- Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research FoundationInstitution deniedPTAB · Jul 15, 2022 · PGR2022-00021 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution on Grounds 1–5 under § 325(d) and found Ground 6 had not shown any challenged claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“met (e.g., substantially the same art is presented), we move to part two of the framework, asking “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” Id. at 8. Factors (c), (e), and (f) of Becton, Dickinson fall within part two of the framework. Id. at 10 (“[F]actors (c), (e), and (f) relate to whether the petitioner has demonstrated material error by the Office.”). Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated error. Id. at 8–10. “If the petitioner fails to show that the Office erred, the Director may exercise his discretion not to institute.” Id. at 8–9. “At bottom, this [§ 325(d)] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9 (“If 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.”).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“specific citations to evaluate its assertions, Petitioner does not direct our attention to any portion of the Nordgren Declaration providing information on why the partial sequences disclosed by the references teach or suggest the claimed 90% sequence homology. Pet. 76, 79 (citing Ex. 1026 at VII.C, ¶¶ 247–269). For example, Dr. Nordgren’s assertion “a POSITA would anticipate natural genetic variation of PorkNW2/USA/2009 ORF2 would bring it within the scope of the Claim 1 genera” is not supported by substantial evidence. Ex. 1026 ¶ 256. Claim 1, for example, recites a PCV3 protein and does not recite partial proteins. Without knowing what portion of complete proteins are disclosed by the references, we are not persuaded that a person of ordinary skill in the art would have been able to predict the variation expected among a group of complete proteins to arrive at the claimed subject matter as is implied by Petitioner. Petitioner’s conclusory statements are insufficient to support a legal conclusion of obviousness. And while we agree with Petitioner that the protein sequences disclosed in the cited references do not necessarily have to be designated as PCV3 sequences, we determine that Petitioner has failed to meet its burden to demonstrate that any of the PCV3 deposit references teach or suggest the recited sequences within the claimed range. Pet. 79. Therefore, Petitioner has not met its burden in showing that every claimed element is taught by its cited references, and we need not reach Petitioner’s argument on motivation to combine. Accordingly, we determine that Petitioner fails to carry its burden to show that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable based on Petitioner’s Ground 6.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (or “POSITA”) in the field of the ’274 Patent in the October 2015 to October 2019 timeframe would have held a Doctorate in Veterinary Medicine (D.V.M.) or equivalent, or a Ph.D. or equivalent in immunology, vaccinology, virology, molecular biology, animal science, and/or husbandry, or a closely related field. A POSITA would also have practical knowledge of immunology, including how vaccine candidates are first identified and then subsequently developed. The knowledge may come from the POSITA’s own experience, or it may come through research or work collaborations with other experienced individuals in the medical, pharmaceutical, or biotech industry, e.g., as members of a research team or group. Pet. 16 (citing Ex. 1026 ¶ 34). Absent opposition from Patent Owner, we adopt Petitioner’s definition because it is consistent with the level of ordinary skill in the art reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding 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))).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board applies the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.200(b) (2019). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner contends that it “does not believe any term of the ’274 Patent needs to be construed in this proceeding.” Pet. 29. We agree and independently determine that it is unnecessary to expressly construe any claim term for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,954,274 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Feb 2, 2022 · IPR2021-01094 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented to the Office and Intel had not shown material error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d) provides that in determining whether to institute an inter partes review, we “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.” To determine whether to deny institution under § 325(d), we use the following two-part framework: (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.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. Summary We determine, on this record, that substantially the same arguments previously were presented to the Office. Further, we also disagree with Petitioner that the Office’s purported treatment of the arguments were unreasonable. As set forth under Advanced Bionics, if 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 the patentability of challenged claims. As a result, we exercise our discretion under § 325(d) to deny the Petition in this case. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,756,359 - Nespresso USA, Inc. v. K-Fee System GMHBInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01222 · APJ James J Mayberry · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“stated in the Petition, standing alone, supports a finding of material examiner error, that argument is not developed adequately and, therefore, is unpersuasive on this record. Pet. 84–85. Petitioner bears the burden of showing that the Office erred, for example, by “misapprehending or overlooking specific teachings of the relevant prior art whose teachings impact patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. Where “the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under” Becton, Dickinson factors (e) and (f). Advanced Bionics, Paper 6 at 10. As explained above, when assessing factor (e), we consider whether Petitioner “point[s] out sufficiently how the examiner erred in its evaluation of the asserted prior art.” Supra 8. When assessing factor (f), in turn, we look for some explanation of how or why “the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.” Id. Petitioner addresses neither of those issues adequately, if at all. Pet. 81–85; Prelim. Reply 5–10. The closest Petitioner comes to addressing those issues is by observing, “the obviousness analysis” in the Petition “is supported by expert testimony, which the Examiner did not have.” Pet. 85. That observation is undeveloped by further analysis and, therefore, is ineffective to show that the Examiner materially erred by failing to discuss the same prior art combinations advanced in the Petition, or that “additional evidence and facts presented in the Petition warrant reconsideration of the prior art” previously presented to the Office. Becton, Dickinson, Paper 8 at 18.” slip op. at 26
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“institute review. See also 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we exercise discretion under 35 U.S.C. § 325(d) and do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“namely, whether the claimed invention is entitled to a priority date of July 22, 2010, based on certain German priority documents, thereby disqualifying Jarisch as prior art under 35 U.S.C. § 102(e). See Pet. 15–18 (discussing priority to the German applications), 22–23 (asserting Jarisch as prior art under § 102(e)), 85 (arguing that the examiner did not consider Jarisch because of an error in priority); Ex. 1002–176, Part 1, 278. Pet. 15–18 (arguing that the challenged claims are not entitled to priority based on the German priority documents), 85 (arguing the examiner applied an incorrect priority date, based on the German priority documents, to antedate Jarisch); Prelim. Resp. 4–6, 16–22; Prelim. Reply 8–10; Prelim. Sur-reply 7–10. Petitioner focuses only on whether the examiner erred in assessing that argument. Pet. 85. Petitioner does not, and cannot, submit that the Office never considered the issue during patent prosecution, at least with respect to applications in the priority chain of the ’177 patent. The Office, in fact, expressly considered whether “Jarisch is not prior art” because the challenged claims are “entitled to a priority date of 22 July 2010” based on the German priority documents. Ex. 1002–176, Part 1, 278 (prosecution history for the grandparent application). The Office also expressly responded to Patent Owner’s argument on that point as follows: “This urging is not deemed persuasive.” Id. This issue represents a second, significant argument previously presented to the Office.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“B. Discretionary Denial under 35 U.S.C. § 314(a) Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 314(a) in light of parallel district court litigation involving the parties and the ’177 patent. Prelim. Resp. 36–44; Prelim. Sur-reply 1–4. Because we exercise our discretion under § 325(d) and deny the Petition, we do not reach this issue.” slip op. at 28
§ 102 anticipationDiscretionary denialPatents in suitUS 10,858,177 - Nespresso USA, Inc. v. K-Fee System GmbHInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01221 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR on claims 1–15 under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material Examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the same prior art or arguments asserted in the Petition and, if so, we resolve whether Petitioner shows sufficiently that the Examiner erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“challenged claims and (2) that the claimed invention, including the feature relating to barcode location, would not have been obvious over the combination of prior art references applied by the Examiner, including Jarisch. Id. at 393–404. Where both alternatives were before the Examiner, it is not at all clear that “the Examiner applied an incorrect priority date” or otherwise accepted that Jarisch does not qualify as prior art. Pet. 85.” slip op. at 23
§ 102 anticipationDiscretionary denialPatents in suitUS 10,858,176 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01114 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR challenging claims 17–19, 26–31, 35, and 36 because substantially the same arguments were previously presented and Petitioner did not show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(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, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “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 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“For the foregoing reasons, the ’882 application identified the ’886 provisional with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) incorporated the ’886 provisional by reference.” slip op. at 23
- Skill levelOther
§ 112 disclosureDiscretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01113 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 20–25 under § 325(d), finding the same or substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under § 325(d), in “determining whether to institute [an 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.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(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, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “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 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Here, Petitioner has the burden to show that the Examiner erred in determining that Chu ’330 incorporated by reference the ’886 provisional. Advanced Bionics, Paper 6 at 8.” slip op. at 17
§ 102 anticipationDiscretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01105 · APJ Scott A Daniels · IPR · Institution
The Board denied institution for claims 1–3, 7–13, and 18–20 under § 325(d), finding the arguments previously presented and no material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented 8 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, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8 at 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“The Examiner in each of these cases did not object to the amendments as new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1 for lack of written description support for the claims. NTP, 654 F.3d at 1277. Instead, the Examiner entered the amendments and subsequently allowed the ’912 application with the subject matter added from Chu ’886. Ex. 1009, 419 (Notice of Allowance and Fee(s) Due). The incorporation by reference statement in the transmittal form also was never objected to by any Examiner during prosecution of the ’882 application (Chu ’330), the ’758 application (initial parent application), and all eight continuation applications in the priority chain of the ’797 patent, as well as Chu ’777 and all six reissue applications in the priority chain of Chu ’777, as noted in our Decision Denying Institution in IPR2021-00607, Paper 7 at 20. Moreover, none of the Examiners required the applicant to change its benefit claims from “continuation” to “continuation-in-part” in those continuation applications. 20 For the foregoing reasons, the ’882 application identified Chu ’886 with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) properly incorporated Chu ’886 by reference. In addition, as discussed above, Petitioner admits that the ’758 application (the initial parent application) incorporated by reference the ’882 application. Pet. 28; see also Ex. 1013, 4:50−53. It also is undisputed that each subsequent application in the priority chain identified each preceding application as required by 35 U.S.C. § 120 and incorporated by reference the prior applications and the ’882 application. See, e.g., Ex. 1001, 1:10−28, 9:36–39; Ex. 1008, 1:12−27, 9:27−29. As such, we also find that Petitioner has failed to show (1) the ’797 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications did not properly incorporate by reference Chu ’886, (3) the amendments adding the subject matter from Chu ’886 improperly introduced new matter, and (4) that there is no support for the added written description in the ’436 patent, and hence the ’797 patent, in the respective parent applications. Pet. 23−39.” slip op. at 20
§ 112 disclosureDiscretionary denialPatents in suitUS 8,977,797 - PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6
§ 102 anticipationDiscretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01108 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1–3, 7–9, 13–17, 19, 20, 25, and 33–35 under § 325(d), finding the same arguments were previously presented and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“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.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(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 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “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 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“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.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(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 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in both of the asserted grounds.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Decided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference the ’886 provisional, and (3) the amendments adding the subject matter from the ’886 provisional improperly introduced new matter. Pet. 18−30.” slip op. at 23
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,529,768 - PTAB · Dec 6, 2021 · IPR2021-00605 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and material Examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under Part 2 of the Advanced Bionics framework, Petitioner has the burden to show that “[t]he Examiner erred by not realizing that Chu ’330, Chu ’185, and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’768 Patent claims,” as Petitioner alleges in its § 325(d) analysis. Pet. 7, 9−18. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments of Examiner error.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “Hollmer and NRG were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“codes (21), (22), (45), (60), 6:1–7. The initial parent application in the ’768 patent’s priority chain, U.S. Application No. 09/569,758 (“the ’758 application”), which incorporated the ’882 application by reference, was filed on May 12, 2000, and issued as U.S. Patent No. 6,718,415 B1 (“the ’415 patent”) on April 6, 2004. See Ex. 1001, code (63); Ex. 1008, code (45), 4:50–53. Both the ’882 application (issued as Chu ’330) and the ’758 application (issued as the ’415 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882. Pet. 7, 9−18; Req. Reh’g 1−13. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’758 application.” slip op. at 7
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768
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.