• Square, Inc. v. Unwired Planet, LLCInstitution denied
  PTAB · Dec 23, 2015 · CBM2015-00148 · APJ James B Arpin · CBM · Institution

  Institution of CBM review of claims 1–4 was denied because § 325(e)(1) estopped Square from pursuing grounds it reasonably could have raised in its earlier CBM petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDenied

    “(emphasis added). As noted above, we issued a Final Written Decision in CBM2014-00156, determining that claims 1–4 of the ’100 patent are unpatentable under 35 U.S.C. § 101. ’156 Dec. 40. Petitioner here was the petitioner in CBM2014-00156, which resulted in a Final Written Decision with respect to claims 1–4. Thus, pursuant to § 325(e)(1), Petitioner cannot “request or maintain” a proceeding before the Office with respect to these claims “on any ground” that Petitioner “raised or reasonably could have raised” in its Petition in CBM2014-00156.” slip op. at 6

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

    “discovered Orlen earlier, or foreseen our determination that Petitioner had not shown Vazvan’s public availability, we are not persuaded that Petitioner reasonably could not have raised each of the challenges identified above to claims 1–4 of the ’100 patent, based on 35 U.S.C. § 103(a), in its CBM2014- 00156 Petition. Section 325(e)(1) estops Petitioner from requesting or maintaining a proceeding before the Office with respect to the claims at issue in CBM2015-00148 on “any ground that [Petitioner] raised or reasonably could have raised” in CBM2014-00156. Thus, 35 U.S.C. § 325(e)(1) is applicable to the new challenges to claims 1–4 of the ’100 patent. Consequently, Petitioner is estopped from requesting, e.g., petitioning for institution of, or maintaining a proceeding with respect to claims 1–4 of the ’100 patent on the grounds asserted here. See supra Section I.E. Because Petitioner is estopped from requesting or maintaining a proceeding with respect to claims 1–4 based on any ground it “reasonably could have raised” in its earlier petition, we deny covered business method patent review of claims 1–4 of the ’100 patent in the present proceeding.” slip op. at 10

  Discretionary denial
  Patents in suitUS 7,711,100
• Ethicon Endo-Surgery, Inc. v. Covidien AGInstitution denied
  PTAB · Dec 17, 2015 · IPR2015-01275 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any of claims 1–18 were unpatentable, chiefly because the cited art did not teach the uniform-distance limitation.

  RulingsInstitution decision

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

    “distance between the jaw members along the length thereof,” a limitation required by all challenged claims. Both the Specification and the challenged claims of the ’284 patent require this distance when tissue is held between the jaw members. Indeed, the Specification discloses that the stop members are “positioned to control the gap distance between the opposing jaw members when the tissue is held therebetween.” Ex. 1001, 3:50–54; see also id. at Abstract (stating the same), 5:3–6 (stating the same). In addition, claim 15 recites “[a]n endoscopic bipolar forceps according to claim 12 wherein the jaw members and the non-conductive stop members are configured such that the distance between the jaw members when tissue is held therebetween is between about 0.002 inches and about 0.003 inches.” Id. at 15:21–16:3. Thus, we conclude that the challenged claims require “a 5 uniform distance between the jaw members” when tissue is held between the opposing jaw members.” slip op. at 5

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “35 U.S.C. § 325(d) Patent Owner asks us to deny the Petition under 35 U.S.C. § 325(d), arguing that all but one references relied on in the Petition were considered during prosecution. Prelim. Resp. 9–12. The statute allows, but does not require, the Director to deny a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We decline to exercise our discretion to deny the Petition under § 325(d).” slip op. at 8

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

    “Under the statute, an inter partes review may be instituted only if “the information presented in the petition . . . and any response filed [thereto] shows that there is a reasonable likelihood that the petitioner would prevail” in the unpatentability challenge. 35 U.S.C. § 314(a) (emphasis added). In the Petition, Petitioner does not rely on claim 2 of the ’284 patent to support, as the dissent insists, a uniform distance between the jaw members. To the contrary, when discussing claim 2, Petitioner submits that this claim limitation is (a) not supported by the disclosure of the ‘284 Patent and (b) at odds with the requirement of claim 1 (and PO’s arguments during prosecution) that “the non-conductive stop members [are] configured to maintain a uniform distance between the jaw members along the length thereof.” Providing stop members of different heights as required by this claim necessarily results in a non-uniform distance between jaw members. Pet. 26 (emphasis added). As a result, the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail, based on claim 2 of the ’284 patent, that an “island of insulation” of unknown size and location, is sufficient to maintain a uniform distance between the jaw members. We decline to join the dissent in reforming the Petition and rely on an argument Petitioner specifically disclaimed.” slip op. at 11

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

    “Petitioner asserts that one of ordinary skill in the art would have been motivated to combine the teachings of Fox and Eggers ’142. Id. at 14–18. Petitioner also refers to the prior art for teaching each and every limitation of claims 1–11. Id. at 18–32. Assuming, without deciding, that Petitioner has provided sufficient rationale for combining the prior art, we nevertheless agree with Patent Owner that the combination does not teach “non-conductive stop members configured to maintain a uniform distance between the jaw members along the length thereof,” as all challenged claims require. See Prelim. Resp. 14–26.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 8,241,284
• BLD Services, LLC v. LMK Technologies, LLCAll claims unpatentable
  PTAB · Nov 18, 2015 · IPR2014-00768 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 9, 10, 13–15, and 27–42 are unpatentable under § 103 over Kiest ’118 and Kiest ’663.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “as unpatentable 1 or more claims only on a ground raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document must have been “‘sufficiently accessible to the public interested in the art’” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (citation omitted). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008) (citation omitted).” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Sometimes, however, the prior art may reflect an appropriate skill level. Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Such is the case here. See, e.g., Ex. 1002, 1:6–2:28 (discussing methods for repairing damaged pipe lines using liner tubes impregnated with a liquid material capable of curing and hardening and hydrophilic bands); Ex. 1003, 4:9–28 (discussing methods for repairing the juncture of a lateral sewer pipe and a mainline sewer pipe by inverting a preliner tube to a position where a gasket impregnated with grout forms a water tight seal between the preliner tube and the sewer pipes).” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “any expert declaration. “The Board expects that most petitions and motions will rely upon affidavits of experts.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Especially in complex cases where obviousness is asserted as a ground of unpatentability, “expert testimony may be critical, for example, to establish the existence of certain features in the prior art or the existence (or lack thereof) of a motivation to combine references.” Wyers v. Master Lock Co., 616 F.3d 1231, 1240 n.5 (Fed. Cir. 2010) (citations omitted). But expert testimony is not a per se requirement—where the technology is simple, where the references are easily understandable without the need for expert explanatory testimony, or where the factual inquiries underlying the obviousness determination are not in material dispute, expert testimony, though it might be helpful, may not be indispensable. Allergan, Inc. v. Barr Labs., Inc., 501 F. App’x 965, 972 (Fed. Cir. 2013). In addition, a reason to combine prior art teachings may exist “in the content of the public prior art, in the nature of the problem addressed by the invention, or even in the knowledge of one of ordinary skill in the art.” Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d 1332, 1338–39 (Fed. Cir. 2005). And in some cases, “the legal determination of obviousness may include recourse to logic, judgment, and common sense, in lieu of expert testimony.” Wyers, 616 F.3d at 1239. Patent Owner challenges the credibility and qualification of Mr. Fletcher, an expert who submitted a declaration in support of Petitioner’s Reply. See, e.g., Paper 28, 1–2, 4. Petitioner, on the other hand, urges that we ignore the declaration of Mr. Kampbell, an expert for Patent Owner, due to his alleged bias and lack of qualification. Pet. Reply 14 and nn.8–9. Neither party, however, seeks to disqualify the expert for the other side. We, thus, consider the declarations from both Mr. Fletcher and Mr. Kampbell, according proper weight to the testimonies, taking account of the credibility challenges raised by each party. B. Claim Interpretation” slip op. at 10

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

    “PO Resp. 15. Thus, Patent Owner appears to argue that the ordinary and customary meaning of the term “gasket” requires the capability to form a compression seal and that Kiest ’663 does not disclose such a “gasket.” We are not persuaded, however. Even if we were to agree with Patent Owner and expressly construe the term “gasket” to require a compression seal capability, which we do not, Patent Owner fails to provide persuasive evidence to demonstrate that the gasket described in Kiest ’663 does not operate under the principles of compression. See Pet. Reply 13 (citing Fletcher Decl. ¶¶ 2324) (indicating why the “gasket” in Kiest ’663, comprising open cell foam filled with rubber-like material, would have an element of compressibility and resiliency). We further conclude that our explicit construction of the term “gasket” is not necessary. It is sufficient to say that Kiest ’663, a reference disclosing a device in the exact field of invention as the ’726 patent, and by the same inventor, expressly uses the term “gasket” to describe an object relied upon by Petitioner to meet the “gasket” element of the challenged claims. We determine that no explicit construction of any specific claim term is necessary to render our decision on patentability of the challenged claims. 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 13

  Patent outcomesUS 7,975,726 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,975,726
• BLD Services, LLC. v. LMK Technologies, LLC.All claims unpatentable
  PTAB · Nov 18, 2015 · IPR2014-00770 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1 and 5–37 are unpatentable under § 103 over Kiest ’118, Kiest ’597, and the De Neef Brochure.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “Patent Owner challenges the credibility and qualification of Mr. Fletcher, an expert who submitted a declaration in support of Petitioner’s Reply. See, e.g., Paper 31, 1–2, 4. Petitioner, on the other hand, urges that we ignore the declaration of Mr. Kampbell, an expert for Patent Owner, due to his alleged bias and lack of qualification. Reply 13 & nn.5–6. Neither party, however, seeks to disqualify the expert for the other side. We, thus, consider the declarations from both Mr. Fletcher and Mr. Kampbell, according proper weight to the testimonies, taking account of the credibility challenges raised by each party. B. Claim Interpretation” slip op. at 10

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

    “PO Resp. 14. Thus, Patent Owner appears to argue that the ordinary and customary meaning of the term “gasket” requires the capability to form a compression seal and that Kiest ’597 does not disclose such a “gasket.” We are not persuaded, however. Even if we were to agree with Patent Owner and expressly construe the term “gasket” to require a compression seal capability, which we do not, Patent Owner fails to provide persuasive evidence to demonstrate that the gasket described in Kiest ’597 does not operate under the principles of compression. See Reply 13 (citing Fletcher Decl. ¶¶ 2324) (indicating why the “gasket” in Kiest ’597, comprising open cell foam filled with rubber-like material, would have an element of compressibility and resiliency). We further conclude that our explicit construction of the term “gasket” is not necessary. It is sufficient to say that Kiest ’597, a reference disclosing a device in the exact field of invention as the ’911 patent, and by the same inventor, expressly uses the term “gasket” to describe an object relied upon by Petitioner to meet the “gasket” element of the challenged claims. We determine that no explicit construction of any specific claim term is necessary to render our decision on patentability of the challenged claims. 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)). C. Prior Art Status of De Neef Instructions (Ex. 1004), De Neef Brochure (Ex 1005), and Kempenaers (Ex. 1006)” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedPrinted publication establishedMixed

    “and only on the basis of prior art consisting of patents or printed publications.” The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document must have been “‘sufficiently accessible to the public interested in the art’” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (citation omitted). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008) (citation omitted).” slip op. at 13

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner asserts “the relevant art is sewer pipe renewal and particularly trenchless, cured-in-place pipelining” (PO Resp. 8), and one of ordinary skill in the art is “someone with knowledge of cured-in-place pipelining materials and techniques, and at least several years of experience involving the design and application of cured-in-place pipelining technologies” (id. at 8 (citing Ex. 2005 ¶ 21)). For purpose of this Decision, we generally accept Patent Owner’s definition of the art and the statement of the level of skill, with one modification. We determine that an ordinary artisan does not have to be experienced in both designing and applying the technology. As Patent Owner recognizes, hands-on experience, rather than formal education, serves better in the field of sewer pipe repair. PO Resp. 7–8. Further, Patent Owner’s own document supports our modification. Indeed, ASTM F 2561- 06, an alleged “industry standard specifying the arrangement of the ’118 patent” (PO Resp. 24), states that the practice is for use by “designers and specifiers, regulatory agencies, owners, and inspection organizations who are involved in the rehabilitation of sewer service laterals and its connection to the main through the use of a resin-impregnated tube installed within an existing sewer lateral” Ex. 2005, Exhibit B, 2 (emphasis added). Thus, in this respect, we agree with Petitioner that an ordinary artisan would include both “designers and field engineers, including those that were specifying repair methods and procedures along with overseeing on-site repairs and who may not publish all their work.” Reply 2; Fletcher Decl. ¶ 4.” slip op. at 19

  Patent outcomesUS 8,667,991 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,667,991
• BLD Services, LLC v. LMK Technologies, LLCAll claims unpatentable
  PTAB · Nov 18, 2015 · IPR2014-00772 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious: claims 1–4 and 6–16 over Kiest ’118, Kiest ’597, and De Neef Brochure; claim 5 with Kiest Study added.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “any expert declaration. “The Board expects that most petitions and motions will rely upon affidavits of experts.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Especially in complex cases where obviousness is asserted as a ground of unpatentability, “expert testimony may be critical, for example, to establish the existence of certain features in the prior art or the existence (or lack thereof) of a motivation to combine references.” Wyers v. Master Lock Co., 616 F.3d 1231, 1240 n.5 (Fed. Cir. 2010) (citations omitted). But expert testimony is not a per se requirement—where the technology is simple, where the references are easily understandable without the need for expert explanatory testimony, or where the factual inquiries underlying the obviousness determination are not in material dispute, expert testimony, though it might be helpful, may not be indispensable. Allergan, Inc. v. Barr Labs., Inc., 501 F. App’x 965, 972 (Fed. Cir. 2013). In addition, a reason to combine prior art teachings may” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedPrinted publication establishedMixed

    “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). After reviewing the parties’ arguments and supporting evidence, we determine that Petitioner has not satisfied its burden to show that De Neef Instructions and Kempenaers are printed publications.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The skill-level determination is an important guarantee of objectivity in an obviousness analysis. Graham, 383 U.S. at 17. Usually, we expect evidence, such as affidavits of experts, to aid our analysis in this respect. Sometimes, however, the prior art may reflect an appropriate skill level. Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Such is the case here. See, e.g., Ex. 1002, 1:6–2:28 (discussing methods for repairing damaged pipe lines using liner tubes impregnated with a liquid material capable of curing and hardening and hydrophilic bands); Ex. 1003, 4:6–23 (discussing methods for repairing the juncture of a lateral sewer pipe and a mainline sewer pipe by inverting a preliner tube to a position where a gasket impregnated with grout forms a water tight seal between the preliner tube and the sewer pipes). Patent Owner asserts “the relevant art is sewer pipe renewal and particularly trenchless, cured-in-place pipelining” (PO Resp. 7), and one of ordinary skill in the art is “someone with knowledge of cured-in-place pipelining materials and techniques, and at least several years of experience involving the design and application of cured-in-place pipelining technologies” (id. at 8 (citing Ex. 2005 ¶ 21)). For purpose of this Decision, we generally accept Patent Owner’s definition of the art and the statement of the level of skill, with one modification. We determine that an ordinary artisan does not have to be experienced in both designing and applying the technology. As Patent Owner recognizes, hands-on experience, rather than formal education, serves better in the field of sewer pipe repair. PO Resp. 7–8. Further, Patent Owner’s own document supports our modification. Indeed, ASTM F 2561-06, an alleged “industry standard specifying the arrangement of the ’118 patent” (PO Resp. 25), states that the practice is for use by “designers and specifiers, regulatory agencies, owners, and inspection organizations who are involved in the rehabilitation of sewer service laterals and its connection to the main through the use of a resin-impregnated tube installed within an existing sewer lateral” Ex. 2005, 40 (emphasis added). Thus, in this respect, we agree with Petitioner that an ordinary artisan would include both “designers and field engineers, including those that were specifying repair methods and procedures along with overseeing on-site repairs and who may not publish all their work.” Reply 2; Ex. 1013 ¶ 4.” slip op. at 16

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

    “Where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Combinations that change the basic principles under which the prior art was designed to operate, however, may fail to support a conclusion of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). As explained below, we find that modifying Kiest ’118 with Kiest ’597 does not change the principle of operation of Kiest ’118. First, Patent Owner bases its argument on the premise that the hydrophilic seal of Kiest ’118 is located between the T-Liner and the host pipes (PO Resp. 25), whereas the seal of Kiest ’597 is located outside of the pipe (id. at 14). Evidence of the record, however, shows otherwise. Indeed, Kiest ’597 repeatedly and explicitly states that “[t]he gasket impregnated with grout forms a water tight seal between the preliner tube and the main sewer pipe and the lateral sewer pipe.” Ex. 1003, 4:21–23 (emphasis added); see also id. at 9:59–61 (“This fluid tight seal provides a sealing between the exterior of the preliner 148 and the interior of the existing pipelines 138, 140 at the juncture 142.”); 11:37–40 (“The grout gasket will provide for a seal between the liners and the main host pipe, thereby eliminating any ground water from infiltrating into the main line sewer pipe 210.”). These disclosures directly contradict Patent Owner’s assertion that the seal of Kiest ’597 is outside of the pipe.” slip op. at 20

  Patent outcomesUS 8,667,992 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,667,992
• Roche Molecular Systems Inc. v. Illumina, Inc.Institution denied
  PTAB · Oct 30, 2015 · IPR2015-01091 · APJ Lora M Green · IPR · Institution

  The Board denied joinder and denied institution on claims 1–22, citing substantially the same arguments previously presented and the petition’s belated, duplicative filing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “circumstances of each proceeding. See Unified Patents, Inc. v. Personalweb Techs., LLC and Level 3 Commc’ns, LLC, Case IPR2014-00702, slip. op. at 4 (PTAB Jan. 13, 2015) (Paper 12). In the instant proceeding, we agree with Patent Owner that joinder with IPR2014-01093 would not promote the efficient resolution of those proceedings. After carefully considering both Petitioner’s and Patent Owner’s evidence and argument, we deny Petitioner’s Motion for Joinder. As noted by Patent Owner, Roche announced the acquisition of Ariosa at least as early as December 2, 2014. Ex. 2017. And as also noted by Patent Owner, at that time, Roche was aware that “Ariosa . . . [was] embroiled in a number of patent infringement lawsuits, including with . . . Illumina[ ] and Illumina’s Verinata Health business, and Roche will continue to defend the company in court, Zambrowski said, adding that Roche ‘went into this agreement with our eyes wide open.’” Id. Given that Petitioner had announced the acquisition of Ariosa as early as December 2, 2014, noting that it went into the agreement to acquire Ariosa with its eyes wide open, Petitioner has not provided a persuasive reason as to why it waited until April 24, 2015, to file the instant Petition.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “We approach our discretion to deny a petition on a case-by-case basis. As explained above, one factor that favors denial of the instant Petition is that it raises “substantially the same” arguments as the Petition in IPR2014- 01093. 35 U.S.C. § 325(d). We have compared the prior art and arguments raised in the instant Petition to those raised in the Petition filed in IPR2014- 01093. Based on the information presented, we are persuaded that the instant Petition raises, at minimum, “substantially the same . . . arguments” that “previously were presented to the Office” in the Petition filed in IPR2014-01093. 35 U.S.C. § 325(d). That is one factor, contributing to the totality of circumstances in this case, that informs our decision to exercise our discretion to deny the Petition.” slip op. at 14

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Another factor that tips the balance in favor of denying institution of inter partes review is the timing of the filing of the instant Petition. As noted by Patent Owner, Petitioner had the advantage of the Patent Owner’s response in IPR2014-01093 (Prelim. Resp. 20), as well the depositions of Patent Owner’s expert in that proceeding, which were conducted by counsel for Roche (id. at 8). Essentially, the only reason that Petitioner has provided for waiting until April of 2015 to file the instant Petition is that it did not complete its acquisition of Ariosa until January 12, 2015. However, as discussed above, Petitioner was aware of the possibility of acquiring Ariosa as early as June of 2014, and announced its acquisition as early as December of 2014. Petitioner has not provided any persuasive reason as to why it could not have filed the Petition earlier, much less why the Petition could not have been filed within one month of institution of IPR2014-01093. On this record, we are persuaded that our resources are better spent addressing matters other than Petitioner’s belated, and essentially, second attempt to raise a plurality of duplicative grounds against the same patent claims. See Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when deciding whether to take action in a particular matter, an agency must determine whether its resources are best spent on one matter or another). Petitioner provides no persuasive reason why we should institute inter partes review in light of the above facts. Based on the totality of circumstances before us, we exercise our discretion and deny institution of inter partes review. 35 U.S.C. §§ 314(a), 316(b), 325(d); 37 C.F.R. § 42.108(b).” slip op. at 15

  Discretionary denial
  Patents in suitUS 7,955,794
• Phigenix, Inc v. Immunogen, Inc.No claims unpatentable
  PTAB · Oct 27, 2015 · IPR2014-00676 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1–8 were not held unpatentable because Petitioner did not prove obviousness over Chari 1992, the HERCEPTIN® Label, Rosenblum 1999, and Pegram 1999.

  RulingsFinal written decision

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

    “Patent Owner persuades us that one would have considered the teachings of Pai-Scherf 1999 when reading Chari 1992, the HERCEPTIN® Label, as well as other references cited by Petitioner, such as Rosenblum 1999 and Pegram 1999. Chari 1992 states generally, based on clearance/degradation studies in mice and in vitro cytotoxicity studies on human cells in tissue culture, that maytansinoid conjugates “may possess a therapeutic index sufficient for the effective treatment of human cancer,” and “development of ‘humanized’ antibodies will offer an opportunity to produce drug conjugates.” Ex. 1012, 130. Petitioner does not establish by a preponderance of the evidence that those general statements in Chari 1992, in view of teachings years later in the HERCEPTIN® Label, Pai-Scherf 1999, and other references regarding liver toxicities, would have motivated an ordinary artisan to substitute the mouse TA.1 antibody in the immunoconjugate of Chari 1992 with HERCEPTIN® on the basis that one would have expected that modified immunoconjugate to work to treat human tumors. Pet. 14–15 (citing Ex. 1016 ¶¶ 12–15); PO Resp. 5–6, 19; Ex. 2134 ¶¶ 29, 52–57.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable

    “As noted by Patent Owner, evidence of record indicates that the prior art emphasized the importance of releasing a drug, such as a maytansinoid, from an immunoconjugate for biologic activity, such as via cleavable linkers. PO Resp. 27–28 (citing Ex. 2006, 385; Ex. 1015, 97; Ex. 1014, 169–170). For example, Chari 1992 states, that “to exploit the cytotoxic potential of maytansine in the conjugate, . . . it is necessary to release the drug at the target cell in fully active form.” Ex. 1012, 128, 1st col.; PO Resp. 27. Consistently, in its in vitro tissue culture studies, Chari 1992 found that a monoclonal antibody TA.1-maytansinoid immunoconjugate comprising a non-cleavable linker “was 200-fold less potent under the same conditions (Fig. 3c),” as compared to a similar conjugate comprising a cleavable linker. Ex. 1012, 129, 1st col.; PO Resp. 26, 29–34.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia with nexusObjective indicia no nexusDecided for patent owner

    “For example, Patent Owner provides evidence that T-DM1 fulfilled a long-felt, unmet need for an immunoconjugate capable of targeting a solid tumor in patients without excessive toxicity. Id. at 46–57 (citing, for example, Ex. 2103 ¶¶ 24–48; see id. at ¶¶ 26–28 (citing exhibits including Ex. 2062) (discussing numerous clinical trials testing ability of immunoconjugates to treat solid tumors before March 2000, where “none of these immunoconjugates proved safe and effective for treating solid tumors”); Ex. 2134 ¶ 106 (citing exhibits). Patent Owner also provides evidence regarding the commercial success of T-DM1/Kadcyla®. PO. Resp. 57–60 (citing, for example, Ex. 2131 (testimony by Mr. Jarosz, analyzing sales and prescription data, and marketing and promotional efforts relating to Kadcyla®)). In view of the specific components recited in claim 8, i.e., a specific antibody, linker, and toxin, which are the same as those in T-DM1/Kadcyla® (PO. Resp. 35 (citing Ex. 2025, 14), we are persuaded that Patent Owner establishes a sufficient nexus in relation to the cited objective evidence of nonobviousness. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (stating that for objective evidence to be accorded substantial weight, the record “must establish a nexus between the evidence and the merits of the claimed invention”); In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011) (unexpected results); Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need); Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318,” slip op. at 24

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “In view of the specific components recited in claim 8, i.e., a specific antibody, linker, and toxin, which are the same as those in T-DM1/Kadcyla® (PO. Resp. 35 (citing Ex. 2025, 14), we are persuaded that Patent Owner establishes a sufficient nexus in relation to the cited objective evidence of nonobviousness. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (stating that for objective evidence to be accorded substantial weight, the record “must establish a nexus between the evidence and the merits of the claimed invention”); In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011) (unexpected results); Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need); Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 24 1328 (Fed. Cir. 2008) (praise); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (commercial success). Petitioner’s contentions do not persuade us that results obtained using T-DM1/Kadcyla® were expected in view of cited prior art references, for the reasons discussed in the section above. See supra § II.B.6; Reply 18–19. We also are not persuaded by Petitioner’s position that the alleged unexpected results are not commensurate in scope with claim 8, or that a lack of nexus exists between the asserted industry praise and commercial success. Id. at 19–23. Claim 8 is directed to a very specific immunotoxin comprising the humanized antibody huMAb4D5-8 (HERCEPTIN®) conjugated to the maytansinoid DM1 toxin via the SMCC linker. The specification of the ’856 patent discloses, and claim 8 recites, the very components that led to the unexpected results, praise and commercial success. See, e.g., GPAC, 57 F.3d at 1580 (stating, in relation to commercial success, that the evidence must show “that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent”) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988))). Patent Owner sufficiently establishes that it is the exact combination of those components recited in claim 8, rather than different components previously combined in the prior art, that provided the unexpected results at issue, and led to praise and commercial success. PO Resp. 35–46 (citing evidence in support). For example, Patent Owner provides evidence that T- DM1/Kadcyla® provides unexpectedly superior results in patients, as 25 compared to HERCEPTIN® plus a chemotherapy agent, in HERCEPTIN®- resistant patients. Id. at 35–46 (citing, for example, Ex. 2105 ¶¶ 24–35; Ex. 2012).” slip op. at 24

  Patent outcomesUS 8,337,856 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,337,856
• Infopia Co., Ltd. v. Polymer Technology Systems, Inc.Institution denied
  PTAB · Oct 21, 2015 · IPR2015-01192 · APJ Christopher G Paulraj · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 19 and 20 obvious; the asserted combinations did not address separation of chylomicrons.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of the challenged claims of the ’397 patent. Accordingly, we deny institution of inter partes review in this proceeding.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “contain[s] non-HDL cholesterol separation chemicals for separating the non-HDL blood components from the HDL blood components so that the non-HDL components do not participate in said HDL reaction layer.” Ex. 1001, 24:17–23. The Specification defines “[n]on-HDL” as “LDL, VLDL and chylomicrons, i.e., lipoproteins other than HDL that will react with a conventional cholesterol reaction membrane.” Id. at 7:38–40. The Specification further states in the Background Section that “non-HDLs (i.e., LDL, VLDL and chylomicrons) must be removed from the plasma to be tested because reagents used to determine the level of HDL will also react with LDL and VLDL.” Id. at 1:43–46. In view of these statements in the Specification, Patent Owner asserts that the patentee acted as its own lexicographer in defining the term. Prelim Resp. 12–13. Consistent with the express definition provided in the Specification, we construe “non-HDL” as “LDL, VLDL and chylomicrons.” slip op. at 7

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

    “and Steinhausen. Pet. 14. In order to satisfy the claim requirement of a non- HDL separation chemistry layer, Petitioner relies upon the teachings of Patel and Kozak. Id. at 37–38, 49–50. Despite the express definition of “non- HDL” provided in the Specification, as discussed above, Petitioner does not address chylomicrons at all in the Petition. Rather, Petitioner only points to the teachings of Patel and Kozak of removing VLDL and LDL fractions using a filter. Id. (citing Ex. 1014, 3:3–9, 6:48–55; Ex. 1007, 24:11–21, Fig. 4). Petitioner does not identify any other prior art teaching regarding the separation of chylomicrons, nor has Petitioner alleged that chylomicrons would inherently be removed by using any of the prior art devices. Moreover, Petitioner has not alleged that the separation of chylomicrons, in addition to LDL and VLDL, would otherwise have been obvious.8 Because we construe the claims to require the separation of all three types of lipoproteins defined as “non-HDL” (i.e., LDL, VLDL, and chylomicrons) by the non-HDL separation chemistry layer, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on any of the grounds presented.” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,087,397
• Infopia Co., Ltd. v. Polymer Technology Systems, Inc.Institution denied
  PTAB · Oct 21, 2015 · IPR2015-01109 · APJ Christopher G Paulraj · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–18 obvious, including separation of chylomicrons.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of the challenged claims of the ’397 patent. Accordingly, we deny institution of inter partes review in this proceeding.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “contain[s] non-HDL cholesterol separation chemicals for separating the non-HDL blood components from the HDL blood components so that the non-HDL components do not participate in said HDL reaction layer.” Ex. 1001, 24:17–23. The Specification defines “[n]on-HDL” as “LDL, VLDL and chylomicrons, i.e., lipoproteins other than HDL that will react with a conventional cholesterol reaction membrane.” Id. at 7:38–40. The Specification further states in the Background Section that “non-HDLs (i.e., LDL, VLDL and chylomicrons) must be removed from the plasma to be tested because reagents used to determine the level of HDL will also react with LDL and VLDL.” Id. at 1:43–46. In view of these statements in the Specification, Patent Owner asserts that the patentee acted as its own lexicographer in defining the term. Prelim Resp. 13–14. Consistent with the express definition provided in the Specification, we construe “non-HDL” as “LDL, VLDL and chylomicrons.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “B. Analysis Petitioner asserts that independent claim 1 is rendered obvious by the combination of Connolly or Carroll with Patel and Kozak. Pet. 31, 49. In order to satisfy the claim requirement of a non-HDL separation chemistry layer, Petitioner relies upon the teachings of Patel and Kozak. Id. at 33, 50. Despite the express definition of “non-HDL” provided in the Specification, as discussed above, Petitioner does not address chylomicrons at all in the Petition. Rather, Petitioner only points to the teachings of Patel and Kozak of removing VLDL and LDL fractions using a filter. Id. (citing Ex. 1014, 3:3–9, 6:48–55; Ex. 1007, 24:11–21, Fig. 4). Petitioner does not identify any other prior art teaching regarding the separation of chylomicrons, nor has Petitioner alleged that chylomicrons would inherently be removed by using any of the prior art devices. Moreover, Petitioner has not alleged that the separation of chylomicrons, in addition to LDL and VLDL, would otherwise have been obvious.10 Because we construe the claims to require the separation of all three types of lipoproteins defined as “non-HDL” (i.e., LDL, VLDL, and chylomicrons) by the non-HDL separation chemistry layer, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on any of the grounds presented. III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that any of claims 1–18 of the ’397 patent are unpatentable for obviousness. 10 The ’397 patent Specification describes that “reagents used to determine the level of HDL will also react with LDL and VLDL.” Ex. 1001, 1:43–46. Petitioner, however, does not argue that the reagents would not react with chylomicrons or that the removal of chylomicrons is unnecessary to satisfy the claim requirements.” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,087,397
• Sophos, Inc. v. Finjan, Inc.Institution denied
  PTAB · Sep 24, 2015 · IPR2015-01022 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 10, 14, or 18 unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “III. CONCLUSION On this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1, 10, 14, and 18 of the ’494 patent on the grounds asserted in the Petition. Consequently, the Petition is denied as to each of the asserted grounds. IV. ORDER Upon consideration of the record before us, it is, therefore, ORDERED that the Petitioner is denied, and no inter partes review is instituted as to any claim of the ’494 patent.” slip op. at 25

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

    “Although the broadest reasonable interpretation may differ from a construction agreed upon by the parties to a district court litigation, where claim construction is determined according to the different standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), we discern on this record no rationale for Petitioner’s insertion of the phrase “can be” into the parties’ previously agreed-upon construction. That is particularly the case in view of Petitioner’s assertion (Pet. 12) that its proposed construction is “as defined in the ’639 application,” whereas the definition recited in the cited portion of the ’639 application is instead identical to Patent Owner’s proposed construction. Compare Ex. 1005, col. 2, ll. 1–4, with Prelim. Resp. 8–9. Indeed, Petitioner recognizes the actually recited definition elsewhere in the Petition. See, e.g., Pet. 7 (“A Downloadable is described [in the ’639 application] as ‘an executable application program which is automatically downloaded from a source computer and run on the destination computer.’”) (quoting Ex. 1005, col. 2, ll. 1–4). We agree with and adopt substantially Patent Owner’s proposed construction as the broadest reasonable interpretation of “Downloadable.” Accordingly, on this record and for purposes of this Decision, we construe “Downloadable” to mean “an executable application program which is automatically downloaded from a source computer and run on a destination computer.”” slip op. at 6

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

    “We agree with Patent Owner that that this term requires no explicit construction, particularly not a construction that replaces the term “operations” with “instructions.” Whereas a suspicious computer operation might result from the execution of instructions deemed to be potentially hostile, instructions are not operations. And indeed, as Patent Owner correctly points out (id. at 10), the portions of the ’639 application and ’494 patent cited by Petitioner do not mention the term “instruction.” Moreover, we cannot discern how construing the phrase “suspicious computer operations” would add any clarity to the claim phrase itself in the context of claims 1 and 10. Accordingly, we conclude that no explicit construction of “suspicious computer operations” is either warranted or necessary.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We agree with Patent Owner that the district court’s construction in the related litigation between the parties represents the broadest reasonable construction of “database” in light of the claim language and the specification of the ’494 patent. See Morris, 127 F.3d at 1054; see also Power Integrations, Inc. v. Lee, ___ F.3d ____, 2015 WL 4757642, at *6 (Fed. Cir. Aug. 12, 2015) (“The fact that the board is not generally bound by a previous judicial interpretation of a disputed claim term does not mean . . . that it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.”). As explained by the district court, the ’494 patent does not define the term “database”; there is no evidence that Patent Owner disavowed the full scope of that term either in the Specification or during prosecution; and Patent Owner’s definition appears to reflect both the context of the patent, as well as a well-accepted definition of the term. Ex. 2003, 5, 7. Notably, in contrast, the court in the Mangosoft case cited by Petitioner did not construe the term “database,” but rather construed “structured store of data” as “data that are organized in some recognized fashion (e.g., database files, word processing document files, or Web pages) and stored in the volatile and/or non-volatile memory of the various nodes participating in the shared memory system.” See Ex. 1020, 23–29. Accordingly, on this record and for purposes of this Decision, we construe “database” to mean “a collection of interrelated data organized according to a database schema to serve one or more applications.”” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,677,494

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.