- 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 - Sata GmbH & Co. KG v. Anest Iwata CorporationInstitution deniedPTAB · Feb 19, 2016 · IPR2015-01790 · APJ Jennifer S Bisk · IPR · Institution
Institution was denied for claims 15–22 because the §101 theory is not a permissible IPR ground and the §102/§103 challenges were substantially the same as those in the prior petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded that this argument presents a proper basis for instituting an inter partes review. 35 U.S.C. § 311(b) states that “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Petitioner does not explain how this theory, explicitly referring only to § 101, is a ground that could be raised under §§ 102 or 103 as required by § 311.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“arguments in the Prior Petition. We note that Petitioner does not refer to any particular portion of these declarations, but instead almost exclusively cites to the declarations—each of which is more than 30 pages—in their entirety. See, e.g., Pet. 20–22, 39–40, 44. While this is a violation of 37 C.F.R. § 42.6(a)(3), it also fails to direct us to the portions of the declarations that support Petitioner’s argument. Without such direction, it is difficult to give the testimony any weight. Moreover, we do not discern that the wholesale citation to the entirety of the declarations here amounts to the identification “with particularity” of “the evidence that supports the grounds for the challenge to each claim.” See 35 U.S.C. § 312(a)(3). In this case, merely bolstering previously-made arguments that we found lacking, generally accompanied with non-specific evidence, does not change the argument sufficiently for us to consider the argument not “substantially the same” for the purposes of § 325(d).8 We note, in addition, that Petitioner does not indicate that the additional testimony and references were unavailable when the Prior Petition was filed. Though, Petitioner is not barred from providing additional information in a later petition, we are more likely to exercise our discretion under § 325(d) where a petitioner uses repeated petitions to in an attempt to build a sufficient challenge incrementally.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot reached
“Pet. 3, 30–42. In the Prior Institution Decision, we determined that Petitioner had not met its burden to show that JP ’950 inherently discloses “said discharge end of said tip portion of said paint nozzle projects from 0.3 mm to 0.8 mm from said front end of said central opening in said air cap” (“the nozzle projection limitation”). 111 Inst. Dec. 10–11. In this Petition, Petitioner repeats the arguments of the Prior Petition, including that the nozzle projection limitation is “inherently disclosed in JP ’950 to a person of ordinary skill in the art to which this claim pertains.” Pet. 38; see also Pet. 31–32. In contrast to the Prior Petition, to support this assertion, Petitioner provides testimony from two declarants, Dr. Ewald Schmon (Ex. 1021) and Mark E. Charpie (Ex. 1032). Petitioner also refers to other prior art references as alleged corroboration of the inherency of this limitation. See Pet. 32 (“This claim limitation read on the JP ’950 drawings and disclosure as understood by a person of ordinary skill in the art to which this invention pertains. EXHIBIT 1004 pages 1–14. USP5456414 EXHIBIT 1013, Page 5.”).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious in light of JP ’950’s disclosure . . . to include the physical dimension of the downstream projection of the guide walls recited by claim 15. 111 Inst. Dec. 12. In this Petition, Petitioner repeats the arguments of the Prior Petition, including that a person of ordinary skill in the art would know, looking at the drawings of JP ’950, the amount of projection of the tip portion—and by implication, would find obvious the nozzle projection limitation. Pet. 44. In contrast to the Prior Petition, to support this assertion, Petitioner provides testimony from two declarants. Petitioner also refers to other prior art references as corroboration for the declarants’ testimony. See Pet. 44 (“Corroboration by Ransburg patents 5344078 EXHIBIT 1012 and 5456414 EXHIBIT 1013.”); Pet. 50 (“[C]laims 15–22 of the ’387 are unpatentable under 35 U.S.C. § 103 as obvious in view of the prior art, particularly JP ’950 in view of USP5456414 EXHIBIT 1013 showing forward projection of 0.508 mm. and in view of what is in the public domain Dr. Schmon Declaration EXHIBIT 1021.”). Again, Petitioner fails to cite to the specific testimony within the declarations, and also fails to provide a detailed discussion of how the cited prior art references corroborate this testimony.” slip op. at 6
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 6,494,387
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