- PTAB · Dec 20, 2022 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Institution
The Board instituted post-grant review of the sole claim on the Petition’s grounds and granted Samsung’s motion to join PGR2022-00031.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS Before deciding joinder questions, the Board first determines whether the petition “warrants the institution of a post-grant review under section 324.” See 35 U.S.C. §§ 325(c), 324(a) (stating that the petition “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”); see also Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020) (interpreting joinder requirements in inter partes review under 35 U.S.C. §§ 314(a), 315(c)). When a second petition is a “me-too” or “copycat” petition, the institution analysis may include a General Plastic analysis. See Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) (designated as precedential on December 4, 2020) (“Uniloc”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Although the decision in Uniloc informs that a petitioner’s failure to adequately address these factors may weigh in favor of discretionary denial, this case is distinguishable because Petitioner has not previously filed a petition challenging the validity of the ’702 patent claim. See, e.g., Uniloc, Paper 9 at 11. The Petition is substantively the same as the petition in PGR 031 and includes notice of Petitioner’s intention to file the joinder motion. See Pet. 1; Mot. 1–2. This factor is neutral given Petitioner’s willingness “to proceed solely on the grounds, evidence, and arguments advanced, or that will be advanced, in” PGR 031. Mot. 1– 2.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder must be filed “no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner timely filed the Motion for Joinder on October 28, 2022, within one month of the Decision of Institution in PGR 031. See Mot. 14; PGR 031, Paper 22. The Petition indicates Petitioner’s intent to file the Motion for Joinder. See Pet. 1. The Petition is substantively identical to the petition in PGR 031 and, accordingly, presents no new grounds. Mot. 6–8. Because Petitioner seeks only to join the first proceeding as a party, and makes no arguments in its Petition that differ from those already being addressed in PGR 031, we grant the Motion for Joinder. In so doing, we take account of Petitioner’s assertions that joinder will not impact the trial schedule because there are no new grounds and, furthermore, Petitioner “consents to any trial schedule adopted in” PGR 031. Mot. 7–8. The Board agrees that joinder should not impact the trial schedule.” slip op. at 11
Discretionary denial - Viken Detection Corporation v. American Science And Engineering, Inc.Institution deniedPTAB · Dec 16, 2022 · PGR2022-00047 · APJ Carl M Defranco · PGR · Institution
The Board denied institution because Viken did not show that any of claims 1–22 was more likely than not unpatentable for lack of written description or enablement.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“We apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13; see also 37 C.F.R. § 42.200(b). Viken asserts that “the only terms that need construction are ‘a first X-ray source,’ ‘a second X-ray source,’ and ‘a third X-ray source’ of claim 1.” Pet. 20. According to Viken, the “X-ray sources of claim 1 should be construed to be ‘a first backscatter X-ray source,’ ‘a second backscatter X-ray source,’ and ‘a third backscatter X-ray source,’ respectively,” because one skilled in the art “would understand these sources to be backscatter sources in view of the intrinsic evidence (claims and specification).” Id. at 21 (citing Ex. 1012 ¶ 95). In particular, Viken asserts “[t]he only sources paired with backscatter detectors in the ’783 patent are backscatter sources.” Id. at 22 (citing Ex. 1012 ¶¶ 88, 95). We disagree, as discussed below in connection with Viken’s first ground.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Viken asserts that a person having ordinary skill in the art would be “a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors.” Pet. 9 (citing Ex. 1012 ¶ 20). At this stage, ASE does not contest that formulation of the level of skill in the art. Nor do we discern any reason to question Viken’s formulation, as it appears consistent with the level of skill reflected in the ’783 patent and the prior art of record. We, therefore, apply Viken’s formulation for purposes of determining whether to institute.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Viken is mistaken on both counts. First, we disagree with Viken’s assertion that the claims are limited to a backscatter-only imaging system. Nor do we agree with Viken’s assertion that the Specification is limited to describing only a combined transmission/backscatter imaging system. We address each of these assertions in turn.” slip op. at 9
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable
“G. Ground 5 – Enablement of System that is not a Combination Viken asserts that “claims 1–22 of the ’783 patent are invalid for failing to comply with the enablement requirement of 35 U.S.C. § 112(a) because the specification does not enable a two-plane backscatter-only system.” Pet. 41. Viken’s non-enablement assertions fail for the simple reason that they are premised on the same improper assumptions discussed above with respect to Viken’s assertions that claim 1 is limited to a backscatter-only imaging system. As discussed above in section II.C., the claims of the ’783 patent are not so limited. Also, as discussed above in section II.D, the Specification of ’783 patent provides adequate written description support for an X-ray imaging system that includes two planes. Given the high level of skill in the art based on Viken’s formulation—“a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors” (Pet. 9 )— and given Viken’s improper reading of limitations into the claims in alleging lack of enablement, we are not persuaded that one skilled in the art would be unable to make or use the invention as claimed.” slip op. at 20
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,143,783 - Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentablePTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision
Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptMixed
“As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39
Patent outcomesUS 10,891,614 mixedClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · NautilusPatents in suitUS 10,891,614 - Netskope, Inc. v. Bitglass, Inc.All claims unpatentablePTAB · Dec 9, 2022 · PGR2021-00091 · APJ James J Mayberry · PGR · Final written decision
Claims 1, 2, 4–10, and 12–16 are unpatentable; the Board found the asserted obviousness and written-description grounds persuasive, but did not reach specified grounds.
RulingsFinal written decision- Skill levelOther
“unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding, Petitioner must support its challenge by a preponderance of the evidence. 35 U.S.C. § 326(e) (2011); 37 C.F.R. § 42.1(d) (2022). Accordingly, all of our findings and conclusions are based on a preponderance of the evidence standard.” slip op. at 15
- Strike new argumentNew argument consideredNew argument disregardedOther
“considering these arguments, we conclude that the arguments do not demonstrate a deficiency in Petitioner’s position. As to the third alleged new argument, we do not reach any of the Cronk-Woelfel grounds. Accordingly, we dismiss Petitioner’s motion as moot. B.” slip op. at 91
- ExcludeOther
“Owner’s “counter” Motion to Strike is dismissed as unauthorized. Finally, Petitioner’s Motion to Exclude Evidence is dismissed as moot.” slip op. at 93
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“1[a][iii], and 1[b][ii] are not disclosed in the ’989 application for the embodiment of Figure 11. Instead, as Patent Owner argues, these limitations are described with respect to the embodiment of Figure 3b. Accordingly, Patent Owner’s assertions require that a person of ordinary skill in the art would have understood that the inventors contemplated combining steps from the two embodiments of Figure 3b and 11. For the reasons discussed below, and as Petitioner asserts, the evidence does not support a person of ordinary skill would find that disclosure.” slip op. at 29
Patent outcomesUS 10,855,671 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 10,855,671 - Vmware, Inc. v. Cirba Inc.All claims unpatentablePTAB · Dec 7, 2022 · PGR2021-00098 · APJ Russell E Cass · PGR · Final written decision
Claims 1–63 are unpatentable under § 112(a) because the patent lacks written-description support for the claimed “already placed” and “issue instructions” limitations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pet. 20–54. With its Petition, Petitioner submitted the Declaration of Dr. Erik Zadok. Ex. 1006. Patent Owner elected to waive its Preliminary Response. Paper 11. We instituted trial on all grounds of unpatentability. (Paper 12 (“Inst. Dec.”)).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“term “placing” requires more than a theoretical placing or planning to place as part of an analytical solution. Turning first to the claim language, we agree with Petitioner that the language of the independent claims is consistent with “placement” occurring after and separately from the analytical evaluation process. See Pet. Reply 3. For example, claim 1 is directed to a system for “determining placement of source computer systems on target systems,” the system configured to “determine a placement” by employing operations to “evaluate compatibility.” Ex. 1001, 40:2–4, 40:8– 36. The second “evaluate compatibility” operation is “to determine if the specific source system can be placed with those other source systems on the specific target system,” which suggests that what is being evaluated is whether the source system can be actually placed (e.g., moved or transferred) to the target system. Id. at 40:18–27 (emphasis added). Similarly, the third “evaluate compatibility” operation involves “evaluating the impact on resource utilization of the specific target system of placing the specific source system on the specific target system,” which suggests that what is being evaluated is the impact on resource utilization once the source system is actually moved or transferred to the target. Id. at 40:28–32 (emphasis added). Additionally, the claim states that, based on the “evaluate” operations, the claimed system “determine[s]” a placement, not that it executes the placement. Id. at 40:8–11. The actual placement seemingly occurs after the final claimed operation of “issu[ing] instructions to place” the source system(s) on to the target system “in accordance with the determined placement.” Id. at 40:37–39. Independent claims 32 and 63 include similar language. Id. at 42:36–43:3, 45:1–46:19. Had the patent applicant wanted to cover systems that were merely “hypothetically placed,” language to that effect could have been added to the claim.” slip op. at 19
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“As noted above, the claim language requires evaluating compatibility between a specific source system and one or more other source systems “already placed” on the target system. Paragraph 82 does not disclose the evaluation of compatibility of a source system and another source system as part of the “forward consolidation.” Additionally, paragraph 82 does not disclose that “existing target systems 16” have source systems “already placed” on them. Thus, paragraph 82 does not provide the level of detail recited in the limitation under either party’s definition of “placed.” In addition, as noted above, we have interpreted “placed” to require an actual placement rather than merely “planning to place” or a theoretical placement. See § II.A.2, supra. Therefore, even if the “existing target system 16” had theoretical or hypothetical systems added to it as part of the consolidation analysis, those would not be systems that are “already placed” on the target system.” slip op. at 34
Patent outcomesUS 10,951,459 unpatentableClaim construction§ 112 disclosurePatents in suitUS 10,951,459 - Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution deniedPTAB · Dec 6, 2022 · PGR2022-00035 · APJ Ken B Barrett · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–17 was unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that, if unrebutted, it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’580 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have a Bachelor of Science in Electrical Engineering, Computer Science, or another degree related to electromechanical systems, as well as at least 3 years of academic or industry experience in electronic payment systems.” Pet. 25–26 (citing Ex. 1003 ¶ 22). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that, “[u]nless otherwise noted, Petitioners submit that the claim terms should be given their plain and ordinary meaning since the claim terminology appears to be the same as that used in the [Multi-Drop Bus] protocol.” Pet. 28. Patent Owner does not propose any constructions, asserting that “the Board need not reach any claim constructions in order to deny this petition.” Prelim. Resp. 12. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“in Anderson of a mobile device making, or the receipt from a mobile device of, a request to access peripheral device-generated signals. See Prelim. Resp. 17–24; see, e.g., id. at 17 (“Petitioners point to no evidence that any external device in Anderson ever requests access to the signals generated by the peripheral.”). We find this argument persuasive. Petitioner, in the section for “receiving” limitation 1.5(f), cites paragraph 44 of Anderson several times. See Pet. 36–39. That paragraph concludes with the statement: The IC 125 may also include a modem (not shown) to display content on external devices such as cellular phones via cellular network or any other network know[n] in the art. Thus, in one implementation, a user may receive nutritional information or balance information on his cell phone. Ex. 1005 ¶ 44. That is a disclosure of data flowing to the cell phone in the form of content to display, and it is ambiguous as to what component could be said to have requested that data flow. Limitation 1.5(f) recites data flow in the opposite direction, from the mobile device, and pertains to a specific message—“a request to access signals generated by the first peripheral device.” Ex. 1001, 53:22–24. Petitioner does not explain adequately how the disclosure in Anderson’s paragraph 44 could support a finding that there was received, from the cell phone, a request to access signals generated by a peripheral device. See, e.g., Pet. 36–37 (quoting Anderson’s paragraph 44).” slip op. at 13
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · NautilusPatents in suitUS 11,074,580 - Neuroderm Ltd. v. Abbvie Inc.InstitutedPTAB · Nov 14, 2022 · PGR2022-00040 · APJ Cynthia M Hardman · PGR · Institution
The Board instituted PGR on claims 1–17 based on all asserted grounds, finding the petition showed they more likely than not lacked written description support and enablement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons explained below, we find that Petitioner has met the threshold showing for post-grant review of claims 1–17 with respect to the first challenge (written description support for the claimed genus). On that basis, we institute post-grant review of all challenged claims. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018); 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims . . . .”). We address this challenge first, then provide the parties guidance on Petitioner’s second written description challenge (support for carbidopa itself).” slip op. at 19
- Skill levelSkill level board ownOther
“Ex. 1006, 1 (citations omitted). Accordingly, when considering the ’507 patent’s purpose, the type of problems encountered in the art, and prior art solutions to those problems, it is clear that with respect to levodopa/carbidopa treatments for Parkinson’s Disease, the pharmaceutical formulation and its resulting pharmacokinetics and patient experience are intertwined, thus supporting a requirement that a person of ordinary skill in the art have knowledge or experience in each of these areas. See, e.g., Indivior Inc. v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1345 (Fed. Cir. 2019) (finding no clear error in district court’s compromise measure of level of ordinary skill in the art as a team comprising different skill sets). In view of the above considerations, we preliminarily find that a person of ordinary skill in the art would be a member of a team that includes person(s) with (a) a Ph.D. in a field related to the development of pharmaceuticals (for example, pharmacology, pharmacokinetics, pharmaceutics, pharmaceutical chemistry, organic chemistry, biochemistry, molecular biology, medicinal chemistry, formulation development, or a related field), or equivalent degree, and 2–4 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, or a B.S. or M.S. degree in a field related to the development of pharmaceuticals, or equivalent degree, and 4–6 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, and (b) a medical degree or equivalent degree with experience in treating patients with Parkinson’s disease. In subsequent briefing, should the parties propose any differences from the team approach articulated above, they should support their proposal and address the impact, if any, of the differences on the pertinent disputes in this proceeding. Any final determination on the level of ordinary skill in the art will be made on the full trial record.” slip op. at 15
- Expert testimonyPetitioner expert creditedOther
“Additionally, based on their statements of qualifications and curricula vitae, for purposes of this Decision we find Drs. LeWitt and Sloan qualified to provide technical opinions from the perspective of a person of ordinary skill in the art. Ex. 1003 ¶¶ 1–10, pp. 87–119 (Dr. LeWitt’s statement of qualifications and curriculum vitae); Ex. 1004 ¶¶ 1–11, pp. 45–71 (Dr. Sloan’s statement of qualifications).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with the parties that the express definition provided during prosecution should be adopted. See, e.g., Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341, 1346–47 (Fed. Cir. 2001) (construing claims in accordance with definition provided in declarations submitted during prosecution). Accordingly, we preliminarily construe the term “a compound comprising levodopa” in accordance with the full definition Dr. Okun provided during prosecution, i.e., “any molecule with a levodopa core moiety including levodopa itself, as well as prodrugs, salts, and hydrates of levodopa.”” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,091,507 - Moleculight, Inc. v. Swift Medical Inc.InstitutedPTAB · Nov 9, 2022 · PGR2022-00041 · APJ Brian D Range · PGR · Institution
The Board instituted PGR of claims 1–20 on all petition grounds, finding it more likely than not that at least one claim is unpatentable under § 102 or § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenges the patentability of claims 1–20 of the ’345 patent under 35 U.S.C. §§ 102 and 103. Patent Owner did not file a preliminary response. We have jurisdiction under 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention would “have had at least a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems.” Pet. 14 (citing Ex. 1004 ¶ 48). Petitioner further asserts that “[a]dditional relevant work experience could substitute for a bachelor’s degree, and additional education or training could substitute for relevant work experience.” Id. We find Petitioner’s proposed definition is consistent with the cited prior art and the disclosure of the ’345 patent. Thus, for purposes of this decision, we determine that a person of ordinary skill in the art as of the date of the invention would have had a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, Petitioner “submits that no explicit construction is necessary when applying the prior art presented,” but notes “the Board may wish to construe ‘a central aperture of the illumination unit’ in claim 5[, construe] ‘proper distance’ in claim 13, and [consider] application of 35 U.S.C. § 112(f) in view of the prosecution history of the ‘345 patent.” Pet. 10. Petitioner also addresses “a central aperture of the illumination unit” as claim 5 recites and “proper distance” as claim 13 recites. Id. at 10–11. Petitioner also addresses the possibility of various terms invoking 35 U.S.C. § 112(f). Id. at 11–13. For purposes of this decision, we determine that claim construction is unnecessary for institution of this post grant review. As we explain herein, Petitioner adequately establishes that it is more likely than not that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable under §§ 102 or 103. This is true whether based on plain and ordinary meaning or based on the various alternatives Petitioner presents when addressing claim construction. Pet. 9–14” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“C. Relevant Law To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,266,345 - Sandoz Inc. v. Boehringer Ingelheim International GmbHInstitution deniedPTAB · Nov 7, 2022 · PGR2022-00037 · APJ Devon Zastrow Newman · PGR · Institution
The Board denied institution because Petitioner did not show that the patent was eligible for post-grant review; the challenged claims were entitled to the pre-AIA priority date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that Petitioner has not identified any challenged claim that has an effective filing date on or after March 16, 2013. For this reason, we find that Petitioner has not shown sufficiently that the ’265 patent is eligible for post-grant review. IV. CONCLUSION After considering the evidence and arguments presently before us, we determine Petitioner has not shown that the ’265 patent is eligible for post-grant review. Accordingly, we do not institute a post-grant review. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(d), the Petition is denied.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“To interpret “stable,” we begin with how the term is used in independent claims 7 and 19. Both terms recite “stable” in relation to the pharmaceutical formulation as a whole by reciting “wherein the formulation is stable.” Ex. 1001, 189:62–190:27. From this, we conclude that the ordinary artisan, as defined above to have a relevant advanced degree and at least two years of experience in development or manufacture of therapeutic protein formulations, would have understood that the components of a “stable” formulation would maintain their integrity and desired function following preparation, including when stored as described. This meaning is supported by the following language in the specification pertaining to the disclosed pharmaceutical compositions: Pharmaceutical compositions according to the present invention are described in further details hereinbelow. In one aspect, the pharmaceutical compositions disclosed herein are physico-chemically stable and maintain the integrity of an antibody comprised in said pharmaceutical composition, for example when stored for 8 weeks at 40° C. as shown hereinbelow. Ex. 1001, 84:20–26. We also note, as Petitioner argued, that the prosecution history supports that the formulation components needed to remain functional during storage, and that Patent Owner cited to formulation integrity after a storage period of 8 weeks at 40° C as evidence of such integrity. Ex. 1004, 7380. As disclosed in the ’265 patent, Examples 9 and 12 measure function and identity of the components following storage to confirm formulation stability.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“burden of showing that claim 7 or 14 lacks written description support in the priority application, which Petitioner has conceded provides the same support as the ’265 patent specification. In this regard, we agree that the reasoning in Fresenius likewise applies: there is no legal requirement that a patent specification must include test results or working examples demonstrating stability for every possible composition that is covered by the claims. Fresenius at 13, citing Ariad Pharms., 598 F.3d at 1352 (stating that “the written description requirement does not demand either examples or an actual reduction to practice”). Formulations 2 and 3, disclosed in the ’265 patent specification, which Petitioner acknowledges falls within the scope of claims 7 and 14 (Pet. 26–27 (citing Ex. 1002 ¶¶ 134, 135)), were shown to be stable for 8 weeks in a syringe. Moreover, the ordinary artisan was provided with guidance in making such formulations from the teachings of the specification and has additional knowledge from the art. See Ex. 1001, 85:32–94:35. Claims 7 and 14 identify specific structures (risankizumab) and required excipients within a defined pH range, which are stable as confirmed by testing results presented in the specification. Prelim. Resp. 33; Ex. 1001, 94:14–36. On this record, we conclude that the evidence presented does not establish that it is more likely than not that an ordinarily skilled artisan would not have reasonably believed that the inventors of the ’265 patent possessed the claimed subject matter, each limitation of which is demonstrated as supported in the specification. As we have interpreted the claim term “wherein the formulation is stable” to mean “wherein the formulation maintains the functional integrity of the antibody and other components, for example when stored for 8 weeks at 40° C,” the specification supports maintenance of functional integrity as shown by the stability of Formulations 2 and 3, including when stored for a period of time. For this reason, we find that Petitioner has not shown that the ordinary artisan would not have understood the inventors of the ’265 patent possessed the subject matter of claims 7 and 14 as of the filing date of the priority application.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“We acknowledge that in the Fresenius case, the extensive testing disclosed in that specification supported the ordinary artisan’s ability to formulate stable compounds using such guidance, and that the specification here discloses less testing. See, e.g., Sur-Reply. 8–9. Nevertheless, it is Petitioner’s burden on this issue, and we are not persuaded that the concerns raised by Dr. Klibanov provide sufficient evidence of actual instability to justify institution on this record. See, e.g., Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir. 1984) (finding lack of evidence that district court erred in upholding claims as enabled where defendant did not identify inoperable embodiments despite extensive testing). In particular, we are persuaded that, on this record, Petitioner’s lack of evidence of instability of any formulation falling within the limitations of claim 14 indicates that Petitioner has not established sufficiently, for purposes of trial institution, that it is more likely than not that an ordinarily skilled artisan would not have been able to practice the full scope of claim 14 invention based on the teachings of the specification.” slip op. at 28
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,078,265 - Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationAll claims unpatentablePTAB · Nov 1, 2022 · PGR2021-00079 · APJ Jason W Melvin · PGR · Final written decision
Claims 1–14 are unpatentable under § 112(a) because the specification does not describe a floor plan that distinguishes carpeted from noncarpeted areas.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have at least a bachelor’s degree in mechanical engineering or electrical engineering or a closely related field and at least one year of experience in the design and implementation of robotics and embedded systems.” Pet. 11 (citing Ex. 1003 ¶ 18). Patent Owner does not dispute this definition. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language establishes two distinct (and mutually exclusive) types of areas: “areas with carpeting” and “areas that do not have carpeting.” Ex. 1001, 19:17–:18, 20:12–:13. Those areas, as defined, provide the antecedent basis for the later claim language requiring the areas be “identifi[ed]” in the displayed floor plan (“an identification of the areas with carpeting and the areas that do not have carpeting”). We conclude that identifying—ascertaining the identity of—two distinct types of areas requires an indication to distinguish one type of area from the other. That conclusion flows from the claim language that establishes two types of areas and then refers back to those types when requiring a floor plan that includes identification of them. Indeed, the claim as a whole depends on a distinction between the two types of areas. After establishing that the map used for navigation indicates the two types of areas, the claim requires that the robot sense its location relative to the areas and adjust its cleaning behavior based on that location. Id. at 19:16–:25, 20:11–:19. Patent Owner’s proposed construction—that “identification of the areas with carpeting and the areas that do not have carpeting” does not require distinguishing between the two types of areas—would contravene the claim’s consistent approach to the areas.3” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Under the construction adopted above, we conclude the specification lacks written-description support for a “displayed floor plan comprising an identification of the areas with carpeting and the areas that do not have carpeting.” As discussed, our construction requires that the floor plan itself allow users to distinguish between areas with carpeting and areas that do not have carpeting. Neither Figure 22 nor any textual description supports that capability, and Patent Owner does not argue otherwise. See PO Resp. 18–23.” slip op. at 13
Patent outcomesUS 10,990,110 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 10,990,110
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.