• Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “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). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given 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 . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16

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

    “3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23

  Patent outcomesUS 8,452,646 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,452,646
• Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Dec 9, 2014 · IPR2013-00371 · APJ Scott E Kamholz · IPR · Final written decision

  Claims 1–13 and 17–20 were not shown unpatentable as obvious over Ashley ’932 and Sheth because Sheth did not disclose a delayed-release portion or the claimed IR:DR ratios.

  RulingsFinal written decision

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

    “agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’405 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’405 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1007, 7:56. The ’405 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:38–40 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’405 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As Supernus concedes, Tr. 42:7–9, the ’405 patent does not provide an express definition of “delayed release.” We turn, therefore, to other evidence of how the term is understood and used by persons of ordinary skill in the art. We find, upon consideration of this evidence, that the term “delayed release” is used, more-or-less uniformly, to refer to formats that allow for release of a drug only after some delay following oral administration. See, e.g., Ex. 2058, 30 (quoted supra); Ex. 2047, 7 (defining “delayed release” as “release of a drug (or drugs) at a time other than promptly after administration”);4 Ex. 2016 ¶ 106 (citing definition of “delayed release” in Ashley ’854, quoted supra, with approval). Those definitions are consistent with one another, both parties and their experts cite them with favor, and we discern nothing in the use of the term “delayed release” in the ’405 patent specification that is inconsistent with those definitions or more limiting than them. For these reasons, we determine that the broadest reasonable construction of “delayed release,” consistent with the ’405 patent, is “release of a drug at a time other than immediately following oral administration.” See Ex. 2058, 30; Ex. 2047, 7; Ex. 1003, 11:4–6.” slip op. at 7

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

    “water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 172. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point. Because we credit Dr. Rudnic’s testimony, we agree with Supernus that Sheth’s secondary loading portion is not a “delayed release” portion. A “delayed release” format, when that term is construed to mean “release of a drug at a time other than immediately following oral administration,” specifically excludes formats that result in release of drug starting immediately after oral administration. To conclude otherwise would read the phrase “delayed release” out of the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (all limitations of a claim must be considered when considering patentability over prior art). Amneal has not explained how there is any appreciable delay in the onset of drug release from the secondary loading portion once water in the patient’s saliva or gastric fluid has begun to solubilize the pH-insensitive polymer in the coating.6” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “MOTION TO EXCLUDE EVIDENCE Amneal moves to exclude Supernus Exhibits 2028, 2029, 2032–2034, 2039, 2049, 2050, 2147, 2149–2154, and 2156. Pet. Motion to Exclude 1. We dismiss Amneal’s motion as moot, because we do not rely on any of the objected-to evidence in our final decision. IV.” slip op. at 15

  Patent outcomesUS 8,394,405 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,394,405
• Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Dec 9, 2014 · IPR2013-00372 · APJ Scott E Kamholz · IPR · Final written decision

  Claims 1–12 and 16–21 were not shown unpatentable over Ashley ’932 and Sheth because Sheth’s secondary loading portion was not a delayed-release portion.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’406 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’406 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1009, 7:56. The ’406 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:38–40 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’406 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 7

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We credit Dr. Rudnic’s declaration testimony that inclusion of a water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 176. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point.” slip op. at 13

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

    “that Sheth’s secondary loading portion is not a “delayed release” portion. A “delayed release” format, when that term is construed to mean “release of a drug at a time other than immediately following oral administration,” specifically excludes formats that result in release of drug starting immediately after oral administration. To conclude otherwise would read the phrase “delayed release” out of the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (all limitations of a claim must be considered when considering patentability over prior art). Amneal has not explained how there is any appreciable delay in the onset of drug release from the secondary loading portion once water in the patient’s saliva or gastric fluid has begun to solubilize the pH-insensitive polymer in the coating.6” slip op. at 13

  Patent outcomesUS 8,394,406 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,394,406
• Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Dec 9, 2014 · IPR2013-00368 · APJ Scott E Kamholz · IPR · Final written decision

  Amneal did not prove claims 1, 2, 5–15, and 19–22 unpatentable as obvious over Ashley ’932 and Sheth because Sheth did not disclose a delayed-release portion.

  RulingsFinal written decision

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

    “agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’740 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’740 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1001, 7:47. The ’740 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:29–31 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’740 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As Supernus concedes, Tr. 42:7–9, the ’740 patent does not provide an express definition of “delayed release.” We turn, therefore, to other evidence of how the term is understood and used by persons of ordinary skill in the art. We find, upon consideration of this evidence, that the term “delayed release” is used, more-or-less uniformly, to refer to formats that allow for release of a drug only after some delay following oral administration. See, e.g., Ex. 2058, 30 (quoted supra); Ex. 2047, 7 (defining “delayed release” as “release of a drug (or drugs) at a time other than promptly after administration”);3 Ex. 2016 ¶ 105 (citing definition of “delayed release” in Ashley ’854, quoted supra, with approval). Those definitions are consistent with one another, both parties and their experts cite them with favor, and we discern nothing in the use of the term “delayed release” in the ’740 patent specification that is inconsistent with those definitions or more limiting than them. For these reasons, we determine that the broadest reasonable construction of “delayed release,” consistent with the ’740 patent, is “release of a drug at a time other than immediately following oral administration.” See Ex. 2058, 30; Ex. 2047, 7; Ex. 1003, 11:4–6.” slip op. at 7

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We credit Dr. Rudnic’s declaration testimony that inclusion of a water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 175. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point.” slip op. at 13

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

    “For this reason, we determine that Amneal has failed to show that Sheth discloses a “delayed release” portion. Amneal’s argument that Sheth discloses the claimed IR:DR ratio (or makes the claimed ratio reachable through routine experimentation) thus becomes untenable. Dr. Van Buskirk’s evidence concerning ratios in Sheth is premised on an assumption that Sheth’s secondary loading portion is a delayed release portion. See, e.g., Ex. 1022 ¶ 59 (“Additionally, the secondary loading coated pellets (the DR component) described in the ’748 patent . . .”). That assumption is unwarranted, for the reasons given above. Consequently, Sheth’s disclosure of ratios involving the secondary loading portion does not constitute disclosure of ratios involving a delayed release portion. Put another way, Amneal has failed to persuade us that the prior art it cites for disclosure of IR:DR ratios actually discloses such ratios. Without evidence that the claimed IR:DR ratio was known or could have been reached through routine experimentation, Amneal’s challenge fails. For the reasons discussed above, we conclude that Amneal has not” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We dismiss Amneal’s motion as moot, because we do not rely on any of the objected-to evidence in our final decision. IV.” slip op. at 15

  Patent outcomesUS 8,206,740 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,206,740
• Trivascular, Inc. v. Shaun L.W. SamuelsNo claims unpatentable
  PTAB · Dec 3, 2014 · IPR2013-00493 · APJ Richard E Rice · IPR · Final written decision

  Claims 1, 2, and 4–24 were not shown unpatentable over either instituted §103 combination because the references did not establish the required inflatable protrusions.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “not proved that claims 1, 2, 6–15, and 18–24 would have been obvious over Samuels ’851 and Todd, or that claims 1, 4–6, 9–11, 13, 14, 16, 17, and 19– 21 would have been obvious over Lazarus and Todd. Accordingly, Dr. Samuels’s Motion to Amend, which is contingent on claims 1, 14, and 23 being found unpatentable, is moot. IV. ORDER For the reasons given, it is ORDERED that claims 1, 2, and 4–24 of U.S. Patent No. 6,007,575 are not determined to be unpatentable; and FURTHER ORDERED that Dr. Samuels’s Motion to Amend is dismissed as moot.” slip op. at 24

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

    “TriVascular argues that “inflatable protrusions can be ‘solid’ structures such as barbs or[,] in the case of [] some of the prior art examples, solid circumferential ridges.” Reply 10 (citing Clark. Dep., Ex. 1021, 135:6–16 (discussing Samuels ’851 (Ex. 1002))). TriVascular’s proposed claim construction, however, does not accord with the plain meaning of “inflatable” as used in the Specification, i.e., expandable by being filled with fluid. See, e.g., Ex. 1001, Abstr. 3–4, 3:55 (“inflatable chamber”), 1:30 (“inflatable balloon”), 2:33, 38, 3:30 (“inflatable cuff”), 3:33–34 (“inflatable ridges”). Under the plain meaning of “inflatable” as used in the Specification, solid ridges are not “inflatable,” because they are not capable of being filled with fluid. See Resp. 5–8; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (holding that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification). Further, under TriVascular’s proposed claim construction, there is no meaningful difference between “protrusions” disposed on an inflatable cuff and “inflatable protrusions” disposed on an inflatable cuff. See Tr. 10:7–14. Trivascular’s proposed claim construction, therefore, fails to give any meaning to “inflatable” in “inflatable protrusions,” and by not giving effect to all words of the claim, runs afoul of a cardinal rule of claim construction. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim,” so that physical structures and characteristics described specifically in a claim are not rendered “merely superfluous.”).” slip op. at 7

  • Expert testimonyPetitioner expert discountedOther

    “inflatable balloon protuberances, including “inflatable ridges.” Pet. 22 (citing Ex. 1008, Figs. 5–9), 41 & 51 (claim chart) (quoting Ex. 1008, 7:35– 39, citing Ex. 1008, Fig. 7). At oral argument, TriVascular clarified its analysis of Todd’s disclosure, and asserted that the protuberances disclosed in Todd are hollow, and themselves inflatable. Tr. 6:5–12:20. TriVascular cited in support of its position the statement in column 7 of Todd that: “When inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted.” Id. at 6–7; Ex. 1008, 7:37–39 (emphasis added); see Pet. 40–41 (Claim Chart II, element 1a-3, quoting Ex. 1008, 7:35–39). TriVascular, however, has not provided a declaration, or any other evidence, to establish that a person of ordinary skill in the art would understand Todd to disclose protuberances that are hollow, and themselves inflatable. Dr. Samuels does not agree that Todd discloses “inflatable protrusions.” Resp. 12. Dr. Samuels asserts that “the region between the inner and outer surfaces of balloon 26 of Todd is solid . . . and any provided roughened surfaces or protuberances are also solid.” Id. (citing Ex. 1008, Figs. 4 & 8; Ex. 2004). On the record before us, TriVascular has failed to show that Todd discloses “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The protuberances disclosed in Todd project outwardly “from the outer surface” of inflatable balloon 26. See Ex. 1008, 6:58–59, 62–63. As such, the protuberances are disposed on the exterior surface of the inflatable balloon, and are not in fluid communication with the balloon’s inner chamber 32. See Resp. 12; Ex. 1008, 7:15–16, Figs. 2, 4 & 5 (describing knobs 40 as solid structures on the outer surface of the balloon), 7:32–34, Fig. 6 (describing “cross-hatched pattern 44 projecting outwardly from the exterior surface of balloon 26”), 7:35–39, Fig. 7 (describing “outwardly projecting spiral ridge 48 wound about the exterior surface of balloon 26”), 7:40–46, Fig. 8 (describing “outwardly projecting annular rings 52 wound about the exterior surface of balloon 26”). Todd discloses expansion means in fluid communication with inner chamber 32 for inflating balloon 26 (id. at 7:53–60), but does not disclose expansion means for inflating the protuberances, either separately or in conjunction with inflation of the balloon. Todd discloses, simply, that “when balloon 26 is inflated, the gripping means [i.e., the protuberances] on the exterior of the balloon contact and grip the walls of the body passageway.” Id. at 8:14–16. Trivascular has not persuaded us, moreover, that a person of ordinary skill in the art would have understood Todd’s statement “[w]hen inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted” (id at 7:37–39 (emphasis added)), to teach or suggest that spiral ridge 48 is expandable by being filled with fluid. See Tr. 6–7. Other than that isolated statement, there is no suggestion, indication, or hint in Todd that any of the disclosed protuberances is hollow such that it can be filled with fluid and inflated. To the contrary, as discussed above, Todd” slip op. at 15

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

    “We determine that Trivascular has not provided a sufficient rationale to support substituting the ridges of Todd for just the barbs of Samuels ’851. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). TriVascular also contends that it would have been obvious to eliminate both the recesses and barbs of Samuels ’851, and to substitute “a circumferential ridge, similar to the one that is in Todd.” See Tr. 15:24– 17:15. TriVascular asserts three reasons why combining the references in that fashion would satisfy the requirement for “inflatable protrusion(s) including at least one circumferential ridge disposed about the inflatable cuff”: (1) the ridges are “inflatable” in the combination simply because they are riding on an inflatable cuff; (2) the ridges in Todd are themselves inflatable; and (3) use of ridges that are themselves inflatable would have been obvious, as they would take up less volume and be easier to insert in blood vessels than ridges that are not themselves inflatable. See id. at 17:16–18:14. None of those reasons is persuasive. The first reason is not persuasive because it does not satisfy the requirement for “inflatable protrusions,” i.e., protrusions that are expandable by being filled with fluid. See section II.A.5 supra. The second reason is not persuasive because we do not agree that Todd discloses ridges that are themselves inflatable. See section II.B.1.b supra. Lastly, the third reason is not persuasive because TriVascular has not established that a person of ordinary skill in the art would have known to use, on an inflatable cuff, circumferential ridges that are themselves inflatable. The evidence is to the contrary. See, e.g., Ex. 2002 (Samuels Decl.) ¶ 4.c (“No one else in the medical field, to the best of my knowledge, ever proposed or suggested an inflatable ridge-based sealing arrangement prior to my invention, ever.”); Ex. 1020 (Samuels Dep.), 138:20–140:7 (affirming testimony in ¶ 4.c of Samuels Decl.), 187:11–14 (testifying that inflatable ridges were not known in the medical field); Ex. 2003 (Clark Decl.) ¶ 8 (“[B]eing able to reduce the overall diameter by just deflating the fluid chamber and, correspondingly, the ridges is an intriguing concept, one which was not known, to the best of my knowledge, in the medical field prior to Samuels ’575.”); Ex. 1021 (Clark Dep.), 82:19–21 (“I’m not aware of any inflatable protrusions to support an endograft prior to Samuels [’575].”).” slip op. at 19

  Patent outcomesUS 6,007,575 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,007,575
• Sequenom, Inc. v. The Board Of Trustees Of The Leland Stanford Junior UniversityNo claims unpatentable
  PTAB · Nov 25, 2014 · IPR2013-00390 · APJ Francisco C Prats · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because the Board found they were reduced to practice before Lo II’s filing date, so Lo II was not prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “when it is successfully performed.” Shurie v. Richmond, 699 F.2d 1156, 1159 (Fed. Cir. 1983). “In order to establish an actual reduction to practice, an inventor’s testimony must be corroborated by independent evidence. . . . [A] ‘rule of reason’ analysis is applied to determine whether an inventor’s testimony regarding reduction to practice has been sufficiently corroborated.” Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) (citation omitted). This “rule of reason” analysis “requires an evaluation of all pertinent evidence when determining the credibility of an inventor’s testimony.” Id. Under that analysis, “to corroborate a reduction to practice, it is not necessary to produce an actual over-the-shoulder observer. Rather, sufficient circumstantial evidence of an independent nature can satisfy the corroboration requirement.” Id. Corroborating evidence may be “testimony of a witness, other than an inventor, to the actual reduction to practice or it may consist of evidence of surrounding facts and circumstances independent of information received from the inventor.” Hahn v. Wong, 892 F.2d 1028, 1032–33 (Fed. Cir. 1989). Corroboration, however, “is not necessary to establish what a physical exhibit before the [B]oard includes. Only the inventor’s testimony requires corroboration before it can be considered.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993) (citation omitted).” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “In sum, for the reasons discussed, non-inventor corroborating evidence reasonably supports Patent Owner’s assertion that, on June 19, 2008, inventor Dr. Fan sent to Dr. Blumenfeld the draft of the PNAS paper appearing in Exhibits 2111 and 2113. As also discussed above, the evidence reasonably supports Patent Owner’s assertion that that document describes an actual reduction to practice of the processes recited in claims 1–17 of the ’415 patent. We are persuaded, therefore, that Patent Owner has shown that the subject matter of the challenged claims was reduced to practice before Lo II’s July 23, 2008 filing date. Accordingly, because the evidence does not support Petitioner’s position that Lo II constitutes prior art to the challenged claims under 35 U.S.C. § 102(e), and because Lo II is relied upon in every ground on which trial was instituted, Petitioner has not shown by a preponderance of the evidence that any of the challenged claims is unpatentable, based on any of the asserted grounds of unpatentability. III. CONCLUSION” slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

  Patent outcomesUS 8,195,415 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,195,415
• Customplay, LLC v. Clearplay, Inc.No claims unpatentable
  PTAB · Nov 5, 2014 · IPR2013-00484 · APJ Barry L Grossman · IPR · Final written decision

  Claims 16, 27, 28, 30–34, and 40 were not shown unpatentable under § 103(a) over Abecassis and Malkin.

  RulingsFinal written decision

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

    “Petitioner also has not directed us to any persuasive evidence or argument that it would have been obvious to modify the configuration technology used for completed video maps in Abecassis to provide configurable navigation objects, each with configuration identifiers, as required in claim 16. Moreover, Petitioner has not provided any persuasive evidence or argument that it would have been obvious to compare each navigation object’s configuration identifier to a decoder’s configuration identifier, as claim 16 also requires. No apparent need would exist for this type of comparison step in the system of Abecassis, because each video map is configured to a specific device. Accordingly, the preponderance of the evidence does not establish that the combination of Abecassis and Malkin, on which this inter partes review is based, discloses or suggests the “configuration identifier” limitations recited in claim 16. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 16 is unpatentable over Abecassis and Malkin.” slip op. at 10

  • BurdenNot shown unpatentable

    “that it would have been obvious to modify the configuration technology used for completed video maps in Abecassis to provide configurable navigation objects, each with configuration identifiers, as required in claim 16. Moreover, Petitioner has not provided any persuasive evidence or argument that it would have been obvious to compare each navigation object’s configuration identifier to a decoder’s configuration identifier, as claim 16 also requires. No apparent need would exist for this type of comparison step in the system of Abecassis, because each video map is configured to a specific device. Accordingly, the preponderance of the evidence does not establish that the combination of Abecassis and Malkin, on which this inter partes review is based, discloses or suggests the “configuration identifier” limitations recited in claim 16. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 16 is unpatentable over Abecassis and Malkin. b. Disabling a Navigation Object Claim 27 requires the step of “providing for disabling of one or more of the” slip op. at 10

  Patent outcomesUS 7,577,970 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,577,970
• Ariosa Diagnostics v. Verinata Health, Inc.No claims unpatentable
  PTAB · Oct 23, 2014 · IPR2013-00276 · APJ Toni R Scheiner · IPR · Final written decision

  Claims 1–18 were not shown unpatentable under §103 over Shoemaker, Dhallan, and Binladen because the petition did not explain how to combine the references or what modifications were required.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “elements of the challenged claims can be found in Shoemaker, Dhallan, and Binladen. Pet. 41–55. For each element or clause of the claims, the claim chart purportedly identifies where some aspect of that element or clause is disclosed by one or more of the references. The Morton Declaration and the Nussbaum Declaration closely correspond to Petitioner’s claim chart in this respect. Ex. 1002 ¶¶ 99–112, Ex. 1003 ¶¶ 110–165. However, there is no mention in the Petition or the Declarations of any differences between the claimed subject matter and the prior art, beyond a single statement that “Dhallan does not teach indexing” (Ex. 1002 ¶ 104). Moreover, nowhere is it explained how one of ordinary skill in the art would go about combining the disparate elements of the references, nor is it explained what modifications one of ordinary skill in the art would necessarily have made in order to combine them.” slip op. at 11

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

    “elements of the challenged claims can be found in Shoemaker, Dhallan, and Binladen. Pet. 41–55. For each element or clause of the claims, the claim chart purportedly identifies where some aspect of that element or clause is disclosed by one or more of the references. The Morton Declaration and the Nussbaum Declaration closely correspond to Petitioner’s claim chart in this respect. Ex. 1002 ¶¶ 99–112, Ex. 1003 ¶¶ 110–165. However, there is no mention in the Petition or the Declarations of any differences between the claimed subject matter and the prior art, beyond a single statement that “Dhallan does not teach indexing” (Ex. 1002 ¶ 104). Moreover, nowhere is it explained how one of ordinary skill in the art would go about combining the disparate elements of the references, nor is it explained what modifications one of ordinary skill in the art would necessarily have made in order to combine them.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Nevertheless, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Alabama Medical Science Foundation, Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64). See also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In an inter partes review, we regard it as the better course to have a complete record of the evidence to facilitate public access, as well as appellate review. See id. (“If the record on review contains not only all evidence which was clearly admissible, but also all evidence of doubtful admissibility, the court which is called upon to review the case can usually make an end of it, whereas if evidence was excluded which that court regards as having been admissible, a new trial or rehearing cannot be avoided.”). To the extent the arguments made in Petitioner’s Reply and Dr. Morton’s Second Declaration are responsive to arguments made in Patent Owner’s Response and Dr. Butte’s Declaration, we have considered the arguments and found them unpersuasive. To the extent the arguments and evidence presented in Petitioner’s Reply and Dr. Morton’s Second Declaration are not responsive and could have been presented earlier to support Petitioner’s challenge, we accord them no weight. Patent Owner’s Motion to Exclude is denied.” slip op. at 22

  Patent outcomesUS 8,318,430 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,318,430
• Ariosa Diagnostics v. Verinata Health, Inc.No claims unpatentable
  PTAB · Oct 23, 2014 · IPR2013-00277 · APJ Toni R Scheiner · IPR · Final written decision

  Claims 19–30 were not shown unpatentable under §103 over Shoemaker, Dhallan, and Binladen because the petition did not explain how to combine the references or what modifications were needed.

  RulingsFinal written decision

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

    “claimed subject matter and the prior art, beyond a single statement that “Dhallan does not teach indexing” (Ex. 1002 ¶ 91). Moreover, nowhere is it explained how one of ordinary skill in the art would go about combining the disparate elements of the references, nor is it explained what modifications one of ordinary skill in the art would necessarily have made in order to combine them. Patent Owner argues that “[Petitioner] and its experts fail to address” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “Nevertheless, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Alabama Medical Science Foundation, Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64). See also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In an inter partes review, we regard it as the better course to have a complete record of the evidence to facilitate public access, as well as appellate review. See id. (“If the record on review contains not only all evidence which was clearly admissible, but also all evidence of doubtful admissibility, the court which is called upon to review the case can usually make an end of it, whereas if evidence was excluded which that court regards as having been admissible, a new trial or rehearing cannot be avoided.”). To the extent the arguments made in Petitioner’s Reply and Dr. Morton’s Second Declaration are responsive to arguments made in Patent Owner’s Response and Dr. Butte’s Declaration, we have considered the arguments and found them unpersuasive. To the extent the arguments and evidence presented in Petitioner’s Reply and Dr. Morton’s Second Declaration are not responsive and could have been presented earlier to support Petitioner’s challenge, we accord them no weight. Patent Owner’s Motion to Exclude is denied.” slip op. at 22

  • Strike new argumentNew argument disregardedOther

    “To the extent Petitioner’s Reply and Dr. Morton’s Second Declaration are responsive to specific points raised by Dr. Butte in his Declaration concerning the combinability of Binladen or Shoemaker with Dhallan, we are not persuaded. As discussed above, Dr. Morton acknowledged on crossexamination that Binladen’s indexing (i.e., tagging) scheme could not be used with Dhallan’s restriction-digestible amplification primers. Dr. Morton, in her Second Declaration, contends that Dhallan also teaches a number of amplification and/or detection methods which do not require the use of restriction digestible primers” (Ex. 1042 ¶¶ 17, 18), but those portions of Dhallan were not identified or discussed in the Petition or the accompanying Declarations. Moreover, although Dr. Morton asserts that “one of ordinary skill in the art would use basic common sense and not utilize the embodiments of Dhallan where restriction sites are added to the primers” (id. ¶ 32 (emphasis omitted)), Dr. Morton still does not explain how these other methods would be combined with Binladen or Shoemaker.” slip op. at 17

  Patent outcomesUS 8,318,430 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,318,430
• Dynamic Drinkware LLC v. National Graphics, Inc.No claims unpatentable
  PTAB · Sep 12, 2014 · IPR2013-00131 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1 and 12 were not shown unpatentable because Patent Owner proved reduction to practice before Raymond’s effective prior art date.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner

    “preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6

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

    “We conclude, therefore, that Patent Owner has shown by a preponderance of the evidence that by March 28, 2000, a sample product was produced for Patent Owner demonstrating that the Rexam process was suitable for its intended purpose. The testimony establishes that the Rexam process was successful in injection molding a plastic product with a lenticular image that would be acceptable to the intended end user. Walker Decl. ¶ 11; Krause Decl. ¶ 7.” slip op. at 18

  Patent outcomesUS 6,635,196 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 6,635,196

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.