- Aurobindo Pharma USA, Inc.No claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,866,866 - Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00978 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Cherwell did not show a reasonable likelihood that claims 1–20 were unpatentable over Leung under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- BurdenDenied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art at the time of the ’652 patent would have had “a bachelor’s degree in computer science or computer engineering, or in a related field, and approximately two or three years of experience in industry with respect to software design and computer systems.” Pet. 10 (citing Ex. 1004 ¶ 33). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’652 patent and the types of problems and solutions described in the ’652 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Nonecites KSR · GrahamPatents in suitUS 8,832,652 - Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00982 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Hudis, alone or in combinations, taught the required uniquely named hierarchical namespace.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The parties agree that a “hierarchical namespace” is an arrangement of objects and that the objects are arranged hierarchically. They also agree that the “uniquely addressable” aspect should be included in the construction, but they differ on the specificity with which this concept should be described. We agree with Patent Owner that the construction must include the specification’s express definition of “uniquely addressable.” See Ex. 1001, 1:52–60 (“The term ‘namespace’ generally refers to a set of names in which all names are unique. . . . ‘Uniquely addressable’ refers to the property that items in a namespace have unique names such that any item in the namespace has a name different from the names of all other items in the namespace.”).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are persuaded by Patent Owner’s arguments. Petitioner relies on Hudis’s keys for teaching unique naming (see Pet. 18), but Hudis expressly states that a namespace may have two instances with the same key. See Ex. 1005, 9:33–37. This does not comport with our construction of “hierarchical namespace” insofar as one object in the set (i.e., one instance) would not have a different name from all other objects in the set (i.e., the other instance with the same key). See supra § I.G.1. Patent Owner also establishes that certain superclass objects in Hudis may not even have keys, which Patent Owner likens to names. See Ex. 1005, 9:9–12. Without names, such objects cannot meet the unique naming requirements in our construction of “hierarchical namespace.” See supra § I.G.1. In addition, the same teaching cited by Patent Owner states that class objects can inherit keys from a superclass object, which undermines Petitioner’s assertion that a key is unique to an object. See Ex. 1005, 9:9–12. Petitioner has not explained why or how an ordinarily skilled artisan considering Hudis’s use of keys would have understood Hudis as teaching the unique naming of a “hierarchical namespace” consistent with our construction of that term.2” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also have considered Dr. Fox’s testimony on Hudis’s teaching that “matching keys are considered to be the same instance within a namespace.” See Ex. 1003 ¶ 135 (quoting Ex. 1005, 9:33–37) (emphasis omitted). Dr. Fox testifies that this teaching resolves the problem of matching keys because “only a single instance object may have a given name (identified by the property designated as a ‘key value’) within a particular namespace.” Id. Yet merely considering two objects to be the same does not demonstrate that the two objects have different names. We do not credit Dr. Fox’s testimony in this regard because it is contradicted by Hudis. Dr. Fox also cites an example from Hudis related to “root/default” (id. (citing Ex. 1005, 8:60–64, 9:22–30)), but the example does not address the existence of two objects having the same name in Hudis. The fact that certain objects in Dr. Fox’s “root/default” example may have unique names does not indicate that all objects in the set have different names from one another, as required by our construction. See supra § I.G.1.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,895,586
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.