• Universal Remote Control, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01146 · APJ William A Capp · IPR · Final written decision

  Claims 13–15 were not shown unpatentable because Dubil does not disclose the claimed configuration stored in and accessed by the entertainment device.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “As between the foregoing two possibilities, we think the latter construction is the correct one. The claims indicate that a configuration of the entertainment device is a construct that can be “downloaded” from a computer. Id., claim 13. It is also a construct that can be “access[ed] and use[d]” in association with a controlling device activity key commend value. Id. These attributes are more consistent with a set of executable instructions and data that is stored in memory than a physical state or configuration of the entertainment device after it has been configured. Id. at 6:38 (“finalized and stored”); 6:41 (“stored and associated”). In view of the foregoing we construe configuration of the entertainment device in claims 13 and 14 as referring to information stored in memory in the entertainment device that can be accessed and used to configure the entertainment device.” slip op. at 16

  • ExcludeMotion to exclude, grantedGranted

    “The admissibility of evidence in an IPR proceeding generally is governed by the Federal Rules of Evidence. See 37 C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under Federal Rule of Evidence 611(c), leading questions should not be used on the direct examination of a witness except as may be necessary to develop the witness’ testimony. “A leading question is one that suggests to the witness the answer desired by the examiner.” McCormick, EVIDENCE § 6 (7th ed. 2013). Questions that begin, “Isn’t it true that” or “Don’t you agree that” typically suggest the answer and are leading. Other types of questions, such as questions that call merely for a yes or no answer or that ask the witness to choose between alternatives posed by the questioner, may or may not be leading, depending on the context in which the question is asked, the tone of voice employed, and the body language or conduct of counsel. See, e.g., United States v. Warf, 529 F.2d 1170, 1174 (5th Cir. 1976) (prosecutor improperly led witness to make identification by pointing at the accused).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “We are not persuaded by Petitioner’s argument or evidence. Petitioner’s conclusion does not follow logically and necessarily from Petitioner’s underlying premises. The system configuration described by Petitioner just as easily could be accomplished by sending on/off commands to the various input and output components so that the desired input device is powered on and the non-desired input device is powered off. The same can be said of the output devices. Thus, the entertainment system, as a whole, can be configured by sending power on/off commands to various devices and then passively routing the input and output signals through the VCR. Petitioner cites to no explicit disclosure in Dubil where the VCR actively switches between a plurality of inputs and a plurality outputs. We have reviewed Dubil and find no such explicit disclosure. Neither do we find that Dubil discloses active switching of the VCR inherently. While it may be possible that the VCR could switch between sources and destinations, we are not persuaded that such functionality is necessarily present in Dubil for it to operate. Inherency may not be established by probabilities or possibilities. See Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Furthermore, Dubil cannot associate a remote control activity key command value with a configuration of the entertainment device unless Dubil first possesses a configuration of the entertainment device within the meaning of claim 13. We are not persuaded that Dubil discloses a “configuration of the entertainment device” as we have construed the term. Petitioner’s evidence and argument focuses on Dubil’s entertainment system as a whole. However, “configuration of the entertainment device,” as it is used in claim 13, refers to a set of executable instructions and data stored in memory in the entertainment device that is first downloaded from a personal computer and is then accessed and used after the entertainment device receives a signal from the remote control that contains a command value that is associated with such configuration. Petitioner provides no persuasive evidence that Dubil’s VCR has memory that stores executable instructions and data in the form of a “configuration of the entertainment device” that is downloaded from a computer and is accessed and used as claimed.” slip op. at 22

  • BurdenNot shown unpatentable

    “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Dubil fails to disclose all elements of claim 13, we find that Petitioner has failed to establish, by a preponderance of the evidence, that Dubil anticipates claim 13. slip op. at 26

  Patent outcomesUS 8,243,207 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,243,207
• Vmware, Inc. / International Business Machines Corporation et al. v. Electronics And Telecommunications Research InstituteNo claims unpatentable
  PTAB · Dec 9, 2015 · IPR2014-00901 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Mylex and Hathorn because Petitioner failed to show a person of ordinary skill would have been motivated to combine them.

  RulingsFinal written decision

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

    “Decision is incorrect for a number of reasons. Petitioner points out that the Webster’s definition does not support the “single logical drive” construction of RAID. Pet. Reply 3 (citing Ex. 2004, 308). As discussed above, Webster’s describes RAID generally as including levels, then defines the levels separately, each as including a “single logical drive.” However, that the general RAID definition and the definition of RAID 10 from Webster’s, or any other dictionary, do not include the “single logical drive,” is not dispositive. Rather, we must look to how the person of ordinary skill in the art would understand a RAID. See Translogic Tech., 504 F.3d at 1257. The evidence of what would be understood by one of ordinary skill, as represented by the testimony of Drs. Horst, Conte, and Katz, and authors Weygant, Chen, and Chong, is compelling. Petitioner’s argument based on the Webster’s definition of RAID is, at best, equivocal from an evidentiary standpoint. Indeed, Petitioner acknowledges that RAID can present as a “single logical unit [drive].” Pet. Reply 3. We, therefore, are not persuaded that Petitioner has met its burden of proving that the proffered dictionaries support a broader construction of RAID, i.e., to not be defined as a “single logical drive.”” slip op. at 12

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

    “We are not persuaded by Patent Owner’s arguments. It is always necessary to review the Specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).10 The claims must be read in view of the Specification. Id. Patent Owner’s evidence of how a person of ordinary skill would understand the terms is that the terms, though different, are both “network interconnection devices.” Ex. 2301 ¶¶ 58–59. Additionally, Patent Owner’s expert acknowledged “hub” and “switch” may be used interchangeably. See Pet. Reply 7 (citing Ex. 2302, 30:16–18). The Specification recognizes this as well, stating that “hubs 440, 441 are provided to connect a system connected to these hubs by one network and maintain the network …, and it can be as a hub or a switch. Hereinafter, they are named a ‘hub’ altogether.” Id. at 6–7 (citing Ex. 1001, 3:13–18). Thus, consistent with the Specification and our construction from the ’635 Final Decision, “connection unit” is “a hub or switch.”” slip op. at 16

  • Obviousness (§103) › Analogous artAnalogous artMotivation not foundDecided for patent owner

    “determine whether Petitioner has provided a sufficient rationale for a person of ordinary skill in the art to combine Hathorn and Mylex. One of the arguments presented involves the allegation that Mylex and Hathorn may be combined based on both being analogous art. Pet. 14–15, Pet. Reply 8–13. That Mylex and Hathorn are in one field is not, by itself, dispositive. See KSR, 550 U.S. at 418. We must look to other factors, like design incentives and other market forces, to determine whether the person of ordinary skill would be prompted to make the modification. Id. In reviewing the record here, Petitioner’s arguments in its briefs that Hathorn is analogous art, i.e., in the same field, do not reach, let alone explain, why the person of ordinary skill would be prompted to combine the two. Pet. 14–15, Pet. Reply 8–13, 20. At the oral hearing, Petitioner did not point to any additional argument or evidence on its field of endeavor argument. Tr. 6:14–23, 7:13–14. Conversely, Patent Owner asserted correctly that, even if the field of endeavor is the same, “[y]ou still need some motivation or other rationale to make a combination and that is what is missing in this case.” Id. at 47:5–7. Accordingly, Petitioner has not persuaded us that the fact that Mylex and Hathorn are in the same field of endeavor establishes a rationale for combining the two.” slip op. at 29

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

    “ports. First, the ground of unpatentability at issue relies on modification of Mylex’s reserved ports to establish the heartbeat path through a network switch, motivated by Hathorn’s communication paths through network switches. See Ex. 1003 ¶¶ 78–80. Petitioner does not allege, nor do we find, that Hathorn teaches or suggests modifying an offline port in a controller to establish a peer-to-peer connection through the network switch. The address of the Hathorn secondary device, although set to zero, is an address nonetheless. See Ex. 1005 at 11:6212:2. We credit Dr. Conte’s testimony that “the storage pertinent controller ports in Hathorn are always active.” Ex. 2301 ¶ 116. Petitioner’s offer of Hathorn’s peer-to-peer connection as some evidence of addressability of ports is incompatible with Mylex’s port operation. Moreover, even if Mylex’s “Reserved” ports were to be modified to operate like Hathorn’s ports, Petitioner offers no credible explanation of how or why the person of ordinary skill would make modification. The Petition states that the expense of communication paths would be reduced “by modifying network interface controlling unit ports to use the existing switch network for communications between RAID controllers (instead of using a direct “hearbeat” path). Pet. 18 (emphasis added). The Declaration of Dr. Horst repeats this general statement verbatim with no added factual support or further explanation. See Ex. 1003 ¶ 32. Furthermore, to the extent Petitioner’s declarant testifies that Mylex’s ports are replaced with or substituted by Hathorn’s “dynamically modifiable ports,” we find the testimony not persuasive. See Ex. 1003 ¶¶ 4855 (cited in Petition at page 18). Instead, we agree with Patent Owner that Hathorn’s ports are not interchangeable with Mylex’s ports because of the fundamental operational differences of these devices. See PO Resp. 5254. For example, we credit Dr. Conte’s testimony that the Hathorn ports operate as endpoints of established links in a circuit-switched network, whereas Mylex’s ports are nodes in a fibre-channel network that use packet-switched communications. Ex. 2301 ¶ 117. Further, we credit Dr. Conte’s testimony that the nature of the heartbeats and disk drive traffic data are different such that the links dedicated to transferring disk drive traffic data would not motivate the elimination of the heartbeat path. Id. at ¶¶ 118–119. Lastly, we credit Dr. Conte’s testimony that the transmission protocols in Hathorn and Mylex are different standards, Hathorn’s is IBM’s proprietary technology, and Mylex’s is an open, industry standard. Id. at ¶¶ 48, 85. As such, we find that although Hathorn’s controller ports are dynamically modifiable, the modifications are the result of a protocol and link architecture that is unique to Hathorn and not interchangeable with Mylex’s system. In summary, we are not persuaded that both Mylex and Hathorn disclose redundant communications, as opposed to redundant storage. Therefore, we find unpersuasive Petitioner’s proffered obviousness rationale that relies on redundancy. Notwithstanding the redundancy issue, we are persuaded by Patent Owner’s argument and evidence of record that the proffered rationale of Mylex’s modification, as proposed by Petitioner, is not reasonable. Consequently, we find that a person of ordinary skill would not be prompted to make the proposed modification given the unfeasibility of the proposed redundant communication and the differences in the taught ports of Mylex and Hathorn.” slip op. at 36

  Patent outcomesUS 6,978,346 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,978,346
• Vmware, Inc. / International Business Machines Corporation et al. v. Electronics And Telecommunications Research InstituteNo claims unpatentable
  PTAB · Dec 9, 2015 · IPR2014-00949 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Mylex and Hathorn because Petitioner failed to establish a sufficient motivation to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Horst testifies that, as of the year 2000, the person of ordinary skill would have had a B.S. in Electrical Engineering or Computer Science and at least two years of experience in designing storage systems. Ex. 1003 ¶ 12. Dr. Conte does not provide any specific opinion in this regard. See, e.g., Ex. 2301 ¶ 25. We determine Dr. Horst’s opinion is both not disputed and reasonable. Accordingly, we adopt Dr. Horst’s description of the level of ordinary skill for this case.” slip op. at 22

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

    “Accordingly, having considered the claim construction arguments made by Petitioner in its Reply regarding Hathorn, and weighing that against the evidence presented by Patent Owner, including the testimony of Dr. Conte, which we credit, we conclude that a RAID would have been understood by a person of ordinary skill in the art to have a customary meaning of “a single logical unit for mass storage using multiple physical disk drives.”” slip op. at 14

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

    “We are not persuaded by Patent Owner’s arguments. It is always necessary to review the Specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).10 The claims must be read in view of the Specification. Id. Patent Owner’s evidence of how a person of ordinary skill would understand the terms is that the terms, though different, are both “network interconnection devices.” Ex. 2301 ¶¶ 58–59. Additionally, Patent Owner’s expert acknowledged “hub” and “switch” may be used interchangeably. See Pet. Reply 7 (citing Ex. 2302, 30:16–18). The Specification recognizes this as well, stating that “hubs 440, 441 are provided to connect a system connected to these hubs by one network and maintain the network …, and it can be as a hub or a switch. Hereinafter, they are named a ‘hub’ altogether.” Id. at 6–7 (citing Ex. 1001, 3:13–18). Thus, consistent with the Specification and our construction from the ’635 Final Decision, “connection unit” is “a hub or switch.”” slip op. at 16

  • Obviousness (§103) › Analogous artAnalogous artDecided for patent owner

    “determine whether Petitioner has provided a sufficient rationale for a person of ordinary skill in the art to combine Hathorn and Mylex. One of the arguments presented involves the allegation that Mylex and Hathorn may be combined based on both being analogous art. Pet. 14–15, Pet. Reply 8–13. That Mylex and Hathorn are in one field is not, by itself, dispositive. See KSR, 550 U.S. at 418. We must look to other factors, like design incentives and other market forces, to determine whether the person of ordinary skill would be prompted to make the modification. Id. In reviewing the record here, Petitioner’s arguments in its briefs that Hathorn is analogous art, i.e., in the same field, do not reach, let alone explain, why the person of ordinary skill would be prompted to combine the two. Pet. 14–15, Pet. Reply 8–13, 20. At the oral hearing, Petitioner did not point to any additional argument or evidence on its field of endeavor argument. Tr. 6:14–23, 7:13–14. Conversely, Patent Owner asserted correctly that, even if the field of endeavor is the same, “[y]ou still need some motivation or other rationale to make a combination and that is what is missing in this case.” Id. at 47:5–7. Accordingly, Petitioner has not persuaded us that the fact that Mylex and Hathorn are in the same field of endeavor establishes a rationale for combining the two.” slip op. at 29

  Patent outcomesUS 6,978,346 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,978,346
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision

  Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).

  RulingsFinal written decision

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

    “In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22

  Patent outcomesUS 6,754,195 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 6,754,195
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00788 · APJ Benjamin D M Wood · IPR · Final written decision

  The Board held claims 10–20 not shown unpatentable because the asserted combinations did not show a reason to produce and provide the plate-ready file from a location remote from the printer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). 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 expressly construe below only those claim terms that require analysis to resolve arguments related to the patentability of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). All other terms will be accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention. 1. “A method of providing printing and publishing services to a remote client in real time using a communication network” (claim 10); “A method of providing printing and publishing services to a remote client . . . in real time using a wide area communication network” (claim 16) The preamble for each of independent claims 10 and 16 recites a method of providing printing and publishing services to a remote client “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 11–13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8

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

    “The Specification does not define “plate-ready file” expressly, but its meaning is discernible from the term itself: a file that can be used to produce a printing plate without further modification. See Ex. 1001, 10:7– 14 (equating the term “plate-ready file” with “a single file that is stable, predictable, and ready to image to proof or plate”). Moreover, as Petitioner states, the plate-ready file can be used with a platesetter to create a plate directly, or with an imagesetter to produce film that is then used to create the plate. Pet. 22. Further, we agree with the parties that because the file is “plate-ready,” it represents a page layout file that has gone through the prepress process, including RIPing. That is the purpose of prepress production: transforming “copy” into “a medium that is reproducible for printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38. Accordingly, in addition to the constructions we applied in the Decision on Institution, we construe “plate-ready file” to mean a file that represents a page layout that has gone through prepress processing, including RIPing, and is ready to image to a plate using either a platesetter or imagesetter.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) 8 Paper 30, 3; Tr. 31:4–8. (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was 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.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20

  Patent outcomesUS 6,738,155 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,738,155
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00790 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 1–3 were not shown unpatentable because Petitioner did not establish that the proposed combinations would produce the required plate-ready file at the central service facility.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner

    “1. A printing and publishing system which generates a printing plate-ready file from data provided remotely in real time using a communication network The preamble for each of independent claims 1, 2, and 3 recites a “printing and publishing system which generates a printing plate-ready file from data provided remotely in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 14. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 9

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

    “We agree with Patent Owner to the extent that the claim itself defines “end user facility,” “printing company facility,” and “central service facility” in terms of the particular functions they perform; e.g. the end user facility performs page building operations, the printing company facility provides printing operations, and the central service facility performs file processing and content management operations. But we maintain the view that these facilities must be distinct components of the claimed printing and publishing system. “Where a claim lists elements separately, the ‘clear implication of the claim language’ is that those elements are distinct components of the patented invention.” Becton, Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first and second occluding disks” means physically separate occluding disks). The Specification supports this conclusion because it consistently describes the three facilities as separate entities, each connected to the same communication network to facilitate the transfer of data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts 8 Paper 35, 3; Tr. 31:4–8. and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was 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.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’349 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1025 ¶¶ 10–14, Atts. E–H. Petitioner also has proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1024. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the earlier version Apogee, which reasonably would have led that person to the updated version. Given that Apogee was created to promote the Apogee system to prospective customers; a very large number of copies of the reference were printed, at least some of which were distributed at conferences and trade shows; and an earlier, substantively identical version was publicly available in electronic form on the internet; we find that Apogee was publicly accessible before the critical date.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s first motion to exclude.” slip op. at 18

  Patent outcomesUS 6,611,349 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,611,349
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00791 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 10–14 were not shown unpatentable over either asserted obviousness combination because the evidence did not show a reason to produce the plate-ready file away from the printing facility.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was 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.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to exclude.” slip op. at 17

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

    “this limitation, either the end user or the host facility must produce the plateready file and provide it to the printer. Petitioner argues that “one of ordinary skill could predictably implement Apogee at a central service facility.” Pet. Reply 4 (emphasis added). But as our reviewing court recently stated, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, 2015 WL 6756451, at *5 (emphasis in original) (citing InTouch Techs., Inc. v. VGO Commc’n, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Jebens does not teach or suggest generating a “plate-ready file” as we have construed the term above, i.e., a file that “that has gone through prepress processing, including RIPing.” Apogee teaches generating a plateready file from a PDF, but does not teach or suggest providing it to a remote 8 Claim 10 only requires a “client” and a “printer” that are “remote” with respect to each other. printer. Petitioner asserts that “one of ordinary skill in the art would have been motivated to incorporate Apogee into the Jebens printing system to allow for a printing facility to produce a printing plate for offset printing.” Pet. 29. But Petitioner does not point us to any evidence—in Jebens, Apogee, or otherwise—that a person of ordinary skill in the art would have combined Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facility or end user facility rather than at its printing facility. In other words, there is no evidence that a person of ordinary skill in the art would have considered generating a plate-ready file anywhere other than where the printing plates are produced: at the printing facility. Evidence that a skilled artisan could have generated the plate-ready file at Jebens’ host facility, without any evidence of a reason why the skilled artisan would have done so, is insufficient to show obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421–23 (2007) (considering the obviousness of a claim to an adjustable automobile throttle pedal combined with an electronic sensor, holding that “[a] person having ordinary skill in the art could have combined [the adjustable pedal] with a pedal position sensor in a fashion encompassed by [the claim], and would have seen the benefits of doing so” (emphasis added)); InTouch Techs., 751 F.3d at 1352 (holding that expert witness “succumbed to hindsight bias” in basing obviousness opinion on “belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so” (emphasis in original)). For these reasons, Petitioner has not shown by a preponderance of the evidence that claim 10, and its dependent claims 11– 14, would have been obvious over Jebens and Apogee.” slip op. at 25

  Patent outcomesUS 6,611,349 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,611,349
• TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentable
  PTAB · Nov 19, 2015 · IPR2014-01355 · APJ James P Calve · IPR · Final written decision

  Claims 58–76, 78–80, and 82–86 were not shown unpatentable because the proposed combinations did not establish a reason to extend the frit layer beyond the mount and add a camera opening.

  RulingsFinal written decision

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

    “footprint of an accessory in Figure 2C and Figures 3A–3E. Opaque layer 40 extends beyond where storage compartment 42 and outer wall 52 attach to inner surface 30 of window panel 28. However, Carter extends frit layer 40 from top wall 48 of storage compartment 42 only to gasket/grommet 36 at peripheral edge 34 of upper window panel 28. See id. at 3:59–61, Fig. 2C. Carter does not extend frit layer 40 to the front windshield. Thus, we are not persuaded that this teaching would have motivated a skilled artisan to extend a frit layer beyond the footprint of Blank’s mounting button 70 or mount 44 at windshield 22. The issue is not whether a skilled artisan could extend a frit layer beyond an attachment point or whether it would have been trivial to do so. See Pet. Reply 23. The issue is whether a skilled artisan would have been motivated to do so based on teachings of the references; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 15

  • Expert testimonyOther

    “of accessories from exterior view, the frit coating “conforms substantially to the regions of the window panel which receive the accessory [which] is referred to as the footprint of the accessory.” Ex. 1007, 8:33–38 (emphasis added). As shown in Figures 4A, 4C, 5A, and 5C of Carter, reproduced above, frit layers 108, 170 conceal storage compartments 102, 162 where those accessories attach to window panels 106, 166. Id. at 6:57–67, 7:6–22, 7:59–8:5; Ex. 1016 ¶ 28. Frit layers 108, 170 conform to “footprints” where accessories 102, 162 attach to window panel 106, 166. Ex. 1016 ¶¶ 28, 29.” slip op. at 15

  Patent outcomesUS 8,481,916 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,481,916
• Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCNo claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claim 10 was not shown unpatentable under § 103 over Balmuth1, the Starke Reference, or ’662 Balmuth combined with ’910 Pickens.

  RulingsFinal written decision

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

    “Claim Interpretation We interpret claims of an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of our Decision to Institute, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. B.” slip op. at 4

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

    “Given the complexities involved in developing a thick plate composition from a thin sheet, and the breadth of potential applications within the aerospace industry, we determine that Mr. Balmuth and Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 15

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

    “In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “to be persuasive. In order to rely on inherency to establish the existence of a missing claim limitation in an obviousness analysis, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. See Ex. 1006 ¶ 13; Ex. 1008 ¶ 32. Mr. Balmuth, for example, states that “it is generally understood that the strength and fracture toughness properties of a plate are less than those of a sheet having similar chemistry,” but that “one of ordinary skill in the art would predict improved properties for a plate upon a showing of improved properties in a sheet having similar chemistry,” and does not expound upon the reasons why a person skilled in the art would understand that to mean that the thick plate would display the same mechanical properties as the thin sheet. See Ex. 1006 ¶ 14. Based upon the evidence presented, we find that the opinions of Mr. Balmuth and Dr. Starke are not persuasive as they are not supported by the evidence of record. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner, in contrast, provides reasoning as to why a person having ordinary skill in the art would not have understood that a thick plate would have similar properties to a thin sheet having the same chemistry. PO Resp. 13–14, 34–35, 37–40, 42–44. For example, Patent Owner notes that since according to Mr. Balmuth you ‘don’t have the ability’ or ‘any interest’ in measuring toughness in the S-T direction in sheet, Petitioner has not established that the strength and toughness properties in sheet would necessarily be predictive of the strength and toughness properties of plate, such as described in Claim 10. Id. at 14. Dr. Pickens also testified to the complexities involved in developing thick plate aluminum-lithium alloys: For example, quench sensitivity, stress-corrosion cracking resistance, in plane anisotropy, through thickness heterogeneity, and lower short transverse fracture toughness are a few factors that make developing thick plate aluminum-lithium alloys very complicated. Furthermore, lithium lowers the thermal conductivity of aluminum which is problematic in several areas. Heat is more difficult to extract during direct-chill casting thereby exacerbating metallurgical segregation problems. Hot rolling can break down segregation, such as heterogeneous segregations at grain boundaries, so that it may be less harmful, although there is a practical limit on how thick aluminum alloy rolling ingot can be cast. The reduction ratio, i.e. scalped ingot thickness to final product gauge, is an important real-world processing variable when developing a thick plate aluminum lithium alloy. Ex. 2043 ¶ 11; see also PO Resp. 16–17 (discussing the “recognition in the art of complex differences between sheet and thick plate”). Patent Owner further notes that Dr. Pickens testified “that he would not have been motivated to add Mn in the claimed amount to an Al-Cu-Li-Mg-Ag alloy with a thickness of at least about 3 inches, or scale up a sheet alloy to the” slip op. at 11

  Patent outcomesUS 7,229,509 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,229,509
• 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

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.