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Weber, Inc. v. Provisur Technologis, Inc.

Docket No. 2022-1751, -1813 (IPR2020-01556, -01557 (


February 8, 2024

Brief Summary:  Board IPR decisions reversed and vacated for improper determination of public availability of instruction manuals and claim construction determinations.

Summary:   Weber appealed two IPR final written decisions (FWDs) finding that Provisur’s US 10,639,812 and 10,625,436 relating to “high-speed mechanical slicers used in food-processing plants to slice and package food articles, such as meats and cheeses” were shown to be unpatentable for obviousness.  The Board first concluded that “Weber’s operating manuals were not prior art printed publications” because
Continue Reading IPR decisions of no obviousness vacated and remanded for improper public accessibility and claim construction determinations

Google LLC, et al. v. EcoFactor, Inc.

Docket No. 2022-1750, -1767 (IPR2020-01504, -00792 (


February 7, 2024

Brief Summary:  Board implicitly construed claims; that construction was improper and led to a finding Google had not shown obviousness; decision vacated and remanded. Summary:   Google appealed from Board IPR final written decision (FWD) finding EcoFactor’s US 8,498,753 relating to thermostat-related systems and methods are not unpatentable.   Google’s IPR alleged obviousness in view of two US patents (Wedekind and Ehlers).  Representative claim 1 includes method steps 1a-1m, including 1m inputs [i]-[v] that are most relevant to this appeal. 
Continue Reading Board’s incorrect implicit claim construction, and finding of no obviousness, vacated and remanded

In Re:  GO & Associates, LLC

Docket No. 2022-1961 (IPR2020-01524  (


January 22, 2024

Brief Summary:  Board decision GO’s “EVERYBODY VS RACISM” proposed mark “fails to function as a source identifier” (“not solely because it contains informational matter”) affirmed.

Summary:   GO & Associates, LLC (GO) appealed against the United States Trademark Trial and Appeal Board’s decision, which supported the examining attorney’s refusal to register the mark “EVERYBODY VS RACISM.” This refusal was rooted in the assessment that the mark did not function as a source identifier for GO’s goods and services, such as clothing and
Continue Reading Board decision not to register “EVERYBODY VS RACISM” proposed mark affirmed

Apple, Inc. v. Masimo Corporation

Docket No. 2022-1891 (IPR2020-01524  ( (Non-Precedential)


January 12, 2024

Brief Summary:  Board IPR findings that Apple did not show Masimo’s pulse oximeter claims obvious affirmed. Summary:  Apple appealed USPTO Board holding that it did not show the challenged claims of Masimo’s US 8,457,703 obvious.  The ‘703 claims are directed to a method of managing the power consumption of a pulse oximeter by intermittently changing the duty cycle of the current supplied to the LEDs that light the patient’s tissues.  A prior art patent discloses a pulse oximeter including a “motion
Continue Reading Board IPR findings that Apple did not show Masimo’s pulse oximeter claims obvious affirmed

Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.

Docket No. 2022-1410, -1554 (IPR2020-01163, -01200  (


January 9, 2024

Brief Summary:  Board IPR claim construction of “single biomolecule” as one in the context of the disputed patent and prior art determinations affirmed.

Summary:  PacBio filed two IPR petitions regarding PGI’s US 7,767,441 directed to “an ‘apparatus for identifying a single biomolecule’ as well as methods of using or making that apparatus”.  In one IPR, the USPTO rejected PacBio’s challenge but agreed with PacBio in the other.  Both parties appealed, focused on “the Board’s construction
Continue Reading Board IPR construction of “single biomolecule” as one and prior art determinations affirmed

PureCircle USA Inc. et al. v. Sweegen, Inc. et al.

Docket No. 2022-1946 ( (Non-precedential)


January 2, 2024

Brief Summary:  DC finding of no WD of genus of enzymes used in method and claim to specific enzyme unpatentable under 101 as it is naturally occurring and specificity limitation is an abstract idea (e.g., “simply states a result”). Summary:  PureCircle appealed DC grant of summary judgment (SJ) to Sweegen, concluding the asserted claims of US 9,243,273 and 10,485,257 are invalid for lack of written description and/or unpatentable under 35 U.S.C. § 101.  The ‘273 and ‘257
Continue Reading DC finding of no WD of enzyme genus and unpatentability under 101 affirmed (naturally occurring, “50% complete” an abstract idea)

K-Fee System GmbH v. Nespresso USA, Inc.

Docket No. 2022-2042 (


December 26, 2023

Brief Summary:  DC claim construction and prosecution history estoppel based on European opposition proceeding reversed and remanded (e.g., “too confining”).

Summary:  K-fee appealed DC grant of summary judgment (SJ) that Nespresso’s coffee machine “products did not meet the ‘barcode’ claim limitations” of three patents “under the court’s construction and thus it did not infringe any asserted claims.”  Representative claim 1 of K-fee’s US 10,858,176 includes providing a method of making a coffee beverage using capsule including two barcodes.  The DC “noted
Continue Reading DC claim construction based on European prosecution history reversed and remanded as “too confining”

In Re:  Institut Pasteur

Docket No. 2022-1896 ( (Non-Precedential)


December 13, 2023

Brief Summary:  USPTO PTAB decision supporting examiner’s obviousness-type double patenting rejection affirmed.

Summary:  Pasteur appealed PTAB decision examiner’s obviousness-type double patenting rejection of its claims to a method for treating pain using peptides derived from Basic Proline-rich Lacrimal Protein having particular amino acid sequences (Gln-Arg-Phe-Ser-Arg (SEQ ID NO: 2) and Glp-Arg-Phe-Ser-Arg (SEQ ID NO: 55)) at a specified dose (“10-300 mg/day”).  The claims were rejected “on the ground of obviousness-type double patenting over “claims 1, 3, 5, 6, 8, 10, 11 and 14
Continue Reading PTAB/examiner obviousness-type double patenting decision of Pasteur’s peptide dosing claims affirmed

VLSI Technology LLC v. Intel Corporation

Docket No. 2022-1906 (


December 4, 2023

Brief Summary:  Literal infringement finding affirmed for one of VLSI’s patent, infringement under DOE reversed for the other, with its damages award; DC denial of Intel’s pre-trial motion to add a license defense reversed. Summary:  Intel appealed DC judgments of infringement of VLSI’s US 7,523,373 (literally) and 7,725,759 (under the doctrine of equivalents), and denial of its “pre-trial motion seeking to add a license defense to the case and to sever that defense from the rest of the case and stay its
Continue Reading Intel’s literal infringement affirmed; DOE infringement and damages reversed; denial of license defense reversed

Medtronic, Inc. et al. v. Teleflex Life Sciences Limited

Docket No. 2022-1721, -1722 (IPR2020-01343, -01344 (


November 16, 2023

Brief Summary:   Board finding of no obviousness affirmed based on pre-AIA constructive reduction to practice. Summary:  Medtronic appealed two final written decisions (FWDs) holding it had not shown Teleflex’s RE46,116 claiming a method “comprising: advancing a distal end of a guide catheter having a lumen through a main blood vessel to an ostium of a coronary artery” to be unpatentable.  The application leading to the ‘116 patent was filed on May 3, 2006 and Teleflex argued
Continue Reading Pre-AIA constructive reduction to practice rendered alleged prior art ineffective, Board IPR decision of no obviousness affirmed

Purdue Pharma L.P., et al. v. Collegium Pharmaceutical, Inc. (USPTO as Intervenor)

Docket No. 2022-1482 (


November 21, 2023

Brief Summary:   PTAB issuance of FWD after one-year deadline allowed; finding of insufficient written description affirmed.

Summary:  Purdue appealed PTAB final written decision (FWD) finding claims 1-17 of Purdue’s U.S. Pat. No. 9,693,961 relating to methods for preventing oxycodone abuse using gel formulations invalid for lack of written description and anticipation.  Purdue unsuccessfully argued the FWD was issued after the statutory one-year deadline for post grant reviews (PGR), “and that, if the Board did not lose
Continue Reading PTAB post-deadline issuance of FWD acceptable; finding of insufficient written description affirmed

Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC

Docket No. 2022-1706 (IPR2020-01438) (


November 7, 2023

Brief Summary:   Allegenesis IPR FWD appeal dismissed as it could not show Article III standing (not required to file IPR, but required to appeal IPR decision). Summary:  Allegenesis appealed USPTO/Board IPR final written decision (FWD) finding it failed to prove claims 4 and 5 of Cloudbreak’s US 10,149,820 directed to compositions and methods for treating pterygium (a cancer-related eye condition) using a multikinase inhibitor (e.g., nintedanib).  Allegensis was found not to have shown anticipation or obviousness of the disputed
Continue Reading Allegenesis appeal of IPR FWD dismissed as it lacked Article III standing (e.g., no Phase III trial plans)

Actelion Pharmaceuticals Ltd. V. Mylan Pharmaceuticals Inc.

Docket No. 2022-1889 (


November 6, 2023

Brief Summary:   DC decision vacated and remanded for consideration of extrinsic evidence.

Summary:  Mylan appealed the DC’s claim construction of the term “a pH of 13 or higher” in Actelion’s patents (family members but not identical US 8,318,802 and 8,598,227, the sole patents listed on the Orange Book for Veletri®) directed to epoprostenol formulations.  The patent specification explains that “[t]he inventor “unexpectedly found that epoprostenol solution in the presence of an alkalinizing agent, and high pH (>11) is very stable
Continue Reading DC claim construction vacated and remanded for consideration of extrinsic evidence to construe “a pH of 13”

Malvern Panalytical Inc. v. TA Instruments-Waters LLC

Docket No. 2022-1439 (


November 1, 2023

Brief Summary:   DC claim construction vacated and remanded as it incorrectly limited claim term based on ambiguous prosecution history of commonly owned by unrelated patent.

Summary: Malvern appealed DC claim construction order construing the term “pipette guiding mechanism” in the microcalorimeter (isothermal titration calorimeter (“ITC”)) of US 8,827,549 and US 8,449,175 (having the same specification) as a “mechanism that manually guides the pipette assembly” (emphasis added).  There is no language in the disputed claims restricting the term to only manual embodiments,
Continue Reading DC claim construction based on ambiguous prosecution history of commonly owned but unrelated patent vacated and remanded

ABS Global, Inc. et al. v. Cytonome/St, LLC

Docket No. 2022-1761 (IPR2021-00088) (


October 19, 2023

Brief Summary:   Board IPR decision reversed in part due to incorrect claim construction relating to whether the claim term “a” meant only one or “one or more”.

Summary:  ABS appealed USPTO IPR decision that it did not show any of the challenged claims of Cytonome/ST’s US 10,583,439 directed “a microfluidic device for use in processing particles of interest contained in a sample fluid.”  This opinion explains that “[t]he ’439 patent concerns the focusing of the flow of a sample
Continue Reading Board IPR finding of no anticipation or obviousness reversed due to incorrect construction relating the meaning of “a” (one or one or more)

Jodi A. Schwendimann, et al. v. Neenha, Inc. et al.

Docket No. 2022-1333-4, -1427, -1432 (IPR2020-00628-9, 00634, -00915) (


October 6, 2023

Brief Summary:   Board IPR obviousness decisions affirmed as supported by substantial evidence.

Summary:  Ms. Schwendimann appealed USPTO/Board IPR decisions finding certain claims of four different patents relating to the transfer of images onto dark-colored fabrics obvious in view of a combination of prior art asserted by Neenha (the Kronzer and Oez references).  The Appealed Claims all require a “white layer” (not the exact term).  This opinion explains that “there was a wellknown problem
Continue Reading Board IPR obviousness decision affirmed (e.g., not based on hindsight)