• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentable
  PTAB · Sep 28, 2026 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12, 13, 19, and 20 are unpatentable under § 103 over the stated Douglas–Mark and Hamilton-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties agree that experience could substitute for a degree, and vice versa. Pet. 3; PO Resp. 10. The parties’ proposed levels of ordinary skill are substantially similar. For this decision, as in the Institution Decision, we adopt Petitioner’s proposed level, which is supported by credible testimonial evidence and is consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Our decision would be the same, however, if we were to adopt Patent Owner’s proposal.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; PO Resp. 10. However, the parties contest two material claim-construction issues which we address below. To the extent that the parties’ positions depend on interpreting other claim language in a particular way, we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art.” slip op. at 8

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

    “We disagree with Patent Owner that a person of ordinary skill in the art would have understood that limitation 1.2 must be performed before limitations 1.3 or 1.4. See Ex. 1001, 35:21–24. See Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” (citing Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). The evidence suggests that a “target printer” is any printer that is ultimately selected for fabricating the object, and such a printer could send its configuration information either before or after that determination is made in limitation 1.2. This interpretation does not render the word “target” meaningless. At some point, a printer must be determined to be the target printer, which is the one intended to ultimately fabricate the three-dimensional object. But the target printer still exists, and is capable of being queried, before that determination is made. We find the examples in the ’774 patent pertinent to this question. The ’774 patent states that “the target printer may include more than one printer.” Ex. 1001, 18:66–67. In discussing the step of “query target printer for properties 306” (Fig. 3A), the ’774 patent states that “[i]n one aspect, numerous queries are sent to numerous printers, e.g., for use in selecting one or more of the printers as the target printer.” Id. at 19:8–10. Alternatively, “the query is sent to a printer that is not necessarily the target printer as described herein, e.g., when the query or information received from a response to the query is used for the selection of the target printer.” Id. at 19:11–14. Importantly, the second embodiment states that the queried printer “is not necessarily the target printer,” suggesting that the queried printer could be the target printer even before it is determined to be such. Id. at 19:11–12 (emphasis added). Based on the evidence of record, a person of ordinary skill in the art would have understood that the “target printer” can be determined after the query recited in limitation 1.3 or the reception of configuration information recited in limitation 1.4. Thus, the evidence does not impose an ordering between limitations 1.2 and 1.3 or between limitations 1.2 and 1.4. The evidence also does not support Patent Owner’s argument that the two reverse-order examples in the ’774 patent are unclaimed embodiments.” slip op. at 10

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

    “We disagree that Petitioner’s arguments are based on impermissible hindsight, because they are based on the disclosures in Douglas and Mark, and Petitioner has articulated a persuasive reason to combine those references without referring to the ’774 patent itself, as we discuss below. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”).” slip op. at 29

  Patent outcomesUS 11,886,774 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,886,774
• Apple Inc. v. Resonant Systems, Inc.All claims unpatentable
  PTAB · Oct 9, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Final written decision

  Claims 2 and 3 are unpatentable under § 103 over Gregorio, Ramsay, Tierling, Rossi, and Aldrich; claim 2 is also unpatentable over Gregorio, Ramsay, Wakuda, Rossi, and Aldrich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 30. Patent Owner offers “a similar level of ordinary skill in the art.” See PO Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claim 2 are means-plus-function limitations. Pet. 2–6; PO Resp. 7. Construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionTerm construed board ownMixed

    “supply of power from the power supply to . . . cause the moveable component to oscillate at a frequency . . . specified by one or more stored values” to portions of steps 706 and 708 of the flow diagram algorithm of Figure 7A, as described above. Thus, the control component requires a microprocessor and memory with algorithmic structure including a timing algorithm or similar coding for creating a control output signal that flips to control the direction of current flow through a coil (e.g., coil 514, Fig. 5, coil 626, Fig. 6), where the coil is structure that corresponds to the recited “driving component,” as noted above.10 We adopt the District Court’s conclusion in the Apple litigation that the “control component” structure itself does not require an H-bridge switch, but only requires that the processor generates the “d” inputs configured to operate a switch or other circuit; and further that the structure does not require does not require computing initial default values as specified in step 702 of Figure 7A (i.e., values not specified by a user). Ex. 3001, 30–33, 35. This is in accord with settled law that limits the structure to that necessary to 10 “Rather than using a formal timer mechanism, certain implementations may simply employ counted loops or other simple programming techniques for periodically carrying out tasks.” Ex. 1001, 7:7–10. perform the claimed function. 11 By the same token, we modify the District Court’s construction to the extent it would require, based on such steps as 706, 710, and 716, a specific order of the steps of generating the “p” and “d” values. The claims only require the control component to control the power supply to cause oscillation at a specified frequency and amplitude, but do not require the frequency value to be generated before the amplitude value, or vice versa.” slip op. at 17

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

    “The record, including testimony by Dr. Hannaford (Ex. 1003; Ex. 1049), supports Petitioner’s rationale, and shows that one of ordinary skill would have been motivated to combine Gregorio, Ramsay, and Wakuda in the manner proposed. Patent Owner does not address Petitioner’s showing for combining these references with any particularity. See generally PO Resp. We discuss below Patent Owner’s argument that Petitioner’s showing as to limitation 2.f based on the combination of Gregorio and Ramsay is conclusory.” slip op. at 34

  Patent outcomesUS 8,860,337 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,860,337
• Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · May 28, 2025 · IPR2024-00255 · APJ Annette R Reimers · IPR · Final written decision

  Claims 2, 4, and 6–10 are unpatentable as obvious over Bhattacharya and Zeng, and over Bhattacharya, Zeng, and Spain; claims 1, 3, and 11 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Second, the key differences between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill in the art at the time of the invention is that Patent Owner asserts “experience in wireless telecommunications and cellular technology is necessary,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 22–23 (citing Ex. 2018 ¶ 46); see also id. 44– 45. The ’104 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:13–20; PO Resp. 44. Bhattacharya is 9 Patent Owner refers to IPR2024-01209, but the correct citation is IPR2023- 01209. See PO Resp. 22. 1005, code (57), ¶¶ 1, 13; PO Resp. 44. Zeng is directed to handoff from one cell to another in a wireless cellular communication system to achieve continuous service. Ex. 1006, 1; PO Resp. 44. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1007, code (54), ¶¶ 1, 11; PO Resp. 44. We find that there is support in the ’104 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill in the art would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill in the art.” slip op. at 8

  • Expert testimonyPetitioner expert creditedMixed

    “In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’104 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 7; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 14

  • BurdenUnpatentable

    “Based on the evidence presented, Petitioner adequately establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to reach the Bhattacharya-Zeng combination with a reasonable expectation of success.” slip op. at 44

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

    “explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’104 patent. Namely, the ’104 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”18 Ex. 1001, 3:50–60. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:56–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’104 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 3 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 27

  Patent outcomesUS 7,561,104 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,561,104
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this 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.” Pet. 7.5” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed

    “appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[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))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13

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

    “to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26

  Patent outcomesUS 9,033,250 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,033,250
• Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentable
  PTAB · Mar 17, 2023 · IPR2021-01519 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–5, 9–12, 15, 16, and 20–23 are unpatentable as obvious over Plassmann, Treuillet, and Staller, with Peng added for claims 21–23.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “In the Decision to Institute, we declined to construe this term as a means plus function term under 35 U.S.C § 112(f). Dec. to Inst. 9–12. Although Petitioner disagrees and asserts that the term “device for stereophotogrammetry” should be construed under 35 U.S.C. § 112(f), Petitioner presents no arguments other than those in the Petition that we addressed in the Decision to Institute. Reply 7–8. Petitioner further acknowledges that “an express construction may not be necessary for the Board to evaluate patentability.” Id. at 8. For the reasons discussed in the Decision to Institute, we do not construe device for stereophotogrammetry configured for an acquisition of two views according to two different angles as a means plus function term under 35 U.S.C. § 112(f). Our Decision to Institute applied the plain and ordinary meaning to this term without any express construction to the remaining language of this limitation, including “configured for an acquisition of two views according to two different angles.” Dec. to Inst. 9–11. In the context of the challenged claims, the parties dispute the implications of the plain and ordinary meaning.” slip op. at 8

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

    “Having considered the claim language, the specification, the prosecution history, and the extrinsic evidence, for the reasons discussed below, we conclude that the claim language does not mean that the sub-optics are angled, but instead means that they each view a subject from different angles.” slip op. at 12

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

    “We also agree with Petitioner that “the preamble here is not limiting, because the body of the claim provides a complete description of the device.” Reply 6–7 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The preamble for claim 1 recites “[a] device for stereophotogrammetry,” but “[g]enerally, the preamble does not limit the claims.” Ex. 1022, 11:42; Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017). Regardless, as Petitioner notes, no “canon of claim construction is absolute in its application and [] some surplusage may exist in some claims.” Reply 7 (alteration in original) (quoting Decisioning.com, Inc. v. Federated Dep’t Stores, Inc., 527 F.3d 1300, 1312 n.6 (Fed. Cir. 2008) (acknowledging that proper construction of “remote interface” arguably “render[s] the term ‘public’ in [a dependent claim] surplusage”)).” slip op. at 16

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

    “Treuilett discloses the actual focal length of their lenses, but Dr. Otto states that a person of ordinary skill would understand such devices may be used with any lens suitable to the subject. Pet. 50. We agree with Petitioner that Dr. Otto’s testimony provides sufficient reasoning with rational underpinning to support the proposition that a person of ordinary skill in the art would have known how to select the requisite lenses to achieve the results recited in claim 11. See KSR, 550 U.S. at 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Having considered the arguments and evidence of record, for the reasons discussed above, we find that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teaching of Plassmann, Treuilitt, and Staller and that their combined teachings would have disclosed or suggested the subject matter of claim 11 to a person of ordinary skill.” slip op. at 65

  Patent outcomesUS 10,681,334 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,681,334
• Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentable
  PTAB · Mar 9, 2023 · IPR2021-01518 · APJ John D Hamann · IPR · Final written decision

  Claims 1–4, 8–12, 15, 16, and 20–23 are unpatentable under § 103 over the stated combinations of Plassmann, Treuillet, and Staller, with Kingslake or Peng as applicable.

  RulingsFinal written decision

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

    “We disagree with Patent Owner. Rather, we conclude that the claim language does not mean that the sub-optics’ optical axes are angled, but instead means that the sub-optics each view a subject from a different angle, as Petitioner argues. Ex. 1020, 11:43–45; Pet. Reply 7. Specifically, this limitation recites that the two sub-optics are “configured for a simultaneous acquisition of two views according to two different angles.” Ex. 1020, 11:43–45. Notably, “according to two different angles” directly follows “two views,” rather than directly following “configured.” Id. And “view” means “[a] scene or an arrangement of subject material for a photograph,” according to a technical dictionary provided by Patent Owner. Ex. 2014,7 210 (defining “view”). In other words, the term “view” itself refers to viewed subject material—a target subject.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties do not substantively address the differences in their proposed definitions for one of ordinary skill in the art. Pet. Reply. 8; PO Resp. 23; see generally PO Sur-reply. Moreover, the parties agree that which definition we adopt does not substantively impact our analysis of the parties’ arguments concerning unpatentability. Tr. 29:19–30:9, 75:20–25. Because Patent Owner’s definition of the level of skill in the art is consistent with the ’253 patent and the asserted prior art, we adopt it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). In addition, we do not find sufficient support in the record for requiring one of ordinary skill in the art to have had a master’s degree. Compare Ex. 1003 ¶ 20 (requiring a master’s degree), with Ex. 2013 ¶ 31 (testifying why a master’s degree was unnecessary). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 8

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

    “We disagree. Patent Owner does not provide an analysis demonstrating that its Infinity product is coextensive (or nearly coextensive) with the challenged claims. Rather, Patent Owner cites to the following testimony of Dr. van der Weide: “I have reviewed the LifeViz Infinity device and conclude that it embodies the invention of the [’]253 Patent. More specifically, the Infinity possesses all the features listed in claim 1 of the patent.” Id. (citing Ex. 2013 ¶ 213). Simply put, Patent Owner fails to provide any analysis whatsoever. Id.; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, Patent Owner’s reliance on WBIP is misplaced. In that case, “WBIP presented evidence that specific products . . . [we]re embodiments of the invention as claimed in the asserted claims,” and that provided a basis for finding a presumption of nexus. WBIP, 829 F.3d at 1329–31. Such is not the case here. In sum, Patent Owner does not provide the required analysis demonstrating that Infinity is coextensive (or nearly coextensive) with the challenged claims. PO Resp. 55; Lectrosonics, Paper 33 at 33. We, therefore, find that a presumption of nexus is inappropriate.” slip op. at 23

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

    “Ex. 1020, 11:46–57. We agree with Petitioner and find that the combination of Plassmann, Treuillet, and Staller teaches this limitation. First, we agree with Petitioner and find that Plassmann teaches a positioning system that uses a pair of light beamers to signal when a target subject is reaching a predefined distance position to the camera. See Ex. 1007, Fig. 1A (light beamers 6a, 6b); Pet. 33. Plassmann teaches that light beams converge at a predefined distance “corresponding to the distance in which the camera lens is focussed.” Ex. 1007, 12:7–13. More specifically, Plassmann states the following: The apparatus is also provided with two low-powered light emitting diodes (LEDs) 6a, 6b, each provided with a focussing lens to produce a beam of light and being arranged so that the beams converge and meet at a point a fixed and desired distance from the apparatus, this distance corresponding to the distance at which the camera lens is focussed. Id.; Pet. 34. Accordingly, we find that Plassmann teaches the limitation, save for having a second predefined distance position—if there are two different distance positions, one necessarily is closer to the camera body and the other one farther. Ex. 1007, 12:7–13, Fig. 1A. Second, we agree with Petitioner and find that Staller teaches a positioning system having more than one predefined imaging distance position. Pet. 38. More specifically, we find that Staller teaches a strobe diffuser attachment for a camera, which includes a “distance measurement device [that] may be adapted to selectively produce one of a plurality of pairs of light beams which intersect at different repeatable distances from the diffuser body.” Ex. 1006, code (57), 2:29–32, 5:13–15; see also id. at 5:56– 6:2 (“[T]wo pairs of light beam emitters . . . may be used to provide three or four separate pairs of intersecting bea[m]s and three or four corresponding repeatable distances for diffuser 10.”); Pet. 38. In other words, Staller teaches having at least two distinct predefined distance positions for the camera. Ex. 1006, code (57), 2:29–32, 5:13–15, 5:56–6:2. We also agree with Petitioner and find that Staller teaches that its “distance indicator improves the usefulness of close range photography by providing a repeatable scale to photographs[, which] . . . improves the usefulness of close ranges photographs for medical and other organic growth measurement applications.” Ex. 1006, 6:10–15; Pet. 38. In addition, we agree with Petitioner and find that Plassmann teaches that “[s]tereoscopic imaging has been known for many years,” and “ha[s] been used to measure the shape of wounds and the like which are otherwise difficult to measure by conventional techniques.” Ex. 1007, 1:6–15; Pet. 35. We also agree with Petitioner and find that it was known in the art before the ’253 patent to use a camera having multiple predefined distances for imaging a subject in connection with wound or lesion treatment. See Ex. 1017,17 579; Ex. 1011,18 164, Fig. 2, Table 2; Ex. 1008,19 481.” slip op. at 42

  Patent outcomesUS 10,165,253 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,165,253
• Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentable
  PTAB · Mar 9, 2023 · IPR2021-01511 · APJ Brian D Range · IPR · Final written decision

  Claims 1–4 and 8 are unpatentable as obvious over Plassmann, Treuillet, and Staller; claims 9–11 are unpatentable as obvious over those references and Peng.

  RulingsFinal written decision

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

    “We find this argument unavailing. Rather, we agree with Petitioner and determine that the claim language does not mean that the sub-optics are angled but instead means that they each view a subject from different angles. Ex. 1020, 11:43–45; Pet. Reply 7. Specifically, this limitation recites that the two sub-optics are “configured for a simultaneous acquisition of two views according to two different angles.” Ex. 1020, 11:43–45. Notably, “according to two different angles” directly follows “two views,” rather than directly following “configured.” Id. And “view” means “[a] scene or an arrangement of subject material for a photograph,” according to a technical dictionary provided by Patent Owner. Ex. 2014,6 210 (defining “view”). In other words, the term “view” itself refers to viewed subject material—a target subject.” slip op. at 13

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties do not substantively address the differences in their proposed definitions for one of ordinary skill in the art. Pet. 15; PO Resp. 23; see generally Reply; PO Sur-reply. Moreover, the parties agree that which definition we adopt does not substantively impact our analysis of the parties’ arguments concerning unpatentability. Tr. 29:19–30:9, 75:20–25. Because Patent Owner’s definition of the level of skill in the art is consistent with the ’253 patent and the asserted prior art, we adopt it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). In addition, we do not find support in the record for requiring one of ordinary skill in the art to have had a master’s degree. Pet. 15; Ex. 2013 ¶ 31 (testifying why a master’s degree was unnecessary). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 11

  • ExcludeMotion to exclude, deniedMixed

    “Otto rely on Treuillet for what the Treuillet reference teaches to a person having ordinary skill in the art at the relevant time. Treuillet’s suggestions to a person having ordinary skill in the art remain relevant even if Treuillet were factually incorrect in some respects. Second, even if considered hearsay, Dr. Otto properly relied on Treuillet. Opp. Mot. Excl. 4–7. Under Federal Rule of Evidence 703, an expert may rely on facts and data that “need not be admissible,” including hearsay (double or otherwise). Here, the evidence supports that Treuillet was published in an independent, respected, and peer-reviewed IEEE journal. Id. at 5–6 (citing evidence regarding reliability of the IEEE journal). In addition, we find unavailing Patent Owner’s arguments concerning “Reference 45.”5 Mot. Excl. 3–5; Reply Mot. Excl. 1–5. Rather, we find that it is appropriate for an expert also to rely on the sourcing in article published in such an IEEE journal. Thus, Treuillet is the kind of evidence we would expect an expert witness or person having ordinary skill in the art to rely upon, and Dr. Otto was entirely reasonable on relying on Treuillet in forming his opinions Third, even if Treuillet were inconsistent with other evidence, such as Plassmann, this issue would go to the credibility of Dr. Otto’s testimony and the weight given to it in deciding ultimate issues of fact rather than admissibility in the first instance. For the reasons above, we deny Patent Owner’s motion to exclude with respect to Dr. Otto’s testimony.” slip op. at 8

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

    “Petitioner persuasively argues that Treuillet teaches that the Plassmann MAVIS II device may take acceptable wound photographs from 65 centimeters to 95 centimeters (within its “depth of field”). Pet. 36; Ex. 1003 ¶ 113; Ex. 1016, 755. A person of skill in the art would have understood that acceptable medical wound photographs would have to be adequately focused and that Treuillet, therefore, suggests a depth of field from 65 centimeters to 95 centimeters for the Plassmann device. Ex. 1003 ¶ 113 (explaining that a person of skill in the art would understand that Plassmann has an expanded depth of field because it can “accurately image a subject at multiple positions”). Petitioner then relies on Staller as teaching multiple light beamers to define more than one imaging position within a depth of field. Pet. 41–42; Ex. 1006, Fig. 4, 2:29–34, 5:56–6:2. Staller teaches plurality of pairs of light beams that “intersect at a different repeatable distance from the diffuser body.” Pet. 23; Ex. 1006, code (57), 2:29–32, 5:13–15; see also id. at 5:56– 6:2 (“[T]wo pairs of light beam emitters . . . may be used to provide three or four separate pairs of intersecting bea[m]s and three or four corresponding repeatable distances for diffuser 10.”). In other words, Staller teaches having at least two distinct predefined distance positions for the camera. Ex. 1006, code (57), 2:29–32, 5:13–15, 5:56–6:2. The advantage of the plurality of pairs of light beams is taught by Staller: repeatability. Ex. 1006, 6:10–15 (referring a concern for “repeatable scale” to “improve[] the usefulness of close range photographs for medical” applications). Petitioner persuasively argues that a person of skill in the art would have been motivated to predefine two distances from a device in order to provide for varying levels of magnification. Pet. 45–46. Petitioner persuasively explains that a person of skill in the art would have had a reasonable expectation of success in combining the references’ teachings. Id. at 46–47.” slip op. at 40

  Patent outcomesUS 10,070,119 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,070,119
• Pillar Biosciences, Inc. v. Swift Biosciences, Inc.All claims unpatentable
  PTAB · Jun 27, 2022 · IPR2021-00401 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Gardner and Lao; the Board did not reach anticipation by Xie or Lao.

  RulingsFinal written decision

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

    “invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes constructions for five terms: “third amplicon,” “target-specific primer,” “complementary sequence,” “noncomplementary sequence,” and “PCR.” Pet. 22–28. Patent Owner disputes only the proposed constructions of “third amplicon” and “target-specific primer.” PO Resp. 9–17. As discussed in more detail below, the parties do not dispute that the combination of Gardner and Lao teaches or suggests the subject matter of the challenged claims, so there is no need for us to resolve the parties’ claim-construction dispute as to either of the terms on which they disagree in order to resolve the question of obviousness. In addition, although the parties’ dispute over the construction of “target-specific primer” is germane to whether Petitioner has proven the anticipation of the challenged claims by either Lao or Xie, we do not reach the anticipation grounds. Thus, we need not, and we do not, construe any claim terms in order to resolve this proceeding.” slip op. at 7

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

    “We agree with Petitioner. Although Gardner does, as Patent Owner notes, teach a method of avoiding the production of short amplicons, it does so only by carrying out two separate reactions. Ex. 1016, 4 (suggesting combining “the primers from parts 0, 2, and 4 . . . in one reaction and the primers from parts 1 and 3 . . . in another, so that short products would not be produced”). But Gardner makes clear that carrying out a single multiplex reaction would be preferable. Id. at 2 (“The method here . . . seeks to automatically design a minimal, degenerate set of multiplex compatible primers to amplify all the strains for a given region in a single reaction.”), 4 (carrying out “whole genome amplification in a single reaction . . . may yield longer amplicons . . . and should facilitate assembly across amplified regions”). Thus, Gardner favors finding a way to carry out a single reaction rather than settling for its collection of separate reactions. Gardner teaches that, without “staggering the primer sets into different multiplex reactions,” the short amplicons produced by “overlapping primer sets would dominate the PCR reaction.” Id. at 6. Patent Owner argues that this shows that Gardner disapproves of any means of controlling short amplicons other than its multiple-reaction approach and is “quite opposed to a single reaction.” Sur-Reply 6–7. We disagree. As noted above, Gardner also teaches that “a step to remove short amplicons before sequencing may be desired.” Ex. 1016, 4. Gardner’s multi-reaction solution avoids production of short amplicons in the first place, and amplicons that are never produced do not need to be removed. Thus, the fact that Gardner teaches the removal of short amplicons means that Gardner does not disapprove of the use of solutions other than its multi-reaction approach. Instead, Gardner considers its multi-reaction approach to be a compromise between the goal of avoiding problems caused by the production of short amplicons and the goal of minimizing the number of reactions carried out. Gardner’s teaching that adding “a step to remove short amplicons before sequencing may be desired,” id. at 4, is an express invitation to a person of ordinary skill in the art to find and incorporate such a removal step in lieu of avoiding the production of short amplicons. As discussed above, Lao teaches a method of removing short amplicons from a reaction. Specifically, Lao discloses “an event or state in which a portion of a nucleic acid strand is hybridized to another portion of itself,” which Lao refers to as “self-hybridizing.” Ex. 1014 ¶ 69. This “selfhybridized structure [may only be] formed for the shorter insert sections,” allowing for “selective amplification of longer insert sections over shorter insert sections.” Id. ¶ 116. This happens because the shorter insert sections “take themselves out of a reaction” through self-hybridization. Id. Because Gardner expressly teaches combining its method with “a step to remove short amplicons before sequencing,” and because Lao teaches such a step, we find that a person of ordinary skill in the art would have had a reason to combine the teachings of Lao with those of Gardner. The parties raise several other arguments, including whether the combination of Lao and Gardner would in fact achieve both Gardner’s benefit of avoiding overlapping amplicons and Lao’s benefit of saving time and cost due to avoiding having to run separate reactions, but we need not resolve those disputes. The presence of an express reason to combine is sufficient.” slip op. at 18

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “In reaching our conclusions on Petitioner’s asserted grounds of unpatentability, we do not rely on any portion of Exhibits 1023, 1025, or 1027. Accordingly, we dismiss Patent Owner’s Motion to Exclude those exhibits as moot. With respect to Patent Owner’s Motion to Exclude all portions of the record relying on Exhibits 1023, 1025, and 1027, Patent Owner identifies six pages of Petitioner’s Reply that it believes we should exclude. None of the identified pages cites any portion of Exhibits 1023, 1025, or 1027. See Reply 12–15, 17–18. Thus, even if we were persuaded that Exhibits 1023, 1025, and 1027 should be excluded, we would not be persuaded that Patent Owner had identified any reason for us to exclude the identified pages of Petitioner’s Reply. Accordingly, we deny Patent Owner’s Motion to Exclude as it applies to Petitioner’s Reply. To the extent there are other portions of the record that do cite Exhibits 1023, 1025, or 1027, Patent Owner’s failure to identify those portions is fatal to its motion. 37 C.F.R. § 42.22(a)(1) (a motion “must include . . . [a] statement of the precise relief requested”). Accordingly, we deny the motion as it applies to any unidentified portion of the record.” slip op. at 27

  Patent outcomesUS 10,316,359 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,316,359
• Grünenthal GmbH v. Antecip Bioventures II LLCAll claims unpatentable
  PTAB · Jul 28, 2020 · PGR2019-00027 · APJ Grace Karaffa Obermann · PGR · Final written decision

  Claims 1–29 are unpatentable as obvious over Harden combined with one or more of Varenna 2011, Gatti, and Muratore; the written-description challenge was not proven.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Based on the full trial record, we find that Petitioner demonstrates by a preponderance of the evidence that the subject matter of claim 1 would have been obvious. Varenna 2011 teaches that neridronate “seems to possess an excellent efficacy profile” in treating CRPS. Ex. 1006, 233. In the context of reporting the use of “[n]eridronic acid for the treatment of bone metabolic diseases,” Gatti teaches that “[i]ntravenous high doses of bisphosphonates are increasingly used for the treatment of [CRPS].”13 Ex. 1008, 1305, 1308. Gatti also reports that a clinical trial of neridronic acid “is underway.” Id. Muratore teaches that neridronate was “efficacious in the treatment of [CRPS].” Ex. 1007, 89. Thus, on this record, each of these references sufficiently teaches the efficacy of neridronic acid or its salt in treating CRPS, suggesting that a person of ordinary skill in the art would have been motivated to use neridronic acid in treating CRPS. With respect to the limitation of claim 1 requiring that the neridronic acid be “parenterally administer[ed],” each of Varenna 2011, Gatti, and Muratore teaches intravenous administration of neridronic acid. Ex. 1006, 233; Ex. 1007, 89; Ex. 1008, 1308. Intravenous administration is a type of parenteral administration. Ex. 1004 ¶ 44. 13 Gatti uses the terms “reflex sympathetic dystrophy syndrome” and “algodystrophy.” Ex. 1008, 1308. On the present record, we interpret both of these terms as synonymous with “complex regional pain syndrome,” “CRPS,” “complex regional pain syndrome type I,” “CRPS I,” “reflex sympathetic algodystrophy,” “reflex sympathetic dystrophy,” and “causalgia.” Ex. 1006, 227 (equating “algodystrophy,” “complex regional pain syndrome type I,” and “CRPS I”); Ex. 1007, 89 (using the term “reflex sympathetic algodystrophy”); Ex. 1019, 713 (equating “complex regional pain syndrome,” “CRPS,” “reflex sympathetic dystrophy,” and “causalgia”). Harden teaches that the Budapest Criteria are used as “clinical diagnostic criteria for CRPS” and that they include changes in skin blood flow, by reference to the symptoms of “temperature asymmetry” and “skin color asymmetry.” Ex. 1009, 274 (Appendix II). Further, Harden teaches that 69.4% of patients diagnosed with CRPS were observed on examination to exhibit temperature asymmetry, and 83.9% were observed on examination to exhibit skin color asymmetry. Id. at 271 (Table 2). Thus, Harden teaches that a majority of patient with CRPS suffer from changes in skin blood flow. Because Varenna 2011, Gatti, and Muratore teach that neridronic acid is effective in treating CRPS, the combination of any of those references with Harden14 would have suggested to a person of ordinary skill in the art that neridronic acid would be effective in alleviating changes in skin blood flow associated with CRPS. Thus, the combination of Harden and one or more of Varenna 2011,” slip op. at 26

  • ExcludeMotion to exclude, deniedMixed

    “Assuming that “October 2011” is hearsay, it is still admissible evidence under Rule 807 of the Federal Rules of Evidence. See Opp. Mot. 3–4 (asserting this hearsay exception). Under Rule 807, a statement “is not excluded,” even if it is hearsay, if it meets two requirements. First, the statement must be “supported by sufficient guarantees of trustworthiness— after considering the totality of circumstances under which it was made and evidence, if any, corroborating the statement.” Fed. R. Evid. 807(a)(1). Second, the statement must be “more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts.” Id. at 807(a)(2). Here, both requirements are satisfied. The statement “October 2011” on the face of Varenna 2011 is offered to prove that Varenna 2011 was published in October 2011. This statement is accompanied by several guarantees of trustworthiness. The statements “Received on July 15, 2011” and “Accepted on August 30, 2011,” when offered as corroboration of the October 2011 publication date, are not hearsay. Fed. R. Evid. 801 (statement is hearsay only if offered in evidence “to prove the truth of the matter asserted in the statement”). Accordingly, they may be admitted for this purpose, and they corroborate a publication in October 2011. Moreover, Exhibits 1038 and 1040 also provide some evidence that Varenna 2011 was published in October 2011. Ex. 1038, 1 (article with same title as Varenna 2011 published in “Fascicolo 5 2011”); Ex. 1040, 1 (“Fascicolo 5 2011” published in 2011). Thus, the record contains sufficient guarantees of trustworthiness of Varenna 2011’s statement that Varenna 2011 was published in October 2011. See Opp. Mot. 3 (citing Ex. 1004 ¶¶ 39–40). We find that Varenna 2011’s statement, indicating that the reference was published in October 2011, is “more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts.” Fed. R. Evid. 807(a)(2). It is difficult to imagine evidence more probative of the publication date of a journal article than the article’s own contemporaneous statement about when it was published.19 See Opp. Mot. 2–4 (for well-supported arguments on point). Accordingly, we determine that the exception of Rule 807 applies, and we conclude that the statement “October 2011” in Varenna 2011 should not be excluded.” slip op. at 48

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

    “regardless of whether the preambles are limiting. Even if the preambles are limiting, their scope is so broad as to be hardly different from no limitation at all. The specification of the ’774 patent defines “treating” as “includ[ing] any kind of treatment activity, including the diagnosis, cure, mitigation, or prevention of disease in man or other animals, or any activity that otherwise affects the structure or any function of the body of man or other animals.” Ex. 1002, 7:43–47. This definition exhibits “reasonable clarity, deliberateness, and precision” and is “‘set out . . . within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). Accordingly, we give effect to this definition of “treating.” Under the definition of “treating” in the specification of the ’774 patent, “[a] method of treating” changes in skin blood flow (claim 1) or abnormal sudomotor activity (claim 16) “associated with complex regional pain syndrome” means a method of diagnosing, curing, mitigating, or preventing that condition associated with complex regional pain syndrome, or otherwise affecting the structure or any function of the body of someone suffering from the condition associated with complex regional pain syndrome. To the extent that this requires carrying out the method on a patient suffering from changes in skin blood flow (claim 1) or abnormal sudomotor activity (claim 16) associated with complex regional pain syndrome, this is already part of the method recited in the body of the claims, Ex. 1002, 90:33–40, 91:14–21, so the preambles provide no additional limitation. To the extent that the preambles require some particular result to be brought about, that result could be the diagnosis, cure, mitigation, or prevention of the symptom in question, or it could be any effect at all on the structure or any function of the patient’s body. Thus, even when construed as limiting, the preambles provide little, if any, further restriction on the scope of the challenged claims beyond that set forth in the body of the claims.” slip op. at 9

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

    “regardless of whether the preambles are limiting. Even if the preambles are limiting, their scope is so broad as to be hardly different from no limitation at all. The specification of the ’774 patent defines “treating” as “includ[ing] any kind of treatment activity, including the diagnosis, cure, mitigation, or prevention of disease in man or other animals, or any activity that otherwise affects the structure or any function of the body of man or other animals.” Ex. 1002, 7:43–47. This definition exhibits “reasonable clarity, deliberateness, and precision” and is “‘set out . . . within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). Accordingly, we give effect to this definition of “treating.” Under the definition of “treating” in the specification of the ’774 patent, “[a] method of treating” changes in skin blood flow (claim 1) or abnormal sudomotor activity (claim 16) “associated with complex regional pain syndrome” means a method of diagnosing, curing, mitigating, or preventing that condition associated with complex regional pain syndrome, or otherwise affecting the structure or any function of the body of someone suffering from the condition associated with complex regional pain syndrome. To the extent that this requires carrying out the method on a patient suffering from changes in skin blood flow (claim 1) or abnormal sudomotor activity (claim 16) associated with complex regional pain syndrome, this is already part of the method recited in the body of the claims, Ex. 1002, 90:33–40, 91:14–21, so the preambles provide no additional limitation. To the extent that the preambles require some particular result to be brought about, that result could be the diagnosis, cure, mitigation, or prevention of the symptom in question, or it could be any effect at all on the structure or any function of the patient’s body. Thus, even when construed as limiting, the preambles provide little, if any, further restriction on the scope of the challenged claims beyond that set forth in the body of the claims. Moreover, as discussed below with respect to the asserted grounds of obviousness, Petitioner directs us to evidence that the prior art teaches or suggests the subject matter of the preambles, even when those preambles are construed as limiting in accordance with the meaning of “treating” provided in the specification.8 Thus, whether or not we treat the preambles as limiting, the outcome does not change. Given this circumstance, we treat the preambles of the challenged claims as limiting and assign them a meaning consistent with the specification’s definition of “treating.”” slip op. at 9

  Patent outcomesUS 10,039,774 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 10,039,774
• Grünenthal GmbH v. Antecip Bioventures II LLCAll claims unpatentable
  PTAB · Jul 28, 2020 · PGR2019-00026 · APJ Grace Karaffa Obermann · PGR · Final written decision

  Claims 1–30 are unpatentable as obvious over Harden and one or more of Varenna 2011, Gatti, and Muratore; the written-description challenge fails.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “INTRODUCTION A. Background Grünenthal GmbH (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting a post-grant review of claims 1–30 of U.S. Patent No. 9,931,352 B2 (Ex. 1001, “the ’352 patent”). Antecip Bioventures II LLC (“Patent Owner”) did not file a Preliminary Response. We instituted review of all challenged claims on each of the grounds asserted in the Petition. Paper 6 (“Dec. Inst.”).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther

    “regardless of whether the preambles are limiting. Even if the preambles are limiting, their scope is so broad as to be hardly different from no limitation at all. The specification of the ’352 patent defines “treating” as “includ[ing] any kind of treatment activity, including the diagnosis, cure, mitigation, or prevention of disease in man or other animals, or any activity that otherwise affects the structure or any function of the body of man or other animals.” Ex. 1001, 7:43–47. This definition exhibits “reasonable clarity, deliberateness, and precision” and is “‘set out . . . within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). Accordingly, we give effect to this definition of “treating.” Under the definition of “treating” in the specification of the ’352 patent, “[a] method of treating” hyperalgesia (claim 1) or edema (claim 17) “associated with complex regional pain syndrome” means a method of diagnosing, curing, mitigating, or preventing that condition associated with complex regional pain syndrome, or otherwise affecting the structure or any function of the body of someone suffering from the condition associated with complex regional pain syndrome. To the extent that this requires carrying out the method on a patient suffering from hyperalgesia (claim 1) or edema (claim 17) associated with complex regional pain syndrome, this is already part of the method recited in the body of the claims, Ex. 1001, 90:39–43, 91:23–27, so the preambles provide no additional limitation. To the extent that the preambles require some particular result to be brought about, that result could be the diagnosis, cure, mitigation, or prevention of the symptom in question, or it could be any effect at all on the structure or any function of the patient’s body. Thus, even when construed as limiting, the preambles provide little, if any, further restriction on the scope of the challenged claims beyond that set forth in the body of the claims. Moreover, as discussed below with respect to the asserted grounds of obviousness, Petitioner directs us to evidence that the prior art teaches or suggests the subject matter of the preambles, even when those preambles are construed as limiting in accordance with the meaning of “treating” provided in the specification.8 Thus, whether or not we treat the preambles as limiting, the outcome does not change. Given this circumstance, we treat the preambles of the challenged claims as limiting, and assign them a meaning consistent with the specification’s definition of “treating.”” slip op. at 8

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

    “Petitioner’s asserted references provides data showing that administering neridronic acid improves the symptoms of CRPS. PO Resp. 18–19. But “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988). It is sufficient that Varenna 2011, Gatti, and Muratore would have informed the ordinarily skilled artisan that successful treatment of CRPS and its symptoms was likely; there is no requirement that Petitioner show that the prior art taught that success was certain.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “qualifies as a printed publication under 35 U.S.C. § 102. PO Resp. 4–17; PO Sur-Reply 14–21. “To qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). “A reference will be considered publicly accessible if it was 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.” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)) (internal quotation marks omitted). Thus, there are two ways to show that a reference was sufficiently accessible: show it was disseminated or show it was “otherwise made available to the extent that” interested people of ordinary skill in the art could have located it after exercising reasonable diligence. Id. Here, according to Petitioner, the asserted references “are articles published in periodical journals by an identified and reputable publisher.” Reply 3.11 Petitioner argues that the references were “disseminated on the[ir] stated publication date[s].” Id. at 5. We agree.” slip op. at 18

  Patent outcomesUS 9,931,352 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 9,931,352

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.