- ZTE USA, Inc. v. Saint Lawrence Communications LLCInstitution deniedPTAB · Sep 14, 2016 · IPR2016-00705 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all challenged claims because Ozawa did not show the required comparison of pitch prediction errors across signal paths, and the obviousness grounds did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). We have reviewed the Petition and supporting declaration of Dr. Johnson, and these materials do not contain adequate support for Petitioner’s assertion that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Petitioner asserts that “vector selector 22 selects one of the candidate code vectors and one of the gain code vectors that minimize the distortion [i.e., pitch prediction error].” Pet. 18. Petitioner, however, does not cite persuasive evidence that Ozawa discloses calculating the distortion of a pitch codevector in each of at least two signal paths, or that Ozawa’s vector selector 22 performs a comparison between distortions calculated in at least two signal paths. See Pet. 17–19, 37–40, 58. Petitioner’s declarant, Dr. Johnson, testifies that vector selector 22 performs one type of comparison “during mode 1, 2, or 3,” and a different type of comparison “during mode 0.” See Ex. 1036 ¶ 98 (citing Ex. 1006, 6:21–40). Dr. Johnson, however, does not offer persuasive testimony or evidence that Ozawa discloses a comparison between distortions (i.e., pitch prediction errors) that were calculated in two different modes (i.e., signal paths). See Ex. 1036 ¶¶ 96–101, 145–147. For the reasons set forth above, Petitioner has not made an adequate showing that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to independent claims 1 and 55. For the same reasons, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to dependent claims 2, 5, 7, 8, 56, 59, and 62, all of which depend from either claim 1 or claim 55. 3.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“is . . . used for selecting a single path used for the computation of the codevector distortions” (i.e., the Petitioner-identified pitch prediction error).” Prelim. Resp. 27. “In other words, Ozawa does not calculate pitch prediction errors for subframes for each of the different modes [paths] and select the mode [path] with the lowest calculated pitch prediction error,” as required by independent claims 1 and 55. Id. (emphasis added). On this record, we find Patent Owner’s argument to be persuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Obviousness of Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60 over Ozawa, G.729, and/or Ordentlich Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60, all depend from either claim 1 or claim 55, and Petitioner’s obviousness arguments regarding these claims all rely on Petitioner’s assertion that Ozawa discloses all limitations of claims 1 and 55. See Pet. 24, 27, 35, 41– 60. Petitioner does not argue that G.729 and Ordentlich individually or collectively cure the deficiencies discussed above in Petitioner’s argument with respect to claims 1 and 55. See id. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its obviousness challenges to dependent claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60.” slip op. at 16
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,260,521 - PTAB · Jul 1, 2016 · IPR2016-00379 · APJ Tina E Hulse · IPR · Institution
The Board denied institution for claims 1–6 under § 325(d), finding substantially the same prior art and arguments had been presented during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the Petition under § 325(d) because Petitioner’s obviousness challenge is based on (i) the same primary reference addressed during prosecution, including by the Board in an appeal; and (ii) the same arguments regarding that primary reference and how it allegedly would have been modified. Prelim. Resp. 56–60. Upon reviewing the Petition, Preliminary Response, and the prosecution history of the ’040 patent, we agree. During prosecution, the examiner rejected the claims as obvious over Van Lommen. Here, Petitioner also relies primarily on Van Lommen to argue the claims are obvious. We, therefore, find that substantially the same prior art was previously presented to the Office. We also find that substantially the same arguments were previously presented to the Office, including to the Board. Petitioner argues that a person of ordinary skill in the art would have selected Compound 84 of Van Lommen as a base compound for investigation and would have been motivated to stereochemically separate the stereoisomers of Compound 84 using the chromatography techniques disclosed in the secondary prior art references. Pet. 33. As Patent Owner notes, however, the examiner repeatedly stated that “the skilled artisan would have seen optical isomer separation as a routine procedure leading to the compounds claimed herein.” Prelim. Resp. 57 (citing Ex. 1002, 48, 73, 88, 113). Thus, Petitioner asserts substantially the same argument that the examiner asserted during prosecution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The claims recite a composition “consisting of” the claimed compound. The parties agree that the transitional phrase “consisting of” is a term of art in patent law that “closes” the claim and excludes other elements, steps, or ingredients not specified in the claim. Pet. 29–30; Prelim. Resp. 23. 4 Armstrong et al., Separation of Drug Stereoisomers by the Formation of β- Cyclodextrin Inclusion Complexes, 232 SCIENCE 1132–35 (1986) (Ex. 1007). expected impurities or additional components or steps that are unrelated to the invention. Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1360 (Fed. Cir. 2006). Accordingly, we determine that the term “consisting of” does not exclude the presence of ordinary expected impurities or the presence of additional components that are unrelated to the invention.” slip op. at 5
- Obviousness (§103) › Objective indicia / secondary considerationsOther
“concluding the applicants’ evidence of unexpected results sufficient, and implicitly finding a sufficient nexus between the evidence and the claimed invention. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”) (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)). Finally, Petitioner argues that it has submitted “ample evidence” that the compounds of claims 1 and 2 would be the intended and expected result of combining the asserted references, and that claims 3–6 would not be an unexpected result of the suggested combination. Pet. 56 (citing Ex. 1050 ¶¶ 50, 56, 66, 73, 74, 81, 93, 106; Ex. 1052 ¶¶ 60–68, 93, 100). But Petitioner’s cited evidence relates to how a person of ordinary skill in the art would have considered separating and studying the stereoisomers of compound 84 to be ordinary and routine. See, e.g., Ex. 1050 ¶ 73 (“A POSITA at the time would have had an expectation that this stereochemical resolution could be easily achieved using known and commercially available techniques, without undue experimentation.”); Ex. 1052 ¶ 93 (“[I]t is my opinion that a POSITA at the time of the ’040 Patent’s priority date, would have been motivated to carry out standard new-drug investigation on each of the purified stereochemical forms in order to determine the effectiveness of each stereochemical form, to determine whether the drug could be administered as a racemic mixture or whether a purified enantiomer was required, to determine the interactions between stereoisomers if administered together, and to determine the effective amounts of each compound necessary for treatment of hypertension.”). The Board, however, assumed examiner established a prima facie case of obviousness. Ex. 1002, 199. Nevertheless, the Board still found the unexpected results evidence presented by the applicants to be sufficient. Finally, although the prior panel expressly set forth the deficiencies in the examiner’s position with respect to the evidence of unexpected results, the Petition is silent as to those deficiencies. In particular, Petitioner has not offered sufficient evidence to show why an ordinary artisan “would have expected the RSSS stereoisomer to have such [potentiating] properties” or to show “that the potentiating property, described in the declaration, is insignificant.” See Ex. 1002, 200. Because Petitioner has not addressed these issues, we are not inclined to reconsider the Board’s prior decision. Accordingly, under the facts and circumstances of this case, we find that readjudicating substantially the same prior art and arguments as those presented during prosecution would not be an efficient use of Board resources.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 6,545,040 - Intermix Media, LLC v. Bally Gaming, Inc.Institution deniedPTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution
The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptNot shown unpatentable
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 5,816,918 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · CBM2015-00153 · APJ Michael P Tierney · CBM · Institution
The Board denied institution for claims 1–16 because those originally issued claims had been cancelled or amended during reexamination; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that the particular facts of this proceeding counsel against institution. Our decision whether to institute a covered business method patent review must be based on the claims of the ’402 patent as it exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims 1–16, which Patent Owner has either cancelled or amended during ex parte reexamination. See Ex. 3001. Original claims 1–16, as challenged by Petitioner, no longer exist, and any decision as to the patentability of original claims 1–16 we might reach in this proceeding would be moot and purely advisory. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting a covered business method patent review in this proceeding. 37 C.F.R. § 42.1(b). In denying institution, we do not reach the merits of the unpatentability arguments in the Petition, and express no opinion on those arguments at this time. Furthermore, based on the current record, we agree with Patent Owner that Petitioner is not prejudiced as they may elect to file a new Petition directed to the amended claims.3” slip op. at 8
Discretionary denialPatents in suitUS 8,423,402 - Coalition For Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc.Institution deniedPTAB · Aug 24, 2015 · IPR2015-00720 · APJ Jacqueline Wright Bonilla · IPR · Institution
The Board denied institution on all challenged claims because the Goodman and Hayes posters were not shown to be prior art printed publications.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reference is a ‘printed publication’ under 35 U.S.C. § 102(b) involves a caseby-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Klopfenstein, 380 F.3d at 1350; Prelim. Resp. 12–18. Several factors “aid in resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a ‘printed publication’ under § 102(b).” Klopfenstein, 380 F.3d at 1350. Because Petitioner does not indicate that the Goodman and Hayes posters were distributed (rather than presented) or indexed, we consider those factors now, which include: “[1] the length of time the display was exhibited, [2] the expertise of the target audience, [3] the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and [4] the simplicity or ease with which the material displayed could have been copied.” Id.” slip op. at 4
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“reference is a ‘printed publication’ under 35 U.S.C. § 102(b) involves a caseby-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Klopfenstein, 380 F.3d at 1350; Prelim. Resp. 12–18. Several factors “aid in resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a ‘printed publication’ under § 102(b).” Klopfenstein, 380 F.3d at 1350. Because Petitioner does not indicate that the Goodman and Hayes posters were distributed (rather than presented) or indexed, we consider those factors now, which include: “[1] the length of time the display was exhibited, [2] the expertise of the target audience, [3] the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and [4] the simplicity or ease with which the material displayed could have been copied.” Id.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,663,685 - Coalition For Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc.Institution deniedPTAB · Aug 24, 2015 · IPR2015-00817 · APJ Jacqueline Wright Bonilla · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show that the Hayes and Goodman posters were publicly accessible printed publications qualifying as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded that Petitioner has made a threshold showing that the posters were sufficiently publicly accessible to qualify as a “printed publication” under § 102(b). Petitioner has not demonstrated adequately that the Hayes poster (relied upon in all grounds) or the Goodman poster, as presented in the Petition, constitute prior art to the ’826 patent. III. ORDER It is ORDERED that the Petition is denied as to all challenged claims and no trial is instituted.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“reference is a ‘printed publication’ under 35 U.S.C. § 102(b) involves a caseby-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Klopfenstein, 380 F.3d at 1350; Prelim. Resp. 10–11, 14–21. Several factors “aid in resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a ‘printed publication’ under § 102(b).” Klopfenstein, 380 F.3d at 1350. Because Petitioner does not indicate that the Hayes and Goodman posters were distributed (rather than presented) or indexed, we consider those factors now, which include: “[1] the length of time the display was exhibited, [2] the expertise of the target audience, [3] the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and [4] the simplicity or ease with which the material displayed could have been copied.” Id.; Pet. 19–20, 23; Prelim. Resp. 16–19.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,007,826
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.