- Neogenomics Laboratories, Inc. v. Natera, Inc.Institution deniedPTAB · Jun 21, 2024 · IPR2024-00346 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution for claims 1–28 under § 325(d), finding the same or substantially the same art had been presented to the Office and no material examination error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If 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 inter partes review.” Id. at 8–9. “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 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that the examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.10 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“erred when considering the multiplex-amplification limitation. See Advanced Bionics, 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.”). Under the asserted grounds, Petitioner relies on Forshew as the sole reference to teach this limitation, which is required in all challenged claims. Thus, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.” slip op. at 13
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,530,454 - Sandoz Inc. v. Acerta Pharma B.V.Institution deniedPTAB · Aug 7, 2023 · IPR2023-00478 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution of review of claims 8–12, 19, and 20 under § 325(d), finding the asserted art substantially the same as art previously presented and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“we agree with Patent Owner that, because Barf is nearly identical to Barf-PCT in its disclosure – Barf is “substantially the same art” as Barf-PCT, which was previously presented to the Office. Advanced Bionics, 8.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsDenied
“for a certificate of correction is meritorious; instead, we are tasked with simply assessing whether there is a sufficient basis to support Patent Owner’s position. If so, it is up to the Director to decide whether to exercise the authority under § 255 and issue a certificate of correction. We have reviewed the arguments in the Motion and conclude that “there is a sufficient basis supporting Patent Owner’s position that the mistake may be correctable.” Honeywell, 939 F.3d at 1349. However, because as discussed above (see supra Section III), we deny institution here pursuant to our discretion under Section 325(d), we find that whether Barf is or is not prior art is immaterial to this proceeding and Patent Owner’s request and any certificate of correction here is moot. Therefore, we deny as moot the Motion for leave to file a Certificate of Correction.” slip op. at 22
Discretionary denialPatents in suitUS 10,272,083 - 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 - Atrium Medical Corporation v. Bard Peripheral Vascular, Inc.Institution deniedPTAB · Jan 20, 2022 · IPR2021-01199 · APJ James A Tartal · IPR · Institution
The Board denied institution on all challenged claims and grounds under § 325(d), finding the art previously presented to the Office and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). 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.” 35 U.S.C. § 314(a). The Board has discretion to deny a request for institution when the information presented shows that the petitioner raises “the same or substantially the same prior art or arguments previously presented to the Office,” for example, during patent examination or” slip op. at 2
- Expert testimonyPetitioner expert discountedOther
“See Pet. 54 (citing Ex. 1012, 27–28; Ex. 1038, 2). Mr. Leschinsky’s testimony regarding Bardport on this point is likewise incorrect. See Ex. 1003 ¶ 100. 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 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 15
Discretionary denialPatents in suitUS 7,785,302 - Atrium Medical Corporation v. Bard Peripheral Vasulcar, Inc.Institution deniedPTAB · Jan 10, 2022 · IPR2021-01197 · APJ Ryan H Flax · IPR · Institution
The Board denied institution of IPR challenging claims 8, 9, and 11 under § 325(d), finding the same art had been presented before and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating the exercise of discretion to deny institution under 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 18
- Expert testimonyOther
“5 It is specifically this portion of Melsky that Petitioner cites as teaching a power-injectable access port, as claimed. See Pet. 27, 31, 36; see also Ex. 1003 ¶¶ 66, 70, 74 (analyzing Melsky and concluding it teaches a power injectable port, as claimed). We note that Melsky never expressly mentions a power injectable port. See generally Ex. 1008. Petitioner’s witness relies on Melsky’s disclosure that its port can withstand pressures of 200 psi or more as inherently disclosing a power injectable port; however, the witness merely concludes this without citation to supporting evidence. This is meager evidence of an alleged inherent disclosure intended to be a foundation of Petitioner’s challenges in this proceeding. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358–59 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”).” slip op. at 16
Discretionary denialPatents in suitUS 7,959,615 - 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 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Institution deniedPTAB · May 4, 2016 · IPR2016-00134 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims, exercising discretion against the follow-on petition and alternatively rejecting it under § 325(d) because Hsu and Yamakawa were substantially the same.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Given the undisputed facts as noted above, it would be unjust to Patent Owner to institute review in this proceeding. Petitioner has provided no rationale on why it waited until November 4, 2015, more than five months after filing of the first petition on June 1, 2015, in IPR2015-01318, to file the Petition in this proceeding, given that Petitioner was aware of Hsu at least by May 8, 2015. Notably, in IPR2015-01318, Patent Owner’s preliminary response was filed on September 10, 2015. On the other hand, not instituting review in this proceeding would not be unjust to Petitioner, because Petitioner was aware of Hsu when the first petition was filed on June 1, 2015, in IPR2015-01318, and subsequently waited too long to file the second petition relying on Hsu with no apparent justification. Under the circumstances of this case, as explained above, we hold Petitioner accountable for its own actions and inactions. Given the limited resources of the Board, we exercise our discretion not institute review in this proceeding, which is the second petition filed by Petitioner against claims 1– 8 and 10–15 of the ’675 patent. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“discussion of Hsu, we find that Yamakawa and Hsu are substantially the same insofar as claims 1–8 and 10–15 of the ’675 patent are concerned. In IPR2015-01318, Petitioner asserted that claims 1–8 and 10–15 of the ’675 patent are anticipated by Yamakawa. In this proceeding, Petitioner asserts that claims 1–8 and 10–15 of the ’675 patent are anticipated by Hsu. Neither assertion is based on any inherency argument, and both assertions rely on a direct reading of each claim limitation onto the prior art. Nothing in either Yamakawa or Hsu had to be specially construed and neither Yamakawa nor Hsu sets forth any special definition of terms. With respect to the challenged claims, we are not cognizant of any necessary disclosure that is provided by Hsu but not Yamakawa. The differences between Hsu and Yamakawa have not been shown to be significant with respect to the challenged claims. The types of steps said to be disclosed by Hsu are the types of steps said to be disclosed by Yamakawa, and vice versa. If Yamakawa anticipates the challenged claims, it would be expected that the same assertion would be made about Hsu, and the same is true the other way around.” slip op. at 13
Discretionary denialPatents in suitUS 8,252,675
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.