PTAB

IPR2024-00932

Abbott Laboratories v. NewTonoid Technologies LLC

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Graphically Encoded Icons Having Intrinsic Attributes Embedded Therein and Systems and Methods for Using Same
  • Brief Description: The ’818 patent discloses a graphically encoded icon, such as a label, that combines a static, machine-readable portion (e.g., a barcode) with a dynamic, "intrinsic" portion containing stimuli-responsive materials that change state based on an attribute of an associated object (e.g., temperature).

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-20 are obvious over Prusik in view of Vaillant

  • Prior Art Relied Upon: Prusik (Application # 2016/0292486) and Vaillant (Patent 7,691,634).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Prusik discloses the core invention of a label combining static and dynamic information. Prusik teaches a two-dimensional barcode with a static data set and a dynamic data set printed with "dynamic ink" that changes state (e.g., color, transparency, or reflection) in response to environmental triggers like temperature. This change is machine-readable. Prusik alone, Petitioner contended, renders claims 8-15 obvious. For claims requiring a transaction element (claims 1, 16, and their dependents), Petitioner combined Prusik with Vaillant. Vaillant discloses a system for managing the marketing of products in a "cold chain," where a temperature-sensitive label can render a barcode unreadable if a temperature threshold is exceeded, thereby preventing the product from being sold. This supplies the limitation of using the indicia to "permit or deny the user to engage in a transaction."
    • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Prusik's advanced, data-rich barcode with Vaillant's transactional control system. A POSITA would be motivated to replace Vaillant’s simple barcode-masking mechanism with Prusik’s more informative label to create an improved system that could not only prevent a sale but also provide specific data about the environmental exposure, a predictable improvement.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in integrating Prusik’s readable dynamic barcode into Vaillant’s transaction management framework, as it would be applying a known barcode technology to an existing barcode-based system to achieve the predictable result of preventing the sale of compromised goods.

Ground 2: Claims 8-15 are obvious over Burg in view of a POSITA’s knowledge

  • Prior Art Relied Upon: Burg (Application # 2015/0308961).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Burg discloses a diagnostic instrument that embodies the claimed invention. Burg’s instrument is a paddle that functions as a label, comprising a static portion (a machine-readable QR code for unique identification) and an intrinsic portion (chemical test pads that change color in response to analytes in a biological fluid). Petitioner asserted that the color change in the test pads constitutes a change in reflection and/or transparency. This change, which indicates analyte concentration, is designed to be automatically analyzed by a portable electronic device (e.g., a smartphone app), thus resulting in machine-readable indicia.
    • Motivation to Combine (for §103 grounds): This ground was primarily based on Burg alone, with reliance on a POSITA's knowledge to fill any perceived gaps. For the limitations requiring a change in transparency or reflection, Petitioner argued that Burg’s disclosed change in color intensity inherently involves changes in these optical properties. Alternatively, a POSITA would have found it obvious to use well-known stimuli-responsive materials, such as leuco dyes that change from transparent to colored, in Burg’s diagnostic test strips to achieve predictable results.
    • Expectation of Success (for §103 grounds): A POSITA would have expected success in applying known dye chemistries (like leuco dyes) to Burg’s test strips, as such materials were commercially available and commonly used in diagnostic assays to provide a visual or machine-readable indication of a chemical reaction.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 8-11 and 13-15 based on Dimov (Patent 10,146,909), which discloses a diagnostic system with a QR code and stimuli-responsive reaction chambers that change optical properties.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under §314(a) or §325(d). It was contended that none of the prior art references asserted in the petition were cited or considered during the prosecution of the ’818 patent. Furthermore, regarding the parallel district court litigation, Petitioner noted that the case is currently stayed pending a decision on a motion to dismiss and no trial date has been scheduled, weighing against denial under the Fintiv factors.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-20 of the ’818 patent as unpatentable.