Ex. 1002 ¶ 130). As the Federal Circuit has explained, “[w]here a skilled artisan merely pursues ‘known options’ from ‘a finite number of identified, predictable solutions,’ the resulting invention is obvious under Section 103.” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421). Accordingly, we agree with Petitioner that the combination of Linhult Abrahmsén, and Hober expressly suggests mutating the glycine codon for an alanine codon in any one of the SPA IgG binding domains E, D, A, B, or C. Pet. 23 (citing Ex. 1002 ¶¶ 99–111). We also agree that the cited art teaches using these mutant SPA domains in column chromatography for the isolation of antibodies.” slip op. at 36

  Patent outcomesUS 10,343,142 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,343,142
• JSR Corporation / JSR Life Sciences, LLC v. Cytiva Bioprocess R&D ABSome claims unpatentable
  PTAB · May 18, 2023 · IPR2022-00045 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–10, 12–14, 16–28, 30–32, and 34–37 are unpatentable as obvious; claims 11 and 29 were not shown unpatentable because the art did not establish expected Fab binding.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art would have had (1) at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, process chemistry, protein chemistry, chemical engineering, molecular and structural biology, biochemical engineering, or similar disciplines; (2) several years of post-graduate training or related experience (including industry experience) in one or more of these areas; and (3) an understanding of the various factors involved in purifying proteins using chromatography.[] Such a person would have had multiple years of experience with affinity ligand design and protein purification. Pet. 9–10 (citing Ex. 1002 ¶¶ 13–14). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. See generally PO Resp. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here. C.” slip op. at 12

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

    “support, the ligand capable of binding the one or more target compound(s) and comprising at least two polypeptides.” Ex. 1001, 15:46–49; 17:28–31. Petitioner argues that “‘the ligand comprising at least two polypeptides’ refers to a multimeric ligand (such as a tetramer) comprised of multiple polypeptides, each of which is a monomer.” Pet. 19–20 (citing Ex. 1002 ¶¶ 43–45). Petitioner argues that this construction is consistent with Patent Owner’s implicit construction in the Delaware litigation between the parties. Id. Patent Owner does not challenge Petitioner’s claim construction. See generally PO Resp. According to the Specification, “the present invention . . . relates to a multimeric chromatography ligand (also denoted a ‘multimer’) comprised of at least two domain C units, or a functional fragments [sic] or variants thereof.” Ex. 1001, 7:35–38. The Specification additionally recites that a multimer containing only domain C units can, however, include linkers. Id. at 7:39–41. In addition, the Specification describes that “the multimer comprises one or more additional units, which are different from Domain C.” Id. at 7:52–53. Based on these disclosures in the Specification, a multimer is composed of at least two or more monomers. Because Petitioner’s construction is consistent with the ’007 patent’s express construction of the term, we apply that construction for the purposes of this decision.” slip op. at 13

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

    “Petitioner’s articulated obviousness ground is premised on the knowledge that any one of the five SPA IgG binding domains are known to bind IgG and can function as a ligand for the purification of antibodies. Linhult and Abrahmsén both expressly suggest that the glycine codon at position 29 can be mutated for an alanine codon in any one of the SPA IgG binding domains E, D, A, B, or C. Ex. 1004, 2; Ex. 1005, 2:32–37. Here, the SPA IgG binding domains comprise a short list of 5 members: E, D, A, B, or C. Of these 5 members, the glycine at position 29 in domain B has already been mutated to an alanine to create a domain Z which has been shown to retain IgG binding activity. Ex. 1004, 6 (Fig. 3). Figure 1A of Linhult is reproduced below. Linhult’s Figure 1A, reproduced above, shows the amino acid alignments of the Z, Z(F30A) and the five homologous domains (E, D, A, B, and C). The three boxes show the α-helices. Ex. 1004, 2; Ex. 1005, Fig. 2. Here, Linhult and Abrahmsén show that the IgG binding domains of SPA – E, D, A, B, or C share many structural similarities. See Ex. 1004, 2 (Fig. 1(a) (reproduced above)); Ex. 1005, 3:25–35. As discussed in our Institution Decision (Dec. 30–31), there are a finite number – five (5) – SPA IgG binding domains and each possesses the dipeptide sequence Asp-Gly known to a be a target for alkaline protein degradation. Therefore, the solution of mutating the glycine at position 29 for an alanine to remove the alkaline sensitive sequence is not a product of innovation but of ordinary skill and common sense. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364-65 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421). It is well established that” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “(c) No Teaching Away We are also not persuaded by Patent Owner’s contention that the art teaches away from the G29A substitution because it interferes with Fab binding. See PO Resp. 39–42; Sur-reply 9; Ex. 2009 at 2; Ex. 2010 at 25; Ex. 2012 at 25–26; Ex. 2029 at 7. None of claims 1, 2, or 20 recite a need to bind the Fab region of an antibody or that the target molecule is Fab. All that is required by these claims is that they adsorb a target molecule and that you can elute the target molecule from the matrix. The target molecule, therefore, can reasonably encompass IgG.” slip op. at 44

  Patent outcomesUS 10,875,007 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,875,007
• JSR Corporation / JSR Life Sciences, LLC v. Cytiva Bioprocess R&D ABSome claims unpatentable
  PTAB · May 18, 2023 · IPR2022-00042 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–10, 12–14, 16–28, 30–32, and 34–37 are unpatentable as obvious; claims 11 and 29 were not shown unpatentable because Fab binding was not predictable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner asserts that a person of ordinary skill in the art would have had (1) at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, process chemistry, protein chemistry, chemical engineering, molecular and structural biology, biochemical engineering, or similar disciplines; (2) several years of post-graduate training or related experience (including industry experience) in one or more of these areas; and (3) an understanding of the various factors involved in purifying proteins using chromatography.[] Such a person would have had multiple years of experience with affinity ligand design and protein purification. Pet. 9–10 (citing Ex. 1002 ¶¶ 13–14). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. See generally PO Resp. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here. C.” slip op. at 12

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

    “According to the Specification, “the present invention . . . relates to a multimeric chromatography ligand (also denoted a ‘multimer’) comprised of at least two domain C units, or a functional fragments [sic] or variants thereof.” Ex. 1001, 7:35–38. The Specification additionally recites that a multimer containing only domain C units can, however, include linkers. Id. at 7:39–41. In addition, the Specification describes that “the multimer comprises one or more additional units, which are different from Domain C.” Id. at 7:52–53. Based on these disclosures in the Specification, a multimer is composed of at least two or more monomers. Because Petitioner’s construction is consistent with the ’007 patent’s express construction of the term, we apply that construction for the purposes of this decision. Having considered the parties’ positions and evidence of record, we determine that the express construction of any other claim term is unnecessary to resolve the disputed issues in this matter. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 14

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

    “Petitioner’s articulated obviousness ground is premised on the knowledge that any one of the five SPA IgG binding domains are known to bind IgG and can function as a ligand for the purification of antibodies. Linhult and Abrahmsén both expressly suggest that the glycine codon at position 29 can be mutated for an alanine codon in any one of the SPA IgG binding domains E, D, A, B, or C. Ex. 1004, 2; Ex. 1005, 2:32–37. Here, the SPA IgG binding domains comprise a short list of 5 members: E, D, A, B, or C. Of these 5 members, the glycine at position 29 in domain B has already been mutated to an alanine to create a domain Z which has been shown to retain IgG binding activity. Ex. 1004, 6 (Fig. 3). Figure 1A of Linhult is reproduced below. Linhult’s Figure 1A, reproduced above, shows the amino acid alignments of the Z, Z(F30A) and the five homologous domains (E, D, A, B, and C). The three boxes show the α-helices. Ex. 1004, 2; Ex. 1005, Fig. 2. Here, Linhult and Abrahmsén show that the IgG binding domains of SPA – E, D, A, B, or C share many structural similarities. See Ex. 1004, 2 (Fig. 1(a) (reproduced above)); Ex. 1005, 3:25–35. As discussed in our Institution Decision (Dec. 30–31), there are a finite number – five (5) – SPA IgG binding domains and each possesses the dipeptide sequence Asp-Gly known to a be a target for alkaline protein degradation. Therefore, the solution of mutating the glycine at position 29 for an alanine to remove the alkaline sensitive sequence is not a product of innovation but of ordinary skill and common sense. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364-65 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421). It is well established that [s]tructural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties. In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995).” slip op. at 38

  Patent outcomesUS 10,875,007 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,875,007
• PNC Bank N.A. v. United Services Automobile AssociationSome claims unpatentable
  PTAB · May 10, 2023 · IPR2022-00076 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1 and 8–20 are unpatentable as obvious; claims 2–7 were not shown unpatentable because the petitioner did not establish motivation to combine for their error-processing limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field” and “two years of prior experience with image capturing/scanning technology, involving transferring and processing of image data to and at a server.” Pet. 14 (citing Ex. 1002 ¶ 45). Petitioner further asserts that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Id. For purposes of the Institution Decision, we adopted Petitioner’s proposal (Inst. Dec. 16), and neither party alleges that a different level of ordinary skill should be applied in this proceeding (see PO Resp. 5; Pet. Reply). In this Decision, we again adopt the level of ordinary skill proposed by Petitioner. We are satisfied that it generally comports with the level of and the asserted prior art. Accord Inst. Dec. 15–16.” slip op. at 11

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

    “In the Petition, Petitioner states that it is unnecessary to construe any claim terms or phrases (Pet. 12–14), but for two phrases in claim 1, Petitioner specifically argues that the prior art teaches or suggests the phrase under each of two alternate meanings (id. at 34–35, 37). In the Institution Decision, we agreed with Petitioner’s primary understanding of these phrases and, as a result, did not reach the alternative contentions. Inst. Dec. 33 n.18, 38 n.21. At trial, Patent Owner states that claim construction is unnecessary to resolve the issues disputed in this proceeding. PO Resp. 6; Tr. 46:4–16. Petitioner agrees, but contends that Patent Owner’s arguments regarding dependent claim 3 are premised on a narrowing construction of one of its terms. Tr. 15:4–16:2. Patent Owner contends that the plain and ordinary meaning of the terms in that claim should apply. Id. at 46:12–16. We agree that it is not necessary to expressly construe any claim terms or phrases in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • BurdenNot shown unpatentable

    “motivated to add error processing to Garcia’s mobile phone so that it could address errors before transmitting the check image in order “to avoid wasting communications resources and adding delays.” Pet. 42. But, Petitioner does not support this rationale with a persuasive explanation or evidence. Indeed, we assume that Petitioner’s theory is that the error checking at the mobile device would have conserved bandwidth and reduced delay because it would have allowed the mobile device to identify some unsuitable images before they were sent to the payee bank; however, the Petition does not actually include an explanation to this effect. Rather, it simply states that an ordinary artisan would have known that mobile telephone networks (such as that used by Garcia) “are bandwidth and resource-constrained, and that communications over such networks takes time.” Id.; see also Ex. 1002 ¶ 115. However, all networks have bandwidth and resource constraints, and all communications take time, and neither the Petition nor Dr. Mowry explain why these considerations would have been relevant to an ordinary artisan implementing Garcia. Indeed, the Petition next asserts that “Byrne provides the requisite solution to this problem” (Pet. 42), but neither the Petition nor Dr. Mowry identify any problem. For example, Dr. Mowry does not testify that an ordinary artisan would have expected Garcia’s system to consume excessive bandwidth or incur for claim 2). In addition, Petitioner recognizes that the verification process is performed by the payee bank in Garcia, yet does not address the fact that its proposal would apparently shift a portion of the verification process to the mobile phone. See Pet. 40–44. Dr. Mowry’s trial testimony casts further doubt on Petitioner’s rationale for this claim. Dr. Mowry testifies that conserving bandwidth would “potentially” have been one of the goals of an ordinary artisan “depend[ing] on how precious their resource is.” Ex. 2020, 68:12–24. But Dr. Mowry “wouldn’t necessarily characterize [Garcia] as bandwidth intensive.” Id. at 76:13–23. In addition, he disagreed that “in the Garcia system, the motivation would have been to shift it to the client side for the verification,” noting simply that “[t]here are tradeoffs” associated with doing the verification processing on either the client or the server. Id. at 241:22– 242:13. Petitioner attempts to limit the impact of Dr. Mowry’s answers (Pet. Reply 16); however, the fact remains that Petitioner has the burden of proof, and it does not identify persuasive evidence to support its contention. Petitioner’s Reply asserts that these considerations were “particularly important in 2006, when 3G bandwidth was at a premium” (id. at 22 (citing Ex. 1029 ¶ 49)), but neither Petitioner nor Dr. Mowry provide analysis or evidence to support this conclusory assertion. Moreover, the Petition also fails to address whether the proposed combination would have, in fact, conserved communications resources or reduced delays. In Petitioner’s proposed combination, Byrne’s thin client application would be downloaded to Garcia’s mobile phone at each use (which would require communication resources and incur latency), but the Petition fails to address whether the net result of the proposed combination 148:1 (Dr. Mowry agreeing that the impact of downloading the thin client is not discussed in his report). Moreover, Garcia touts the “speed” of its process, stating that its “immediate processing . . . allows the immediate availability in the user’s account” (Ex. 1003, 7:18–8:3), which indicates that an ordinary artisan would not have perceived a problematic delay in Garcia’s system. Petitioner’s attempt to shift the burden to Patent Owner to determine whether or not its purported benefits would be realized (see Pet. Reply 17) is unavailing. In its Reply, Petitioner cites testimony from Dr. Mowry (see Ex. 1029 ¶ 37), but it simply compares the size of a compressed image with the size of a “large” application. This evidence does not outweigh the other evidence above, and it was submitted too late to remedy the Petition. See supra § II.A.; see also Trial Practice Guide 73 (explaining that a petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability”). Finally, on this record, we are also not persuaded by Petitioner’s” slip op. at 60

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “would have been motivated to implement Garcia’s application by downloading, onto the mobile device, a thin client application, as disclosed by Byrne. See Pet. 19–25. Byrne touts the benefits of downloading a thin client rather than storing an application on a user’s device (Ex. 1004 ¶¶ 45– 46; see also id. ¶¶ 47–48), and Dr. Mowry testifies that an ordinary artisan would have understood downloading a thin client to be a well-known way of distributing software in the relevant time period and suited for mobile devices (Ex. 1002 ¶¶ 64–65, 70). In addition, Dr. Mowry testifies that a thin client improves security and ease of software maintenance. Id. ¶ 65 (citing Ex. 1004 ¶¶ 46–47); see also Ex. 1033, 140:11–141:2 (Dr. Creusere agreeing that thin clients “dramatically simplif[y]” software maintenance), 143:13–20 (agreeing that security is important for financial data); Ex. 1005 ¶¶ 20–21 (evidence that the general background knowledge in the art identifies security as a concern for remote check deposit).14 In addition, we agree with Petitioner (see Pet. 21–22; Ex. 1002 ¶¶ 66, 72) that an ordinary artisan would have understood such an implementation to apply a known 14 Patent Owner’s argument that security and software maintenance would have instead weighed against the proposed combination (see, e.g., PO Sur-reply 9–10) is untimely because it was not advanced in the Response and is not fairly responsive to the Reply. See supra § II.A; Pet. Reply 15–16 (noting that the Response had not addressed these issues). Moreover, even if this argument had been properly raised, it would not be persuasive because Patent Owner does not identify persuasive evidence to support its position. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). (Garcia’s mobile phone) with predictable results. We are also persuaded that a person of ordinary skill in the art would have been motivated to implement Garcia’s application such that the application provides a user-interface and controls the image capture device, as disclosed by Byrne. See, e.g., Pet. 22–23. Garcia suggests that the application should perform these functions (see Ex. 1003, 5:1–6:10, 9:19– 10:18), and we credit Dr. Mowry’s testimony that an ordinary artisan would find this desirable (see Ex. 1002 ¶¶ 65, 67). Moreover, the references lend themselves to the combination because Garcia and Byrne both describe remotely depositing a check via the Internet using software on a user’s device that opens an interactive session, and both perform substantially similar steps. See Pet. 22–23; Ex. 1003, 9:21–10:3, 10:10–18, 11:7–15; Ex. 1004 ¶¶ 41, 48, 174–175, 177–178. Finally, Dr. Mowry testifies that the ordinary artisan would have had a reasonable expectation of success in implementing the combination, and he provides supporting analysis and evidence. Ex. 1002 ¶¶ 68–72; see also Ex. 1029 ¶¶ 38–39. We credit this testimony from Dr. Mowry because it draws reasonable inferences and is supported by the cited evidence.” slip op. at 25

  Patent outcomesUS 10,769,598 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,769,598
• Gen Digital Inc. v. Kajeet, Inc.Some claims unpatentable
  PTAB · Apr 13, 2023 · IPR2022-00001 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1, 5–15, 18–21, and 27–29 are unpatentable as obvious; claim 2 is not shown unpatentable. The revised motion to amend is denied for claims 31 and 35–45 and dismissed for claim 32.

  RulingsFinal written decision

  • BurdenMixed

    “of independent claim 1 is either taught or suggested by Putzolu. We are also persuaded that an ordinarily skilled artisan would have found it obvious, in view of Putzolu’s teachings, to arrive at the subject matter recited in claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Putzolu.” slip op. at 40

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “4. Putzolu and Bhat are Analogous Art Patent Owner contends that Putzolu and Bhat cannot be considered in” slip op. at 22

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “his analysis suffers from the same deficiencies as Patent Owner’s arguments and thus fails to sufficiently explain and support his conclusion on this point. See Ex. 2015 ¶¶ 32–40. Moreover, Mr. Sharma testifies that the term “communication device” is “broader” than the term “computing device” because a “communication device . . . might not do any computing,” and we find this to lack credibility. Id. ¶ 36; Ex. 1017, 34:9–35:12. This testimony is premised on Mr. Sharma’s assumption that a “computing” device must have “much more processing and intelligence on that device beyond just transmitting data” (Ex. 1007, 34:25–35:1), but this assumption is neither” slip op. at 16

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

    “4. Support in the Original Disclosure A motion to amend may not introduce new matter. 35 U.S.C.” slip op. at 68

  Patent outcomesUS 8,667,559 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,667,559
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentable
  PTAB · Feb 22, 2023 · IPR2021-01343 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1, 3–5, 7, 9, 10, 12, 14–16, and 18–20 are unpatentable as obvious over Baldwin; claims 6, 8, 11, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art at the time of the invention would have been a person with a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience in digital video signal processing or digital video streaming or had a master’s degree in electrical engineering, computer engineering, computer science, or a similar field with a specialization in digital video signal processing.” Pet. 15 (citing Ex. 1003 ¶¶ 37–39). Petitioner also states that a person of ordinary skill would have been able to, among other things, encode and decode digital video signals, packetize, multiplex, and demultiplex encoded digital video signals for transmission, and implement modulation and channel coding. Pet. 15–16 (citing Ex. 1003 ¶ 40). Patent Owner states that a person of ordinary skill would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 13 (citing Ex. 2014 ¶ 20). Patent Owner states that its definition of a person of ordinary skill is similar to Petitioner’s definition and that any differences are not material. PO Resp. 13. We determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field and two years of experience in digital video signal processing or digital video streaming, which is consistent with the parties’ arguments, the ’014 patent, and the prior art of record.” slip op. at 5

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

    “1. “video information” Petitioner contends a person of ordinary skill would have understood that “video information” means “digital video data.” Pet. 16. Patent Owner disagrees with Petitioner’s proposed construction and contends “video information” should be given its plain and ordinary meaning. PO Resp. 13. Patent Owner also states that the construction of “video information” is immaterial to this proceeding. PO Resp. 13. We do not discern a meaningful dispute between the parties regarding the meaning of “video information,” and we do not expressly interpret the term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 6

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

    “Among other problems with these arguments, it is not clear how or where Petitioner relies on the proposed combination to satisfy any specific claim limitations. Petitioner argues each of Cooper and Baldwin teaches each limitation of each independent claim, and Petitioner presents its combination of references separate from its comparisons of Cooper and Baldwin to the claims, without clearly stating how the references are to be combined or how those combined teachings satisfy particular limitations. Because Petitioner fails to identify its proposed combination with sufficient clarity, we are also not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been motivated to combine Cooper and Baldwin to yield the subject matter recited by the challenged claims. We also disagree with Petitioner’s argument that Realtime Data suggests that Petitioner does not need to show a motivation to combine. Reply 27–29 (citing Realtime Data, 912 F.3d at 1373–74). Unlike here, in Realtime Data, the secondary reference was cited for the “sole purpose” of confirming that an element was disclosed in the primary reference. Id. In this case, Petitioner proposes combining some teachings from each of Baldwin and Cooper. See Pet. 19–20; Reply 27. Accordingly, we determine Petitioner has not articulated an adequate rationale to combine the references to arrive at any particular challenged claim.” slip op. at 9

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

    “Patent Owner contends, and we agree, that Cooper does not teach that its receiver identifies which of two streams is expected to result in a lower latency, as required by limitation [1d]. PO Resp. 36–52. Where Cooper describes receiving a multiplexed composite signal, Cooper teaches always identifying the normal mode packet stream for decoding when it is available, without regard to latency, and identifying the robust mode packet stream for decoding only when the normal mode packet stream is not available, such as when normal mode packets are lost. E.g., Ex. 1004, 7:8–8:28. In fact, it would be inconsistent with Cooper’s teachings for the receiver to select the robust mode packet stream when the normal mode packet stream is available: Cooper teaches that “[u]nder normal conditions, the error signal is not active on the error signal line E. In response, the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets . . . .” Ex. 1004, 7:32–37 (emphasis added). Although Cooper also teaches that its receiver can decode the robust mode packet stream to avoid “undue delay” “at the beginning of any broadcast or channel change,” we find that Cooper does so only when the normal mode packet stream is not available. Ex. 1004, 17:23–45; see also Ex. 1004, 3:1–3. Specifically, Cooper states that “at the beginning of any broadcast or channel change,” there is a period of time (i.e., Tadv ) when the receiver’s delay device 220 is being filled. Ex. 1004, 17:23–26 (emphasis added). Cooper explains that waiting until delay device 220 is full would cause “undue delay when a receiver is switched on or a channel is changed.” Ex. 1004, 17:26–30. To address this delay, Cooper’s receiver decodes the robust mode packet stream, which “is immediately available,” so that a video signal can be presented until “the normal mode packet stream becomes available,” at which point the receiver switches to decoding the normal mode packet stream. Ex. 1004, 17:30–42. Consequently, we find that Cooper teaches that, at a channel change, its receiver receives (and decodes) the robust mode packet stream until it receives the normal mode packet stream. We disagree with Petitioner’s contrary argument that Cooper’s receiver receives both streams in this situation (see Reply 4–16), and, at a minimum, Petitioner has not persuasively shown that Cooper teaches or suggests this (see Ex. 2015, 82:22–85:13 (describing different scenarios but acknowledging that “Cooper doesn’t really illuminate either of these”)). Further, Cooper’s description of Figure 3 is consistent with our understanding of Cooper description of a channel change. Specifically, that portion of Cooper states: Time t0 may represent the time when the receiver is turned on, or when a user specifies a new content source to receive. During the time, Tadv, between t0 and t4, robust mode packets “a” to “j” are loaded into the delay device 220, and normal mode packets, designated “0” through “9” are received. At time t4, the normal mode packet “A” becomes available from the demultiplexer 210 and delayed robust mode packet “a” becomes available from the delay device 220. Under normal conditions, . . . the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets, as described above. This is illustrated by the cross hatching 301 in the normal mode packets “A” through “G”. Ex. 1004, 7:24–39. Cooper includes this description in order to explain its typical operation as well as to illustrate the relative timing of the robust mode packet stream and the normal mode packet stream. See Ex. 1004, 7:24–25, 7:40–8:28. This passage teaches that normal mode packets designated with capital letters (e.g., “A”) are displayed after time t4 under normal conditions; however, it does not address which (if any) packets are displayed between time t0 and time t4. As a result, we understand this passage of Cooper to indicate that “0” to “9” are simply placeholders, which” slip op. at 13

  Patent outcomesUS 8,646,014 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,646,014

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.