- PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR of claims 1–5 and 9–19 on five § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that 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) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,836,766 - Genus PLC v. Inguran, LLCInstitutedPTAB · Dec 14, 2021 · IPR2021-01027 · APJ Ulrike W Jenks · IPR · Institution
The Board instituted IPR of claims 1–5 on all three grounds, finding a reasonable likelihood that at least one challenged claim would be anticipated or obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a)(2020). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that 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). The Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had at least “an undergraduate or graduate degree in genetics, genomics, and/or animal breeding, along with several years of relevant applied research and/or industry work experience in the same fields, including in swine” and “would have been well-acquainted with methods of commercial breeding of lines and breeds within a genetic nucleus for the purpose of promoting genetic progress, the use of sex-selected semen in breeding schemes, including those within the genetic nucleus, genetic evaluation of livestock for desirable and undesirable traits, and the use of genetic markers, e.g., SNPs, and various other genotype data, to guide selection strategies to 1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16, 2013. Because the priority application from which the ’734 patent issued was filed before that date, our citations to Title 35 are to its pre-AIA version. 2 Petitioner contends that claims 1–5 are anticipated by Dekkers, as evidenced by either Maxwell, Garner, or Kim. Pet. 26–41. Alternatively, Petitioner contends that claims 1–5 are obvious over Dekkers and either Maxwell, Garner, or Kim. Pet. 41–45. 3 In the table identifying ground III, Petitioner does not list Kim. Pet. 4. However, in the arguments provided for this ground in regard to claim 5, Petitioner includes Kim. Pet. 48. improve desirable traits and/or minimize undesirable traits.” Pet. 13 (citing Ex. 1002 ¶ 22). Patent Owner states, “[s]olely for purposes of this Preliminary Response, Patent Owner and its expert apply this portion of Petitioner’s proposal, while reserving the right to dispute it later.” Prelim. Resp. 17. On this record, we adopt Petitioner’s definition of the level of ordinary skill in the art as Patent Owner also does. We also note that the prior art itself demonstrates the level of skill in the art at the time of the invention. 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)). B. Principles of Law” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“would not find the additional language in Petitioner’s proposed definition accurate in describing a genetic nucleus. Prelim Resp. 21 (citing Ex. 2001 ¶ 21). Patent Owner contends “that the plain and ordinary meaning of ‘genetic nucleus’ is ‘an animal herd comprising one or more lines and positioned at the top of a multi-level pyramidal hierarchy of herds in a commercial herd breeding structure.’” Id. (citing Ex. 2001 ¶ 24 (“The ’734 Patent does not specify this additional requirement as part of the meaning of ‘genetic nucleus,’ nor would the additional language be accurate in describing every genetic nucleus.”). On the present record, Petitioner has the better argument. The ’734 specification describes pig breeding as pyramid with the “nucleus herd” at the top of the pyramid and commercial farms at the bottom. Ex. 1001, 9:43– 44. “A nucleus herd is typically comprised of 12 to 15 lines, although any number of lines may be represented, with each line comprising a number of desirable traits. . . . Only the offspring with the highest measured selection index are retained in the nucleus herd.” Id. at 9:47–49. The retention of offspring with the most desirable features in the nucleus herd reasonably implies that these individuals are selected to propagate the desirable trait in the nucleus heard. Accordingly, at this stage of the proceeding, we construe “genetic nucleus” as “an animal herd comprising one or more lines and positioned at the top of a multi-level pyramidal hierarchy of herds in a commercial herd breeding structure, wherein certain offspring of the herd are used for breeding within the herd.”” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“the context of artificial insemination for the purpose of directing piglet production toward creating predominantly male or female offspring. Petitioner’s expert explains that the state of the art at the time the invention was made required at least an 80% or better sex sorted semen in order to be able to use the sorted semen in to skew the piglet production in a littler to be either predominantly female or male offspring. See Ex. 1002 ¶ 113. Specifically, Petitioner’s expert avers that one of ordinary skill in the art would have understood that “[f]rom a commercial pig production perspective, using semen with less than 80% sex skew (i.e., purity for X or Y chromosomes) would not be efficient or economical, and consumers (e.g., pig producers) would not purchase such poorly enriched samples.” Ex. 1002 ¶ 113. Petitioner’s expert testimony is supported by the teachings of Maxwell (Ex. 1005) and Garner (Ex. 1006), both of which are expressly cited in Dekkers as evidencing “sperm sexing technology . . . for the production of either male or female offspring for sire or dam lines.” See Ex. 1004, 396, 420, 422. In particular, Maxwell teaches that “[i]n combination with the orientating nozzle and changes in the design of the sorter electronics, this allowed significant increases in sorting rates (15 million spermatozoa per hour) to be achieved while maintaining more than 85% purity.” Ex. 1005, 81. In addition, Gardner teaches that “acceptable sperm sexing efficiency, usually at 90% accuracy.” Ex. 1006, Abstract. Based on the current record, Petitioner’s expert testimony reasonably supports the position that Dekkers application of sex sorting technology at the level of the nucleus or multiplication tiers would require at least an 80% sex sorting efficiency. Patent Owner contends that Petitioner is improperly relying on Maxwell and Garner in order to support its anticipation argument over Dekkers. Prelim. Resp. 26 (citing Callaway Golf Col. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009)). On the record at the stage of the proceeding, Petitioner has made an adequate showing to supports its anticipation argument. In particular, Dekkers disclosure of using sex sorted semen to allow for the production of either male or female offspring for sire or dam lines, reasonably suggests that the sorted sperm is at a sufficient purity level to achieve the stated result. Ex. 1004, 396. Petitioner relies on the testimony of its expert to establish that at the time the invention was made one of ordinary skill in the art would have understood that 80% or better sex sorted semen is a necessary level in order to skew the sex of the litter. See Ex. 1002 ¶ 113. Here, Petitioner’s expert testimony is supported by the teachings of either Maxwell (Ex. 1005) or Garner (Ex. 1006) to establish the knowledge of one of ordinary skill in the art at the time of Dekkers publication. Accordingly, we are not persuaded by Patent Owner’s contention that Petitioner is improperly relying on Maxwell and Garner. Accordingly, having considered the arguments and evidence presented by the parties at this stage, Petitioner has made a sufficient showing that Dekkers discloses the claim limitations of element 1c.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,542,734 - Google LLC v. Navblazer, LLCAll claims unpatentablePTAB · Dec 13, 2021 · IPR2021-00504 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 2, 5–12, 14–17, and 19 are unpatentable as obvious over Schreder alone or in combinations with the other cited references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention “would have been a person having at least a Bachelor’s Degree in an Engineering discipline such as Electrical or Computer Engineering, or a Bachelor’s Degree in Computer Science or equivalent degree, and at least two years of relevant experience in the research, design, development and/or testing of navigation systems, embedded systems or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 35–36). Patent Owner does not dispute Petitioner’s description. At institution, we adopted Petitioner’s characterization of the level of skill in the art, which we found to be generally consistent with the disclosures of the ’782 patent and cited references. See Decision 6. As neither party has contested that choice, we maintain it. Neither party argues” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Though there may be a dispute about the meaning of the claims in the District Court, neither party has sought or attempted to justify any claim construction in this proceeding, and our review of the record does not reveal any terms that require an express construction. We conclude that we need not engage in the formal construction of any claim terms to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner argues that the skilled artisan “would recognize the usefulness of leveraging [Hanchett’s] existing traffic radio infrastructure . . . with Schreder’s ‘radio data system 28’ and ‘RF processor 78’ that provides users with information regarding, for example, ‘traffic flow information’ and ‘road blockages,’ to also provide users with video traffic information, including video previews of a particular route.” Pet. 29 (citing Ex. 1003 ¶ 72). Petitioner also argues that “[a]s Hanchett recognized, a system that provided video traffic information would allow drivers to view ‘current and accurate information concerning traffic conditions’ via video and ‘evaluate the information in light of his or her particular situation,’” and that “previewing videos of particular roadways would allow a user ‘to make route choices.’” Id. (citing Ex. 1008, 2:34–57, 2:15–22). We agree that the combination of Schreder and Hanchett includes the elements of claim 5, and that one of skill in the art would have been motivated to make the combination. We conclude that Petitioner has shown, by a preponderance of the evidence, that claim 5 would have been obvious in view of Schreder and Hanchett.” slip op. at 20
Patent outcomesUS 9,885,782 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,885,782 - Unified Patents v. Navblazer, LLCAll claims unpatentablePTAB · Dec 13, 2021 · IPR2020-00983 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–5, 7, 8, 10–19, 21–23, and 25 are unpatentable as obvious, principally over Obradovich alone or with Lappenbusch and Morimoto.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention “would have had a Bachelor’s of Science in electrical engineering or a related subject and two or more years of experience working with navigation and communication systems.” Pet. 9 (citing Ex. 1004 ¶¶ 23–24). Patent Owner does not dispute Petitioner’s description. At institution, we adopted Petitioner’s characterization of the level of skill in the art, which we found to be generally consistent with the disclosures of the ’782 patent and cited references. See Decision 11–12. As neither party has contested that choice, we maintain it. Neither party argues that the formulation of the level of ordinary skill in the art affects the patentability analysis. B.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner asserts that the challenged claims “do not require express construction, or alternatively, only require construction to the extent necessary to determine whether the prior art teaches the claims.” Pet. 9. Patent Owner has not sought any express claim constructions. We conclude that we need not engage in the formal construction of any claim terms to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 15
- BurdenUnpatentable
“viii. Conclusion Regarding Claim 1 For the reasons detailed above, we agree with Petitioner’s analysis regarding Obradovich. We thus conclude that Petitioner has shown claim to be 1 unpatentable as obvious in view of Obradovich.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“a. Independent Claim 15 As explained above, we find that Obradovich discloses the limitations of claim 15, including the camera. See Section II.C.1.b. We also conclude that, even if Obradovich did not disclose a camera for obtaining an image of a roadway, it would have been obvious to add that feature in view of Lappenbusch’s teachings regarding the use of “an interactive roadmap” that allows a user to select segments and then provides images from video cameras located along the route to see images or short video clips of the traffic along the selected route.” Pet. 37–40; see Ex. 1009, 2:45–64. We find that Petitioner has provided a sufficient motivation to combine these complementary disclosures. See Pet. 38–40. Patent Owner does not argue that Obradovich and Lappenbusch do not disclose the subject matter of claim 15, and we conclude that Petitioner has shown, by a preponderance of the evidence, that claim 15 would have been obvious in view of these references.” slip op. at 26
Patent outcomesUS 9,885,782 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,885,782 - Neurocrine Biosciences, Inc. v. Spruce Bosciences, Inc.Institution deniedPTAB · Dec 10, 2021 · PGR2021-00088 · APJ John G New · PGR · Institution
The Board denied institution on all five grounds, finding the petition did not show any challenged claim was likely unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 324, the Board “may not authorize a post-grant review to be instituted unless … the information presented in the petition … if such information is not rebutted would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the Petition, the Preliminary Response, and the evidence presently before us, we determine that Petitioner has failed to demonstrate that it is more likely than not that it would prevail in establishing the unpatentability of at least one challenged claim of the ’908 patent. We consequently deny institution of post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“The Specification expressly teaches that, with respect to the clinical phase 2 trial described in Example 4, “Patients will have overnight [pharmacokinetic/pharmacodynamics] PK/PD assessments performed at baseline, which include an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose.” Ex. 1001 col. 42, ll. 12–16. This is the same quotation and clinical trial relied upon by Dr. Barnes in his Declaration, and is the only definition of a “baseline” in the ’908 patent. See Ex. 1002, 36–37. We note that placebos were evidently not employed in the phase 2 clinical study of Example 4.3 Given the sole exemplary description of “baseline” in Example 4 of the Specification, we construe the claim term reciting “reduced by at least 10% from baseline” as meaning “a reduction of at least 10% in the level of ACTH (claim 1) or 17-OHP (claim 11) compared to measurements of ACTH or 17-OHP made prior to, and/or at the beginning of, administration of the drug.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“likely than not that independent claims 1 and 11 are anticipated by Grigoriadis. “For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.” Therasense, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1332–33 (Fed. Cir. 2010). The single clinical trial taught by Example 6 of Grigoriadis does not establish a baseline value for patients against which to compare the data obtained from patients receiving 300 mg or 600 mg of the test drug, NBI- 77860 (verucerfont). See Ex. 1006 ¶¶ 90–94. Specifically, Example 6 does not establish a baseline “which include[s] an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose,” as disclosed by the ’908 patent. See Ex. 1001, col. 42, ll. 12–16. We therefore conclude that Grigoriadis fails to disclose expressly the limitations of claims 1 and 11 severally reciting “wherein [the] … hormone … level in the human is reduced by at least 10 % from baseline.”” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“A reference may anticipate if a claim limitation that is not expressly disclosed is inherently disclosed because it “is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010); see also Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (holding that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question”).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,849,908 - Slayback Pharma LLC v. Sumitomo Dainippon Pharma Co., Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-01053 · APJ Zhenyu Yang · IPR · Final written decision
Claims 1–75 are unpatentable as obvious over Saji; the Board did not reach the Latuda Information anticipation and Latuda Information–Loebel obviousness grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We do not discern an appreciable difference in the parties’ respective definitions of the level of ordinary skill in the art, and any perceived distinction does not impact our Decision. Indeed, as Patent Owner acknowledges, the parties’ proposed definitions of the ordinary skill level do “not differ significantly.” Id. at 25. Nevertheless, for purposes of this Decision, we adopt Patent Owner’s definition of the skill level, as it is consistent with the ’827 patent disclosures and the prior art of record, and more inclusively describes the suitable experience for one of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On this record, we find Petitioner’s proposed constructions are supported by intrinsic and extrinsic evidence. See Pet. 18–23. We agree with Petitioner here that “a patient” or “the patient” should have its ordinary and customary meaning of “one or more patients,” as opposed to a “patient population” as Patent Owner has previously argued in a district court litigation involving another party. See id. at 19–20. Indeed, Patent Owner agrees. See Reply 19 (“There is no dispute that ‘a patient,’ as recited in the ’827 claims, refers to ‘one or more patients.’”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On this record and for purposes of this Decision, we see no need to construe any other term expressly. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Saji’s preferred dose range of 5 to 100 mg/day, which overlaps with the “from 20 to 120 mg/day” range required by each challenged independent claim, Petitioner argues that an ordinarily skilled artisan would have been “motivated to conduct dose ranging studies and would find the claimed dosing regimens.” Pet. 62; see also id. at 55 (contending that “dose ranging was a routine part of drug development” (citing Ex. 1030)). Dr. Stahl’s testimony supports Petitioner’s argument. Indeed, Dr. Stahl testifies that, although with some drugs, it can be difficult to find a safe and effective dose, or to get an effective dose into the patient, neither is the case with lurasidone. Ex. 1054, 141:3–14; see also id. at 142:2–6 (“Q. [A]re you aware of any particular difficulties with lurasidone hydrochloride and finding a safe and effective dose for schizophrenia and manic depressive psychosis? A. No.”); 135:18–25 19 (Dr. Stahl testifying that he is “not aware of anything unusual about [lurasidone’s] dose range”). Thus, we agree with Petitioner that an ordinarily skilled artisan, starting from Saji’s preferred dosing range, would have conducted routine dose ranging studies and identified the claimed dosing regimens.” slip op. at 19
Patent outcomesUS 9,815,827 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,815,827 - Apogee Lighting Holdings, LLC v. Autronic Plastics, Inc. D/B/A Clear-Vu LightingAll claims unpatentablePTAB · Nov 29, 2021 · IPR2020-01024 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–6, 9, 10, 14, and 21–25 are unpatentable as obvious over the asserted combinations of Roberge, Realmuto, Smith, AAPA, and, for certain grounds, Conley.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“55. Ex. 1010, 6:55–60, 16:6–12, 20:33–34, 21:1–2, 21:18–21, 63:4–9, 64:10–21, Fig. 55. Further, the high voltage DC power source of Realmuto is not limited to solar panels, and also includes wind power and a fuel cell. Ex. 1009 4:7–10, Fig. 1. Similarly, Roberge discloses using wind power and a fuel cell. Ex. 1010, 21:1, 21:18–21. Both references also teach using a standard AC power source. Ex. 1009, 1:36–39, 2:28–30; Ex. 1010, 20:33– 34. We find that the similarity of the AC and DC power sources used to provide power to the LEDs in both references, including solar power, wind power, and fuel cells, suggests to a person of ordinary skill in the art the compatibility of using the high voltage DC power sources taught by Realmuto to provide power to the LEDs in the LED lighting fixture of Roberge. See In re Hyon, 679 F.3d 1363, 1366 (Fed. Cir. 2012) (affirming an obviousness determination where two “references both teach processes directed to making the same class of products” and minor differences between the disclosures did not “negate the motivation to combine”). Conclusion” slip op. at 59
Patent outcomesUS 10,190,760 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,190,760 - Apogee Lighting Holdings, LLC v. Autronic Plastics, Inc. D/B/A Clear-Vu LightingAll claims unpatentablePTAB · Nov 29, 2021 · IPR2020-01023 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 7–10, 13, 17–19, and 22–24 are unpatentable as obvious over the asserted combinations of prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“We agree with the Petition and supporting evidence that combining the teachings of Conley with those of Smith, Realmuto, and the AAPA would have provided the benefit of providing tests necessary to satisfy safety codes for an emergency lighting system used in a public transportation facility, where switching to an alternate power source when the main power source fails allows the lighting system to provide light so that people can safely exit the public transportation facility. Ex. 1003 ¶¶ 82, 243; Ex. 1005, 32, 182; Ex. 1009, 4:22–26, 5:14–20, Fig. 4; Ex. 1011, 1:13–28; Ex. 1012, 6:43–66. Petitioner’s analysis for claims 9, 10, 13, 17–19, and 22–24, supported by the testimony of Dr. Bretschneider, which we credit, is persuasive that claims 9, 10, 13, 17–19, and 22–24 would have been obvious over Smith, Realmuto, AAPA, and Conley.” slip op. at 82
Patent outcomesUS 9,909,748 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,909,748 - PTAB · Nov 17, 2021 · IPR2021-00838 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–23, finding a reasonable likelihood that Petitioner would prevail on three §103 grounds involving Noda, Ozawa, and Maslyukov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that 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) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’977 Patent. Accordingly, we institute an inter partes review of claims 1–23 of the ’977 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in Chemistry, Organic Chemistry, Chemical 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013. Because the challenged patent claims priority to an application filed before March 16, 2013, we refer to the pre-AIA version of § 103. 2 Japanese Unexamined Patent Application Publication No. 2005-23999, published September 8, 2005 (Ex. 1005, “Noda”) (Certified English translation provided as part of exhibit). 3 Japanese Unexamined Patent Application Publication No. 2003-36033, published February 7, 2003 (Ex. 1006, “Ozawa”) (Certified English translation provided as part of exhibit). 4 Soviet Patent No. 765281, published September 23, 1980 (Ex. 1007, “Maslyukov”) (Certified English translation provided as part of exhibit). 5 U.S. Patent No. 5,191,055, issued March 2, 1993 (Ex. 1010, “Kanemura”). 6 European Patent Specification No. EP 1 144 486 B1, published November 3, 2004 (Ex. 1012, “Colton”). Engineering, or an equivalent discipline, and at least three years of experience working with organic dyes in light-filtering applications.” Pet. 8 (citing Ex. 1003 ¶ 22). Patent Owner argues that the Petition should be denied under this level of skill in the art and reserves its right to challenge the same if this proceeding continues. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“need not substantially contain a rare earth metal” of claim 1, Petitioner asserts that this phrase “means that a substantial amount of a rare earth metal is not needed to achieve the ‘sharp absorption satisfying the following conditions (A).’” Pet. 8. Petitioner further asserts that “because the plastic spectacles lens has an organic dye that achieves the desired optical properties, “the lens does not need to have a ‘rare earth metal’ in any substantial amount.” Id. at 9 (citing Ex. 1003 ¶ 36). Petitioner additionally asserts that this would have been the reasonable and normal understanding of persons of ordinary skill in the art in considering the claim limitation in the context of the specification. Id. at 10. As discussed above, Patent Owner does not traverse the constructions proffered by Petitioner at this stage of the proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find that Petitioner’s proposed construction is supported by the ’977 Patent specification, and adopt Petitioner’s proposed meaning of “whereby the plastic spectacles lens need not substantially contain a rare earth metal” for purposes of institution. We further note that, given the construction of the claim limitation as a “negative limitation,” and the stipulation “need not,” it is unclear whether the claim would exclude plastic spectacle lenses with no rare earth metal or composed of a large amount of rare earth metal. Given the disclosures of the references cited by Petitioner, we need not consider these alternative interpretations of the claim limitation.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to provide an express interpretation of any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,506,977 - PTAB · Nov 10, 2021 · IPR2021-00880 · APJ John G New · IPR · Institution
The Board instituted inter partes review on all challenged claims and grounds, finding a reasonable likelihood that claims 1 and 9–12 are anticipated by Dixon or Heier 2009.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Becton-Dickinson factors (a), (b), and (d) have been satisfied. The evidence of record shows that the Dixon reference before the Examiner consisted of merely the first page of Dixon. See Ex. 1087. The single page of Dixon that 8 Thomas Reuters Integrity, VEGF Trap-Eye Final Phase II Results in Age-Related Macular Degeneration Presented at 2008 Retina Society Meeting, (Sep. 28, 2008). Ex. 2007. was before the Examiner provides no disclosure of the claimed dosing regimen. It would consequently have been impossible for the Examiner to analyze the limitations of the challenged claims in view of the complete teachings of Dixon under these circumstances. We consequently find that the disclosure of Dixon that form the basis of Petitioner’s Grounds I and IV (of which Dixon is the sole reference) were not before the Examiner as prior art during examination (because the relevant disclosures were missing or omitted), and that there could therefore be no overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Analysis We conclude that Petitioner has established a reasonable likelihood of success in prevailing at trial on Grounds 1 and 2, and that Patent Owner’s arguments are insufficient, based upon the current record, to overcome that likelihood of success. Petitioner’s claim chart maps out the correspondence between the limitations of claim 1 and the disclosures of Dixon and Heier 2009 in a manner that persuasively demonstrates that the disclosures of both references disclose all of the limitations. Patent Owner does not dispute Petitioner’s showing that the references anticipate, with three exceptions. We address each of those arguments in turn.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“Ex. 1006, 4 (emphasis added). Dixon thus expressly discloses that patients were treated on a “p.r.n. basis” (i.e., an “as needed basis”) for additional doses, and details the criteria by which the physical symptoms were assessed to determine whether another dose was warranted. It is true that Dixon does not expressly state that it is a physician who performs this assessment of the patient in question. But we find that a person of ordinary skill in the art, as defined by Petitioner, would understand that the preforming of diagnostic procedures and analysis, and the prescription of the appropriate medication, would necessarily need to be performed by a physician or other qualified medical professional licensed by 12 Patent Owner also argues that, contra Petitioner’s assertion, this limitation is a positive limitation of the claim that should be afforded patentable weight. See Prelim. Resp. 20–24. For the purposes of this Decision, we accept Patent Owner’s contention that the limitation reciting “assessed by a physician or other qualified medical professional” is entitled to patentable weight. As we explain, however, Patent Owner’s argument that this limitation is not disclosed by the cited prior art is unpersuasive. the state. That is, almost by definition, the practice of medicine, and is certainly well known in this art. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (holding that the teachings of a reference may be taken in combination with knowledge of the skilled artisan to put the artisan in possession of the claimed invention within 35 U.S.C. § 102 even though the patent does not specifically disclose certain features); see also Continental Can, 948 F.2d at 1269 (holding that anticipation requirement that every element of a claim appears in a single reference accommodates situations where the common knowledge of “technologists” is not recorded in a reference, i.e., where technical facts are known to those in the field of the invention). We therefore find that a person of ordinary skill in the art, as defined by Petitioner, would understand that only a licensed physician could competently perform the procedures disclosed by Dixon in the quoted passage.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“equivalent, or less education but considerable professional experience in the medical, biotechnological, or pharmaceutical field), with practical academic or medical experience in (1) developing treatments for angiogenic eye disorders (such as AMD), including through the use of VEGF antagonists, or (2) treating of angiogenic eye disorders (such as age-related macular degeneration (“AMD”)), including through the use of VEGF antagonists. Pet. 25 (citing Ex.1002 ¶¶ 26–28). Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Preliminary Response, although Patent Owner contends that such a skilled artisan could not necessarily perform the limitation of claim 1 reciting “based on visual and/or anatomical outcomes as assessed by a physician or other qualified medical professional.” See, e.g., Prelim. Resp. 28. We address Patent Owner’s contentions with respect to this limitation in our analysis below. For the purposes of this decision, because we find Petitioner’s definition to be consistent with the level of skill in the art (see, e.g., Exs. 1006, 1020), and in the absence of a different proposed definition of the level of skill in the art by Patent Owner, we consequently adopt Petitioner’s definition.” slip op. at 8
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,669,069
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.