• Abbott Laboratories v. Miracor Medical SANo claims unpatentable
  PTAB · Jun 11, 2026 · IPR2025-00116 · APJ John D Hamann · IPR · Final written decision

  The Board held claims 1–5, 7, 10, 16–24, 26, and 28 not unpatentable under any of the four § 103 grounds because the petition failed to prove required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that the ’077 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’077 patent is consistent with the definition of one of ordinary skill in the art proposed by Petitioner, which we adopt. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We further find that our determinations in this Decision would be the same if we were to instead adopt the level of skill proposed by Patent Owner.” slip op. at 11

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

    “We agree with Patent Owner that “axially adjacent” should be given its plain and ordinary meaning of “adjacent to one another as measured along a central axis.” PO Resp. 5–6; see also Ex. 2015 ¶¶ 73–79 (Mr. Leschinsky addressing the claim term “axially adjacent” and explaining that a person of ordinary skill would have understood it to mean that the “first magnetic device and the rotor are ‘adjacent’ to one another, i.e., disposed next to one another, as measured along the central axis about which the rotor spins”). Patent Owner’s construction also is supported by Petitioner’s expert, Mr. Crosby, who agrees that “adjacent to one another as measured along a central axis,” could be “one meaning,” along with “many other meanings.” Ex. 2014,8 19:13–20:11. In sum, consistent with our Institution Decision, we conclude that the plain and ordinary meaning of “axially adjacent” is “at a position adjacent to one another as measured along a central axis.” See Dec. on Inst. 12.” slip op. at 14

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

    “Second, for the reasons below, we determine that we do not need to construe any other claim terms to resolve the disputes between the parties. See, e.g., 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)) (“[W]e need only construe” slip op. at 14

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

    “We agree with Patent Owner. As we discuss above, we find “axially adjacent” to mean “adjacent to one another as measured along a central arguments that rest on Petitioner’s assertion that in the Parallel Litigation, Patent Owner “asserts that a magnetic element sealed within a rotor is . . . ‘axially adjacent.’” Id. at 20–21, n.6 (citing Ex. 1019, 5–7). In particular, we find unavailing Petitioner’s argument that Wampler teaches that magnetic pieces 88 (“a first magnetic device”) “are inserted [‘axially adjacent’] in…the impeller.” Id. at 20–21 (citing Ex. 1008 ¶ 80, Fig. 13; Ex. 1003 ¶ 174). We also find unavailing Petitioner’s reliance on Wampler’s Figure 13 and Mr. Crosby’s cited testimony that “the ‘impeller’ and ‘magnetic pieces’ are axially adjacent—situated next to each other on the same axis.” Id. at 21–22 (annotating Ex. 1008, Fig. 13; citing Ex. 1003 ¶¶ 174–176). Petitioner does not sufficiently explain this argument, but appears to conflate being adjacent along a central axis with about an axis. Id. We also find unavailing Petitioner’s argument that under Patent Owner’s construction, Wampler also teaches this limitation, because Patent Owner “concedes that ‘axially adjacent’ components ‘have positioning that is next to one another, perhaps touching or sharing a common side, when measured along the axis.’” Pet. Reply 14–15 (citing PO Resp. 14). Petitioner mischaracterizes Patent Owner’s arguments and ignores Patent Owner’s showing that “axially adjacent” components are “distinct from components that are aligned with one another such that they overlap or occupy the same portion of an axis upon which they are positioned.” PO Resp. 14 (citing Ex. 2015 ¶ 78). For the preceding reasons, Petitioner fails to show by a” slip op. at 24

  Patent outcomesUS 11,754,077 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,754,077
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · May 30, 2024 · IPR2020-00712 · APJ James A Tartal · IPR · Remand

  Claims 3–6, 9–12, and 15–18 were not proven unpatentable because the petitioner failed to show the required two inputs in the asserted prior art.

  RulingsRemand decision

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

    “The Specification of the ’148 patent states that “an alignment measurement may be made by measuring a value, e.g., current or voltage, associated with, e.g., proportional to, the current passing through [the] rechargeable power source.” Id. at 21:3–6. We therefore find that the Specification expressly identifies “current or voltage” as examples of “a value.” Id. In the FWD, we stated that “[a]lthough the ’148 patent makes clear that ‘a value’ may include, for example ‘voltage,’ we agree with Patent Owner that the two independent limitations should be construed such that the Value Limitation does not render superfluous the Signal Limitation or the Measured Voltage Limitation.” FWD 26. We further determined that “the Value Limitation and the Signal Limitation, as well as the Value Limitation and the Measured Voltage Limitation both require two separate inputs to the external power source.” Id. That determination is not at issue here. See Axonics, 75 F.4th at 1379–80 (stating that Petitioner did “not argue the Board erred in adopting the two-input claim construction”). 2. Additional Claim Terms We find no additional claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references . . . is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.3 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a value associated with current passing through the internal battery, as required by the Value Limitation, is not in dispute. Dr. Mihran, for example, states that “Schulman discloses that the sole input provided to the external power” slip op. at 34

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

    “Patent Owner argues, and we agree, that the measured current through R9 is the only input to the external power source Schulman APO Sur-reply 14–15. Patent Owner further argues, and we further agree, that the voltage across output leads 51 and 52 of Schulman is not an input to the external power source separate from the measured current through R9 in Schulman. See APO Sur-reply 11–16 (citing, e.g., Ex. 1003 ¶ 75; Ex. 2002 ¶ 46; Ex. 1005, 6:35–38; Ex. 2010 ¶¶ 4–7). In support of Patent Owner, Dr. Mihran states that “[t]he voltage between nodes 51 and 52 is never provided to the external power source in Schulman.” Ex. 2010 ¶ 4. According to Dr. Mihran, “Schulman discloses that the sole input provided to the external power source that the external power source uses to automatically regulate its power output is the input that derives from the amount of current flowing through the current sampling resistor R9.” Id. ¶ 5 (emphasis omitted) (citing Ex. 1005, 4:45–53, 6:35–38; Ex. 2002 ¶ 46). Dr. Mihran further states as follows: My understanding of Dr. Panescu’s opinion is that he does not contend that the voltage between nodes 51 and 52 is ever sent to the external power source as an input, and instead simply asserts that if “the voltage across leads 51 and 52 exceeds a predetermined amount,” then the current through R9 increases, which in turn “causes the power supplied by the external power source to decrease.” (Ex. 1012 at ¶16.) This does not represent a separate input, however, because the input derived from the current flowing through the current sampling resistor R9 (i.e. the load modulation frequency of telemetry circuit 12, the components of which “form a free-running multivibrator”) is what Dr. Panescu also identifies as satisfying the first input, “a value associated with said current passing through said internal battery.” (Ex. 1012 at ¶14 (“when the current through the internal battery . . . increases above a predetermined target value, the current regulator turns on, increasing the current through current sampling resistor R9.”) operating conditions may influence the value” of the amount of current flowing through current sampling resistor R9, and the current through R9 is the “only value that is communicated to the external power source,” corresponding to a single input that “cannot satisfy both of the two inputs required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent.” Id. ¶ 6. Dr. Mihran further states as follows: I understand Dr. Panescu’s opinion to be that, because Schulman discloses that the current through R9 is used by the external charger to automatically vary its output, any “value” that influences the amount of current through resistor R9 is a “separate respective input[] used by the external power source as a basis for automatically varying its power output.” ([Ex. 1012 ¶14].) In other words, Dr. Panescu simply identifies a voltage across two points in the circuit that he claims affects the current through R9 and contends that that voltage satisfies one of the two required separate inputs based on its alleged indirect impact on the output of the external charger. This strained interpretation of the claims renders superfluous the two separate inputs to the external power source required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent: (1) “a value associated with said current passing through said internal battery” and (2) “a signal proportional to said current passing through said internal battery” (claims 3, 9, and 15) and “measured voltage associated with said current passing through said internal battery” (claims 6, 12, and 18). In any circuit, there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor. For example, in Schulman the current drawn by the stimulation portion of the implant circuit will influence the amount of current through R9. Dr. Panescu’s interpretation that a voltage or current at these components represents a “separate input” in Schulman is incorrect, because the sole input that is telemetered back to the external charger is the input derived from the amount of current flowing through R9.” slip op. at 35

  Patent outcomesUS 8,738,148 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,738,148
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · May 30, 2024 · IPR2020-00680 · APJ James A Tartal · IPR · Remand

  On remand, the Board determined that claims 1, 5, and 9 were not shown unpatentable as anticipated by Schulman, Fischell, or Baumann.

  RulingsRemand decision

  • BurdenNot shown unpatentable

    “consider for purposes of the FWD. We also consider Patent Owner’s Amended Sur-reply, as supported by the Rebuttal Declaration of Dr. Mihran, and the arguments and evidence advanced in the post remand briefs of the Parties. Based on the totality of the record in this case, we determine, for the reasons that follow, that Petitioner does not show by a preponderance of the evidence that any of claims 1, 5, or 9 is anticipated by Schulman, Fischell, or Baumann. A. Principles of Law A claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 17

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11–12 (stating that “the ’758 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 17

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.2 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a measured current, as required by the challenged claims, is not in dispute. Dr. Mihran,” slip op. at 32

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

    “We find that because it is largely unsupported and conclusory, the opinion of Dr. Panescu in his Supplemental Declaration that “Schulman teaches automatically varying the output power of the external power source based on a value, where the value is the voltage across the output leads 51 In his original declaration, Dr. Panescu made clear that, according to Schulman, the output of the external power source was lowered if the charging current, as measured at sampling resistor R9, “exceeds a maximum capacity,” not because of the voltage across output leads 51 and 52. See Ex. 1003 ¶ 127 (quoting Ex. 1005, 7:25–29). Petitioner does not allege that any measurement of voltage across output leads 51 and 52 in Schulman is conveyed to an external power source to automatically vary its power output. Instead, Petitioner’s argument is premised on the notion that if the voltage across leads 51 and 52 exceeds a predetermined amount, then it will affect the current sampled by resistor R9. We also find persuasive Dr. Mihran’s testimony that Petitioner’s strained interpretation renders the Value Limitation superfluous to the Measured Current Limitation because the voltage across leads 51 and 52 was not shown by Petitioner to be a separate input to the external power source. See Ex. 2010 ¶ 7 (explaining that “there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor,” and that influencing the current measured at R9 does not constitute a separate input to the external charger from the measured current at R9). To be clear, we need not resolve whether the challenged claims require each separate input be separately conveyed to the external power source. Here, the burden to show anticipation is on Petitioner and Petitioner offers no persuasive evidence or explanation to establish by a preponderance of the evidence that a person of ordinary skill in the art would have understood the voltage across output leads 51 and 52 corresponds to “a value” based upon which the external power source “automatically” varies its power output, as required by the challenged claims. Nor does skill in the art would have understood the voltage across leads 51 and 52 in Schulman to be a separate input from the measured current at R9 when, at most, Petitioner alleges the voltage across leads 51 and 52 may, in certain circumstances, have some effect on the measured current at R9, itself. Thus, Petitioner does not show by a preponderance of the evidence that Schulman discloses to a person of ordinary skill in the art two separate inputs to the external power source, as Petitioner conceded is required by the Value Limitation and the Measured Current Limitation.” slip op. at 35

  Patent outcomesUS 8,457,758 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,457,758
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00094 · APJ Neil T Powell · IPR · Final written decision

  Petitioner failed to prove claims 1–22 and 24–40 unpatentable; the obviousness grounds fail to show the claimed communication-link initiation and location information in a bet message.

  RulingsFinal written decision

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

    “The ՚266 patent only uses the terms “initiates” and “initiate” in the Abstract and the claims. The Abstract discloses that “the computer initiates a communication link with, and transmits the notification message to,” a communication device. Ex. 1001, code (57). In describing the methods depicted in Figures 9 and 10, the ՚266 patent provides that after detecting a posting for which the user would like to be notified, in step 904 gaming facility computer 30 generates a user notification message and transmits that message to user communication device 20, in real-time or otherwise, as a pager, beeper, pre-recorded, instant, facsimile, and/or email message and/or a telephone call. Ex. 1001, 57:29–35, 58:62–59:15. A general dictionary definition of “initiate” is “to cause or facilitate the beginning of: set going.” Merriam-Webster On-line Dictionary, available at https://www.merriam-webster.com/dictionary/initiate (last visited April 3, 2024). Thus, after evaluating the Parties’ claim construction arguments regarding the term, we agree with Patent Owner and construe the term causing or facilitating the beginning of a communication link.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art would have had “a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶¶ 43–44). Patent Owner, as noted above, did not file a Preliminary Response in this proceeding and, therefore, has not contested Petitioner’s proposed definition. For purposes of this Decision, we find that the ’266 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’266 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Although Mr. Kitchen testified that it was old and well known as the time of the ՚266 patent to initiate a communication link and that there would have been a reasonable expectation of success to configure Garahi’s system to do so, Mr. Kitchen does not explain why one of ordinary skill in the art would have been motivated to or would have benefited from such a modification of Garahi’s system. Mr. Kitchen testifies that “[h]aving the TPSMS establish the communication link would have been obvious because doing so would allow the sending of wagering information to a user.” Ex. 1003 ¶ 139. Yet, Garahi’s system already allows for the sending of wagering information to the user in posting the generated notification message to a “Message Board.” Ex. 1004 ¶¶ 89, 107, 110. The existence of a new message is indicated by a display icon 318 next to the option “Message Board” in an interface 300 having multiple options. Ex. 1004 ¶¶ 89, 107, 110, Figs. 3, 12, 13. In order to receive the message, the user must first access the Message Board by selecting the related option, after which the information is displayed to the user. Id. That it was well-known in the art to have initiated a communication link does not explain how or why a skilled artisan would have modified Garahi’s system that notifies a user of wagering information by posting on a message board to notify a user by initiating a communication to the user. Simply because a skilled artisan could have modified Garahi’s system to incorporate initiating the communication link does not explain why they would have had reason to do so. See In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). posting or transmitting race information to the user’s Message Board, alone or in combination with the well-known technique of initiating a communication link, would have made it obvious to have the claimed computer initiate a communication link with a first communication device in response to generating the notification message.” slip op. at 28

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

    “Although Mr. Kitchen testified that it was old and well known as the time of the ՚266 patent to initiate a communication link and that there would have been a reasonable expectation of success to configure Garahi’s system to do so, Mr. Kitchen does not explain why one of ordinary skill in the art would have been motivated to or would have benefited from such a modification of Garahi’s system. Mr. Kitchen testifies that “[h]aving the TPSMS establish the communication link would have been obvious because doing so would allow the sending of wagering information to a user.” Ex. 1003 ¶ 139. Yet, Garahi’s system already allows for the sending of wagering information to the user in posting the generated notification message to a “Message Board.” Ex. 1004 ¶¶ 89, 107, 110. The existence of a new message is indicated by a display icon 318 next to the option “Message Board” in an interface 300 having multiple options. Ex. 1004 ¶¶ 89, 107, 110, Figs. 3, 12, 13. In order to receive the message, the user must first access the Message Board by selecting the related option, after which the information is displayed to the user. Id. That it was well-known in the art to have initiated a communication link does not explain how or why a skilled artisan would have modified Garahi’s system that notifies a user of wagering information by posting on a message board to notify a user by initiating a communication to the user. Simply because a skilled artisan could have modified Garahi’s system to incorporate initiating the communication link does not explain why they would have had reason to do so. See In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). posting or transmitting race information to the user’s Message Board, alone or in combination with the well-known technique of initiating a communication link, would have made it obvious to have the claimed computer initiate a communication link with a first communication device in response to generating the notification message.” slip op. at 28

  Patent outcomesUS 10,147,266 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,147,266
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00093 · APJ Neil T Powell · IPR · Final written decision

  The Board held claims 1–20 not unpatentable because Petitioner did not show that the asserted combinations rendered the claims obvious, including the required location information in a bet message.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would be a person having a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶ 45). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. See PO Resp. We find that the ’341 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’341 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art, which is consistent with the definition we adopted in our Decision to Institute. See Inst. Dec. 12–13.” slip op. at 14

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

    “37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The Parties construe certain claim language. Pet. 5–7; PO Resp. 14–18; Pet. Reply 1–5. In this proceeding, resolving the Parties’ patentability dispute does not require construing any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15

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

    “Petitioner contends it would have been obvious to include McNutt’s location data “with” Garahi’s bet message, i.e., wagering data comprising the type and desired amount of wager. Pet. 30. However, Petitioner has not explained why a skilled artisan would modify Garahi’s bet message to include the location data of McNutt. Petitioner contends that a skilled artisan would do so “to be able to discern the legality of a placed bet as McNutt discloses if a user of Garahi’s system moves to a wager-prohibitive location, e.g., the state of Oklahoma.” Pet. Reply 14 (citing Pet. 29–30; Ex. 1003 ¶¶ 154–156; Ex. 1005 ¶¶ 111, 114). We agree with Patent Owner that Petitioner fails to persuasively identify any “deficiency in Garahi which McNutt purportedly solves, inasmuch as Garahi already discloses obtaining” and using the location of the user to discern the legality of a placed bet at the user’s location. PO Resp. 40; Ex. 1004 ¶ 50. Petitioner has not provided any further benefit to add location information into Garahi’s bet message having wagering data. Further, Petitioner has not shown a reason outside of hindsight. The ՚341 patent specifically provides that transmitting “information regarding the position or location of the first device or second device” is for “determin[ing] if the bet is allowed or disallowed using position or location information of the first device or the second device.” Ex. 1001 code (57); see also id. at 6:59–66, 16:22–31, 80:10–81:4, Fig. 20A (discussing process for determining whether the bet is allowed based on the user’s location). To the extent that Garahi teaches transmitting a message with wagering data, and McNutt teaches location information may be obtained “when the user initiates the wager,” Petitioner has shown no persuasive reason why a person of ordinary skill in the art would have had reason to include the location information of McNutt with the wagering data of Garahi in a single bet message, as required by claim 1. Thus, the preponderance of evidence does not show that the prior art would have made it obvious to have the bet message comprise the location information.” slip op. at 30

  Patent outcomesUS 10,043,341 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,043,341
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00092 · APJ James A Tartal · IPR · Final written decision

  Claims 1–14 and 16–20 were not shown unpatentable because the asserted obviousness combinations did not establish the claimed location information in a bet message or a sufficient reason to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art would have had “a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 5 (citing Ex. 1003 ¶¶ 43–44). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. See PO Resp. We find that the ’920 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’920 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art, which is consistent with the definition we adopted in our Decision to Institute. See Inst. Dec. 10–11.” slip op. at 14

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

    “We find no claim term requires express construction, because, for the reasons provided below, resolving the Parties’ patentability dispute in this case does not require construing any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “information of the user telephone equipment to verify that the user is located in a geographic area where wagering is legal,” but Petitioner acknowledges that “Garahi does not specify exactly how or when this verification [that the user is located in a geographic area where wagering is legal] occurs or whether the location information is transmitted to the TPSMS with the wagering data.” Id. at 40. Notwithstanding Petitioner’s suggestion that there is ambiguity as to whether Garahi may include position or location information in its “wagering data,” the evidence advanced by Petitioner is unequivocal on this point. When asked whether Garahi, alone, discloses a bet message that contains position or location information, Mr. Kitchen testified on behalf of Petitioner that “Garahi certainly doesn’t.” Ex. 2001, 140:19–141:8; see also Pet. Reply 18 (stating that Mr. Kitchen testified “only that ‘Garahi certainly doesn’t’ disclose the transmission of location information with a bet”) (citing Ex. 2001, 139:12–141:5); Ex. 2001, 124:3–7 (Mr. Kitchen confirming that Garahi does not disclose everything in “element 1(c)(iii)”). Petitioner, accordingly, relies on McNutt, in combination with Garahi, and asserts that “it would have been obvious” to a person of ordinary skill in the art to have configured “Garahi to include the user communication device’s location information in the wagering data (i.e., the bet message) as provides no persuasive evidence that McNutt teaches including “location information” in “wagering data” that corresponds to a “bet message.” To the contrary, Mr. Kitchen testified that “McNutt does not disclose a bet message,” and therefore, does not, alone, teach including location information in the wagering data as a part of a bet message. Instead, as Mr. Kitchen explains, Petitioner’s argument is premised on combining “location which is obtained by McNutt at the institution of the bet” with the wagering data transmitted by Garahi. See Ex. 2001, 136:8–24.” slip op. at 33

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

    “combination in regard to the bet message limitation, and we recognize that asserted prior art must not be considered in isolation, but for all that it teaches in the asserted combination, missing from Petitioner’s contentions is any persuasive evidence that a person of ordinary skill in the art would have had reason to include position or location information based on McNutt in the wagering data of Garahi that Petitioner contends corresponds to a “bet message.” There is no persuasive evidence that the mere fact that McNutt teaches that location information may be obtained “when the user initiates the wager” would have been understood by a person of ordinary skill in the art to have taught or suggested including that location information with the wagering data of Garahi in a single “bet message,” as required by the Challenged Claims. To the contrary both Garahi and McNutt describe systems that first determine whether a bet may be placed from a location before allowing a user to transmit wagering data corresponding to “information regarding a bet to be place.” See, e.g., Ex. 1004 ¶ 50; Ex. 1006 ¶ 111, Fig. 12; Ex. 2001, 135:3–25, 137:11–22 (Mr. Kitchen testifying that in McNutt, the location information is obtained at the creation of the bet, i.e., when the user initiates the wager creation process, and allows or prevents access to the gambling apparatus). Petitioner contends that a skilled artisan would have done so to have been able to “discern the legality of a placed bet as McNutt discloses if a user of Garahi’s system moves to a wager-prohibitive location.” Pet. Reply 17 (citing Pet. 40–41; Ex. 1003 ¶¶ 173, 175, 176; Ex. 1006 ¶¶ 111, persuasively identify any “deficiency in Garahi which McNutt purportedly solves, inasmuch as Garahi already discloses obtaining location information” and using that information to discern the legality of a placed bet at the user’s location. PO Resp. 44; Ex. 1004 ¶ 50. Petitioner has not provided any further benefit to be obtained by adding location information into Garahi’s bet message having wagering data. Petitioner has not shown a sufficient reason supported by a preponderance of the evidence to modify Garahi based on the teachings of McNutt, outside of hindsight based on the disclosures of the ’920 patent, which, itself, explains that a determination of whether a bet is allowed or disallowed is based on the position or location of the user communication device having been transmitted as part of a bet message with information regarding a bet to be placed. See, e.g., Ex. 1001, 59:16–47, 94:53–95:5. In sum, we find that a preponderance of the evidence fails to show that Garahi and McNutt, in combination with Stadelmann, teaches or suggests including position or location information in a bet message, as required by the Challenged Claims. To the extent that Garahi teaches transmitting a message with wagering data, and McNutt teaches that location information may be obtained “when the user initiates the wager,” Petitioner has shown no persuasive reason why a person of ordinary skill in the art would have had reason to include the location information of McNutt with the wagering data of Garahi in a single bet message, as required by the Challenged Claims.” slip op. at 41

  Patent outcomesUS 9,965,920 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,965,920
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00095 · APJ Amee A Shah · IPR · Final written decision

  Claims 1–13 and 16–20 were not shown unpatentable because Petitioner did not establish the asserted obviousness combinations or adequate reasons to combine.

  RulingsFinal written decision

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

    “Patent Owner asserts that “the phrase ‘initiates a communication link’ should be given its plain and ordinary meaning, which includes a construction of ‘initiates’ to mean simply: ‘to cause a process or action to begin.’” PO Resp. 13. Patent Owner disagrees with the construction provided by Petitioner “which would suggest ‘initiates a communication link’ is satisfied by the mere joining of a communication network.” Id. (citing Ex. 2001, 115:15–23).” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would be a person having a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶¶ 45–46). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. See PO Resp. We find that the ’755 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’755 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art, which is consistent with the definition we adopted in our Decision to Institute. See Inst. Dec. 15.” slip op. at 17

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

    “To the extent Petitioner argues it would have been obvious to modify Garahi’s system to initiate a communication link (Pet. 19–20; Pet. Reply 9), Petitioner does not provide adequate evidence or reasoning to establish how or why a skilled artisan would have modified Garahi’s system to initiate a communication link and transmit the message to the user’s device. Although Mr. Kitchen testified that it was old and well known at the time of the ՚755 patent to initiate a communication link and that there would have been a reasonable expectation of success to configure Garahi’s system to do so, Mr. Kitchen does not explain why one of ordinary skill in the art would have been motivated to or would have benefited from such a modification of Garahi’s system. Mr. Kitchen testifies that “[h]aving the TPSMS establish the communication link would have been obvious because doing so would allow the sending of wagering information to a user.” Ex. 1003 ¶ 127. Yet, Garahi’s system already allows for the sending of wagering information to the user in posting the generated notification message to a “Message Board.” Ex. 1004 ¶¶ 89, 107, 110. The existence of a new message is indicated by a display icon 318 next to the option “Message Board” in interface 300 having multiple options. Ex. 1004 ¶¶ 89, 107, 110, Figs. 3, 12, 13. In order to receive the message, the user must first access the Message Board by selecting the related option, after which the information is displayed to the user. Id. That it was well-known in the art to have initiated a communication link does not explain how or why a skilled artisan would have modified Garahi’s system that notifies a user of wagering information by posting on a message board to notify a user by initiating a communication link to the user. Simply because a skilled artisan could have modified Garahi’s system to incorporate initiating the communication link does not explain why they would have had reason to do so. See In re NuVasive, 842 F.3d at 1382; Belden, 805 F.3d at 1073. Thus, the preponderance of evidence does not show that Garahi’s posting or transmitting race information to the user’s Message Board, alone or in combination with the well-known technique of initiating a communication link, would have made it obvious to have the claimed computer initiate a communication link with a first communication device in response to generating the notification message.” slip op. at 42

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

    “We agree with Patent Owner that Petitioner fails to persuasively identify any “deficiency in Garahi which McNutt purportedly solves in as much as Garahi already discloses obtaining” and using the location of the user to discern the legality of a placed bet at the user’s location. PO Resp. 33; Ex. 1004 ¶ 50. Petitioner has not provided any further benefit to add location information into Garahi’s bet message having wagering data. Further, Petitioner has not shown a sufficient reason supported by a preponderance of the evidence to modify Garahi based on the teachings of McNutt outside of hindsight based on the disclosure of the ՚755 patent. The ՚755 patent specifically provides that transmitting “information regarding the position or location of the first communication device or second communication device” is for “determining whether the bet is allowed or disallowed using the position or location information.” Ex. 1001 code (57); see also id. at 7:8–15, 80:24–81–18, Fig. 20A (discussing a process for determining whether the bet is allowed based on the user’s location). To the extent that Garahi teaches transmitting a message with wagering data, and that McNutt teaches location information may be obtained “when the user initiates the wager,” Petitioner has shown no persuasive reason why a person of ordinary skill in the art would have had reason to include the location information of McNutt with the wagering data of Garahi in a single bet message, as required by the Challenged Claims. 2. Conclusion for Alleged Obviousness over Garahi and McNutt Based on our review and consideration of Petitioner’s arguments and evidence, we find that based on the record, Petitioner has not established by a preponderance of the evidence that the asserted combination of Garahi and McNutt teaches every limitation of claims 1, 2, and 18 and why one of ordinary skill in the art would have had sufficient reason to combine Garahi and McNutt, with a reasonable expectation of success in doing so.” slip op. at 48

  Patent outcomesUS 10,255,755 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,255,755
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Mar 21, 2024 · IPR2020-00715 · APJ Brent M Dougal · IPR · Remand

  On remand, the majority determined claims 1, 2, 5, 7, 13–15, and 18 were not shown unpatentable under either of two §103 grounds, because the asserted combinations lacked sufficient support.

  RulingsRemand decision

  • Skill levelSkill level board ownOther

    “In view of the above, and the evidence of record, we find on remand that the relevant art is medical leads. We previously found that the level of ordinary skill in the art requires “experience researching and developing medical leads for sacral neuromodulation.” FWD 16. Consistent with the Federal Circuit decision and our finding of the relevant art, the experience of one of ordinary skill is not limited to “sacral neuromodulation.” Rather, the level of ordinary skill in the art requires experience in the relevant art, which is medical leads.” slip op. at 10

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

    “B. Claim Construction In an inter partes review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). No terms require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “Gerber indeed suggests anchoring its lead by fibrosis. Namely, Gerber discloses: “Yet another anchoring mechanism 50 is to allow the medical lead 10 to fibrose in naturally using the human body’s natural reaction to a foreign body or healing.” Ex. 1010, 4:27–30. Moreover, there is no dispute that tines secure via fibrosis. Petitioner, however, acknowledges that any foreign object introduced into the body will cause fibrosis. Tr. 12:8– 13. Nonetheless, Petitioner maintains that Gerber’s disclosure of securing its lead by fibrosis would have led a POSITA to choose tines because tines were a leading candidate among the devices that anchor by fibrosis. Pet. 51 (citing Ex. 1003 ¶ 115) (emphasis added). Petitioner’s argument relies on Mr. Pless’s opinion that tines were a leading candidate for securement via fibrosis, and Mr. Pless’s opinion is based his review of the conventional uses of tines. Tr. 12:18–24 (Petitioner explaining that pages 13–16 of Mr. Pless’s Declaration provide support for his opinion that tines were most commonly used for fixation via fibrosis). According to Mr. Pless, “[b]efore 2001, tines were the most commonly used passive fixation, especially due to the predominant usage of tines in the cardiac space. Tines help to anchor the lead immediately after implantation by engaging with the body tissue, and then by fibrosis.” Ex. 1003, 15–16. Gerber’s lead, however, is for sacral nerve stimulation and is implanted in the sacral area via an open surgical procedure. Ex. 1010, 1:7–15, 5:32–39. We find credible Dr. Siegel’s testimony that Gerber’s device is implanted via an open surgical procedure in which the periosteum and soft tissues surrounding the implantation site are dissected, compromising their structural integrity and rendering tines, which initially anchor by engaging body tissue, ineffective. Thus, despite the prevalent use of tines in the cardiac space to secure leads by engaging body tissue and then by fibrosis, Petitioner has not persuaded us that Gerber’s disclosure of securing its lead by fibrosis would have led a POSITA to replace Gerber’s anchoring mechanism with tines. Regarding Petitioner’s reasoning for positioning tines according to Akerström’s arrangement, Lindegren attributes a manufacturing preference to tines integrally formed and evenly spaced on rings, not proximally extending tines that are adapted to be folded inwardly against the lead body without overlap. Ex. 1011, 5:17–20 (“From the manufacturing point of view, having the projections devised as an integral part of a one-piece ring-shaped means and evenly distributed around the circumference of the ring-shaped means, should be preferable.”). Moreover, according to Petitioner, a smaller profile is suited to percutaneous delivery (Pet. 51), but Gerber’s lead is implanted via an open surgical procedure (Ex. 1010, 1:7–15, 5:32–39). Accordingly, Petitioner has not persuaded us that a POSITA would have had a reason to include, in Gerber’s lead, Hauser’s tines situated according to Akerström’s arrangement.” slip op. at 24

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We credit Dr. Slavin’s testimony that the trigeminal cistern is a fluid- filled cavity that does not contain tissue for the tines to “engage” with, or be damaged by. Ex. 2029 ¶ 54–55. Dr. Slavin testifies that he is “a board certified neurosurgeon and [has] been in active clinical practice that includes all aspects of neuromodulation, spinal surgery and surgery for pain, including implantation of electrical stimulation devices, surgery on vertebral column including sacrum, trigeminal nerve surgery and so forth.” Ex. 2029 ¶ 5. Thus, Dr. Slavin has extensive knowledge of the areas around the trigeminal nerve. In contrast, Mr. Pless, an electrical engineer and product designer for electrical stimulations device in various areas of the body (Ex. 1003 ¶¶ 3–16), testifies that he believes there is tissue in the area of implantation in Young, but states “I'm not exactly sure what that tissue would be.” Ex. 2026, 123:21–23. Thus, we do not credit Mr. Pless’s testimony that Young’s tines can be damaged because of the body tissue 16 Hauser, discussed in the next ground, teaches tines on the distal most end which impliedly would be advanced out of the introducer, before advancement and placement of the electrode. Ex. 1013, 4:1–3, 4:26–51, Figs. 1, 6. present in the area of implantation of Young. As noted previously, the Petition relies exclusively on Young for teaching this method step of claims 1 and 14.” slip op. at 16

  Patent outcomesUS 8,036,756 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,036,756
• Transgene / Bioinvent International AB v. Replimune LimitedNo claims unpatentable
  PTAB · May 25, 2023 · PGR2022-00014 · APJ Christopher G Paulraj · PGR · Final written decision

  The Board held claim 13 not unpatentable over Silvestre or Du, Choi, and Zitvogel, finding insufficient motivation to combine and reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “or “POSITA”) “would have had a Ph.D. in molecular biology, or a related field, with expertise in virology (including expertise growing, isolating, and rescuing viruses), immunology, and cancer biology with at least four years of post-Ph.D. experience in those areas.” Pet. 6 (citing Ex. 1007 ¶¶ 35, 96). Patent Owner does not argue otherwise. See PO Resp. 5. We adopt Petitioner’s uncontested definition as that definition is consistent with the level of skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not” slip op. at 11

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

    “claim terms of the ’513 patent for purposes of determining whether to institute trial. For purposes of our analysis in this Final Written Decision, however, we find that it would be useful to clarify the scope of “oncolytic virus.” We agree with Petitioner that the Specification defines an “oncolytic virus” as “a virus that infects and replicates in tumor cells, such that tumor cells are killed.” Ex. 1001, 9:10–12. The Specification further clarifies that “the virus is replication competent,” and is preferably selectively replication competent in tumor tissue. Id. at 9:12–13. “A patentee is free to be his own lexicographer.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, consistent with its express definition in the Specification, to be a virus that infects and replicates in tumor cells, such that tumor cells are killed, wherein such a virus is replication competent.” slip op. at 12

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

    “but contends that “oncolytic virus” should not be construed to encompass “viral vectors” such as those disclosed in Zitvogel. PO Resp. 5. Although Petitioner does not expressly contend otherwise, we agree with Patent Owner that “oncolytic virus” would not encompass Zitvogel’s “viral vectors,” which are defined in that reference to be “replication-defective” or “replication-impaired.” Ex. 1004, 19:26–29. We do not construe any other claim terms. See Vivid Techs., Inc. v.” slip op. at 13

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

    “Petitioner acknowledges that “while the bulk of Silvestre’s disclosure, including the working examples, is directed towards creating an oncolytic poxvirus, Silvestre discloses preparing modified oncolytic virus using other virus types, including HSV.” Pet. 44. It is undisputed, however, that Silvestre does not disclose a single embodiment of an oncolytic HSV that includes both a heterologous GM-CSF encoding gene and a heterologous CTLA-4 inhibitor encoding gene. Rather, Petitioner points to where each element could be found among broader lists of possible oncolytic virus classes, immune checkpoint targets, and therapeutic genes. Ex. 1002, 7:10– 15:49. As noted by Dr. Chiocca, if one were to randomly select any of the 11 We need not decide whether Silvestre anticipates independent claim 1, as the sole challenged claim 13 depends directly from claim 11. Thus, our determination that Petitioner has not shown that claim 11 is anticipated is sufficient to establish that Petitioner has not met its prerequisite burden for claim 13. Ex. 2009 ¶ 29. This type of picking and choosing is not anticipation. See Arkley, 455 F.2d at 587–88.” slip op. at 19

  Patent outcomesUS 10,947,513 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,947,513
• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

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

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

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

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

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

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (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”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176

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.