- Padagis Israel Pharmaceuticals Limited / Padagis US LLC et al. v. Bausch Health Ireland LimitedInstitution deniedPTAB · Jan 12, 2024 · IPR2023-01114 · APJ Michael A Valek · IPR · Institution
The Board denied institution of IPR challenging claims 1–11 because substantially the same art and arguments were previously considered, and Petitioner did not show material error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“factors. In the first part, we consider factors (a), (b), and (d) to determine whether the art or arguments presented in the petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, 8–10. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office,” then we advance to the second part of the analysis to determine “whether the petitioner has demonstrated a material error by the Office” in view of factors (c), (e), and (f). Id. Advanced Bionics instructs that “[i]f 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.” slip op. at 12
Discretionary denialPatents in suitUS 11,311,482 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 8, 2022 · IPR2022-00963 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution of IPR on claims 1–27 under § 325(d), finding substantially the same art and arguments 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 325dInstitution denied
“substantially the same as those previously presented to the Office. Advanced Bionics, 8–10. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office,” then we advance to the second part of the analysis to determine “whether the petitioner has demonstrated a material error by the Office” in view of factors (c), (e), and (f). Id. Advanced Bionics instructs that “[i]f 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 9–10.” slip op. at 10
Discretionary denialPatents in suitUS 9,421,199 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00965 · APJ Michael A Valek · IPR · Institution
The Board denied institution on claims 1–20 under § 325(d), finding substantially the same art and arguments had been considered during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“For these reasons, we determine that both the art and the arguments presented in the Petition are substantially the same as those previously presented to the Examiner.” slip op. at 21
Discretionary denialPatents in suitUS 10,076,515 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00964 · APJ Michael A Valek · IPR · Institution
The Board denied institution of inter partes review of claims 1–19 under § 325(d), finding the art and arguments substantially similar to those previously presented and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We again determine that Patent Owner has the better position. As explained above, the Examiner considered substantially the same art during prosecution. Although there was no rejection issued over the particular references cited in the Petition, those references were either before the Examiner (Siegel) or are cumulative of references (Chua & Tan and Lund) before the Examiner. There is no evidence that suggests the Examiner overlooked the most pertinent teachings in the art presented during prosecution. Indeed, the Teva rejection presented substantially the same arguments as the grounds in the Petition, including Patent Owner’s argument that there was “insufficient rationale to combine Teva and other references to produce a D2O-based formulation in which atropine is the monotherapeutic agent because atropine and its derivatives are specifically recognized as stable in ordinary water.” Ex. 2003, 69, 87–88. The Examiner credited this argument by withdrawing the Teva rejection and allowing the ’447 patent. Thus, we do not agree with Petitioner’s argument that the Examiner failed to consider whether it would have been “obvious to improve low-concentration atropine with D2O as a monotherapy for treating myopia.” See Pet. 63.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“D. Conclusion Based on the foregoing, we determine that the circumstances of this case warrant the exercise of discretion under 35 U.S.C. § 325(d) and therefore deny institution. ORDER After due consideration of the record before us, and for the foregoing reasons, it is: ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 25
Discretionary denialPatents in suitUS 9,770,447 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00966 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution of inter partes review of claims 1–13, 15–27, and 29–30 under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“For these reasons, we determine that both the art and the arguments presented in the Petition are substantially the same as those previously presented to the Examiner.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion Based on the foregoing, we determine that the circumstances of this case warrant the exercise of discretion under 35 U.S.C. § 325(d) and therefore deny institution. ORDER After due consideration of the record before us, and for the foregoing reasons, it is: ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 26
Discretionary denialPatents in suitUS 10,201,534 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 22, 2022 · IPR2021-01520 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of inter partes review of claims 1, 2, 4, 9-11, 13, 18, and 19 under § 325(d), finding the same art had been evaluated and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“If “either condition of first part of the framework is satisfied,” we must then determine “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. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9.” slip op. at 16
- Other 314aNot reached
“III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion under § 314(a) or § 325(d) to deny institution. See Prelim. Resp. 13–43; Prelim. Sur-reply 1–8; 35 U.S.C. §§ 314(a), 325(d). Petitioner argues that we should decline to exercise our discretion to deny institution. See Pet. 8–12; Prelim. Reply 1–10. For the reasons explained below, we exercise our discretion under § 325(d) to deny institution. Because we exercise our discretion under § 325(d) to deny institution, we do not reach discretionary denial under § 314(a).” slip op. at 15
Discretionary denialPatents in suitUS 9,686,193 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01270 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of review of claims 2–5, 11–14, 22, 23, and 26–28 under § 325(d) because substantially the same prior art was previously presented and material Office error was not shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Because it was submitted in an IDS during prosecution of the ’380 patent, Sourcefire qualifies as art that was “previously presented” to the Office.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Bionics framework, and based on the particular circumstances here, we conclude that the same or substantially the same prior art as in the Petition was presented previously to the Office, and Petitioner has not demonstrated that the Office erred in a manner material to patentability of the challenged claims. Accordingly, we determine that discretionary denial of the Petition under 35 U.S.C. § 325(d) is appropriate. IV. CONCLUSION For the foregoing reasons, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18
Discretionary denialPatents in suitUS 10,735,380 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01156 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of IPR challenging claims 1, 6–10, 15–21, 24, 25, 29, and 30, because the same prior art was previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“presented to the Office. Section 325(d) states, in relevant part, “[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 uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (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 the 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.” slip op. at 9
Discretionary denialPatents in suitUS 10,735,380 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 20, 2022 · IPR2021-01155 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution of IPR challenging claims 1–20 under § 325(d), finding the asserted art and arguments were previously presented and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Examiner during prosecution of the ’343 patent and that Mantripragada is cumulative to Buck, which was considered during prosecution of the ’343 patent. We further find that Patent Owner’s argument during prosecution that the packet transformation function is configured “to prevent an exfiltration operation” resulted in allowance of the claims of the ’343 patent, which overlaps with the argument that Patent Owner makes in this case against Petitioner’s challenges. Prelim. Resp. 35–36. Petitioner has not shown that the two-stage filtering process was a basis for the Examiner’s allowance of the claims of the ’343 patent over the cited prior art. We, therefore, find that the same or substantially the same prior art, and the same or substantially the same arguments, previously were presented to the Office under the first part of the Advanced Bionics framework.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Petitioner’s declarant testifies regarding the prosecution history of the ’343 patent. Ex. 1003 ¶¶ 85–90. He concludes that “the ’343 Patent claims were apparently allowed because the Examiner concluded that the prior art of record failed to disclose a two-stage packet filtering process,” mirroring Petitioner’s argument. Id. ¶ 90. Petitioner’s declarant does not indicate how the facts support this conclusion. As mentioned, Patent Owner’s argument during prosecution leading to allowance was that the ’343 patent’s claims recite applying the packet transformation function configured to prevent an exfiltration operation. Ex. 1002, 1614–1615, 1639. Petitioner’s declarant does not explain sufficiently where in the prosecution history Patent Owner argued that a two-stage packet filtering process distinguished the ’343 patent’s claims over the prior art, or where the Examiner allowed the claims because of two-stage packet filtering. Accordingly, lacking evidentiary support, the declarant’s testimony is entitled to little or no weight on this point. 37 C.F.R. § 42.65(a). Thus, we see no additional evidence or facts in the Petition that warrant reconsideration of the prior art. Therefore, we find that Petitioner has not demonstrated that the Office erred in a manner material to the patentability of the challenged claims under the second part of the Advanced Bionics framework.” slip op. at 18
Discretionary denialPatents in suitUS 10,567,343 - Nikon Corporation v. Carl Zeiss AG And ASML Netherlands B.V.Rehearing deniedPTAB · Feb 1, 2019 · IPR2018-00686 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Nikon’s rehearing request, leaving institution denied for claims 1–5, 7–10, 16, 24, and 30–33 based on § 325(d) and the priority-date analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically 1 The Petition, in an apparent typographic error, omits claim 5 from its listing of challenged claims on page 1. identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In the Institution Decision, we denied institution of Ground 1 based on our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we determined that the Kaifu reference relied on by Petitioner was considered during prosecution. Id. Petitioner asserts that we misapprehended or overlooked its arguments regarding why its contentions as to Kaifu were not considered by the Examiner.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written description. To satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must reasonably convey to those skilled in the art that the inventor possessed, at the time of filing, the subject matter that he or she has claimed. Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. Whether a specification complies with the written description requirement is a question of fact. Id. at 1351, 1355. Entitlement to a filing date extends only to subject matter that is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We determine that because the open ended term “comprising” was used in the original claim reciting “a” signal, the recitation of “a” signal and “one or more” signals would have the same scope. An indefinite article, such as “a,” in patent parlance encompasses “one or more” when used, as here, in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as amended, which removes the open ended preface “comprising” and changes the modifier of “select signals” from “a” to “one or more,” does not change the scope of the claim in that respect. It merely is a different phrasing. Thus, as we stated in the Institution Decision, any description of a system with one signal would necessarily support a claim to one or more signals. Inst. Dec. 28. Additionally, the claim, as amended, does not suggest there is choice between alternatives that would meet this claim. For example, the claim does not require a choice between a first type of signal and a second type of signal. The claim recites “one” signal, which can be optionally accompanied (“or”) by “more” signals.” slip op. at 8
Claim construction§ 112 disclosureDiscretionary denialPatents in suitUS 9,728,574
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.