- Abs Global, Inc. / Genus, PLC v. Cytonome/St, LLCRehearing deniedPTAB · Jan 7, 2022 · IPR2021-00306 · APJ Lynne H Browne · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution under § 325(d) because Petitioner did not show material error concerning Weigl, Ohki, or Wada.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[t]he 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.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“pursuant to 35 U.S.C. § 325(d). Paper 13 (“Dec.”). The Decision explains the two-part framework used to assess arguments under § 325(d) and that the Board considers several factors (i.e. the “Becton, Dickinson” factors) when determining: (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 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. Dec. 8. In the Decision, the Board determined that “Weigl, Ohki, and Wada were previously presented to the Office” and that Petitioner had “not demonstrated that the Examiner materially erred when considering these references.” Id. at 16. Based on this determination, the Board exercised discretion to deny institution of inter partes review. Id.” slip op. at 2
Discretionary denialPatents in suitUS 10,689,210 - Clearh2o, Inc. v. Ceva Animal Health Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2020-00039 · APJ Michael L Woods · IPR · Rehearing
The Board denied ClearH2O’s rehearing request and left institution denied for claims 1–15 under all five § 103 grounds, finding no misapprehension or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We disagree for the following two reasons. First, the Petition does not rely on Goff for disclosing the Third Limitation. Rather, the Petition relies on Lewis for disclosing the Third Limitation. Pet. 24 (Limitation 1.6). In addressing the Third Limitation, the Petition provides in its entirety: Lewis states that “The gel is sprayed over the top of the chicks in a uniform fashion to better ensure uniform distribution of the gel.” As shown in FIG. 1 of Lewis, the tray 14 is located beneath nozzle 18 so that the drops of gel 28 (i.e., beadlets) are distributed onto the hatchlings. Id. (citing Ex. 1003 ¶ 11). The Petition makes no reference to Goff in addressing the Third Limitation, so we do not agree with Petitioner’s assertion that we failed to properly consider Goff in addressing this” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Second, and as explained in our Decision, Petitioner’s reliance on Goff is strikingly similar to the examiner’s reliance on Bartlett, Kurtz, and Peterson. See Dec. 26, 28. During prosecution, the examiner relied on Lewis for disclosing a majority of the claimed limitations, and relied on Bartlett, Kurtz, and Peterson for teaching nozzles “of approximately uniform size arranged approximately evenly apart along a manifold.” See id. at 26 (citing Ex. 2001, 149, 317, 358, 409); see also id. at 7–10 (summarizing office actions dated July 30, 2010, October 15, 2010, February 24, 2011, and June 21, 2011, and January 4, 2012). In the Petition, Petitioner also relied primarily on Lewis, relying on Goff for “describ[ing] an apparatus for spraying animals that includes spray nozzles 18 evenly spaced along a linear manifold (top member 16).” Pet. 22 (citing Ex. 1004, 1:72–105, 2:20–58, Fig. 1); see also id. at 18–24 (relying primarily on Lewis in challenging claim 1). Petitioner does not persuade us that we misapprehended or overlooked anything in our determination that Goff is cumulative to the art cited during prosecution, namely, Bartlett, Kurtz, and Peterson. See Dec. 26. Accordingly, Petitioner’s first argument is unavailing.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“This argument, however, is untimely as it was not presented in the Petition. A Request for Rehearing is not an opportunity to present new arguments and evidence. 37 C.F.R. § 42.71(d) (A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.”). In the Petition’s statement as to why we should institute review despite the similarities with the prosecution history, Petitioner only argues, Goff, Lee, and Lopez were not considered by the Examiner during prosecution of the ‘185 patent. While Lewis and Johnston were made of record during prosecution of the ‘185 patent, the Examiner did not consider either reference in combination with the other presently identified prior art references. Each ground of rejection presented herein therefore includes one or more prior art references that were not considered during examination. Pet. 5. Because the Petition did not argue that the examiner erred in overlooking Johnston, such as by forgetting Johnston, Petitioner’s argument in the Request is untimely. See 37 C.F.R. § 42.71(d)” slip op. at 7
Discretionary denialPatents in suitUS 8,794,185 - Clearh2o, Inc. v. Ceva Animal Health Inc.Institution deniedPTAB · Mar 18, 2020 · IPR2020-00039 · APJ Michael L Woods · IPR · Institution
The Board denied institution of IPR on claims 1–15 under § 325(d), finding the asserted art and arguments substantially similar or cumulative to those considered during examination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“§ 314(a) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . 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” (emphasis added)); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”). The exercise of our discretion to institute an inter partes review is informed by 35 U.S.C. § 325(d), which requires us to “take into account whether, and reject the petition . . . because, the same or substantially the same prior art or arguments previously were presented to the Office.” In evaluating whether to exercise our discretion under § 325(d), we weigh the following non-exclusive factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017) (precedential-in-part, indentations added for clarity). Upon reviewing the factors enumerated in Becton, Dickinson, we find that, on balance, the factors weigh in favor of exercising our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We have authority under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” Having considered the arguments and the evidence presented, for the reasons described below, we do not institute an inter partes review of any challenged claim.” slip op. at 2
Discretionary denialPatents in suitUS 8,794,185 - Avita Medical Limited v. Renovacare Sciences Corp.Institution deniedPTAB · Dec 18, 2017 · IPR2017-01243 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all grounds, finding the petition relied on the same or substantially the same prior art previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Our discretion pursuant to § 325(d) involves a balance between several competing interests. “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, are the interests of giving petitioner the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id.” slip op. at 5
Discretionary denialPatents in suitUS 9,610,430 - Adva Optical Networking, Inc. v. Rad Data Communications Ltd.Institution deniedPTAB · Mar 9, 2017 · IPR2016-01848 · APJ James A Worth · IPR · Institution
The Board denied institution on all challenged claims because the asserted prior art and arguments were the same or substantially similar to those considered during prosecution under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 314(a) is guided, in part, by the further language of 35 U.S.C. § 325(d), which provides: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.” 35 U.S.C. § 325(d); see generally Integrated Global Concepts, Inc. v. Advanced Messaging Tech., Inc., Case IPR2014- 01027, slip op. 7–8 (Paper 16) (PTAB Dec. 22, 2014) (declining to institute proceeding on claim where same prior art and substantially the same arguments were presented to the Office previously in reexamination). We agree with Patent Owner that the same prior art (i.e., AAPA and Rivaud) and substantially the same arguments were presented in the original prosecution of the ’689 patent. Petitioner’s asserted ground is identical to a rejection that was applied by the Examiner in the course of prosecution. The Examiner cited Admitted Prior Art as disclosing “a primary reference time clock that provides a reference time of day and a reference frequency,” and the Examiner relied upon Rivaud to “show a housing 1112 which houses the primary reference time clock and packet master clock.” Ex. 1007, 4. On this record, we find that the prior art submitted in the Petition is indeed the same as prior art submitted to the Office.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“information presented in the petition filed under section 311 and any response filed under section 313 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(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we do not institute an inter partes review for the challenged claims.” slip op. at 2
Discretionary denialcites KSRPatents in suitUS 9,276,689
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.