• Arris Group, Inc. v. Cirrex Systems, LLC.All claims unpatentable
  PTAB · Dec 17, 2015 · IPR2014-01191 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 59, 61, 74, 76, 78, and 87 are unpatentable under § 103 over Stone and Takashashi, with Shioda, Ohmi, or Garmon applied to dependent claims.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Even under the rule of broadest reasonable interpretation, claim terms generally also are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art would have “[an] education and/or experience in the field of optics” and “in the sub-field of thin-film filters.” Pet. 15 (citing Ex. 1003 ¶ 24). According to Petitioner, such person would have, at a minimum, (1) more than three years of relevant work experience and hold a basic Bachelor’s degree, or (2) less than three years of relevant work experience, but hold a more advanced degree, such as a Masters or a Ph.D. Id. (citing Ex. 1003 ¶ 24). Patent Owner does not comment on Petitioner’s proposed definition of the level of ordinary skill in the art, or offer an alternative definition. See generally, PO Resp. Petitioner relies on the testimony of Dr. Tomlinson, see Pet. 15–20, who testified that he is “an expert in the field of optical assemblies and . . . [has] been an expert in this field since prior to 1965.” Ex. 1003 ¶ 11. Dr. Tomlinson testified that he is “familiar with the knowledge and capabilities of one of ordinary skill in the art” by virtue of his “work as a research assistant, scientist, researcher, supervisor of Ph.D. level researchers and engineers, and project manager.” Id. ¶ 23; see also id. ¶¶ 13–18 (wherein Dr. Tomlinson discusses the specifics of his work). We find Dr. Tomlinson is qualified to give an opinion as to the level of ordinary skill in the art in the field of optics, and adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. Cf. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (explaining that to testify as an expert under Federal Rule of Evidence (FRE) 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.”).” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Tomlinson’s testimony that one of ordinary skill in the art: “would not [have] use[d] a beveled end face for applications where reducing reflected power is not necessary because a beveled end face requires additional machining and, as illustrated by Stone’s Figure 6, makes connection to other fibers more problematic” and “would generally use a perpendicular end face as shown in Stone Figure 1 unless a particular application called for a beveled end face” (Ex. 1020 ¶ 23). We also credit Dr. Tomlinson’s testimony that one of ordinary skill in the art would have been motivated by Takashashi’s description of the benefits provided by a higher packing density, e.g., a reduction in the effect of ambient moisture on filter performance, to substitute one known method of thin film deposition – i.e., the “electron-beam deposition” of Stone – for another know method of thin film deposition – i.e. the reactive-ion plasma process of Takashashi – because the substitution would have yielded a favorable and predictable result. Namely, the combination of Stone and Takashashi would have yielded a thin-film filter with a higher packing density which was less susceptible to volumetric distortion of the film due to ambient moisture, as taught by Takashashi. Ex. 1003 ¶ 100.” slip op. at 17

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

    “We have considered Patent Owner’s arguments and evidence, but are not persuaded that one of ordinary skill in the art would have understood that the filter inefficiencies created by ambient moisture could be addressed adequately by merely beveling Stone’s filter/fiber end face, i.e., we are not persuaded that the ordinary artisan would not have been motivated to increase filter packing density in Stone’s optical assembly. As pointed out by Petitioner, Stone discloses that optical fibers having multilayer thin-films deposited directly on their end faces have advantageous properties, regardless of whether the filters are deposited on perpendicular fiber end faces or on beveled fiber end faces. See Reply 10 (citing Ex. 1005, 1:60– 67). We further agree with Petitioner that Stone’s teaching of a preference for using a beveled end face is limited to “certain situations in which power would be reflected back into the waveguide in a problematic way” (id. at 10–11 (quoting Ex. 1005, 3:57–65)). Patent Owner has not argued, however, nor do we find any language in the claims or specification of the ’970 patent that supports a narrow reading of claim 59 as limited to an optical fiber assembly that is capable of use in an application in which reflected light is problematic. We credit Dr. Tomlinson’s testimony that one of ordinary skill in the art: “would not [have] use[d] a beveled end face for applications where reducing reflected power is not necessary because a beveled end face requires additional machining and, as illustrated by Stone’s Figure 6, makes connection to other fibers more problematic” and “would generally use a perpendicular end face as shown in Stone Figure 1 unless a particular application called for a beveled end face” (Ex. 1020 ¶ 23). We also credit Dr. Tomlinson’s testimony that one of ordinary skill in the art would have been motivated by Takashashi’s description of the benefits provided by a higher packing density, e.g., a reduction in the effect of ambient moisture on filter performance, to substitute one known method of thin film deposition – i.e., the “electron-beam deposition” of Stone – for another know method of thin film deposition – i.e. the reactive-ion plasma process of Takashashi – because the substitution would have yielded a favorable and predictable result. Namely, the combination of Stone and Takashashi would have yielded a thin-film filter with a higher packing density which was less susceptible to volumetric distortion of the film due to ambient moisture, as taught by Takashashi.” slip op. at 17

  Patent outcomesUS 6,222,970 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,222,970
• Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.Some claims unpatentable
  PTAB · Oct 20, 2015 · IPR2014-00730 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–3, 5–14 are unpatentable: claims 1–3, 5, 10–14 anticipated by Smith; claims 6–7 and 8–9 obvious over Smith with Barr and Fouche, respectively. Claims 4 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “construe “difference of motion” in claim 4 as relative motion. Pet. Reply 5– 6. Petitioner in its Reply does not, however, provide a persuasive explanation with respect to how the signal sent by the remote controller in Smith, or its “target motion signal” in the terms of claim 4, may contribute to getting the relative motion between the remote controller and the remotecontrolled device.2 Petitioner submits that “[i]t bears noting, moreover, that the ‘target motion signal’ (STAR3) of Fig. 5 of the ’071 Patent, also is a combination of the remote-controller’s measured orientation and the angle of the joystick, just as in Smith. Ex. 1001, 6:39-51. In that embodiment, it is ‘STAR3’ that is used to calculate the ‘difference of motion.’” Pet. Reply. 7. Petitioner refers to no evidence of record, however, to establish that this “third operation mode” described by the ’071 patent necessarily sends, as in Smith, a target motion signal that is the summation of the terrestrial magnetism signal and the orientation of the joystick relative to the remote 2 Although we did not institute trial on the alternative ground that claim 4 would have been obvious over Smith and Fouche (or the knowledge of a person of ordinary skill in the art) (Pet. 29), the alternative ground for obviousness would suffer from the same deficiency as the anticipation ground. controller. Although attorney arguments are helpful when directing us to evidence in the record, the arguments themselves do not constitute evidence. Arguments of counsel cannot take the place of evidence in the record. See, e.g., Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In consideration of the foregoing, we conclude that Petitioner has not demonstrated, by a preponderance of the evidence, that claim 4 is unpatentable as anticipated by Smith.” slip op. at 17

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

    “The ’071 patent, thus, makes clear that, in the preferred embodiment of the invention, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. The “terrestrial magnetism” of the Earth “directs to a fixed direction parallel to the horizontal ground surface.” Id. at col. 3, ll. 63–65. Detecting the orientation of a remote controller with respect to magnetic North is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed. “A claim construction that excludes the preferred embodiment ‘is rarely, if ever, correct and would require highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).” slip op. at 8

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

    “in orientation.” Pet. 17. As Petitioner indicates (id.), the ’071 patent does not provide a definition of the relevant terms different from the ordinary meaning of the words. At the preliminary proceeding stage, we interpreted “difference of motion” simply to mean, under the required broadest reasonable interpretation, relative motion. Dec. on Inst. 10. That interpretation is consistent with the language of claim 4. Claim 4 recites that the “calculated result” — the calculated current motion of the remote-controlled device — is compared with the target motion signal to get the “difference of motion” (relative motion) between the remote-controlled device and the remote controller. In relation to Petitioner’s proffered interpretation, because a change in orientation is a type of motion, relative orientation would be a type (or species) of “difference of motion.”” slip op. at 9

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

    “Thus, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. Patent Owner has not pointed to any disclosure in the ’071 patent of the remote controller storing a previous orientation for comparison with a present orientation to effect “detect[ing] the remote controller’s motion” as claimed. We, therefore, remain convinced that detecting the orientation of a remote controller with respect to magnetic North — which Patent Owner admits Smith to disclose — is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed.” slip op. at 13

  Patent outcomesUS 7,584,071 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,584,071
• Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.No claims unpatentable
  PTAB · Oct 20, 2015 · IPR2014-00732 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–12 were not shown unpatentable as obvious because Petitioner did not establish that Shkolnikov was analogous art.

  RulingsFinal written decision

  • Expert testimonyOther

    “Owner Response in support of why Shkolnikov is non-analogous art, other than the unfounded reliance on the Decision on Institution, is the observation that the fact Dr. D’Andrea had not heard of Bathiche or Shkolnikov prior to this case is irrelevant to the analogous-art inquiry. Pet. Reply 6; PO Resp. 12. We agree with Petitioner to the extent that the fact Dr. D’Andrea was not aware of the Bathiche and the Shkolnikov references prior to this case has little relevance to the question of whether the references are analogous art. “The issue of obviousness is determined entirely with reference to a hypothetical ‘person having ordinary skill in the art.’ It is only that hypothetical person who is presumed to be aware of all the pertinent prior art.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).” slip op. at 11

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentableNot shown unpatentable

    “Owner Response, it was incumbent upon Petitioner to demonstrate that Shkolnikov is analogous art. The grounds for unpatentability in this proceeding are asserted by Petitioner, not grounds entered by the Board as permitted, for example, in reexamination proceedings. In an inter partes review, the burden of persuasion is on the petitioner to prove unpatentability by a preponderance of the evidence (35 U.S.C. § 316(e)), and that burden never shifts to the patentee. Dynamic Drinkware, LLC v Nat’l Graphics, Inc., No. 2015-1214, 2015 WL 5166366, at *2 (Fed. Cir. Sept. 4, 2015). Petitioner has not met its burden in showing that Shkolnikov is analogous art. Moreover, Petitioner cannot rely on the Board to make new findings regarding analogous art in a final written decision.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “1011). Paper 19. Because consideration of Dr. D’Andrea’s Declaration does not change the outcome in favor of Patent Owner in this final written decision, the motion to exclude is dismissed as moot.” slip op. at 14

  Patent outcomesUS 8,106,748 not shown unpatentable
  § 103 obviousnesscites Graham
  Patents in suitUS 8,106,748
• Torrent Pharmaceuticals Limited / Apotex, Inc. et al. v. Novartis AG And Mitsubishi Pharma Corp.All claims unpatentable
  PTAB · Sep 24, 2015 · IPR2014-00784 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over Chiba and Aulton; the motion to amend with proposed claims 33–64 is denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “institute an inter partes review of claims 1–32 of U.S. Patent No. 8,324,283 B2 (“the ’283 patent,” Ex. 1001). Paper 2 (“Pet.”).1 On December 1, 2014, the Board instituted trial to review patentability of the challenged claims. Paper 11 (“Dec. on Inst.”). Apotex, Inc. and Mylan Pharmaceuticals Inc. (“Apotex,” or, together with Torrent, “Petitioners”) filed a separate Petition also seeking to institute an inter partes review of claims 1–32 of the ’283 patent. IPR2015-00518, Paper 1 (“IPR-518 Pet.”). This second Petition was accompanied by a motion seeking joinder with the trial that had been instituted in IPR2014-00784. IPR2015-00518, Paper 2 (“IPR-518 Joinder Mot.”). On February 17, 2015, the Board instituted trial in IPR2015-00518 and joined the proceedings in IPR2014-00784 and IPR2015-00518. IPR2015-00518, Paper 8 (“IPR-518 Dec.”).” slip op. at 2

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

    “unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276–79 (Fed. Cir. 2015). Under that standard, absent any special definitions, we assign claim terms their ordinary and customary meaning, as understood by a person of ordinary skill in the art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we do not construe several terms for which constructions were proposed in the Petition but about which the parties do not disagree.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Where the prior art teaches the claimed invention, a claim is not rendered patentable by virtue of being motivated in the inventors’ minds by a newly-discovered advantage of the prior-art combination; allowing such a claim to stand “would remove from the public that which is in the public domain.” In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979); see also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”). Here, Patent Owners argue that the newly discovered low-dose instability of fingolimod when mixed with common excipients motivated the inventors’ choice of the allegedly less common mannitol as an excipient. PO Resp. 12–15 (citing Ex. 2043 ¶¶ 14–19, 22, 24–36). As explained above, though, it does not matter that the prior art failed to recognize this advantage of a fingolimod-mannitol combination. “[T]he motivation in the prior art to combine the references does not have to be identical to that of the [patentee] to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996).” slip op. at 14

  Patent outcomesUS 8,324,283 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,324,283
• Nelson Products, Inc. v. Bal Seal Engineering, Inc.All claims unpatentable
  PTAB · Sep 24, 2015 · IPR2014-00572 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–16 and 19 are unpatentable: claims 1–3, 5–11, 13–16, and 19 as anticipated by Guertin; claims 4 and 12 as obvious over Guertin and Poon; and all challenged claims under separate Poon grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We are not persuaded that the subject matter of Figures 11–20 of the Poon reference are “by another.” Mr. Poon and Mr. Balsells were joint inventors under the standards highlighted by the court in Kimberly-Clark. They exhibited elements of joint behavior: they worked at the same company, under common direction, at the same physical location. Mr. Poon and Mr. Balsells exchanged notes and drafts leading to the final invention described in the Poon reference. The inventors worked on the same subject matter and made contributions to the inventive thought and to the final result. Monsanto Co. v. Kamp, 269 F.Supp. 818, 824 (D.D.C. 1967). The collaborative nature of the invention is apparent in the evidence presented by Petitioner, in which Mr. Poon and Mr. Balsells could not avoid acknowledging the elements of their common contributions to the invention claimed in the Poon reference. To the extent that the burden of production shifted to Patent Owner, Patent Owner presented evidence in support of its arguments that Poon and Balsells were not joint inventors of the Poon reference. Weighing all the evidence before us, however, we are persuaded that the record as a whole supports Petitioner’s argument that Poon is prior art under 35 U.S.C. § 102(e).” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “groove. Figure 1 shows that the pin groove has tapered sidewalls. Figure 2, in which pin groove 43 is called out, also shows that pin groove 43 has tapered sidewalls. Figure 6 is not as clear as Figure 1 in its depiction of the sidewalls of pin groove 43, but pin groove 43 also is partially obscured by spring 76. Figure 1 is in a different position (fully engaged) than Figure 6 (not completely engaged), which Patent Owner agrees is the case. PO Resp. 32. Petitioner’s expert Mr. Imler further testified that, based on his experience in manufacturing the breakaway couplings described in Guertin, any variations among Figure 1, 2, and 6 “are the product of inaccuracies in the drawings.” Imler Decl. ¶ 27 (cited in Pet. Reply 7–8); see In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (“[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.”).” slip op. at 21

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). slip op. at 18

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “combine the features of Figures 13 and 16 of Poon. Pet. 36–38. Petitioner argues that Figure 16 of Poon is an embodiment with a housing groove having a groove bottom surface, a tapered release surface, a side wall extending from the tapered release surface, and a side wall extending from the groove bottom surface. Id. at 37. As such, Petitioner argues that the embodiments found in claims 7, 15, and 16 merely combine known elements, such as the tapered surface extending from a groove bottom surface in Figure 13, and perpendicular sidewalls shown in Figure 16. Id. at 38. Patent Owner did not contest whether combining Poon’s embodiments would be a mere design choice. Poon discloses a wide range of designs for the housing groove, including designs containing and combining the various elements identified by Petitioner, which supports the argument that the elements could be combined as a matter of design choice.” slip op. at 14

  Patent outcomesUS 8,297,662 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,297,662
• Torrent Pharmaceuticals Limited / Apotex, Inc. et al. v. Novartis AG And Mitsubishi Pharma Corp.All claims unpatentable
  PTAB · Sep 24, 2015 · IPR2015-00518 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over Chiba and Aulton; Patent Owners’ motion to amend with claims 33–64 is denied.

  RulingsFinal written decision

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

    “discovered a new advantage of a combination of prior-art ingredients is not sufficient to render the claims of the ’283 patent patentable, as long as there was some reason to combine the prior-art teachings that those ingredients should be used. Patent Owners argue that Petitioners have failed to prove such a reason to combine, PO Resp. 41–49, but the record establishes otherwise. First, Chiba teaches that a person of ordinary skill in the art would have been able to identify or easily determine excipients that would have been compatible with fingolimod. Ex. 1006, 11:24–28 (“pharmaceutically or physiologically acceptable carriers or excipients for use with the . . . compounds noted herein are known in the art or can be readily found by methods and tests known in the art”). Second, Aulton teaches that mannitol is not only a known diluent for direct compression manufacturing, but also commonly used in wet granulation, which Aulton teaches is “the most widely used method for pharmaceutical materials.”12 Ex. 1021, 39–41, Table 18.1. This combination of teachings already strongly suggests that mannitol likely would have been a target of investigation for a person of ordinary skill in the art interested in finding an excipient compatible with fingolimod, but there is additional evidence of the reason to combine fingolimod and mannitol.” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for petitioner

    “and mannitol shows unexpected results. “It is the established rule that ‘objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed. Cir. 2014) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). This is as true for evidence of unexpected results as it is for any other type of objective evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“the applicant’s showing of unexpected results must be commensurate in scope with the claimed range”); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980) (“In order to establish unexpected results for a claimed invention, objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.”). The evidence of unexpected results made of record is not commensurate in scope with claim 19. First, according to Patent Owners, the claimed combination was stable at low doses of fingolimod, even though combinations of fingolimod and other excipients were unstable at those same low doses. PO Resp. 54; see also id. at 11–15 (citing Ex. 2042 ¶¶ 39–40; Ex. 2043 ¶¶ 14–19, 22, 24–36) (describing difference in results between low-dose fingolimod-mannitol mixtures and mixtures of low doses of fingolimod with other excipients). But, as Petitioners note, Reply 3–4 (citing Ex. 1031 ¶ 85; Ex. 2271, 50:21– 51:919), claim 19 is not limited to any particular dose or dose range of fingolimod. Instead, claim 19 recites only a solid oral dosage form containing mannitol and either fingolimod or a pharmaceutically acceptable salt of fingolimod. Ex. 1001, 18:7–10. Thus, even if the stability of the mannitol-fingolimod combination at low doses was unexpected, it is insufficient to support a legally significant finding of unexpected results. Second, Patent Owners argue that the stability achieved with mannitol “is superior to other choices [of excipient] to a surprising extent,” given that “mannitol preserves 4.5 to 11 times as much fingolimod as lactose, microcrystalline cellulose, and starch.” PO Resp. 54 (citing Ex. 2007 ¶¶ 12– 13). This evidence of unexpected results suffers from the same flaw discussed above. See Reply 17 (citing Ex. 1031 ¶ 85). Not only is this evidence limited to low doses of fingolimod, it is limited to a single, specified dose, 0.25 mg. Ex. 2007, 5 (stating that testing was performed using 25 µL of a 10 mg/mL drug substance solution). As such, it is evidence of unexpected results only across a tiny portion of the unlimited dose range 19 A public version is available at Ex. 2276, 50:21–51:9. of claim 19, which is insufficient to support a finding of unexpected results.20” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia no nexusDecided for petitioner

    “We find Petitioners’ argument persuasive. If objective indicia of nonobviousness are “due to an element in the prior art, no nexus exists.” Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (discussing commercial success). Here, the evidence of long-felt need shows that there was a need merely for a solid oral multiple sclerosis medication, not specifically for a medication of the form recited in claim 19. But the general need for a solid oral multiple sclerosis medication was 21 Patent Owners are reminded that 37 C.F.R. § 42.23(a) requires a Response to “comply with the content requirements for motions,” and 37 C.F.R. § 42.22(a)(2) requires motions to include “a detailed explanation of the significance of the evidence.” satisfied in the prior art. In 1999, Chiba itself suggested treating multiple sclerosis using a solid oral form of fingolimod. Ex. 1006, 6:26–49, 8:19–26. In addition, teriflunomide, marketed in solid tablet form as Aubagio®, was known in the prior art at least by April 1, 2002, when it was disclosed to be useful for treating multiple sclerosis when administered in tablets or capsules. Ex. 1037, at [22], 1:19–30, 2:60–3:2, 5:1–21; Ex. 2045 ¶ 63.22 Similarly, a capsule form of dimethyl fumarate for the treatment of multiple sclerosis, marketed as Tecfidera™, Ex. 1070, 2, was disclosed in U.S. Patent No. 6,509,376 B1, issued January 21, 2003. Ex. 1097, at [45], 2:64–67, 4:25–27, 4:31–33. Because the prior art contained solid oral multiple sclerosis treatments using active ingredients other than fingolimod, the fingolimod claimed in claim 19 was not necessary to satisfy any long-felt need for a solid oral multiple sclerosis treatment. Nor was the mannitol recited in claim 19: the evidence of record shows that sugar alcohols were not necessary to make even fingolimod suitable for oral administration. Ex. 2271, 250:10– 251:15.23 Accordingly, claim 19 did not solve any need for a solid oral multiple sclerosis treatment that was not already solved in the prior art.” slip op. at 24

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

    “Industry praise must be linked to the patented invention. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010). Again, if objective indicia of nonobviousness are “due to an element in the prior art, no nexus exists.” Tokai Corp., 632 F.3d at 1369. Here, the evidence shows that what was praised about Gilenya was not the specific formulation recited in claim 19, but rather the general fact that Gilenya was a solid oral multiple sclerosis medication. As discussed above, however, a solid oral multiple sclerosis formulation was known in the prior art, so there is no nexus between the claimed invention and the industry praise.” slip op. at 26

  Patent outcomesUS 8,324,283 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 8,324,283
• Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing denied
  PTAB · Sep 2, 2015 · IPR2014-01260 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied Hamilton Beach’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood that claims 1–53 were obvious over the cited combinations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “filed Petition were changed in accordance with Board instructions that states a “mere citation to an expert declaration (e.g., ‘See Ex. 1015 ¶ 29’) in a claim chart is permissible, but anything more than a mere citation is improper.” Mot. 14 (citing Paper 3), 15. Petitioner is correct that a mere citation to an expert declaration is permissible in a claim chart, but a mere citation without an explanation elsewhere in the petition as to the importance of that citation can be deemed an attempt to bypass page limits for petitions. After considering the cited portions of the Petition, we determine Petitioner has not shown that the Board misapprehended or overlooked a matter addressed in the Petition, and therefore, has not carried its burden of demonstrating an abuse of discretion in the Board’s decision.” slip op. at 7

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

    “likelihood of prevailing on its assertions that claims 1–53 of the ’884 patent are unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 6,164,191 to Liu, iss. Dec. 26, 2000 (Ex. 1002, “Liu”); U.S. Patent No. 5,840,189 to Sylvan, iss. Nov. 24, 1998 (Ex. 1003, “Sylvan”); and U.S. Patent No. 3,446,624 to Luedtke, iss. May 27, 1969 (Ex. 1004, “Luedtke”) or over U.S. Patent No. 3,620,155 to Bixby, iss. Nov. 16, 1971 (Ex. 1005, “Bixby”); Sylvan; and Luedtke. Dec. 9, 11.” slip op. at 2

  • BurdenDecided for patent owner

    “filed Petition were changed in accordance with Board instructions that states a “mere citation to an expert declaration (e.g., ‘See Ex. 1015 ¶ 29’) in a claim chart is permissible, but anything more than a mere citation is improper.” Mot. 14 (citing Paper 3), 15. Petitioner is correct that a mere citation to an expert declaration is permissible in a claim chart, but a mere citation without an explanation elsewhere in the petition as to the importance of that citation can be deemed an attempt to bypass page limits for petitions. After considering the cited portions of the Petition, we determine Petitioner has not shown that the Board misapprehended or overlooked a matter addressed in the Petition, and therefore, has not carried its burden of demonstrating an abuse of discretion in the Board’s decision.” slip op. at 7

  None
  Patents in suitUS 7,258,884
• Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing denied
  PTAB · Sep 2, 2015 · IPR2014-01258 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied Hamilton Beach’s rehearing request, leaving institution denied for claims 22–24, 49–51, 54, 55, 65, and 66 based on insufficient § 103 showing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2

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

    “likelihood of prevailing on its assertion that claims 22–24, 49–51, 54, 55, 65, and 66 of the ’512 patent as unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 6,164,191 to Liu, iss. Dec. 26, 2000 (Ex. 1002, “Liu”); U.S. Patent No. 5,840,189 to Sylvan, iss. Nov. 24, 1998 (Ex. 1003, “Sylvan”); and U.S. Patent No. 3,446,624 to Luedtke, iss. May 27, 1969 (Ex. 1004, “Luedtke”) or over U.S. Patent No. 3,620,155 to Bixby, iss. Nov. 16, 1971 (Ex. 1005, “Bixby”); Sylvan; and Luedtke. Dec. 15–17, 18. Specifically, for claims 22–24 and 49–51, we determined that the Petition failed to explain how the relied upon references teach the limitations and how those same references would be combined. Dec. 12–13, 15. For claims 54, 55, 65, and 66, we agreed with Patent Owner that the Petition fails to explain where limitations are found and improperly incorporates arguments by reference to a Declaration of Alexander H. Slocum (Ex. 1009, “Slocum Declaration”). Dec. 17, 19.” slip op. at 2

  • BurdenDecided for patent owner

    “A petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). The Slocum Declaration contains argument, not discussed adequately in the Petition, regarding where limitations are found in the references and why an ordinary artisan would have been led to combine the references to attain the subject matter of claim 26. Under these circumstances, the Petition violates our rule that prohibits arguments made in a supporting document from being incorporated by reference into a petition. See 37 C.F.R. § 42.6(a)(3). After considering the cited portions of the Petition, we determine Petitioner has not shown that the Board misapprehended or overlooked a matter addressed in the Petition, and therefore, has not carried its burden of demonstrating an abuse of discretion in the Board’s decision.” slip op. at 5

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

    “hospitality industry regulations teaches this limitation.” Pet. 33, 37 (citing Ex. 1007 ¶¶ 53–55; Ex. 1009 ¶¶ 100, 108). The portion of the Petition now cited by Petitioner provides a description of Liu, Sylvan, and Luedtke (Pet. 17–19) and a “Motivation to Combine Liu with Sylvan and Luedtke” (Pet. 19–22). Petitioner’s arguments do not explain how the descriptions of Liu, Sylvan, and Luedtke, and the asserted rationales to combine these particular references, support the contention that “Liu in view of relevant hospitality industry regulations teaches this limitation”—where the cited portions do not discuss “relevant hospitality industry regulations.” In sum, Petitioner does not direct us to any argument in the Petition that would have supported extending our analysis, regarding independent claims 53 and 64 and Liu, Sylvan, and Luedtke, to claims 54 and 65, or an analysis of “Liu in view of relevant hospitality industry regulations.” We are, therefore, unpersuaded to modify our Decision regarding claims 54 and 65.” slip op. at 3

  § 103 obviousness
  Patents in suitUS 7,770,512
• Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing denied
  PTAB · Sep 2, 2015 · IPR2014-01257 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied Hamilton Beach’s rehearing request, leaving claims 6, 7, 19, and 26 uninstituted because the Petition did not adequately explain the asserted obviousness combinations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2

  • BurdenNot shown unpatentable

    “Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4

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

    “Petitioner cites a part of its Petition that is titled “Motivation to Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4

  § 103 obviousnesscites KSR
  Patents in suitUS 7,311,037

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.