- Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyRehearing deniedPTAB · May 22, 2025 · IPR2024-01178 · APJ Cynthia M Hardman · IPR · Rehearing
The Board denied Bio-Rad’s rehearing request, leaving institution denied because the petition relied on Saxonov material not shown to be prior art and could not be supplemented on rehearing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Such an approach is inconsistent with the Supreme Court’s statements that in an inter partes review, “the petitioner is master of its complaint,” and “the petition [is] the centerpiece of the proceeding.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363, 369 (2020). “It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). In contravention of these principles, Petitioner’s approach improperly shifts the onus to Patent Owner or the Board to identify and parse out erroneous, and purportedly non-essential, citations to Saxonov and piece together an argument based on the remaining citations. As we stated in the Decision, we decline to assume this task. See Dec. 20. Finally, in the Request, Petitioner attempts to “show[] how Ground 6 is fully supported by undisputed prior art material.” Req. 6. This attempt is improper. Petitioner cannot use the Request as a means to supplement the Petition to identify purportedly essential citations and disavow erroneous or non-essential citations.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Decision, we determined that Petitioner had not shown that all of the portions of Saxonov that Petitioner relied on in its unpatentability arguments qualify as prior art to the challenged claims. See Dec. 17–24. On this basis, we found that Petitioner failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’170 patent.” slip op. at 2
NonePatents in suitUS 10,770,170 - Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Dec 16, 2024 · IPR2024-00976 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution because BOE did not show a reasonable likelihood of prevailing on claims 1–3 under any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to institute an inter partes review where a petitioner shows a reasonable likelihood of prevailing with respect to at least one challenged claim. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). For reasons that follow, Petitioner does not meet that evidentiary threshold. We decline to reach the issues raised in the Reply or Sur-reply, which relate to Patent Owner’s alternative argument that a discretionary denial of the Petition is warranted.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“education could substitute for professional experience and vice versa.” Pet. 26. Patent Owner “does not dispute the level of skill for a person of ordinary skill in the art” as “set forth in the Petition.” Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s unopposed definition (Pet. 26) because, on this record, it is consistent with the specification. We take note that neither party indicated that the result would change under any different definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner discusses the terms a “data line having a broad-width portion” and a “scanning line having a broad-width portion” recited in claim 1, as well as a “data line having a broad portion” and a “scanning line having a broad-width portion” recited in claim 2. Petitioner cites the ’079 patent for “offering a lexicographic definition of the term ‘broad width’” to support the plain meaning interpretation of the terms “‘broad-width portion’ and ‘broad portion’ as a portion that is broader than another portion of the subject element.” Pet. 16. Patent Owner does not provide arguments directed specifically to Petitioner’s proposed claim constructions. See Prelim. Resp. 10–11. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 16 (addressing issues of claim construction, citing the ’079 patent for supporting the plain and ordinary meaning of “broad-width portion” and “broad portion” without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 10–11 (addressing the merits of Petitioner’s challenges, without asserting an express claim construction). To the extent that the scope of any claim term requires discussion, however, we provide it in the following analysis of the challenges.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Id. (emphasis added). Sato ¶ 26 is entirely silent on scan lines and clearly links the cited benefits to “this arrangement” of “data lines composed of an Al film.” Id. Importantly, Petitioner does not connect Sato’s disclosure, relating to benefits associated with a data line arrangement, to any particular arrangement of scan lines. Sato ¶ 28 is equally deficient. Sato ¶ 28 also discusses benefits of utilizing a specific “arrangement,” namely, “capacitance lines formed of [a] metal film.” Id. ¶ 28. [0028] With this arrangement, the provision of the function as the shading layer with the capacitance lines formed of the metal film, the polysilicon film, or the like, in addition to the function as the wiring, as well as the provision of the function as the light absorption layer with the capacitance electrodes formed of the polysilicon film, or the like, in addition to the function as electrodes, prevents the laminated structure from becoming complex by additionally forming a dedicated shading layer and a dedicated light absorption layer. Accordingly, this arrangement is very advantageous by simply arranging the electro-optical device, and simplifies a manufacturing process thereof. Id. (emphasis added). Here again, Sato ¶ 28 is entirely silent on scan lines and clearly links the cited benefits to “this arrangement” of “capacitance lines formed of metal film.” Id. Petitioner does not bridge the gap in its rationale to combine by attempting to explain why an ordinarily skilled artisan would have extrapolated benefits, pertaining to an arrangement of capacitance lines, to a similar arrangement of scan lines. Petitioner’s witness, Dr. Flasck, provides no further insight as to how or why Sato ¶¶ 26 and 28 would have been understood to apply to scan lines. Dr. Flasck’s comments on Sato ¶¶ 26 and 28 merely repeat, nearly verbatim, the Petition’s conclusory contentions. See Ex. 1002 ¶ 139 (Dr. Flasck declaring “Sato specifically teaches that its device ‘is very advantageous by simply arranging the electro-optical device, and simplifies a manufacturing process thereof.’”); Pet. 37. Dr. Flasck does not cite to any additional supporting evidence other than Sato ¶¶ 26 and 28. Ex. 1002 ¶ 139.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,502,079 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01450 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the cited art previously considered or cumulative and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and evidence of record, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 9
Discretionary denialcites PhillipsPatents in suitUS 10,513,801 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01451 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the prior art previously considered and no material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“b) Advanced Bionics Framework Part (2) Having determined that the “same or substantially the same prior art” previously was presented to the Office, we now consider whether Petitioner sufficiently demonstrates that the Office materially erred. In assessing the second part of the Advanced Bionics Framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether material error has been shown. Advanced Bionics, Paper 6 at 10. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. However, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. Petitioner bears the burden of showing that the Examiner materially erred. Id. at 8.” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,326,276 - Apple Inc. v. Dodots Licensing Solutions LLCInstitution deniedPTAB · Dec 15, 2023 · IPR2023-00937 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution on claims 1–21 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9. III. CONCLUSION Petitioner’s invalidity contentions rely, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 9. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 18
- BurdenDenied
“We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) and insufficient indication on the record that the appendices have been incorporated into the ’695 patent, and that as a result, the relied-upon appendices do not qualify as prior art under 35 U.S.C. § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are neither part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 21 (citing 65 Fed. Reg. 57,024; 35 U.S.C. § 122(b)(1)). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’545 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:13–15. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 17
§ 102 anticipationPatents in suitUS 9,369,545 - Vifor (International) AG v. Biofer S.P.A.Institution deniedPTAB · Apr 24, 2023 · IPR2022-01608 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16, 19–21, and 23–25 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“step of reacting a sugar with bromine occurs “in a solution at a pH between 7.0 and 9.0.” Ex. 1001, 16:46–47. A dispositive question arises, on this record, as to whether Petitioner’s information, directed to this pH range limitation, is sufficient to support institution of review. For reasons that follow, we determine that Petitioner’s information is not sufficient and deny the Petition on that basis.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and 12 and that Stoll suggests a pH range of 7 or greater. Pet. 29–30 and n.7, 39. Those prior art pH ranges overlap or encompass the specified pH range of “between 7.0 and 9.0.” Pet. 38–39 and n.10. Under these circumstances, the burden of production shifts to Patent Owner to come forward with evidence of the criticality of the specified pH range limitation. See id. at 39–40 (quoting E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018). Patent Owner meets that burden by directing us to the Marchi Declaration. Resp. 9–12; Ex. 1004, 432–440. That evidence contains experimental results that support Dr. Marchi’s opinion that the claimed method, when performed at a pH of 8, “can be run with equimolar amounts of oxidant without increasing depolymerization,” but when performed at a pH of 10, results in an undesirable “depolymerizing attack on the main chain, even employing only 0.9 equivalents of oxidant.” Ex. 1004, 434–435 (¶ 7). As Patent Owner points out, moreover, the oxidation reaction in each of the examples in Geisser is carried out at a pH of 10. see Prelim. Resp. 26 and n.8 (citing Ex. 1006, Examples 1–8).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We assess the ground based on anticipation by Geisser in view of the principle that a prior art reference anticipates a patent claim “if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The ground based on anticipation by Geisser rests on a conclusory opinion that Geisser’s disclosure of a pH range between 8 and 12 “describes” an oxidation reaction that occurs “at a pH between 7.0 and 9.0.” Pet. 63 (citing Ex. 1002 ¶ 178, which repeats that conclusory opinion verbatim without objective evidence or analysis). It is unclear on this record, and Petitioner does not explain adequately, how or why Geisser anticipates the pH range limitation of claim 1, which is “critical” for reasons explained above in our analysis of the ground based on obviousness over Geisser and Stoll. Ex. 1004, 435 (the Marchi Declaration, ¶ 7). Accordingly, on this record, we determine that Petitioner does not establish a reasonable likelihood of prevailing “with respect to at least [one] of the claims” based on any ground asserted in the Petition. 35 U.S.C. § 314(a).” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that an ordinarily skilled artisan “would hold an advanced degree, such as an M.S. or doctorate, in chemistry, medicine, pharmacy, or a related degree,” as well as post-graduate experience “in areas of carbohydrate chemistry, synthetic chemistry, medicinal chemistry, inorganic chemistry, and/or metal carbohydrate complexes, or the clinical use of such complexes.” Pet. 16. Patent Owner does not contest Petitioner’s proposed definition in the Preliminary Response. Prelim. Resp. 17–18. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,759,320 - Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Jan 11, 2023 · IPR2022-01220 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 13, 14, and 17–20 unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 7
- Expert testimonyPetitioner expert discountedOther
“means of the precuring device 15, causing the surface to dry and stick.”). In light of these disclosures in Wohrl, Petitioner does not adequately explain why a POSITA would have understood that using a nip roller to press the path onto the core, then precuring the path as it is laid, creates an anchor as the ’798 patent teaches. Nor does Petitioner sufficiently address why a POSITA would have understood Wohrl to be teaching the use of an anchor when Wohrl uses a core to support the formation of the part. Moreover, Dr. Rosen’s declaration testimony on this point is entitled to little to no weight as it merely parrots the Petition. Compare Pet. 101–102, with Ex. 1002 ¶¶ 414–416; see 37 C.F.R. § 42.65(a).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” (citation and internal quotation marks omitted)). Having reviewed the parties’ arguments and evidence of record, we are not persuaded that Petitioner provides sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ma and Lipsker in the manner recited in the challenged claims.” slip op. at 14
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,987,798 - Apotex Inc. / Apotex Corp. v. Auspex Pharmaceuticals, Inc.Institution deniedPTAB · Mar 9, 2022 · IPR2021-01507 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–3 under § 325(d), finding the petition relied on substantially the same art or arguments previously presented and did not show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments. Id. In general, only if the same, or substantially the same, art or arguments previously were presented to the Office, do we turn to whether Petitioner has established a material error. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 24
Discretionary denialPatents in suitUS 8,524,733 - Atrium Medical Corporation v. Bard Peripheral Vascular, Inc.Institution deniedPTAB · Jan 20, 2022 · IPR2021-01200 · APJ James A Tartal · IPR · Institution
The Board denied institution on all challenged claims and grounds under § 325(d), finding substantially the same art had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 20
- Expert testimonyPetitioner expert discountedOther
“Pet. vi. Although both citations above refer to “Herts” as an author, it is apparent that the citations to the two articles provide different article titles, different publications, and different publication dates. Accordingly, Petitioner’s assertion that “Bardport specifically identifies Herts as ‘on the subject’ of, and ‘of help’ regarding, the use of power injectors with Bard’s venous access port assembly,” is incorrect, because the article Petitioner relies on as Herts is not the article cited in Bardport authored by “Herts.” See Pet. 22 (citing Ex. 1012, 27–28; Ex. 1038, 1–2). Mr. Leschinsky’s testimony regarding Bardport on this point is likewise incorrect. See Ex. 1003 ¶ 94. Mr. Leschinsky states that “[i]t is my opinion that a [person of ordinary skill in the art] would have been motivated to combine the 9 The identical question and answer appears on multiple pages of Exhibit 1012. See Ex. 1012, 21–22, 27–28, 33–34. teachings of Herts . . . because Bardport itself acknowledges Herts’ findings,” and “in response to a ‘frequently asked question’ titled ‘[c]an catheters be used in the Radiology Department with the Power Injector?’ Bardport cites to Herts.” Id. (citing Ex. 1012, 21–22). As explained above, Bardport does not cite to Herts, the reference relied upon by Petitioner, but instead refers to a different article identifying “Herts” as the author.” slip op. at 14
Discretionary denialPatents in suitUS 7,947,022
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.