- 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 - Intel Corp. v. Health Discovery Corp.Institution deniedPTAB · Sep 14, 2021 · IPR2021-00553 · APJ Per Curiam · IPR · Institution
The Board denied institution because Intel did not show a reasonable likelihood that claims 1, 5–7, 13, 18, 22, and 32 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“been obvious over Mukherjee and Platt. Pet. 20–68. As explained below, we find Petitioner has not shown a reasonable likelihood that it would prevail in its obviousness challenge based on Mukherjee and Platt.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 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) (2018). For the reasons set forth below, we deny institution of inter partes review under 35 U.S.C. § 325(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“feature weights because Mukherjee instead “only computes pattern weights, expressed as 𝛼𝛼s.” Prelim Resp. 25. We agree with Patent Owner that Petitioner has not adequately bridged the gap between the claimed feature weight and Mukherjee’s pattern weight. Although Petitioner’s expert contends that feature weight and pattern weight “are [] equivalent,” he implicitly concedes they are not in his additional assertion that they are “related and can be derived from one another.” See Ex. 1003 ¶ 92 n.14. We are also not persuaded by Petitioner’s argument that “a relationship exists between feature weight vectors, 𝒘𝒘, and pattern weight vectors, 𝜶𝜶, such that one can be mathematically derived and calculated from the other.” Pet. 30. Even if correct, Petitioner’s argument falls short because Petitioner offers no explanation as to why a skilled artisan would have done so. As Patent Owner notes, “a conclusion of obviousness is not dependent upon what a person of ordinary skill in the art could do, but rather what the hypothetical individual would do, and there was no motivation for Mukherjee or any person of ordinary skill in the art to [compute feature weights].” Prelim. Resp. 26. In short, we find that Petitioner has not produced the required “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Therefore, Petitioner has not shown a reasonable likelihood that it would prevail in establishing independent claims 1, 7, 13, 18, 22, or 32 (or claims 5 and 6 which depend from claim 1) would have” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Skill in the Art Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’483 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 19 (citing Ex. 1003 ¶ 15). Further, Petitioner asserts that “[a]dditional education could substitute for professional experience, and vice versa.” Id. Patent Owner does not contest that a skilled artisan would have this kind of background knowledge and experience; nor does Patent Owner suggest that Petitioner’s proposed level of skill leads to an improper understanding of the prior art or an improper patentability analysis. See generally Prelim. Resp. At this stage in the proceeding, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’483 patent.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,483 - Supercell OY v. Gree, Inc.Institution deniedPTAB · Nov 12, 2020 · PGR2020-00063 · APJ Lynne H Browne · PGR · Institution
The Board denied institution of PGR on claims 1–9, finding the § 101 arguments previously presented to the Office and the other grounds insufficient to show likely unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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. The Board recently explained a two-part framework that the Board uses under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or 4 “ObjectLabel” (Ex. 1007, “ObjectLabel”). 5 US 2015/0153913 A1, issued June 4, 2015 (Ex. 1008, “Ballard”). 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Board further explained that “[i]f a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute.” Id. at 8–9. “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.” Id. at 9. The Becton, Dickinson6 factors, which address discretion to deny when a Petition presents the same or substantially the same prior art or arguments previously presented to the Office, are instructive. Id. (“[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” (Footnote omitted)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“the ’432 patent”). Supercell Oy (“Supercell”) filed a petition requesting post-grant review of claims 1–9 of the ’432 patent. Paper 2 (“Pet.”). GREE, in turn, filed a preliminary response. Paper 8 (“Prelim. Resp.”). After considering the petition and the preliminary response, as well as all supporting evidence, we determine the petition does not demonstrate that it is more likely than not that at least one of the challenged claims of the ’432 patent is unpatentable. 35 U.S.C. § 324(a). Thus, we do not institute post-grant review of claims 1–9 of the ’432 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“‘“the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.’” Prelim. Resp. 11 (citing Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). “Rather, ‘the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had ‘possession’ of the claimed subject matter as of the filing date.’” Id. (citing Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“information.” Id. at 7:34–41. In particular, Ross explains that “[t]he user may interact with the secondary, tertiary, etc., virtual reality content and then return his view back to the movie wherein the movie has been adjusted to reflect the user’s interaction with the secondary, tertiary, etc., virtual reality content.” Id. at 7:41–45. Ross explains further that “while a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content (e.g., additional characters) is available in a different (e.g., secondary, tertiary, etc.) content area.” Id. at 7:46–50. Thus, we understand Ross to disclose a system wherein a user can turn their gaze from a primary area to a secondary, tertiary, etc., area to view content related to the content in the primary area. See Ross, 7:21–33 (“Responsive to the user turning his view from the primary virtual reality content . . . a sensory cue comprising . . . secondary, tertiary, etc., . . . may be displayed to the user.”). Further, we understand Ross to disclose a system wherein the user’s focus on an item in the primary area may activate a “popup” cue in the primary area directing the user to additional virtual reality content in a secondary, tertiary, etc., area. See id. at 7:46–50 (“[W]hile a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content . . . is available in a different (e.g., secondary, tertiary, etc.) content area.”). We do not, however, understand Ross’ “pop-up” cue to be activated in a secondary, tertiary, etc. area based on the user’s gaze position moving to the second area from the first area as required by claims 1, 8, and 9. See id. Therefore, because Ross describes displaying a “pop-up” cue while a user is viewing primary virtual reality content (see Ross, 7:46–50), Petitioner does not show persuasively that Ross discloses that “a gaze position moving to the second area from the first area” is an “information providing condition.” Furthermore, Petitioner’s cited testimonial evidence does not explain sufficiently how Ross discloses the recited “information providing condition.” See Ex. 1003 ¶ 73. For the reasons above, Petitioner does not show adequately that Ross discloses an “information providing condition [that] is a condition of a gaze position moving to the second area from the first area.”” slip op. at 18
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,406,432 - Agamatrix, Inc. v. Dexcom, Inc.Institution deniedPTAB · Mar 13, 2019 · IPR2018-01717 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution of inter partes review of claims 14–69 under § 325(d), finding that the same prior art had previously been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Examiner found that the prior art, including Berner, failed to disclose applying a voltage to the electrochemical sensor, wherein applying the voltage comprises at least one process selected from the group consisting of switching, cycling, and pulsing a voltage applied to the electrochemical glucose sensor. Ex. 1002, 259. The Examiner explicitly found that Berner “teaches the switching of a voltage to the electrodes, but disclosed such a feature as part of an iontophoretic electrodes embodiment for collection purposes.” Id. AgaMatrix now relies on the same disclosure in Berner of application of a voltage to the iontophoretic electrodes as evidence of disclosure of the applying and the switching, cycling, and pulsing claim elements that the Examiner found missing in Berner.” slip op. at 14
Discretionary denialPatents in suitUS 9,750,460
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.