• Tietex International, Ltd. v. Precision Fabrics Group, Inc.Institution denied
  PTAB · Feb 11, 2016 · IPR2015-01671 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution on both asserted § 103 grounds, finding no reasonable likelihood of success and exercising § 314(a) discretion for the Radwanski, Rowan, and Murch ground.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “We approach our discretion to deny a petition on a case-by-case basis. There are sufficient reasons under the specific facts of this case to exercise our discretion to deny institution on Petitioner’s asserted ground that claims 1–30 of the ’162 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Notably, in this proceeding, the claims of the ’162 patent are so similar in scope and content to those in the ’639 patent that Petitioner is relying on the same arguments that we found to be unpersuasive in the 1248 Final Decision. See Pet. 29; 1248 Final Dec. 22. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting an inter partes review in this proceeding when the same prior art references and arguments are asserted against substantially the same claim limitations as in the 1248 IPR.” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12

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

    “A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “terminology as the claims in related US patent 8,501,639, which is the subject of [the] previously instituted [1248 IPR]” and argues “that for purposes of this proceeding, the same definitions should apply.” Pet. 7. In the 1248 IPR, we determined that the broadest reasonable interpretation of the term “intumescent” in light of the specification is “a substance that swells and chars upon exposure to heat or flame.” Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., Case IPR2014-01248, slip op. at 5–6 (PTAB Jan. 30, 2015) (Paper 14); see id., slip. op. at 4–5 (PTAB Jan. 27, 2016) (Paper 39). Petitioner and Patent Owner agree that “intumescent” as used in claim 1 of the ’162 patent should be interpreted the same way in this proceeding. Pet. 7; Prelim. Resp. 17. Therefore, for purposes of this Decision, we interpret “intumescent” to mean “a substance that swells and chars upon exposure to heat or flame.” B.” slip op. at 5

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 8,796,162

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