- 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 - 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 - Robert Bosch Tool Corporation v. Sd3, LLCInstitution deniedPTAB · Mar 22, 2017 · IPR2016-01754 · APJ Scott A Daniels · IPR · Institution
The Board denied institution under § 325(d), finding the petition presented substantially the same prior art and arguments previously considered during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“similarities between the prior art references presented here, in this Petition, as compared to the prior art substantively considered by the Examiner, we determine that the evidence weighs in favor of a determination that the prior art asserted in the Petition was previously considered by the Office. We are persuaded that the prior art of Nieberle, either in view of the knowledge of one of ordinary skill in the art or Bielinski, and Lokey, either in view of the knowledge of one of ordinary skill or Bielinski, as asserted in this proceeding in grounds 1–4 against claims 1–8 and 10–17 are “the same or substantially the same prior art” as that specifically relied on and considered substantively by the Examiner, and overcome by Applicant, during prosecution of the underlying patent application. See 35 U.S.C. § 325(d).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“machine safety would have known could achieve the claimed speed and distance. This testimony, following his desired acceleration calculation however, fails to state affirmatively that it was even possible by explosive devices and capacitors to achieve the claimed time and distance performance characteristics asserted in the calculation. More importantly, Mr. Main’s testimony fails to persuasively explain how any known explosives or capacitors available to one of skill in the art at the time of invention, would have achieved such an acceleration and a mechanical actuation of the “moveable component 1/32nd of an inch within approximately 3 milliseconds or less after the dangerous condition is detected” as called for in claims 1, 13, and 16 of the ’279 patent. By way of another example, Mr. Main’s declaration refers to a spring loaded actuator disclosed by Bielinski, the secondary reference combined with Nieberle in ground 2, and asserts that it “could have provided sufficient energy (depending on size, etc.), and it would have been obvious to use it.” Ex. 1003 ¶ 258. Even assuming that Mr. Main is forthrightly stating that the “sufficient energy” developed by Bielinski’s actuator could actuate a moveable member to move 1/32nd of an inch in 3 milliseconds or less, nowhere in his declaration can we find that Mr. Main provides any persuasive technical reasoning or analysis to support this allegation. Id. (citing Ex. 1003, V.B.9).” slip op. at 18
- PTAB / AIA Trials › §315(b) time barNot reached
“IV. CONCLUSION We conclude that the facts and evidence do not establish a sufficient or persuasive reason for the Board to again consider the same prior art, the same claims, and substantially the same arguments as substantively considered in the examination of the application leading to the ’279 patent. Further, because we are guided by our analysis above to exercise our discretion in this threshold matter under 35 U.S.C. § 325(d) and deny institution in this case, we need not reach a different threshold issue raised by Patent Owner in their Preliminary Response, that is whether Petitioner is time-barred by an ITC investigation, (Inv. No. 337-TA-965), under 35 U.S.C. § 315(b).” slip op. at 21
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,011,279 - 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.