• Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.Institution denied
  PTAB · Nov 12, 2024 · IPR2024-00874 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show Bansal's claimed light intensity arrangement.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016)). Obviousness grounds must be supported with “articulated reasoning with some rational underpinning” and not by “mere conclusory statements.” See KSR Int’l Co., 550 U.S at 418. slip op. at 11

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

    “agree with Patent Owner that Petitioner has not sufficiently shown for institution that Bansal teaches or suggests arranging light sources “such that a higher intensity of light is emitted proximate the second edges compared to the intensity of light emitted not proximate the second edges,” as required by the challenged claims. Instead, Petitioner demonstrates how Bansal describes varying the density of light source distribution throughout the array to provide a higher density of light in the entire peripheral area of the array, which includes the areas proximal to both the first and second edges, as compared to the central area of the array. See Pet. 36–37; Ex. 1005 ¶ 25. In this regard, Petitioner relies on Bansal’s Figure 9b, asserting that it “shows one embodiment where more light sources are placed near the edges of the panel compared to the light sources in the center.” Pet. 36–37. The comparison of Bansal’s light density between the entire periphery and the central area of the array is insufficient. What is missing from Petitioner’s argument and discussion of Bansal is how Bansal teaches or suggests a configuration that provides a higher density of light proximate to the second shorter edges of the periphery in comparison to the remaining areas of the array, which includes the first longer edges of the periphery. Without that discussion, we find that Petitioner has not shown sufficient for institution that Bansal is persuasively relied upon for the light source arrangement limitation of the challenged claims. likelihood of prevailing in its obviousness challenge of independent claims 1, 5, 16, 20, or 21, or dependent claims 2, 4, 6–8, and 17–19 over Larsen, Bansal, and Jones.” slip op. at 17

  • Skill levelOther

    “would have had at least a Bachelor of Science in electrical engineering, physics, biomedical engineering, computer engineering, chemical engineering, material science, or a related scientific or engineering field, and at least one year of work or research experience in optics, optoelectronics, radiometry, photometry, photodynamic diagnosis (PD), photodynamic therapy (PDT), phototherapy (PT), or a related field. Pet. 8. Petitioner asserts that, alternatively, a “POSITA in the relevant time frame would have had at least four years of industry or academic experience in optics, optoelectronics, radiometry, photometry, PD, PDT, PT, or a related field.” Id. (citing Ex. 1003 ¶ 37). According to Patent Owner, a person of ordinary skill in the art at the time the application for the ’028 patent was filed, “would have had a M.D. and/or a Ph.D. in an electrical engineering, physics, optical sciences, optical engineering, or a related scientific or engineering field, and at least one to two years of work or research experience in optical engineering, optics, optoelectronics, phototherapy (‘PT’), PDT, or a related field.” Prelim. Resp. 16. Patent Owner asserts that, “[a]lternatively, a POSITA could have a Bachelor’s degree in one of the above areas and at least three to four years of work or research experience in that area.” Id. (citing Ex. 2001 ¶¶ 30–31). We note that the parties’ proposed definitions are largely similar. To the extent that the proposed definitions differ, we do not need to resolve those differences as our findings and conclusion in this Decision would be the same under any of the proposed definitions.” slip op. at 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,697,028
• Orthocision, Inc. v. PTL Opco LLCNo claims unpatentable
  PTAB · Sep 18, 2024 · IPR2023-00625 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1, 2, 9, and 10 were not shown unpatentable under any asserted § 103 ground because Petitioner did not adequately explain how or why the prior art would be combined.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not specifically address Petitioner’s proposed definition. See generally Resp. Patent Owner’s witness, Dr. Bovinet, uses a slightly different, but not materially so, definition of the ordinarily skilled artisan than Petitioner. See Ex. 2005 ¶ 13. Thus, the parties appear to agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience. We accept and adopt Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’129 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 13

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

    “3. Summary on Claim Construction We maintain our earlier constructions of “open tip” and “releasing means . . . .” See DI 16–24. We determine that no other express construction of any claim term is necessary for purposes of rendering this Decision. See Nidec Motor Corp., 868 F.3d at 1017. Although we maintain here our constructions of “open tip” and “releasing means . . . ,” we do so only for the sake of completeness. These claim constructions, ultimately, are not determinative of the outcome of this proceeding because, regardless of the meaning of any claim term, including these disputed terms, we find that Petitioner fails to adequately explain why any claim would have been obvious under the asserted grounds. We explain this in detail below. C.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Ex. 1001, 6:28–38 (emphasis added). However, the language of claim 1 is very clear on the functionality of the “open tip,” expressly reciting that “the open tip cuts bone tissue away from the sacrum or the ilium.” Id. at 13:19– 20. Thus, the claim language itself provides the required functionality of the “open tip,” and we do not agree with Petitioner that additional functionality relating to where bone tissue might go once cut, as discussed in the Specification, should be read into the claims as a limitation. Patent Owner’s newly proposed interpretation is similar to Petitioner’s in that it requests addition of functionality discussed as an example in the Specification, but not recited in the claim’s expressly recited functional language relating to the “open tip.” We disagree with Patent Owner that the concept of dislodged tissue entering a void defined by the open tip is necessary to understanding the claim element. And, once more, Patent Owner reads too much structure from the written description into the claim language as a limitation because it is not apparent that the recited “open tip” language requires that we further clarify that any interior void defined by the open tip is on the interior of the abrading head, and behind the exterior abrading surfaces, or between interior surfaces of a first pair of opposing sides, as proposed by Patent Owner. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988).” slip op. at 18

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112 ¶ 6) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties agree that this is a means plus function limitation. See Pet. 19–20; Resp. 9. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a part of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17. Construing a claim term under 35 U.S.C. § 112(f) involves two steps: (1) identifying the claimed function; and then (2) determining what structure, if any, disclosed in the Specification corresponds to the claimed function. Williamson, 792 F.3d at 1351. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function. See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).” slip op. at 20

  Patent outcomesUS 11,020,129 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,020,129
• Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.No claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00052 · APJ Jeffrey N Fredman · IPR · Final written decision

  The Board held claims 1–4, 8–14, and 18–26 not shown unpatentable because they were entitled to priority before the November 2018 Venclexta Label, which therefore was not prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology, which would encompass the blood cancers recited in the claims. Neither party identifies a difference in the analysis or conclusions that would be based on differences in the ordinary skill in the art analysis. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

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

    “The parties do not identify any issue relating to the preamble that would impact our analysis. We recognize that Patent Owner is suggesting that Petitioner’s expert, at least, is reading the word “clinical” into the treatment language of claim 1. However, the plain language of the claim 1 preamble states “treating lymphoma or leukemia in a human patient” and is supported by a straightforward definition in the Specification of the ’087 patent, expressly limiting the invention to treatment of human patients. See Ex. 1001, 16:25–38. We therefore find that the preamble terms do not need claim construction because there is no actual dispute suggesting that, for example, claim 1 implicitly recites the term “clinical.” See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledEntitled to earlier dateDecided for patent owner

    “d. Analysis Considering the Wands factors as a whole, we find that the limited breadth of the claims, presence of several working examples, significant amount of direction and guidance provided by the ’087 patent, predictability in treating blood cancers with Bcl-2 inhibitors like GDC-0199, and high level of skill in the art are balanced against a large quantity of experimentation. Based on our consideration of the entirety of the evidence, we find that a preponderance of the evidence supports the conclusion that undue experimentation would not have been required to make and use the invention commensurate in scope with the claims of the ’087 patent. One underlying theme of Petitioner’s contentions and Petitioner’s expert testimony is the repeated contention that clinical trials were not completed by Patent Owner. See, e.g., Pet. 48 (“venetoclax (GDC-0199) was not FDA-approved”); Ex. 1020 ¶ 193. We find these arguments unpersuasive as we agree with Patent Owner that “[i]t is well established that a patent may be secured, and typically is secured, before the conclusion of clinical trials.” In re Montgomery, 67 F.3d 1375, 1382 (Fed. Cir. 2012). Particularly as to the dependent claims, a preponderance of the evidence of record does not support a finding that undue experimentation would have been required to administer three different doses of GDC-0199 starting with 100 mg, to use multiple daily dosing cycles of one day, to continue until disease progression occurs, or to combine with other treatment compounds. We find that a preponderance of the evidence does not support Petitioner’s position that any of the dependent claims fail to comply with the enablement requirement.” slip op. at 23

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Applying Rai and Wertheim to the instant facts, we agree with Patent Owner that, factually and legally, in the ’087 patent “the claimed dosages of 100 mg, 200 mg, and/or 400 mg of GDC-0199 are adequately supported.” PO Second Suppl. Brief 2 (citing PO Resp. 11, 27–29; PO Sur-reply 19, 21– 22; Ex. 1001, 24:20–29.) In particular, the ’087 patent describes all three specific dosage values 100 mg, 200 mg, and 400 mg in the context of an escalating drug dosage series and Petitioner points to no persuasive statements in the specification that dispute either the effectiveness or the operability of GDC-0199 at any of these dosages.” slip op. at 32

  Patent outcomesUS 11,110,087 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 11,110,087
• Walt Disney Parks And Resorts U.S., Inc. v. Agile Journeys LLCInstituted
  PTAB · Apr 15, 2024 · IPR2024-00029 · APJ Amee A Shah · IPR · Institution

  The Board instituted IPR on claims 1, 3–5, 7–8, 10–14, and 16–25 on all grounds in the Petition, finding a reasonable likelihood of unpatentability on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “It is not disputed that Sim, Doi, and Herz were not previously presented to the Office. And, the prosecution record indicates that Sim and Doi were not listed on an Information Disclosure Statement by Application nor in a List of References or in an Office Action by the Examiner. See Ex. 1002, 9–10, 20–25, 69–74, 196–197, 346–347. Petitioner’s asserted Grounds 1 and 2 rely substantially on Sim and Doi to teach the steps of the claimed system and method. Petitioner’s asserted Grounds 4, 5, and 6 substantially rely on Herz. Sim, Doi, and Herz are meaningful to the prior art combinations set forth in the Petition. Therefore, the asserted combinations regarding Sim and Doi, Sim, Doi, and Waytena, and Waytena and Herz were not previously presented to the Office. It is also not disputed that Waytena was previously presented to the Office and considered by the Examiner. The prosecution history shows that throughout prosecution, the Examiner heavily considered and relied on Waytena for rejections under 35 U.S.C. §§102 and 103 in evaluating the application of the ՚983 patent. See, e.g., Ex. 1002, 9–10, 20–24, 69–73. At this point and based on the present record, we do not discretionarily deny under 35 U.S.C. § 325(d) because Petitioner has 7 The terms “POSITA,” “PHOSITA” or “skilled artisan” refer to a person of ordinary sill in the art. reasonable likelihood that at least one of the Challenged Claims is unpatentable. PGS Geophysical, 891 F.3d at 1360. However, based on the record before us, and because we reach the same conclusion as the Examiner regarding Waytena’s teachings, we find that Patent Owner has, on this record, sufficient support for its contentions that Waytena was previously presented to the Office and the Examiner’s evaluation on the merits regarding Waytena’s teachings was not in error.” slip op. at 14

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Moreover, 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); see also 37 C.F.R. § 42.108(a) (2023) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Considering the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we determine that, at this stage based on the evidence presented, Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest or comment on Petitioner’s definition of the level of ordinary skill in the art or offer Patent Owner’s own definition of the level of ordinary skill. Prelim. Resp. 2. that the ’983 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’983 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 17

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “Petitioner contends the claimed “presentation means” is a means-plus- function term under § 112, ¶ 6, that “can perform the function of (a) ‘receiv[ing] said itinerary from said computer’ and (b) ‘present[ing] said itinerary to said party.’” Pet. 8–9. Petitioner further contends the corresponding structure for performing the recited functions is display screen 130. Pet. 9. Patent Owner presents no argument against this contention. We agree that “presentation means” is a means-plus-function claim term. Because it is necessary to know what the structure and function are encompassed by the claim term in order to make a determination that the disagreement, we adopt Petitioner’s construction. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,212,983
• Ferno-Washington, Inc. / Ferno Group, Inc. v. Stryker CorporationInstitution denied
  PTAB · Mar 19, 2024 · IPR2024-00042 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 3 or 4 were obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review if “the information presented in the petition . . . and any 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). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to either of the Challenged Claims. We thus deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner acknowledges, however, that “the particular definition of a person of ordinary skill in the art . . . [is not] determinative at this stage because the Petition can be denied under [Petitioner’s] own proposed skill level.” Id. (citing Pet. 10). Petitioner’s definition reflects a lower level of skill, as it does not require a POSITA to have “about 3-5 years’ experience designing, developing, manufacturing, or studying the types of mechanisms found on patient supports, cots, cot fasteners, or other similar mechanisms,” as Patent Owner proposes. Compare Prelim. Resp. 8, with Pet. 10. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We find Petitioner’s definition is consistent with the ’884 patent and the asserted prior art. Pet. 10; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Petitioner does not advance construction of any particular term and submits that no term requires construction beyond its plain and ordinary meaning. See Pet. 11. Similarly, Patent Owner does not propose construction of any claim term and submits that even under the plain and ordinary meaning, as proposed by Petitioner, the Challenged Claims are not invalid. See Prelim. Resp. 6–8. For purposes of this Decision, we need not and do not expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not shown, for purposes of institution, a sufficient reason a skilled artisan would have modified Ferneau A, as Petitioner has proposed, based on Ferneau B. Neither Ferneau A’s posts nor Ferneau B’s bumpers 92, 94 are “oriented between said mid-length thereof and said litter frame,” as required by claim 3. Thus, Petitioner has not shown that either Ferneau A or Ferneau B teaches or suggests the limitation at issue, and Petitioner’s proposed modification is not supported by reasoning beyond what appears to be a hindsight reconstruction of the claimed feature. Petitioner’s argument (Pet. 14–15) and Dr. Stevick’s accompanying testimony (Ex. 1002 ¶ 62a) that Ferneau A’s posts “could ensnarl a pant leg or shoelace” and that using “mounts rather than the post would lessen the possibility that an operator’s finger or other extremity could be pinched” does not fully address the claim limitation and fails to account for the fact that neither Ferneau A nor Ferneau B teaches a mount “oriented between said mid-length thereof and said litter frame,” as required by claim 3. Ferneau B expressly taught locating the mounts between the mid-length of the X-frame and base frame, not the litter frame. See, e.g., Ex. 1009, Figs. 1–4. Petitioner’s reasoning does not identify why a person of skill would have had reason to, or been motivated to, place mounts in a location not taught by Ferneau B. Furthermore, Petitioner’s reasoning presumes that Ferneau A’s frame encounters metal-to-metal contact when the cot is collapsed, yet the record does not support such a finding. Indeed, if Ferneau A’s mounts serve the same function as Ferneau B’s rubber bumpers 92, 94, as Petitioner states (see Pet. 14), Ferneau A’s frame would not encounter such metal-to-metal contact.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Safe Haven Wildlife Removal And Property Management Experts LLC v. Meridian Wildlife Services LLCInstitution denied
  PTAB · Feb 22, 2024 · IPR2023-01340 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations of Bird Barrier Video and the cited references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “D. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations).9 Graham v. John Deere Co., 383 U.S. 1,” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that “a POSA6 ‘would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals,’” quoting the definition of a POSA adopted by the Board at the” slip op. at 8

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

    “actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Analysis Based on the current record, we agree with Patent Owner, that the Petition does not adequately explain why it would have been obvious to a person of ordinary skill in the art to determine the species of flying vertebrate (as required by limitation 1a) and position the netting for capture based on the species of flying vertebrate (as required by limitation 1d). All of the references relied upon assume the species of flying vertebrate. Specifically, Bird Barrier Video assumes that the flying vertebrate is a bird. See generally, Ex. 1003; see also Ex. 1004. Albanese and Sheldon (which specifically applies to American woodcocks) also assume that the flying vertebrate is a bird. See generally, Ex. 1010, see also Ex. 1011. Kunz assumes the flying vertebrate is a bat. See generally, Ex. 1009. Although, Kunz mentions birds, it does so in the context of setting its mist nets so as to not catch birds. Ex. 1009, 30. Thus, none of these references suggest that the method described therein pertains to a type of flying vertebrate other than the type of flying vertebrate described. In the absence of any explanation as to why a person of ordinary skill in the art would need to determine the species of flying vertebrate, Petitioner’s assertion that a person of ordinary skill “would be motivated to combine [Kunz, Albanese, and Sheldon] with the teachings of Bird Barrier Video to increase the chances of capturing a targeted bird within a large building” lacks rationale underpinning. Pet. 27. We also determine that Petitioner does not sufficiently explain why a person of ordinary skill in the art would be motivated to replace Bird Barrier Video’s magnetic connectors with hooks as required by limitation 1ci. Ex. 1001, 6:1. Petitioner contends that “using hooks instead of magnetic heads would have been obvious to a POSA as there is no material difference on the ends of poles to attach the poles to an overhead structure is commonly used in various fields. Pet. 29 (citing Ex. 1018, “Bebout”). Petitioner, however, does not explain how Bebout’s teachings would lead a person of ordinary skill in the art to modify or replace Bird Barrier Video’s magnetic heads with hooks. See generally, Petition. Further, we do not agree with Petitioner’s assertion that there is no material difference between magnetic heads and hooks. For example, we understand that Bird Barrier Video’s magnetic head requires a magnetic surface, whereas hooks do not. Conversely, we understand hooks to require a structure that provides something for the hook to hook on to, whereas magnetic heads do not. Thus, it is not necessarily true that both a magnetic head and a hook have the same functionality such that a skilled artisan would find it obvious to replace one with the other.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,943,073
• Safe Haven Wildlife Removal And Property Management Experts LLC v. Meridian Wildlife Services LLCInstitution denied
  PTAB · Feb 22, 2024 · IPR2023-01341 · APJ Amee A Shah · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations of Bird Barrier Video and the other references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “On the record before us, Petitioner has not demonstrated a reasonable likelihood of establishing obviousness of claims 1–3 based on Bird Barrier Video and/or Kunz and/or Albanese and/or Sheldon. Because we deny institution on the merits, we do not address Patent Owner’s arguments that the proposed combination lacks particularity and that the Chamberlain Declaration is inadmissible. Prelim. Resp. 4–9, 29–33 (citing Ex. 2001; Fed. R. Evid. 801, 802; 37 C.F.R. § 42.62). IV. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’663 patent, we do not institute an inter partes review” slip op. at 39

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that “a POSA10 ‘would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals,’” quoting the definition of a POSA adopted by the Board at the institution stage in IPR2022-01253. Pet. 22 (quoting Ex. 1014, 9). Patent Owner does not challenge this definition of the level of skill at this time. See generally Prelim. Resp.; Sur-Reply. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

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

    “Patent Owner argues that (a) Petitioner fails to sufficiently identify how the challenged claims are to be construed, and (b) “[t]he amendments and arguments made during prosecution of the ’663 patent reveal that the phrase ‘configured to raise the entire bird netting’ in Claim 1 [limitation b.iii] must be construed to require the capability to raise the entire bird netting to prevent the netting from blocking activities on the floor of the building it is used in.” Prelim. Resp. 9–15 (citing Ex. 1002, 21). As explained below in Section III.E.3, we find that, for reasons not related to limitation b.iii of claim 1, Petitioner’s arguments and evidence do not demonstrate a reasonable likelihood of establishing that the challenged claims are unpatentable. Thus, we do not find it necessary to construe expressly any language of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

  • BurdenNot shown unpatentable

    “3. Analysis Even assuming, arguendo, that the Bird Barrier Video teaches at least independent claim 1’s device that is “for repeated quick set up for safe live capture of a flying vertebrate indoors in a large building having a floor and a ceiling supported by rafters or beams” and comprises “bird netting capable of catching and holding the flying vertebrate when it flies into the bird underpinning demonstrating how or why a person of ordinary skill in the art would have modified Bird Barrier Video to, at least, have a plurality of poles for sitting on the floor and a hook positioned at a top of each pole configured to attach the poles overhead to the ceiling by attachment over the top of a ceiling rafter and beam, as recited in claim 1’s limitations b and b.i. Regarding limitation b, Petitioner acknowledges that Bird Barrier Video does not disclose or suggest that its poles are “for sitting on the floor.” Pet. 24. Petitioner contends “it would be obvious to place them on the floor if needed to capture a bird in a lower location.” Id. Yet, the claim requires that the poles are for “sitting on the floor,” and not simply “to place” on the floor. Petitioner does not explain, nor does Bird Barrier Video show, the structure of Bird Barrier Video’s poles such that they can be “for sitting on the floor.” Moreover, Petitioner’s reasoning presumes that the net disclosed in the Bird Barrier video, which is suspended from the ceiling, would be incapable of capturing low-flying birds, yet the record does not support such a finding.” slip op. at 33

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,154,663
• Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaSome claims unpatentable
  PTAB · Dec 19, 2023 · IPR2022-01138 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1, 3–8, 10–16, and 18 are unpatentable over Goss; claims 2, 9, 17, and 19 were not shown unpatentable. The revised motion to amend is denied for lack of written-description support.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof in an inter partes review).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 34 (citing Ex. 1004 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp. 23. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We generally agree with Petitioner that the assumptions and approximations made in the calculations described in the ’397 patent to determine the external surface area of the components of the litter render the computations only a general approximation of the respective surface areas. See Pet. Reply 9–12. We need not, however, reach the issue of whether the 47% surface area limitation requires the use of the multi-step method disclosed in the ’397 patent because Petitioner followed that methodology in its arguments and evidence in its Reply. See Pet. Reply 13. Importantly, Patent Owner agrees that Petitioner followed the approach set forth in the ’397 patent, and argues that we need not construe “external surface area” to resolve any dispute between the parties. See PO Sur-reply 23–24 (arguing that we need not “determine whether ‘total external surface area’ must be determined using the same multi-step approach” in the ’397 patent to resolve the controversy because “the only calculation of external surface area relied on by Petitioner was presented in the Reply and it followed the methodology of the [’]397 Patent”); PO Supp. Sur-reply 2 (same). Based on our review of the current record, we need not and do not formally construe any claim terms to resolve the patentability issues in this inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent some implicit claim construction disputes remain, we address those issues in the context of the challenges below.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “review of the record, we find that Petitioner fails to articulate an adequate rationale for the combination of Goss and House. The Petition contains only a single sentence addressing the issue, without any citation to record evidence or declaration support. See Pet. 46. In addition, the assertion merely states the conclusion that a “PHOSITA would understand that there is a rational underpinning to combine the teachings of Goss and House as required under patent law because both are related to cat litter having similar characteristics.” Id. This assertion, at most, addresses the fact that Goss and House are in the same field or that they are analogous art, but does not explain why a PHOSITA would have been motivated to combine Goss and House. See id. In addition, the Petition lacks sufficient explanation of how Petitioner proposes to combine Goss and House. See Pet. 46–53. Instead, when Petitioner relies on House in this challenge, it appears to be a back-up argument in the event that we find Goss fails to disclose the limitation. Merely stating that Goss and House both disclose a limitation does not explain which aspects of House Petitioner proposes adding to Goss or what the resulting litter composition would look like. See id. The details of the resulting litter based on the combination of Goss and House matter here because it could impact whether all limitations of a given claim are satisfied by the combination. For example, Petitioner relies exclusively on specific examples from Goss for the 47% surface area limitation, but adding some aspects of House’s litter components to meet other limitations could undermine Petitioner’s reliance on Goss’s specific examples. The failure of the Petition to set forth a specific combination elides these issues. See Pet. 46–51. Petitioner’s Reply arguably addresses some of these concerns by providing a more fulsome motivation section, backed by new expert testimony, and specific litter examples based on Goss and various cellulose filler materials allegedly disclosed by House. See Pet. Reply 24–25 (citing Ex. 1013 ¶ 7); see also PO Sur-reply 18–22 (arguing that Petitioner’s Reply still fails to articulate an adequate motivation to combine). This analysis goes far beyond the limited analysis in the Petition, and Petitioner provides no reason why it could not have been included in the Petition. See Pet. Reply 24–25. As noted below, in some situations petitioners should be afforded the opportunity to go beyond the arguments in a petition when addressing a new claim construction or other new argument raised by a patent owner or an” slip op. at 17

  Patent outcomesUS 11,026,397 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,026,397
• Amcol International Corp. v. Oil-Dri Corporation Of AmericaSome claims unpatentable
  PTAB · Nov 29, 2023 · IPR2022-01107 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1, 3–8, 10–16, 18, and 19 are unpatentable over Goss; claims 2, 9, and 17 were not shown unpatentable, and the revised motion to amend was denied for lack of written description.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 14. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9

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

    “Patent Owner makes a number of arguments, but we do not find them persuasive enough to undermine Petitioner’s showing based on Ms. Borgese’s analysis. Patent Owner’s primary argument stems from its assertion that the bulk densities vary depending on a number of variables and that Ms. Borgese bases her ranges on documents, the technical data sheets for FS-40 and the ’397 patent for BL(2), that have bulk densities that are not the “same” as the bulk densities for FS-40 and BL(2) in Goss due to the passage of time, differences in where the clay was mined, how the clay was processed, and how the bulk density was measured. See PO Resp. 18– 19, 21–33; PO Sur-reply 2, 5–9. We do not view Petitioner’s challenge as based on the premise that the FS-40 clay referenced in the technical data sheets and Blue Mountain clay in the ’397 patent are the exact same as the FS-40 and BL(2) clays in Goss, but instead the clays and their bulk densities are similar enough that they will fall within the bulk density ranges Petitioner uses in its calculations. See Pet. 21–23, 68; Pet. Reply 6–7, 10. As a result, Patent Owner’s repeated assertions that the clays or their properties are not the “same” or processed “exactly the same” fail to engage 5 Patent Owner suggests that Petitioner fails to meet the inherency standard because Ms. Borgese uses the term “potential” when describing the bulk density range of BL(2). See PO Resp. 32 (citing Ex. 1003 ¶ 117). We do not read Ms. Borgese’s opinion in the same manner. Instead, we read the reference to “the potential bulk density range of BL(2), 35–47 lbs/ft3” as referring to any bulk density within that range, not that there is only the mere potential that the bulk density may fall within that range. See Ex. 1003 ¶ 117. Petitioner’s argument that the bulk densities were at least similar, such that that they fall within the ranges Petitioner uses. See, e.g., PO Resp. 4, 21–24, 30–31; Ex. 2009 ¶¶ 97–98 (Dr. Johnston limiting opinion to whether the clays are the “same”). As an example, when asked about the potential differences in bulk density between Goss’s filing date in 1997 and the 1999 technical data sheet, Ms. Borgese states that “[b]entonite clays have not changed significantly in a period of two years.” Ex. 2008, 24:7–15; see also Ex. 1003 ¶¶ 202–203 (opining that “modest difference in particle-size distribution between FS-40 disclosed in Goss [and] . . . the FS-40 Information Sheet ’99 only minimally impacts the bulk density”). Given Ms. Borgese’s personal experience making animal litters and using bentonites, we view her testimony as credible absent some evidence that any differences in bulk density would fall outside the ranges she uses. Patent Owner provides no such evidence. Nearly all of Patent Owner’s evidence goes to whether the clays and bulk densities would be the exactly the “same” in Goss as in the sources that Ms. Borgese relies on, and do not address how similar the bulk densities would be and do not attempt to establish that there are bulk densities for Goss’s FS- 40 and BL(2) clays that would fall outside the ranges Ms. Borgese uses. In the rare instances where Patent Owner does argue that the bulk densities would not be similar, or would not fall within Dr. Borgese’s ranges, Patent Owner fails to cite any evidence to support the assertion. See PO Resp. 23, 32–33. Even if we found Dr. Johnston’s testimony generally credible on the point that bulk densities may differ across time even when mined and” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “persuasiveness of Petitioner’s arguments and evidence. Petitioner relies heavily on Ms. Borgese’s testimony, a chemical engineer with “firsthand experience in animal litter Process Development and Product Development creating animal litter from raw materials.” Ex. 1003 ¶¶ 3–4. Ms. Borgese has experience working with bentonite and fillers, and has validated test methods related to “particle size distribution, bulk density, moisture, [and] clump strength.” Id. ¶ 4. She also “used a variety of processing methods to produce animal litter” and is a named inventor on three animal litter patents. Id. Patent Owner does not dispute Ms. Borgese’s qualifications, does not 4 As to the whether Goss inherently discloses the 47% surface area limitation, Patent Owner does not dispute that Goss inherently discloses the limitation if Petitioner’s bulk density ranges are correct. See PO Resp. 15– 33. argue that she lacks firsthand experience that would enable her to testify as to the properties of the bentonite clays and litters at issue in this case, or otherwise dispute that she meets the parties’ agreed-upon definition of a person of ordinary skill in the art. Pet. 4–5; PO Resp. 14. That definition presumes “experience in animal litter process development” and “familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite).” Pet. 4–5. We find Ms. Borgese’s education and first-hand experience in animal litter process development, including experience with bentonite, sufficient to testify credibly as to the known bulk densities of the bentonite clays at issue in the case. As to Goss’s FS-40 sodium bentonite clay made by Wyo-Ben, Ms. Borgese opines that the range of bulk density for the material in Goss is between 58–64 lb/ft3 based on Wyo-Ben’s own technical data sheets from 1999 and 2002, which “describe the same (or similar) FS-40 (‘sodium bentonite’) composition.” Ex. 1003 ¶¶ 82–83, 106, 117; Pet. 21–22, 35. Then, in an effort “to be conservative in [her] analysis,” Ms. Borgese uses a broader range of 55–65 lb/ft3 for Goss’s FS-40 in her calculations. Ex. 1003 ¶ 117. Even when pushing her assumptions in directions that would result in the lowest possible external surface area percent for sodium bentonite, all of the calculations across the full range of potential bulk densities still meet the 47% surface area limitation. Id. ¶¶ 117–122; Pet. 43–46. Based on our review of the arguments and evidence, we find Ms. Borgese’s testimony as to the range of Goss’s FS-40 bulk density credible and persuasive.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “Borgese relies on (Exhibits 1018 and 1024), but the effort lacks procedural and substantive merit. Patent Owner’s argument in its Patent Owner Response describes the documents as “[i]nadmissible” without seeking any specific relief, but Patent Owner’s Sur-reply makes clear that Patent Owner seeks exclusion. See PO Resp. 20; PO Sur-reply 13. While Patent Owner seeks to exclude these documents, it fails to follow our rules applicable to such efforts. Our rules require objections to evidence to be filed within specific timeframes, and a “motion to exclude evidence must be filed to preserve any objection.” 37 C.F.R. § 42.64(c). In addition, the “motion must identify the objections in the record in order and must explain the objections.” Id. Patent Owner failed to file a separate “motion” or even refer to its hearsay arguments as a “motion” despite the fact that it seeks to exclude evidence. PO Resp. 20. Nor did Patent Owner “identify the objections in the record” in support of its “motion.” Id. In addition, Patent Owner fails to cite any authority that permits what amounts to a motion to exclude within the confines of the merits briefing, which forced Petitioner to devote space in its merits brief to opposing the motion to exclude. See id.; Pet. Reply 19–23. Under these circumstances, we deny the motion as procedurally improper. In addition, even if we reached the merits, we would not exclude the documents or Ms. Borgese’s opinions based on them given that she reasonably relied on the technical data sheets as reliable sources of bulk density data provided by Wyo-Ben, the manufacturer of the clays in question. See Pet. Reply 22–23; Ex. 1003 ¶¶ 82–83.” slip op. at 32

  Patent outcomesUS 11,026,397 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,026,397
• Life Vac, LLC v. Dcstar Inc.Institution denied
  PTAB · Nov 29, 2023 · PGR2023-00032 · APJ Michael L Woods · PGR · Institution

  The Board denied institution because the petition did not show that claims 1–17 were more likely than not unpatentable over Lih, Tarrats, and da Costa or anticipated by Lih.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “institute an post-grant review if “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.” 35 U.S.C. § 324(a). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition fails to demonstrate that it is more likely than not that at least 1 of the Challenged Claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s and Patent Owner’s proposed definitions are similar, with a primary difference being that Petitioner’s definition more broadly includes people having experience with “medical devices in general.” Compare Pet. 18–19, with Prelim. Resp. 6–7. Patent Owner contends that Petitioner’s standard is “unreasonably broad,” arguing that Patent Owner’s definition for a skilled artisan “more reasonably focuses on the nature of the subject invention.” Prelim. Resp. 7. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We are not persuaded that a skilled artisan would have necessarily required experience with respiratory devices, as Patent Owner proposes. See Prelim. Resp. 6–7. We find Petitioner’s definition, which would include “a mechanical or biomedical engineer with at least 5 years of experience in designing or developing medical devices in general,” is consistent with the ’575 patent and the asserted prior art. Pet. 18–19; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

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

    “Petitioner expressly construes “bottom plate” and “check valve.” See Pet. 20–21. Patent Owner proposes a construction for “bottom plate,” “check valve,” and “connector.” Prelim Resp. 8–11. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Each of the Challenged Claims requires a connector with a “bottom plate,” yet Petitioner fails to explain how the combined references would yield a connector with such a plate. See Prelim. Resp. 30–33 (arguing the same); see also Ex. 1001, 10:14–17 (independent claim 1), 10:46 (independent claim 3), 11:63 (independent claim 9); 12:35–36 (independent claim 13). Neither of Lih’s connector (element 118, Fig. 3) nor Tarrats’s “connector” (element 15, Fig. 1) has a “plate,” and Petitioner fails to explain how the lower surface of da Costa’s piston is being used to modify Lih’s or Tarrats’s connector to satisfy the claimed structure. See 35 U.S.C. § 322(a)(3); see also 37 C.F.R. § 42.204(b)(5); see also Pet. 28–29. Further, Petitioner relies on da Costa’s heart resuscitating device, rather than its dechoking device, in modifying Lih. See Pet. 29 (citing da Costa’s Figure 6 and relief valves 55, 56). da Costa’s heart resuscitation device, however, is used for pumping air into a patient’s lungs for the purpose of initiating blood circulation in the event the patient’s heart stopped working. See, e.g., Ex. 1005, 6:43–52. The pressure relief valves cited by Petitioner are presumably used to prevent over-pressurizing and under-pressurizing the patient’s lungs, which we understand would be dangerous for the patient. We do not see a skilled artisan as incorporating da Costa’s pressure relief valves into Lih’s choking intervention device, which is structured to prevent pumping air into a patient. See, e.g., Ex. 1004, 4:3–5 (“bellows assembly 102 may include a relief valve 108 configured to allow air to escape . . . when the bellows 104 is being compressed”). Petitioner explains that the combination would “avoid pushing the obstruction farther into the user’s airway while in use and to initiate blood circulation” (see Pet. 29), yet Lih’s valve 108 already “avoid[s] pushing the obstruction farther into the user’s airway” and “initiat[ing] blood circulation” benefits a heart-resuscitation device, not Lih’s dechoking device. Accordingly, we agree with Patent Owner that the proposed combination lacks sufficient reasoning. See Prelim. Resp. 33–37. We further agree with Patent Owner that modifying Lih’s device so that it pumps air into a patient’s lungs for the purpose of “initiating blood circulation,” as reasoned by Petitioner (see Pet. 29), would render Lih’s device unsuitable as a dechoking device, which is its intended purpose. See Prelim. Resp. 37–38 (arguing the same). To reiterate, Lih’s dechoking device avoids introducing air into the patient’s lungs, which would further lodge an obstruction in the patient’s trachea. See Ex. 1004, 4:3–5.” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,478,575

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.