• Aurobindo Pharma USA, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9

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

    “Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11

  • BurdenNot shown unpatentable

    “Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19

  Patent outcomesUS 6,866,866 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,866,866
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Dec 3, 2018 · IPR2017-01390 · APJ Jeffrey W Abraham · IPR · Final written decision

  The Board held that claims 1–18 were not shown unpatentable because the prior art did not establish the claimed volume concentration in the formed magnetic layer.

  RulingsFinal written decision

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

    “define the term “volume concentration.” In the context of the ’331 patent, “volume concentration” refers to the volume concentration of the magnetic particles in the formed magnetic layer.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording, or (2) a Master’s degree or higher in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 12; Ex. 1017 ¶ 60. Although Patent Owner does not expressly define the appropriate level of skill in the art in the Patent Owner Response or its Supplemental Response, Patent Owner’s declarant, Dr. Bain, presents a definition of a person of ordinary skill in the art in his declaration that is nearly identical to Petitioner’s definition. Ex. 2001 ¶ 44. In view of this, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 16

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

    “information, is not sufficient evidence to establish that Mori discloses the “volume concentration” recited in claim 1. Patent Owner does not dispute that there is some magnetic alloy present “in the magnetic layer” of Mori. The relevant question, however, is how much and how Mori’s disclosed values were determined. Unlike the term “volume concentration,” for which the parties offered undisputed evidence regarding accepted meanings of the term in the art (i.e., packing fraction and pigment volume concentration), we have not been directed to similar evidence regarding the phrase “fill rate”/“filling rate” in Mori. Thus, although Mori states “[t]he filling rate by volume of the strongly magnetic alloy powder in the magnetic layer can be equal to or higher than 30%” (Ex. 1003 ¶ 11 (emphasis added)), Petitioner has not offered sufficient evidence demonstrating that the term “filling rate” in Mori refers to a final product-based value. As a result, we find that this language in Mori does not establish, by a preponderance of evidence, that Mori discloses the “volume concentration” recited in claim 1.” slip op. at 21

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

    “For all of the foregoing reasons, we find that Petitioner has failed to demonstrate, by a preponderance of evidence, that the combined teachings of Aonuma and Mori disclose or suggest “[a] dual layer magnetic recording medium comprising . . . a magnetic upper recording layer formed over [a] lower support layer, the magnetic upper recording layer comprising a volume concentration of at least about 35% of a primary magnetic particulate pigment,” as recited in independent claims 1 and 16. Ex. 1001, 11:14–20, 12:25–31. Claims 2–15, 17, and 18 depend from claim 1 or claim 16, and, therefore, include the “volume concentration” limitation of claims 1 and 16. As a result, we find that Petitioner has failed to demonstrate that Aonuma and Mori disclose or suggest each limitation of claims 1–18, and, therefore, has not demonstrated by a preponderance of evidence that claims 1–18 are unpatentable as obvious over Aonuma and Mori.” slip op. at 26

  Patent outcomesUS 7,115,331 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,115,331
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. 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 shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

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

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

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

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01149 · APJ Karl D Easthom · IPR · Final written decision

  Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and the respective additional reference in each trial.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126

  Patent outcomesUS 6,418,556 unpatentable
  Nonecites Phillips
  Patents in suitUS 6,418,556
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01150 · APJ Karl D Easthom · IPR · Final written decision

  Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and Moro, Reiter, or Remillard.

  RulingsFinal written decision

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

    “III. CONCLUSION For the foregoing reasons, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.).” slip op. at 126

  • ExcludeMotion to exclude, deniedDenied

    “12. Motion to Exclude Patent Owner moves to exclude paragraphs 8, 24, 27–30, 32 and 38 of” slip op. at 123

  Patent outcomesUS 6,418,556 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 6,418,556
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01148 · APJ Karl D Easthom · IPR · Final written decision

  Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over the stated combinations in each of the three trials.

  RulingsFinal written decision

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

    “of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.). IV. ORDER ORDERED that 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 of U.S. Patent No. 6,418,556 B1 are unpatentable as a result of each trial as a separate matter, IPR2017-01148, IPR2017-01149, and IPR2017-01150;” slip op. at 126

  • ExcludeMotion to exclude, deniedDenied

    “observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126

  Patent outcomesUS 6,418,556 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 6,418,556
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Nov 6, 2018 · IPR2017-01151 · APJ Karl D Easthom · IPR · Final written decision

  Claims 23 and 25–27 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and any one of Moro, Reiter, or Remillard.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “would not have interpreted Young ’801’s system as restricted to a single page limited to time slots ranging from 11:00 am to 12:30 pm as depicted in Figure 6 of Young ’801. See Ex. 1720 ¶ 24 (describing Dr. Bovik’s restricted view of Young ’801 as unreasonable). This restricted reading of Young ’801 unreasonably constrains the use of the guide to 1.5 hours, something the Petitions do not do, contrary to Patent Owner’s arguments that the Reply shifts to new theories. See Rep. Opp. Mot. Exc. 2–5. To elaborate and address Patent Owner’s arguments and Dr. Bovik’s testimony, Mr. Wechselberger responds with a citation documenting well-known cursor navigation aspects of the same concept involved in spreadsheets (Ex. 1722) and elaborates about minimal program guide layout or format changes that go hand-in-hand with the Petitions’ assertions of guide size reduction. See Ex. 1720 ¶ 24; Opp. Mot. Exc. 9–11 (discussing Ex. 1720 ¶¶ 36–37, 129– 131, 136–137, 158), 11 (noting Dr. Bovik stated in his deposition “a user would have been ‘confined to the visible screen’”) (citing Ex. 1721, 56:16– 23, 108:25–109:8, 116:17–117:2; Ex. 2706 ¶¶ 51–52). In summary, the Petition cites to portions of Young ’801 that describe the page mode and generally advance the theory of moving a cursor across, upward, and to the right to obtain consecutively displayed and successive portions of schedule information, citing portions that describe new pages and cursor jumps. Petitioner did not create a new theory about how the page guide operates but responded to Patent Owner’s arguments. Patent Owner chose not to avail itself of the opportunity to depose Dr. Wechselberger about his second declaration and thereafter file observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 92

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “materially similar description of a person of ordinary skill in the art. See PO Resp. 14–15 (citing Ex. 2706 ¶¶ 1–19). During the Oral Hearing, Patent Owner indicated any differences between Petitioner’s and Patent Owner’s descriptions do not create a dispositive issue. See Tr. 66:11–18. On this record, Petitioner’s description comports with the level of ordinary skill implied by the prior art references discussed further below. Accordingly, we adopt it.” slip op. at 38

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

    “8. Young ’801, Young ’121, Strubbe, and Moro Petitioner persuasively shows that claims 23 and 25–27 the” slip op. at 47

  Patent outcomesUS 6,418,556 unpatentable
  § 103 obviousness
  Patents in suitUS 6,418,556
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. 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 shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Argentum Pharmaceuticals LLC v. Alcon Research, Ltd.No claims unpatentable
  PTAB · Sep 20, 2018 · IPR2017-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–28 were not shown unpatentable under § 103 because the proposed combinations lacked a persuasive reason to make the required modifications and meet the claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Petitioner submits that such a person would have had a Doctorate in microbiology or chemistry (or a related field) with at least a few years of experience in the development of ophthalmic formulations. Pet. 7. Alternatively, in Petitioner’s view, that person would have had a Bachelor’s or Master’s Degree combined with significant (5 years or more) practical experience developing ophthalmic formulations. Id. Patent Owner, for its part, advances a definition that “does not differ materially” from that proposed by Petitioner. Resp. 5. Petitioner’s definition is comparable to the level of skill reflected in the asserted prior art. The prior art itself is sufficient to demonstrate the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect appropriate level of ordinary skill in the art). To the extent more specified findings are required, we adopt the definition proposed by Petitioner. Pet. 7. We observe, however, that there is no appreciable difference between the parties’ respective definitions that would “materially” alter the outcome of this decision based on our acceptance of one definition over the other. Resp. 5.” slip op. at 5

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

    “Pet. 5–7; Dec. 7–8. Patent Owner tacitly agrees. See Resp. 1 (stating that a “self-preserved” composition is “one that has sufficient antimicrobial activity to pass standard tests for ‘preservative efficacy’ without needing a conventional preservative”). Accordingly, for reasons set forth in our decision instituting review in the Apotex IPR, we determine that: (a) The preamble term “self-preserved” breathes life and meaning into the claims, and is construed as a limitation of claims 1–28; and (b) The broadest reasonable interpretation of “self-preserved” compositions is “compositions that do not contain a conventional antimicrobial preservative.” Apotex IPR, Paper 9, 5–6; Dec. 7–8. Schneider, which is asserted in each ground of unpatentability stated in the Petition, informs that edetate disodium (“EDTA”) and benzalkonium chloride (“BAC”) were conventional antimicrobial preservatives known and available at the time of the invention—an issue not meaningfully disputed by Petitioner. Ex. 1007, 7:14–21; Pet. 15. Our claim construction findings are supported by the specification of the ’299 patent, which states that “[t]he multi-dose compositions of the present invention, which do not contain a conventional antimicrobial preservative, are referred to herein as being ‘self-preserved’.” Ex 1001, 3:27–29. The specification identifies BAC as an example of a conventional antimicrobial preservative excluded from the self-preserved composition of the challenged claims. Id. at 4:23–25. No other claim term requires express construction for the purposes of this decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy).” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Petitioner argues that we should adopt the claim construction resolved in the Apotex IPR, as we did in the decision on institution in this case. Pet. 5–7; Dec. 7–8. Patent Owner tacitly agrees. See Resp. 1 (stating that a “self-preserved” composition is “one that has sufficient antimicrobial activity to pass standard tests for ‘preservative efficacy’ without needing a conventional preservative”). Accordingly, for reasons set forth in our decision instituting review in the Apotex IPR, we determine that: (a) The preamble term “self-preserved” breathes life and meaning into the claims, and is construed as a limitation of claims 1–28; and (b) The broadest reasonable interpretation of “self-preserved” compositions is “compositions that do not contain a conventional antimicrobial preservative.” Apotex IPR, Paper 9, 5–6; Dec. 7–8. Schneider, which is asserted in each ground of unpatentability stated in the Petition, informs that edetate disodium (“EDTA”) and benzalkonium chloride (“BAC”) were conventional antimicrobial preservatives known and available at the time of the invention—an issue not meaningfully disputed by Petitioner. Ex. 1007, 7:14–21; Pet. 15. Our claim construction findings are supported by the specification of” slip op. at 6

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

    “Petitioner asserts that an ordinarily skilled artisan “would have retained as much of” Formulation A “as feasible, as this was already an FDA-approved formulation, marketed as Travatan®.” Pet. 15; Ex. 1002 ¶¶ 46–47. But Petitioner’s challenge incongruously depends on at least six modifications to Formulation A; seven, if attaining UPS preservative efficacy requirements is not an inherent property of the modified composition. Petitioner does not address, much less explain, how or why an ordinarily skilled artisan, undertaking those six or seven modifications, would have done so with a reasonable expectation of success in arriving at a “self-preserved” composition using zinc as the sole preservative—in a field where zinc “had never before been the sole preservative in a marketed ophthalmic drug.” Resp. 9; Ex. 2023 ¶ 46; Ex. 2025 ¶ 30. The Petition does not articulate a rational reason why a person of ordinary skill in the art, setting out to improve Formulation A, would have selected the particular combination of ingredients required by claim 1. Formulation A bears almost no resemblance to the composition of claim 1, lacking three of the four required ingredients (zinc ions, sorbitol, and propylene glycol) and containing two others (BAC and EDTA) that are excluded by the “self-preserving” terms of the claim. Compare Ex. 1001, claim 1, with Ex. 1007, 9:25–42 (Table, Formulation A). And even if we set aside those hurdles, the challenge fails for lack of persuasive evidence showing how or why an ordinarily skilled artisan would have resolved to include the claimed ingredients in the specified concentrations, while at the same time limiting anionic species (to the extent included) to a concentration of “less than 15 mM.” Ex. 1001, claim 1. Petitioner fails to establish that the subject matter of claim 1 would have been obvious over the combined disclosures of Schneider, Xia, and Chowhan—with or without the additional disclosure of Gadd. Pet. 2–3.” slip op. at 26

  Patent outcomesUS 8,268,299 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,268,299
• Dexcom, Inc. v. Waveform Technologies, Inc.Some claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-01051 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–12, and 15–19 were held unpatentable as obvious over Hagiwara; claims 2, 3, 13, and 14 were not shown unpatentable. The motion to amend was granted in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “j. Conclusion Regarding Obviousness Based on Hagiwara (Proposed Substitute Claims) We conclude that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara. We conclude that Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 21, 24 and 25 are unpatentable as obvious in view of Hagiwara. 2. Remaining Grounds of Unpatentability Asserted by Petitioner (Proposed Substitute Claims) In view of our determination that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara, we do not reach Petitioner’s remaining grounds of unpatentability as to these claims. Regarding proposed substitute claims 24 and 25, Petitioner’s contentions regarding the Handbook, Wilson, and Say do not remedy the deficiencies in Petitioner’s contentions regarding Hagiwara, as discussed above. Accordingly, we conclude that a preponderance of the evidence does not show that proposed substitute claims 24 and 25 are unpatentable as obvious based on Hagiwara in view of the Handbook, Wilson, or Say. H.” slip op. at 71

  • ExcludeOther

    “As discussed above, we do not reach the Wilson-Based Grounds with respect to claims 1, 4–12, and 15–19 of the ’574 patent. As for claims 2, 3, 13, and 14, we determine that Petitioner has not shown unpatentability based on the Wilson-Based Grounds, even if Exhibit 1037 and the corresponding portions of Petitioner’s Reply (Paper 37) are not excluded, because Petitioner does not offer Exhibit 1037 to cure the deficiency we noted in Wilson. See Section II.F, supra. For this reason, we dismiss as moot Patent Owner’s motion.” slip op. at 72

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner

    “sensor would not have been a motivation to combine Hagiwara’s embodiments” because Hagiwara’s catheter prevents damage to the sensor during insertion and because a sensor with a side sensor window creates a greater risk of damage and vascular injury and reduces exposure to blood, as compared with a sensor with an end sensor window. PO Resp. 20–25. We have considered Patent Owner’s arguments, but, for the reasons discussed above, we are persuaded that Petitioner has established a motivation to combine, notwithstanding the conflicting expert testimony regarding the disadvantages of a side sensor window versus an end sensor window. Neither of the expert opinions on this topic is supported by objective facts or data. Ex. 1006 ¶ 155;13 Ex. 2008 ¶¶ 54–57, 87–95; Ex. 2009, 92:8–97:12. For this reason, we give little or no weight to either side’s expert testimony 13 Dr. Vachon cites “WO 01/13102, Vadgama” (Ex. 1006 ¶ 155), however, this reference was not submitted as an exhibit in this proceeding. on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). As discussed above, however, there is no disagreement that a side sensor window was a known alternative to an end sensor window. Ex. 1006 ¶¶ 73, 155; Tr. 43:22–44:3. That undisputed fact, together with Petitioner’s other evidence, is sufficient to establish a motivation to combine.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art For purposes of our Institution Decision, we accepted the definition of a person of ordinary skill in the art (“POSITA”) provided by Petitioner’s declarant, Dr. Vachon. Dec. 11 (citing Ex. 1006 ¶ 28). That definition is: a person having a bachelor’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field and at least three years of experience relating to biosensor research and development, or a master’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field, and at least one year of experience relating to biosensor research and development. Id. Patent (https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_ to_amend_11_2017.pdf); Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017); Bosch Automotive Service Solutions, LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018). Owner’s declarant accepts and applies this definition of a POSITA for purposes of his opinions. Ex. 2008 ¶ 30. Neither party’s declarant indicates that any proffered opinion would change depending on the level of ordinary skill in the art. Therefore, consistent with our Institution Decision, we adopt Dr. Vachon’s definition of a POSITA. Ex. 1006 ¶ 28. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 20

  Patent outcomesUS 7,529,574 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,529,574

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.