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  • Intellectual Ventures LLC v. Semantic Corporation and Veritas Technologies LLC (D. Del. 2017)

    Patent Directed to System for Remote Mirroring of Digital Data Found Invalid under Section 101

    By Joseph Herndon —

    District Court for the District of DelawareIntellectual Ventures brought a patent-infringement suit against Symantec Corpo. and Veritas Technologies asserting that Symantec's VVR product infringes claims 25 and 33 of U.S. Patent No. 5,537,533.  Among other motions decided here, the District Court granted Symantec's motion for summary judgment of patent ineligibility.

    Patent-Eligible Subject Matter

    The Court followed the two-step framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.  First, courts must determine if the claims at issue are directed to a patent-ineligible concept — in this case, an abstract idea.  If so, the next step is to look for an inventive concept — i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

    Turning to the patent-at-issue, the '533 patent describes and claims a system for remote mirroring of digital data from a primary server to a remote server.

    Independent claim 25 reads:

    25.  A method for remote mirroring of digital data, said method comprising the steps of:
        copying the data from a primary network server to a nonvolatile data buffer in a data transfer unit which is digitally connected to the primary network server, the primary network server including an operating system which is capable of accessing a nonvolatile server store, the data copied to the data transfer unit being a substantially concurrent copy of data which is being stored by the operating system in the nonvolatile server store of the primary network server;
        copying the data from the data transfer unit to an input end of a communication link which has an output end physically separated from its input end;
        generating and sending a spoof packet to the operating system of the primary network server; and
        copying the data from the output end of the communication link to a nonvolatile server store on a remote network server.

    Claim 33, which depends from claim 25, adds:  compressing the data prior to said step of copying the data from the data transfer unit to the input end of the communication link; and decompressing the data after said step of copying the data from the output end of the communication link.

    Step One

    The abstract idea step of the inquiry calls upon the Court to look at the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter.

    IV argued that the claims are not directed to an abstract idea but are instead a precise, innovative, and technical solution to the problem of protecting critical data during power interruptions or system reboots, and that solution, according to IV, involves the use of nonvolative data stores and the transmission of spoof packets to ensure that data copying can be continued in the event of interruptions in power or other events threatening data integrity.

    Symantec countered that the claims are directed to the basic abstract idea of storing an up-to-date backup copy of data at a remote location, and that this is the sort of thing that humans have done for centuries, even before computers.

    The Court, considering the claims as a whole, agreed with Symantec that the focus of the claims is the abstract idea of backing up data.  The claims recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received.  It is undisputed that institutions have long backed up data in general, and the specification even describes long-practiced methods of backing up digital data.

    However, the specification identifies several disadvantages of the prior art back-up methods.  But the claims do not provide any concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data.  The claims simply rely on functional language to describe copying and confirmation steps.  Additionally, the claims use existing computer functionality as a tool to better back up data and do not themselves purport to improve anything about the computer or network itself.  As a result, the Court found that, unlike Enfish and McRO, the claims do not improve the way computers store information or otherwise function.  Rather, the claims rely on the ordinary storage and transmission capabilities of computers within a network and apply that ordinary functionality in the particular context of remote mirroring.

    Step Two

    At step two, courts must look to both the claim as a whole and the individual claim elements to determine whether the claims contain an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.  The step two inquiry includes consideration of whether claim elements simply recite well-understood, routine, conventional activities.

    The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.  Even when the limitations of the claims, taken individually, recite generic computer, network and Internet components, none of which is inventive by itself, if that ordered combination of these limitations is new, they may be patent-eligible under step two.

    Turning to step two, the Court again agreed with Symantec that the claims lack anything sufficient to transform the abstract idea into patent-eligible subject matter.  The claims invoke conventional computer components that do not supply an inventive concept, and IV does not seriously contend otherwise.

    IV contended that when considered as an ordered combination, the claims provide specific, claimed limitations of using a nonvolatile data store and sending the spoof packet prior to undertaking a data write that transform any alleged abstract idea into a particular, practical application of that abstract idea.

    But IV did not describe how these components function in combination in an arguably inventive way or what it may be about this arrangement of components that engenders the alleged improvement, and the claims provide little guidance.

    At most, the '533 patent identifies a problem in the prior art:  available methods for backing up digital data were insufficiently reliable for mission-critical data, because the copies were not substantially current.  But the patent's claimed solution merely restates the problem to provide a method for remote mirroring of digital data, in which the data copied is a substantially concurrent copy.

    Such an attempt to claim the abstract idea of a solution to the problem in general, as opposed to a particular solution, confirms the patent ineligibility of these claims.

    As a result, the Court granted Symantec's motion for summary judgment of patent ineligibility.

    Memorandum Opinion by District Judge Stark

  • Conference & CLE Calendar

    CalendarMarch 14, 2017 – "Post-Grant Review at the PTAB: What Petitioners and Patent Owners are Doing and What Lies Ahead?" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    March 14, 2017 – "Divided Infringement: Development of the Law Since Akamai En Banc" (Intellectual Property Owners Association) – 2:00 to 3:00 pm (ET)

    March 14, 2017 – "Training for the Examination of High Quality Patents" (U.S. Patent and Trademark Office) – 12:00 to 1:00 pm (ET)

    March 14, 2017 – "An Alchemist's Approach to Patent Prep and Prosecution" (LexisNexis) – 2:00 pm (EST)

    March 15, 2017 - Intellectual Property Law Symposium (Federal Circuit Bar Association and Intellectual Property Law Association of Chicago) – Chicago, Illinois.

    March 16, 2017 - Biotechnology/Chemical/Pharmaceutical (BCP) customer partnership meeting (U.S. Patent and Trademark Office) – Alexandria, VA

    March 16, 2017 - "Divided Infringement in the Life Sciences: Patent Prosecution Perspective" (Intellectual Property Owners Association) – 2:00 to 3:00 pm (ET)

    March 16, 2017 – "Advice of Counsel Defense in Patent Litigation: Protecting Attorney-Client Privilege — Limiting Scope of Discovery, Safeguarding Confidential Communications and Information" (Strafford) – 1:00 to 2:30 pm (EDT)

    March 16, 2017 – "Determining Inventorship for University IP" (Technology Transfer Tactics) – 1:00 to 2:00 pm (Eastern)

    March 21, 2017 – "USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution" (Strafford) – 1:00 to 2:30 pm (EDT)

    ***Patent Docs is a media partner of this conference or CLE

  • IPO Webinars on Divided Infringement

    IPO #2The Intellectual Property Owners Association (IPO) will offer two one-hour webinars on March 14 and 16, 2017.  In the first webinar, entitled "Divided Infringement: Development of the Law Since Akamai En Banc," which will be held on March 14, 2017 from 2:00 to 3:00 pm (ET), John Carlin of Fitzpatrick, Cella, Harper & Scinto, Michael Joffre of Sterne, Kessler, Goldstein & Fox PLLC, and Frank Nuzzi of Siemens Corp. will describe and analyze how courts are applying Akamai v. Limelight.  In the second webinar, entitled "Divided Infringement in the Life Sciences: Patent Prosecution Perspective," which will be held on March 16, 2017 from 2:00 to 3:00 pm (ET), Courtenay Brinckerhoff of Foley & Lardner LLP, Darrell Fontenot of Alexion Pharmaceuticals, and Michael Fuller of Knobbe, Martens, Olson & Bear LLP will look at claim drafting strategies after Eli Lilly v. Teva Parenteral in such fields as personalized medicine and companion diagnostics, measuring the efficacy of treatment through biomarkers, and methods involving pretreatment.

    The registration fee for each webinar is $135 (government and academic rates are available upon request).  Those interested in registering for either webinar can do so here.

  • USPTO Patent Quality Chat Webinar Series

    USPTO SealThe U.S. Patent and Trademark Office will be offering the next webinar in its Patent Quality Chat webinar series from 12:00 to 1:00 pm (ET) on March 14, 2017.  The latest webinar, which will focus on "Training for the Examination of High Quality Patents," will be hosted by Gary Welch, Academy Class Manager, Office of Patent Training, and Bao-Thuy Nguyen, Patent Training Advisory, Office of Patent Training.  The presenters will present details about how we train new patent examiners and managers, refresh seasoned patent examiners and managers, and inform practitioners.

    Instructions for viewing the webinar can be found here.

    Additional information regarding the Patent Quality Chat webinar series can be found on the USPTO's Patent Quality Chat webpage.

  • Webinar on USPTO Examiner Interview Strategies

    Strafford #1Strafford will be offering a webinar/teleconference entitled "USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution" on March 21, 2017 from 1:00 to 2:30 pm (EDT).  Adriana L. Burgy of Finnegan Henderson Farabow Garrett & Dunner, Kenneth E. Horton of Kirton McConkie, and Marvin Petry of Stites & Harbison will provide guidance to patent counsel on leveraging interviews with the USPTO patent examiners to prosecute patents more efficiently, and insight into conducting the interviews and offer strategies for interacting with patent examiners.  The webinar will review the following issues:

    • What should be included in an interview agenda and what should be avoided?
    • How can patent counsel use an examiner interview to the client’s advantage?
    • How and when should patent counsel interact with examiners for effective and efficient prosecution?

    The registration fee for the webinar is $297.  Those interested in registering for the webinar, can do so here.

  • Webinar on Determining Inventorship for University IP

    Technology Transfer Tactics will be offering a webinar on "Determining Inventorship for University IP" on March 16, 2017 from 1:00 to 2:00 pm (Eastern).  Sherry L. Murphy of Myers Bigel, PA will help attendees fully understand the parameters of each type of inventorship and avoid the damaging consequences of inventorship disputes.  The webinar will cover the following topics:

    • Why Inventorship is important
        – Legal requirements
        – Potential consequences of errors
    • Overview of Inventorship legal standards
    • Changes regarding Inventorship under the America Invents Act
    • Inventorship evaluation tips
        – Questions to ask contributors
        – When to obtain more in-depth legal advice
    • Special considerations involving:
        – Inter-Institution collaboration
        – Industry Sponsorship
        – Students

    The registration fee for the webinar is $197.  Those interested in registering for the webinar, can do so here.

    Technology Transfer Tactics

  • Webinar on Patent Prep and Prosecution

    LexisNexisLexisNexis will be offering a webinar/teleconference entitled "An Alchemist's Approach to Patent Prep and Prosecution" on March 14, 2017 at 2:00 pm (EST).  Megan McLoughlin and David Stitzel of LexisNexis® IP. Will provide insider secrets and tips that will help attendees cost-effectively draft and prosecute for the best possible outcomes.  The webinar will explore and outline:

    • Surprising patterns in patent examiner behavior
    • Common pitfalls in U.S. patent prosecution
    • Cost-effective ways to save time and money
    • Patent quality – common or not?
    • How to efficiently perfect the draft
    • Wisdom for patent analytics

    Those interested in registering for the webinar, can do so here.

  • Thales Visionix Inc. v. U.S. (Fed. Cir. 2017)

    Federal Circuit Finds Motion Tracking System to be Patent-Eligible

    By Michael Borella —

    Federal Circuit SealAfter the dark days of 2014 and 2015, in which exactly one Federal Circuit decision out of over twenty 35 U.S.C. § 101 challenges was found to meet the requirements of that part of the statute, we have seen clouds disperse to some extent.  Last year, five out of twenty-one § 101 cases for which the Federal Circuit provided a full opinion resulted in the claims therein being deemed patent-eligible.  And in 2017, we are off to a quick start so far, with this case being the second in which the Court has made such a determination.

    The dispute here is over U.S. Patent No. 6,474,159, the independent claims of which recite:

    1.  A system for tracking the motion of an object relative to a moving reference frame, comprising:
        a first inertial sensor mounted on the tracked object;
        a second inertial sensor mounted on the moving reference frame; and
        an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

    22.  A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

    In the words of the Court, the '159 patent is directed to "an inertial tracking system for tracking the motion of an object relative to a moving reference frame."  The reference frame is typically a starting point of the object's motion, and the inertial sensors (e.g., accelerometers and gyroscopes) allow tracking of the object in three-dimensional space with respect to that starting point.  These systems, however, are subject to drift, in which small measurement errors accumulate into larger errors in estimates of the object's position.  To accommodate, the systems periodically take measurements, by way of a secondary position-determining mechanism, that effectively resets the reference frame to the object's current position.

    The claimed invention was motivated by the observation that inertial tracking of the position of an object on a moving platform (e.g., an aircraft) is inherently inaccurate in current systems where the secondary position-determining mechanism measures the object's position relative to the platform.  Both the object's and the platform's inertial sensors track their respective motion relative to the reference frame of the earth, which leads to inaccuracies during error correction.

    Unlike previous systems, the invention specifies that the "platform . . . inertial sensors directly measure the gravitational field in the platform frame," while the "object . . . inertial sensors then calculate position information relative to the frame of the moving platform."  This allows one to determine the position of the object with respect to the platform, and does not require determining the position of the platform as it moves about.

    Thales brought an action against the U.S. government and a government subcontractor in the U.S. Court of Federal Claims, contending that the helmet mounted display system in the F-35 Joint Strike Fighter infringes numerous claims of the '159 patent.  The Claims Court found these claims ineligible for patenting under § 101, because they "(1) are directed to the abstract idea of using laws of nature governing motion to track two objects, and (2) provide no inventive concept beyond the abstract idea."  Thales appealed.

    The Federal Circuit began its substantive analysis with an overview of patentable subject matter law.  In a nutshell, the Supreme Court's Alice Corp. Pty. Ltd. v. CLS Bank Int'l case set forth a two-part test to determine whether claims are directed to patent-eligible subject matter.  One must first determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further determine whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But generic computer implementation of an otherwise abstract process does not qualify as "significantly more."  On the other hand, a claimed improvement to a computer or technological process is not abstract.

    The Court leaned heavily on Diamond v. Diehr as controlling precedent.  In that case, the Supreme Court found claims to meet the requirements of § 101 despite inclusion of an abstract idea — a mathematical formula.  But the claimed invention in that case was eligible because it "described a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured—a result heretofore unknown in the art."  Thus, the claims were directed to an improved technological process rather than just abstract math.

    The Court found the clams of the '159 patent "nearly indistinguishable" from those of Diehr for purposes of the § 101 inquiry.  While the former claims do not explicitly recite mathematical formulas, the Court found that the invention relies upon underlying equations that are derived from the specific arrangement of sensors as recited.  Furthermore, "the equations—dictated by the placement of the inertial sensors and application of laws of physics—serve only to tabulate the position and orientation information in this configuration."  Like the advances of Diehr, "the claims here result in a system that reduces errors in an inertial system that tracks an object on a moving platform."  The Court expounded upon these improvements, heavily referencing the specification of the '159 patent when doing so.

    Ultimately, the Court concluded that "the claims are directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame."  In the Court's view, the invention applied laws of physics to solve this problem, and the mere presence of a mathematical equation in the solution "does not doom the claims to abstraction."  Therefore, the claims are not directed to an abstract idea, and the Court did not have to proceed to part two of Alice.

    This case is similar to Amdocs (Israel) Limited v. Openet Telecom, Inc., where the Federal Circuit found patent-eligibility in broadly-drafted claims.  Notable in both cases is that the Court's reasoning depended greatly on the improvements engendered by the inventions, as described in their respective specifications.  This, of course, reiterates what many of us have been expounding for the last few years — when drafting a software or business method patent application post-Alice it can pay off to clearly define the problem being solved, as well as how the solution improves upon previous approaches.  Not unlike Amdocs, this case is more evolutionary than revolutionary, but at least it reflects a consistent line of reasoning coming from the Federal Circuit.

    Thales Visionix Inc. v. U.S. (Fed. Cir. 2017)
    Panel: Circuit Judges Moore, Wallach, and Stoll
    Opinion by Circuit Judge Moore

  • In re Depomed, Inc. (Fed. Cir. 2017)

    By Donald Zuhn —

    Federal Circuit SealLast month, in In re Depomed, Inc., the Federal Circuit affirmed the determination by the U.S. Patent and Trademark Office Patent Trial and Appeal Board that two instituted grounds in an inter partes review rendered claims 1, 3-5, and 10-13 of Depomed's U.S. Patent No. 6,723,340 unpatentable as obvious.

    The '340 patent relates to vehicles for drug delivery, and more particularly to a controlled-release tablet comprising a solid monolithic matrix that comprises a combination of poly(ethylene oxide) and hydroxypropyl methylcellulose.  The claimed controlled-release tablet provides gastric retention, wherein the drug being delivered is retained in the stomach for a prolonged duration, by using matrix material that provides drug formulation particles that are small enough to be swallowed comfortably, but that swell to a larger size upon contact with gastric fluids.  In the case of the claimed controlled-release tablet, the poly(ethylene oxide) ("PEO") and hydroxypropyl methylcellulose ("HPMC") are both matrix materials that possess swelling and controlled release properties.  According to the '340 patent specification, combining PEO and HPMC yields "a swellable, sustained-release tablet [that] provides unexpectedly beneficial performance, avoiding or substantially reducing the problems [with using either matrix material alone] and offering improved control and reliability while retaining both the ability to swell for gastric retention and to control release."

    Endo Pharmaceuticals, Inc. filed a petition for inter partes review of the '340 patent alleging that claims 1-5 and 10-13 were unpatentable as obvious under 35 U.S.C. § 103 on five prior art grounds, and the Board instituted an IPR on claims 1, 3-5, and 10-13 on three obviousness grounds:  (1) International Publication No. WO 98/55107 ("Shell 1998") alone, (2) Shell 1998 in combination with a 1993 article ("Papadimitriou"), and (3) Papadimitriou in combination with U.S. Patent No. 4,871,548.  The Board concluded in its final written decision that claims 1, 3-5, and 11-13 were unpatentable as obvious in view of Shell 1998, and that claims 1, 3-5, and 10-13 were also unpatentable as obvious in view of Shell 1998 and Papadimitriou.

    DepomedDepomed appealed the Board's determination to the Federal Circuit, Endo withdrew as a party to the appeal, and the Director of the USPTO intervened pursuant to 35 U.S.C. § 143.  On appeal, Depomed argued that: (1) the Board erred in failing to account for the unexpected results of combining PEO and HPMC, (2) the Board's obviousness conclusion improperly relied on hindsight bias, and (3) the Board applied an incorrect legal standard to assess long-felt, but unmet, need.

    With respect to Depomed's first argument, the Federal Circuit determined that substantial evidence supported the Board's finding that Depomed's evidence of unexpected results was weak and entitled to little weight.  According to the opinion, the Board explained that Shell 1998 discloses a finite number of identified, predictable polymers that could be used individually or in combination, of which HPMC and PEO are "particularly preferred" polymers.  In agreeing with the Board's conclusion that the claims are obvious in view of Shell 1998, the Board stated that:

    Shell 1998 discloses (1) a finite number of matrix polymers, of which HPMC and PEO are preferred; (2) that matrix polymers "can be used individually or in combination"; and (3) that "[c]ertain combinations will often provide a more controlled release of the drug than their components when used individually."   . . .  The express disclosure that combinations of polymers will often yield better results than when used alone undermines Depomed's suggestion that the difference between using HPMC and PEO individually and using them in combination would not have been expected.

    With respect to Depomed's second argument, the Federal Circuit disagreed with Depomed's assertion that a person of ordinary skill in the art would have had no motivation to combine HPMC and PEO because Shell 1998 discloses polymer combinations solely for the purpose of overcoming deficiencies in the controlled release properties of certain polymers in their individual capacities, and HPMC and PEO did not exhibit those deficiencies in their individual capacities.  Instead, the Court agreed with the Board's finding that Shell 1998 "does not limit which polymers could be combined or suggest that certain polymers would not function properly in a combination matrix."

    With respect to Depomed's third argument, the Federal Circuit agreed with Depomed's assertion that the Board incorrectly required evidence demonstrating a failure of others to establish a long-felt but unmet need.  Nevertheless, the Court determined that substantial evidence supported the Board's assignment of little weight to Depomed's evidence of long-felt but unmet need, and agreed with the Board's ultimate conclusion that the claims are obvious in view of Shell 1998.  The Court therefore determined that the Board did not err in holding claims 1, 3–5, and 10–13 of the '340 patent unpatentable as obvious, and affirmed the Board's decision.

    Judge Reyna authored a concurring opinion to express two concerns.  First, he noted that he was "troubled that the Board improperly employed a two-step approach in its obviousness analysis," explaining that the Board "first made initial conclusions of obviousness and only later considered Depomed's objective indicia of nonobviousness."  Judge Reyna indicated that "[d]eferring consideration of objective indicia until after deciding a claim would have been obvious allows hindsight bias to creep into step one (the prima facie showing) and limits the meaningfulness of step two," adding that "in an IPR, the Board should not first make an obviousness determination only later to consider the patentee's objective indicia of nonobviousness," since "[d]oing so risks succumbing to the very hindsight bias."  In Judge Reyna's view, the Board therefore erred by considering Depomed's objective indicia only after determining that certain claims would have been obvious.

    Judge Reyna was also concerned with the Board's assignment of "weight" to the evidence, explaining that "results are either unexpected or they are not," and adding that "[o]ur case law does not ask whether results are 'really unexpected' or just a 'little unexpected.'"  According to Judge Reyna, "[t]he Board must decide a binary issue: either the challenged claims would have been obvious or they would not have been obvious," and not "whether evidence of unexpected results 'outweighs' the similarity between the challenged claims and the prior art."  However, despite these two concerns, Judge Reyna did not believe remand was necessary because "Depomed's objective indicia, even if analyzed under the proper framework, do not compel a conclusion of nonobviousness in view of Shell and Papadimitriou."

    In re Depomed, Inc. (Fed. Cir. 2017)
    Nonprecedential disposition
    Panel: Circuit Judges Dyk, Reyna, and Stoll
    Opinion by Circuit Judge Stoll; concurring opinion by Circuit Judge Reyna

  • PTAB Life Sciences Report — Part I

    By John Cravero and Richard Martin —

    USPTO SealAbout the PTAB Life Sciences Report:  Each month we will report on developments at the PTAB involving life sciences patents.

    McKesson Corp. v. My Health, Inc.

    PTAB Petition:  IPR2017-00312; filed November 29, 2016.

    Patent at Issue:  U.S. Patent No. 6,612,985 ("Method and system for monitoring and treating a patient," issued September 2, 2003) claims a method for tracking compliance with treatment guidelines as well as a system for tracking compliance in treating patients comprising an assessment processing system.

    Petitioners McKesson Corp., McKesson Technologies Inc., InTouch Technologies, Inc., and Medical Depot, Inc. are challenging the '985 patent on nine grounds as being anticipated under 35 U.S.C. § 102(b) (grounds 1, 6, and 8) or as obvious under 35 U.S.C. § 103(a) (grounds 2-5, 7, and 9).  View the petition here.

    Related Matters:  According to the petition, the '985 patent is currently the subject of the following litigations:  My Health, Inc. v. McKesson Technologies Inc., 2:16-cv-00881, Eastern District of Texas (Marshall Division); My Health, Inc. v. InTouch Technologies, Inc., 2:16-cv-00536, Eastern District of Texas (Marshall Division); My Health, Inc. v. DeVilbiss Healthcare, LLC, 2:16-cv-00544, Eastern District of Texas (Marshall Division); My Health, Inc. v. MyNetDiary, Inc., 2:16-cv-00866, Eastern District of Texas (Marshall Division); My Health, Inc. v. ALR Technologies, Inc., 2:16-cv-00535, Eastern District of Texas (Marshall Division); Human Design Medical, LLC v. My Health, Inc., 1:16-cv-00767, District of Delaware; and Fit4D, Inc. v. My Health, Inc., 1:16-cv-01076, District of Delaware.  
The '985 patent has been the subject of four prior IPR petitions, all of which were terminated prior to a final written decision:  IPR2013-00320 (Cardiocom, LLC, filed 05/31/2013; granted 11/19/2013; terminated 02/20/2014); IPR2014-00435 (Click4Care, Inc., filed 02/14/2014; terminated 06/06/2014); IPR2015-00102 (Biotronik, Inc., filed 10/21/2014; granted 04/16/2015; terminated 07/28/2015); and IPR2015-01218 (Robert Bosch Healthcare Systems, Inc., filed 05/18/2015; terminated 07/28/2015; denied 05/23/2016), and IPR2016-01111 (Dr. Reddy's Laboratories, Ltd., filed 05/31/2016; pending).


    Smith & Nephew, Inc. v. ConforMIS, Inc.

    PTAB Petition:  IPR2017-00372; filed November 30, 2016.

    Patent at Issue:  U.S. Patent No. 8,377,129 ("Joint arthroplasty devices and surgical tools," issued February 19, 2013) claims a patient-specific instrument system for surgery of a diseased or damaged knee joint of a patient.

    Petitioner Smith & Nephew, Inc. is challenging the '129 patent on two grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '129 patent is currently the subject of the litigation:  ConforMIS, Inc. v. Smith & Nephew, Inc., 1:16-cv-10420-IT (D. Mass.).


    Smith & Nephew, Inc. v. ConforMIS, Inc.

    PTAB Petition:  IPR2017-00373; filed November 30, 2016.

    Patent at Issue:  U.S. Patent No. 8,551,169 ("Joint arthroplasty devices and surgical tools," issued October 8, 2013) claims a method for making a patient specific surgical instrument for use in implanting an orthopedic implant in a patient.

    Petitioner Smith & Nephew, Inc. is challenging the '169 patent on two grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '169 patent is currently the subject of the litigation:  ConforMIS, Inc. v. Smith & Nephew, Inc., 1:16-cv-10420-IT (D. Mass.).


    Mylan Pharmaceuticals, Inc. v. Dr. Falk Pharma GmbH
    Foxhill Capital Partners, LLC v. Dr. Falk Pharma GmbH

    PTAB Petition:  IPR2016-01386; filed July 8, 2016.

    PTAB Petition:  IPR2016-01409; filed July 16, 2016.

    PTAB Trial Instituted Document filed November 30, 2016.

    Patent at Issue:  U.S. Patent No. 8,865,688 ("Compositions and methods for treatment of bowel diseases with granulated mesalamine," issued October 21, 2014) claims methods of maintaining remission of ulcerative colitis with administration of granulated mesalamine.

    Petitioners Mylan Pharmaceuticals, Inc. (IPR2016-01386) and Foxhill Capital (GP), LLC; Foxhill Capital Partners, LLC; Foxhill Opportunity Fund, LP; Laura Pollack Weiner; MycoNovo, Inc.; Neil Anthony Weiner; and William D Hare (IPR2016-01409) are challenging the '096 patent on four grounds as obvious under 35 U.S.C. § 103(a).  View the petitions here (IPR2016-01386) and here (IPR2016-01409).  Administrative Patent Judges Lora M. Green, Grace Karaffa Obermann, and Elizabeth M. Roesel (author) issued a decision instituting inter partes review of whether claims 1 and 16 of the '688 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the 2007 Press Release, Endonurse, and Davis-1985 in view of Marakhouski or Brunner.  The Judges also ordered that Case IPR2016-01386 and Case IPR2016-01409 be joined and administratively terminated under 37 C.F.R. § 42.72, and all further filings in the joined proceedings to be made in Case IPR2016-00297 (Petitioners, Generico, LLC and Flat Line Capital, LLC.; filed 12/08/2015; instituted 06/10/2016; pending).

    Related Matters:  According to the petitions, the '688 patent is currently the subject of the following litigations:  Salix Pharmaceuticals, Inc. et al. v. Novel Laboratories, Inc., 1-15-cv-00027 (DED); Salix Pharmaceuticals, Inc. et al. v. Novel Laboratories, Inc., 1-15-cv-00213 (DED); and Salix Pharmaceuticals, Inc. et al. v. Mylan Pharmaceuticals Inc. et al., 1-15-cv-00109 (N.D.W.V.).


    Luye Pharma Group Ltd. v. Alkermes Controlled Therapeutics, Inc.

    PTAB Petition:  IPR2016-01096; filed May 31, 2016.

    PTAB Trial Instituted Document filed November 30, 2016.

    Patent at Issue:  U.S. Patent No. 6,667,061 ("Preparation of injectable suspensions having improved injectability," issued December 23, 2003) claims a composition suitable for injection through a needle into a host.

    Petitioners Luye Pharma Group Ltd., Luye Pharma (USA) Ltd., Shandong Luye Pharaceutical Co., Ltd., and Nanjing Luye Pharmaceutical Co., Ltd. are challenging the '061 patent on two grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.  Administrative Patent Judges Lora M. Green (author), Robert A. Pollock, and Jacqueline T. Harlow issued a decision instituting inter partes review of whether claims 1-13, 22, and 23 of the '061 patent are rendered obvious by the combination of Johnson and Kino; and claims 1-3, 6-9, 12, 13, and 17-23 are rendered obvious by the combination of Gustafsson, Ramstack, and the Handbook.

    Related Matters:  According to the petition, the Petitioner concurrently filed with IPR2016-01096 an additional petition for inter partes review of the '061 patent (IPR2016-01095).  The Judges decided the two petitions concurrently.  IPR2016-01095 was denied institution on all grounds.


    Merck Sharp & Dohme Corp. v. Wyeth LLC

    PTAB Petition:  IPR2017-00378; filed December 1, 2016.

    Patent at Issue:  U.S. Patent No. 8,562,999 ("Formulations which stabilize and inhibit precipitation of immunogenic compositions," issued October 22, 2013) claims a formulation comprising: (i) a pH buffered saline solution, wherein the buffer has a pKa of about 3.5 to about 7.5, (ii) an aluminum salt and (iii) one or more polysaccharide-protein conjugates, wherein the formulation is comprised in a siliconized container means and inhibits aggregation induced by the siliconized container means.

    Petitioners Merck Sharp & Dohme Corp., and Merck & Co., Inc are challenging the '999 patent ontwo grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, Petitioners concurrently filed two additional petitions for inter partes review of the '999 patent.  According to the petition, the '999 patent is not involved in any other related judicial or administrative matters.


    Merck Sharp & Dohme Corp. v. Wyeth LLC

    PTAB Petition:  IPR2017-00380; filed December 1, 2016.

    Patent at Issue:  U.S. Patent No. 8,562,999 ("Formulations which stabilize and inhibit precipitation of immunogenic compositions," issued October 22, 2013) claims a formulation comprising: (i) a pH buffered saline solution, wherein the buffer has a pKa of about 3.5 to about 7.5, (ii) an aluminum salt and (iii) one or more polysaccharide-protein conjugates, wherein the formulation is comprised in a siliconized container means and inhibits aggregation induced by the siliconized container means.

    Petitioners Merck Sharp & Dohme Corp., and Merck & Co., Inc are challenging the '999 patent on two grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, Petitioners concurrently filed two additional petitions for inter partes review of the '999 patent.  According to the petition, the '999 patent is not involved in any other related judicial or administrative matters.


    Merck Sharp & Dohme Corp. v. Wyeth LLC

    PTAB Petition:  IPR2017-00390; filed December 2, 2016.

    Patent at Issue:  U.S. Patent No. 8,562,999 ("Formulations which stabilize and inhibit precipitation of immunogenic compositions," issued October 22, 2013) claims a formulation comprising: (i) a pH buffered saline solution, wherein the buffer has a pKa of about 3.5 to about 7.5, (ii) an aluminum salt and (iii) one or more polysaccharide-protein conjugates, wherein the formulation is comprised in a siliconized container means and inhibits aggregation induced by the siliconized container means.

    Petitioners Merck Sharp & Dohme Corp., and Merck & Co., Inc are challenging the '999 patent on three grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, Petitioners concurrently filed two additional petitions for inter partes review of the '999 patent.  According to the petition, the '999 patent is not involved in any other related judicial or administrative matters.