- RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01752 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1, 3–8, and 10–40 are unpatentable under § 102 over Popp or Kovacevic and/or under § 103 over the stated combinations.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner argues that Popp does not disclose the “change management layer” recited in claim 1. PO Resp. 22–25. In particular, Patent Owner argues that “Popp does not disclose a ‘change management layer’ which ‘automatically detects changes which impact how the application program should operate’ where those ‘changes’ ‘arise from changes external to the application.’” Id. at 24 (citing Ex. 2032 ¶¶ 63–64; Ex. 2033 ¶¶ 46–50). Patent Owner argues that Popp instead discloses “automatically detect[ing] changes from [an application’s] own operation – in this case, user input of text data via a user interface.” Id. at 23 (citing Ex. 2031, 67:10–25). Patent Owner’s arguments rely upon its proposed construction of the “change management layer,” which we do not adopt for the reasons discussed above (see supra Section II.C.1). We are persuaded by Petitioner’s assertion that automatically detecting a change that affects information stored in the database (e.g., an employee name stored in a database), from which the Web page (i.e., the claimed application) is generated, discloses detecting a change that affects the application, as claimed. See, e.g., Ex. 1001, 12:17–28 (describing the business content layer (i.e., “first layer”) as a database that may include data associated with a selected area of business, such as finance or human resources). Based on the evidence of record, we determine Petitioner has shown, by a preponderance of the evidence, that Popp anticipates claim 1.” slip op. at 24
Patent outcomesUS 7,356,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01751 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1, 3–8, and 10–40 are held unpatentable as anticipated by Popp or Kovacevic, or obvious over the combinations stated in the decision.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 7,356,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01750 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 13–18 are unpatentable as anticipated by Popp and Kovacevic and obvious over Balderrama and Java Complete.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decision, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See Inst. Dec. 7–15. In its Patent Owner Response, Patent Owner argues: In its decision instituting [this trial], the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in this proceeding.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the Specification of the ’111 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’111 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” Pet. Reply 9; see Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent11 in support of its argument that the claimed changes should be limited to those external to the application, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” Pet. Reply 12 (citing Ex. 1001, 19:66–67). Based on the evidence in this record, we determine that the plain meaning of the phrase “fourth portion of the server being configured to automatically detect changes that affect the information in the first portion of the server or the information in the second portion of the server” is consistent with the Specification. We are not persuaded that the recited function of “automatically detect[ing] changes” is limited to detecting changes external to the application, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 13
Patent outcomesUS 8,484,111 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,484,111 - 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 - International Flavors & Fragrances Inc. v. Zoomessence, Inc.All claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01418 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 16, 19, and 28–30 are unpatentable: claims 1, 16, and 19 are anticipated by Merritt and also obvious over two combinations; claims 28–30 are obvious over specified combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Id. at 2:8–14. The Specification describes a similar cooling effect within the drying chamber of the claimed system as follows: “It has been demonstrated that an inlet air temperature of about 40° C. may result in an outlet air temperature of about 32° C. from the drying chamber 107.” Id. at 7:35–37. Based on these disclosures, we understand that drying fluid is hotter at the inlet than it is at the outlet. Accordingly, claims that recite the temperature of drying fluid “at introduction into the drying chamber,” e.g., claims 4 and 5, effectively limit the highest permitted temperature of the drying fluid, which includes “air,” at any point in the drying chamber. Claim 1 recites an upper limit of 100°C on the temperature of one component of the drying fluid, “air,” without limiting the location at which the temperature is measured. We conclude, therefore, that the upper limit of 100°C as recited in claim 1 refers to the temperature of air measured at any location within the drying chamber, including at the outlet. Petitioner proposes that the broadest reasonable interpretation of “the drying fluid comprises air at temperature that is above freezing temperature of the liquid solvent and below 100°C” requires that “at some location within the internal volume of the drying chamber there is air at a temperature that is above the freezing temperature of the liquid solvent and below 100°C.” Pet. 7–8 (citing Ex. 1010 ¶ 46). Based on our review of claims 1–5 and the Specification, we adopt Petitioner’s interpretation.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each limitation in a claim must be found in a single prior art reference, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). While the limitations must be arranged or combined in the same way as in the claim, identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, a reference anticipates a claim “if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). Thus, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“a. Independent Claim 1 Petitioner’s challenge to claim 1 as being obvious in view of the combination of Merritt, Dobry, and Skelbæk, is based largely upon the same comparison of Merritt to the claim. See Pet. 33–37, 41–42. Nevertheless, Petitioner states, and we agree, that “[i]f there is any question about whether low temperature spray drying could be used in the encapsulation of active ingredients in a carrier, Skelbæk teaches the advantages of drying liquid drops under the supply of air having a temperature of 50–120°C.” Pet. 37 (citing Ex. 1008, Abstract, pg. 2–3.). We further agree with the rationale of Petitioner that the advantages that would have been obvious to an ordinarily skilled artisan from using the lower temperature range of Skelbæk with Merritt are “a denser, non-permeable matrix material” and to “retain high levels of flavorant.” Id. (citing Ex. 1010 ¶ 107). In addition to relying on Merritt and Skelbæk, Petitioner cites Dobry’s Figure 1 in its claim chart, which schematically illustrates a conventional spray-drying system.12 See Pet. 41–42. Patent Owner’s principle argument against obviousness over Merritt, Dobry, and Skelbæk is the same as its argument against anticipation by Merritt, i.e., that Merritt includes gas above 100°C as well as below 100°C. We have rejected this argument as a matter of claim interpretation, for the reasons set forth in Part II.D.2.a above. In addition, Patent Owner asserts that Skelbæk may not be relied upon by Petitioner for the teaching of the use of a lower temperature drying fluid in a drying chamber because Skelbæk’s spray drying process yields partially dried material that requires further drying. PO Resp. 46 (citing Ex. 1008, 6:20–24). In particular, Patent Owner points out that Skelbæk uses a fluidized bed to dry further the product leaving Skelbæk’s spray drying process. Id. 12 Dobry’s Figure 1 is virtually identical to Figure 1 in the ’388 patent. Compare Ex. 1007, Fig. 1 with Ex. 1001, Fig. 1. Figure 2 of the ’388 patent is virtually identical to Figure 1 of the ’388 patent, but merely replaces the “process heater” of Figure 1 with a “process dehumidifier.” Compare Ex. 1001, Fig. 2 with id. at Fig. 1.” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner’s argument is unpersuasive because Watanabe’s use of excipients does not diminish Watanabe’s express suggestion to use a dehumidifier in a spray drying process. Rather, we agree with Petitioner that an ordinarily skilled artisan would have understood that a dehumidifier can be used for dehumidification purposes in spray-drying processes, even when the materials being dried differ. Further, we find that Watanabe, Merritt, and Dobry are all analogous art to the claimed invention (and to one another) inasmuch as they relate to the field of spray drying and the problem of drying. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004).” slip op. at 27
Patent outcomesUS 8,939,388 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,939,388
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.