- PTAB · Dec 22, 2016 · IPR2015-00554 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving intact its determination that claims 1–11 are unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Expert testimonyDecided for patent owner
“and 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45–49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“We made clear that the controlling description of the specification outweighed Patent Owner’s argument and supporting evidence that specific types of information are required to be read into the “identifying” element of the claims. Id. (“Thus, we construe ‘prescription requests [for GHB] containing information identifying patients’ to refer to information identifying a patient, which may include [Patent Owner’s specifically listed information], but is not limited to that information nor requires all of that information.”) (emphasis added). We also cited to all of the expert testimony on which Patent Owner relied for its claim construction, as an indication that we considered the testimony. Id. at 18 (citing Ex. 2044, 97:11–98:5, 99:18–100:10; Ex. 2046 ¶¶ 39–44). We did the same for the “information identifying . . . any and all medical doctors” language, concluding that: The specification does not suggest that failing to include on the prescription one or more pieces of information from the list of a “medical doctor’s name, license number, DEA number, and physician specialty,” as proposed by Patent Owner, means that a prescription fails to contain information regarding “various credentials,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,668,730 - PTAB · Dec 22, 2016 · IPR2015-00547 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving claims 1–6 unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,765,107 - PTAB · Dec 22, 2016 · IPR2015-00551 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving claims 1–15 unpatentable for obviousness over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“PO Resp. 60. We did not find such testimony persuasive, or particularly credible, in view of Korfhage’s express disclosures, Dr. Valuck’s testimony, and Dr. Bergeron’s deposition testimony. Dec. 57–59 (citing Ex. 1007 ¶ 157; Ex. 1037, 276–77; Ex. 1054, 317:13–320:12; Ex. 2047 ¶ 57–59). Patent Owner’s argument is not persuasive given that the ACA drug distribution system was designed to allow a pharmacist to identify and resolve duplicate prescriptions before deciding whether to distribute the drug to a patient (or delete a duplicate caused by data redundancy). Ex. 1003, 184:24–185:7; Ex. 1005, 314 ¶ 6. We also were persuaded by Dr. Valuck’s testimony that it would have been obvious for one of ordinary skill to modify the ACA system “such that the data stored in the central data repository was distributed across multiple databases, as disclosed by Korfhage in order to accommodate cost, efficiency, and the number of prescription requests and associated data.” Ex. 1007 ¶ 157 (cited at Dec. 57–581).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also agree with Petitioner that Korfhage does not teach away from the use of distributed databases systems, particularly given the acknowledgement of Dr. Bergeron that Korfhage offered solutions to the problems identified. Id. at 59 (citing Ex. 1037, 276–77; Ex. 1054, 317:13–320:12). We did not overlook or misapprehend Patent Owner’s argument and evidence, rather, we declined to credit them in view of the text of Korfhage, Dr. Valuck’s testimony, and Dr. Bergeron’s deposition testimony. Dec. 56– 59. The pages of Korfhage cited and quoted in our Decision disclose multiple factors “driving information systems to the use of distributed document sets and distributed processing,” and set up “[t]hree major problems” only to discuss “simple solution[s],” a position supported by Dr. Valuck. Dec. 57–59 (citing Ex. 1007 ¶ 157; Ex. 1037 at 276–77). Under cross-examination by Petitioner’s counsel, Dr. Bergeron readily acknowledged that Korfhage’s discussion of data redundancy and matching document evaluation “problems” were paired with disclosed solutions, which undercut his declaration testimony (Ex. 2047 ¶¶ 56–65) relied upon by Patent Owner. Ex. 1054, 317:13–320:12. Our Decision credits Dr. Bergeron’s deposition testimony, which acknowledges the distributed database system solutions disclosed in Korfhage, rather than the speculative new problems hypothesized in his declaration and Patent Owner’s Response.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state, and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims. Dec. 19 (emphasis added). We made clear that the controlling description of the specification outweighed Patent Owner’s argument and supporting evidence that specific types of information are required to be read into the “identifying” element of the claims. Id. (“Thus, we construe ‘prescription requests [for GHB] containing information identifying patients’ to refer to information identifying a patient, which may include [Patent Owner’s specifically listed information], but is not limited to that information nor requires all of that information.”) (emphasis added). We also cited to all of the expert testimony on which Patent Owner relied for its claim construction, as an indication that we considered the testimony. Id. at 18 (citing Ex. 2044, 97:11–98:5, 99:18–100:10; Ex. 2046 ¶¶ 39–44). We did the same for the “information identifying . . . any and all medical doctors” language, concluding that: The specification does not suggest that failing to include on the prescription one or more pieces of information from the list of a “medical doctor’s name, license number, DEA number, and physician specialty,” as proposed by Patent Owner, means that a prescription fails to contain information regarding “various credentials,” as recited in the claims. Id. at 20–21 (citing PO Resp. 33–36; Ex. 1001, 2:22–24, 2:41–42, 4:7–8, 4:8–14, 4:18–20, 4:20–22, 4:7–5:67, 8:4–7, 8:40–44, 10:20–23, Figs. 2A–C, 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45–49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”).” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,457,988 - PTAB · Dec 22, 2016 · IPR2015-00545 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and reaffirmed that claims 19–25 are unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Expert testimonyPatent owner expert discountedDecided for patent owner
“cite to Dr. Bergeron’s Declaration testimony in support. PO Resp. 26–29 (citing Ex. 2047 ¶¶ 27–30); Req. Reh’g 2–5 (citing Ex. 2047 ¶¶ 27–30). Although we did not cite to Dr. Bergeron’s Declaration testimony in our Decision regarding claims 19–25, we did consider Dr. Bergeron’s Declaration testimony. Dec. 2. Dr. Bergeron’s Declaration testimony simply restates Patent Owner’s Response arguments, including the argument that the ACA discloses “the verification is being done by a human, not a computer processor.” Ex. 2047 ¶ 28. We take this opportunity to make explicit that we are not persuaded by Dr. Bergeron’s cited Declaration testimony (Ex. 2047 ¶¶ 27–30) on the issue of whether the ACA discloses or suggests the “verifying” step in claim 19, for the same reasons given in our Decision and above.” slip op. at 7
NonePatents in suitUS 8,589,182 - PTAB · Dec 22, 2016 · IPR2015-00548 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–16 unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,895,059 - PTAB · Dec 22, 2016 · IPR2015-00546 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–8 unpatentable as obvious over the Advisory Committee Art under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims.” slip op. at 5
- Claim Construction › Extrinsic evidence (dictionaries, experts)Decided for petitioner
“Id. at 20–22 (citing PO Resp. 33–36; Ex. 1001, 2:28–30, 47–48, 4:13–6:4, 8:4–7, 40–44, 9:56–60, Figs. 2A–C, 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45– 49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence”).” slip op. at 6
Claim constructioncites PhillipsPatents in suitUS 7,765,106 - Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb CompanyNo claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01537 · APJ Deborah Katz · IPR · Final written decision
Claims 1–15 were not shown unpatentable as obvious over Cohen, Shire, and Carpenter because Petitioner did not establish a reasonable expectation of success.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“suggests a trial-and-error approach to protein formulation. See Ex. 2011 (“Very often, proteins have to be evaluated individually and stabilized on a trial-and-error basis.”). Thus, we credit Dr. Staples’s testimony regarding the use of trial-and-error optimization because it appears that this was a known approach for formulating proteins. We do not agree that because the approach was known, it was necessarily expected to be successful. Petitioner cites to the statement in Carpenter that the authors were “quite confident” the generalized high throughput formulation procedure they describe “can be coupled successfully with high throughput screening strategies of protein drugs and facilitate drug development within the inherent time and resource constraints of the pharmaceutical industry.” Ex. 1004, 195. We note that, although in isolation Carpenter’s proclamation of being “quite confident” appears to demonstrate a reasonable expectation of success, when considered in context it refers to a general trend in the industry, not to the ability to formulate specific proteins. The full statement does not indicate that there was confidence that any particular drug could be successfully formulated as a liquid. Thus, this evidence is not persuasive.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable
“parties, we determine, on balance, that Petitioner has not established sufficiently that an ordinary artisan would have had a reasonable expectation of success in formulating CTLA4Ig as a stable liquid formulation as recited in the challenged claims. Specifically, in the challenge to Patent Owner’s claims, Petitioner relies on Carpenter to show that an ordinarily skilled artisan would have known how to prepare a stable liquid formulation of CTLA4Ig for subcutaneous administration. Pet. 33–40. The statements in Carpenter are the most significant evidence of whether there would have been an expectation of success in achieving the claimed formulation. But Carpenter expressly states that “[i]t [could] be assumed that most proteins will not exhibit sufficient stability in aqueous solution to allow a liquid formulation to be developed.” Ex. 1004, 188; PO Resp. 16. Carpenter also states that although a stable liquid formulation is desirable, “for most proteins maintaining physical and chemical stabilities in aqueous solution for an extended period of time is extremely difficult.” Ex. 1004, 184. These statements indicate that there would not have been a reasonable expectation of success in achieving the claimed formulations. Dr. Staples’s testimony about routine trial-and-error optimization does not overcome these statements. Petitioner’s citation to Paborji (Ex. 1016) does not persuade us otherwise. Even though Paborji states that CTLA4Ig in phosphate buffer is “relatively stable,” without testimony to explain how this would be interpreted by a skilled artisan, the strong doubt about success expressed in Carpenter is not overcome.” slip op. at 13
Patent outcomesUS 8,476,239 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,476,239 - Mexichem Amanco Holdings S.A De C.V. v. Honeywell International, Inc.Some claims unpatentablePTAB · Dec 9, 2016 · IPR2015-01309 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 3, 5, 6, 10–13, 16, and 19 are unpatentable as obvious; claims 7–9, 14, and 15 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner and Patent Owner propose constructions for all, or a portion of, the term “Formula I, XCF3(I), where X is a C2 unsaturated, substituted, alkyl radical.” Pet. 17–19 (proposing a construction for the term “C2 unsaturated, substituted, alkyl radical”); PO Resp. 12–15. Neither party contends, however, that express construction of this claim term, or any other term in the ’808 patent, would impact any of Petitioner’s or Patent Owner’s arguments in this proceeding. Accordingly, we determine that no claim terms require construction for purposes of this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“art. Patent Owner, relying upon the testimony of Dr. Bivens, asserts that one of ordinary skill in the art would have had either: “(1) a bachelor of science degree in a specialty area (such as chemical engineering or chemistry) and five years of work experience in developing/testing refrigerants, blowing agents, and propellants, or (2) a Ph.D. or masters of science degree and 2-3 years of work experience.” PO Resp. 12 (citing Ex. 2034 ¶¶ 21–24). Patent Owner’s identification of a person of ordinary skill in the art is uncontroverted and is consistent with the prior art of record. Accordingly, we adopt Patent Owner’s identification for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect the level of ordinary skill in the art).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“Accordingly, we are persuaded that: (1) Petitioner has identified where every limitation of claim 1 is disclosed or suggested in the combination of Kruse, Inagaki, and Butler; (2) Petitioner has set forth reasoned explanations supported by factual underpinnings to explain why one of ordinary skill in the art, prior to the earliest filing date of the ’808 patent, would have sought to combine Kruse, Inagaki, and Butler to achieve the invention set forth in claim 1 of the ’808 patent; and (3) Petitioner has set forth reasoned arguments, supported by record evidence, to show why a person of ordinary skill in the art would have had a reasonable expectation of success in combining Kruse, Inagaki, and Butler to achieve the composition of claim 1.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“patent met a long-felt but unresolved need or were commercially successful, we have been directed to no persuasive evidence to demonstrate these propositions. See Graham, 383 U.S. at 17–18 (noting that “long felt but unsolved needs” and commercial success may be utilized as indicia of nonobviousness). Indeed, we have been directed to no persuasive evidence that a mixture of CO2 and a fluoroalkene of claim 1 has ever been used commercially, or that such a mixture was considered by those of ordinary skill in the art to have met a long felt but previously unresolved need.9, 10 See Tr. 51:24–52:7; Pet. Reply 9 (asserting that Patent Owner “has provided no evidence, post- or pre- issuance of the ’808 patent, of the commercial advantages or uses of the claimed compositions”). With respect to Petitioner’s prior patent applications, although Patent Owner initially characterizes these applications as relating to CO2 and partially fluorinated hydrocarbons, Patent Owner later notes that these patents are directed to blends of HFO-1234yf, CO2, and R-134a. PO Resp. 44; Ex. 2024, 12 (arguing in support of patentability that “[t]he specific 9 To be relevant, Patent Owner must show that the asserted secondary considerations are attributable to “the merits of the claimed invention beyond what was readily available in the prior art.” Asyst Techs. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008). Here, Inagaki discloses using compounds within the scope of claim 1 of the ’808 patent as refrigerants. Patent Owner presents no persuasive evidence that the addition of CO2 to the compounds of Inagaki, or the particular ranges recited in claim 1, resulted in a product that met a long felt but unresolved need or resulted in a commercially successful product beyond what was provided in Inagaki. Thus, we are also not persuaded that there is any nexus between the asserted secondary considerations and the features of claim 1 that are not disclosed in Inagaki. 10 As Patent Owner has not demonstrated any commercial use of the claim 1 compounds for any purpose, or provided evidence that those of skill in the art considered the claimed compounds to have met an unresolved need in the art, this analysis applies equally to the dependent claims of the ’808 patent, which each depend, directly or indirectly, from claim 1. combination of trans-R1234ze and R134a and CO2 simply is not suggested in Singh, let alone in the amounts defined in claim 1”). Patent Owner does not explain sufficiently why Petitioner’s arguments directed to the patentability of a blend of three compounds, utilized in specific proportions, are necessarily applicable to the combination of Kruse, Inagaki, and Butler proposed by Petitioner, or why these arguments are otherwise strong evidence of the nonobviousness of claim 1 of the ’808 patent. Based on the foregoing, and upon review of Patent Owner’s arguments as a whole, we are not persuaded that Patent Owner’s proffered objective evidence of nonobviousness is strong or tends to refute Petitioner’s arguments and evidence with respect to the obviousness of claim 1 of the ’808 patent.” slip op. at 25
Patent outcomesUS 8,623,808 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,623,808 - Aevoe Corp. v. Racing Optics, Inc.Institution deniedPTAB · Nov 7, 2016 · IPR2016-01165 · APJ Michelle N Ankenbrand · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, or 3–4, 7–9 were unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction The Board interprets claims in an unexpired patent using the “broadest reasonable construction in light of the specification of the patent.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The parties do not direct us to any claim terms that are in controversy. See Pet. 4; see generally Prelim. Resp. Upon review of the parties’ arguments and supporting evidence, we determine that no claim term requires construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“[I]nherency may supply a missing claim limitation in an obviousness analysis.” See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). To establish an inherent disclosure, a party must show that the limitation at issue is “necessarily present” or “the natural result of the combination of elements explicitly disclosed by the prior art.” Id. at 1195–96 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d at 581 (citations omitted). Petitioner contends that Wilson “teaches the same structural slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“When an anticipatory reference “is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). Here, Petitioner does not show sufficiently that the structure and configuration of Kitaguchi’s cover sheet necessarily, or inherently, traps air. Although Petitioner refers to the use of an adhesive along the outer periphery of Kitaguchi’s cover sheet as creating a seal that traps air between the cover sheet and the display, that argument is unsupported by sufficient objective evidence. Indeed, Petitioner directs us only to Dr. Cairns’s bare opinion testimony that the “continuous adhesive layer [illustrated in Kitaguchi’s Figure 1 embodiment] would act as a seal and trap air between the film and the display surface in the same way described in the ’545 Patent.” Ex. 1005 ¶ 20. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); see Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”). Accordingly, based on the record before us, Petitioner is not reasonably likely to prevail in showing that claims 1 and 5 are anticipated by Kitaguchi.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,128,545 - Dr. Reddy’S Laboratories, Ltd. / Dr. Reddy’S Laboratories, Inc. v. Indivior UK LimitedRehearing deniedPTAB · Nov 1, 2016 · IPR2016-01113 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Indivior UK Limited’s request for rehearing, finding it had not shown the decision denying additional discovery should be modified.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“response to the first Request for Production that none of the requested agreements, or drafts thereof executed on or before May 31, 2016 existed. Opp. 17. May 31, 2016 is the date that Petitioner filed its Petition in this proceeding. In the Decision, we explained, among other things, that, generally, the Board has considered the relationship between entities alleged to be in privity at the time of the service of the complaint and that Patent Owner has not alleged privity existed between Petitioner and Teva at that time. Dec. 6–7. We explained further that “[e]ven accepting arguendo that Petitioner’s acquisition of Teva’s ANDAs . . . established privity between Petitioner and Teva, Patent Owner has not proffered persuasive evidence that indicia of privity existed at any time prior to the filing of the present Petition.” Id. at 7 (citing Taylor v. Sturgell, 553 U.S. 880, 893–95 (2008)). Those reasons alone support our determination that Patent Owner has failed to demonstrate that the proposed additional discovery would uncover something useful in support of its contention that Petitioner and Teva were in privity at the relevant time. Thus, we are not persuaded that our Decision should be modified based upon Patent Owner’s assertion that Petitioner’s response to the second Request for Production leaves open the possibility that correspondence or communications, dated prior to May 31, 2016, relating to the later-executed agreements, or drafts thereof, may exist and provide something useful to support Patent Owner’s contention that privity existed between Petitioner and Teva on or before the filing date of the Petition. Reh’g. Req. 6. As we stated in the Decision, “Patent Owner’s evidence and argument in support of its discovery requests fail to demonstrate more than a mere possibility or mere allegation that something useful will be found.” Dec. 6.” slip op. at 4
- Additional discoveryAdditional discovery, deniedDenied
“response to the first Request for Production that none of the requested agreements, or drafts thereof executed on or before May 31, 2016 existed. Opp. 17. May 31, 2016 is the date that Petitioner filed its Petition in this proceeding. In the Decision, we explained, among other things, that, generally, the Board has considered the relationship between entities alleged to be in privity at the time of the service of the complaint and that Patent Owner has not alleged privity existed between Petitioner and Teva at that time. Dec. 6–7. We explained further that “[e]ven accepting arguendo that Petitioner’s acquisition of Teva’s ANDAs . . . established privity between Petitioner and Teva, Patent Owner has not proffered persuasive evidence that indicia of privity existed at any time prior to the filing of the present Petition.” Id. at 7 (citing Taylor v. Sturgell, 553 U.S. 880, 893–95 (2008)). Those reasons alone support our determination that Patent Owner has failed to demonstrate that the proposed additional discovery would uncover something useful in support of its contention that Petitioner and Teva were in privity at the relevant time. Thus, we are not persuaded that our Decision should be modified based upon Patent Owner’s assertion that Petitioner’s response to the second Request for Production leaves open the possibility that correspondence or communications, dated prior to May 31, 2016, relating to the later-executed agreements, or drafts thereof, may exist and provide something useful to support Patent Owner’s contention that privity existed between Petitioner and Teva on or before the filing date of the Petition. Reh’g. Req. 6. As we stated in the Decision, “Patent Owner’s evidence and argument in support of its discovery requests fail to demonstrate more than a mere possibility or mere allegation that something useful will be found.” Dec. 6.” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityOther
“response to the first Request for Production that none of the requested agreements, or drafts thereof executed on or before May 31, 2016 existed. Opp. 17. May 31, 2016 is the date that Petitioner filed its Petition in this proceeding. In the Decision, we explained, among other things, that, generally, the Board has considered the relationship between entities alleged to be in privity at the time of the service of the complaint and that Patent Owner has not alleged privity existed between Petitioner and Teva at that time. Dec. 6–7. We explained further that “[e]ven accepting arguendo that Petitioner’s acquisition of Teva’s ANDAs . . . established privity between Petitioner and Teva, Patent Owner has not proffered persuasive evidence that indicia of privity existed at any time prior to the filing of the present Petition.” Id. at 7 (citing Taylor v. Sturgell, 553 U.S. 880, 893–95 (2008)). Those reasons alone support our determination that Patent Owner has failed to demonstrate that the proposed additional discovery would uncover something useful in support of its contention that Petitioner and Teva were in privity at the relevant time.” slip op. at 4
NonePatents in suitUS 8,475,832
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.