• Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
  PTAB · Jan 12, 2018 · IPR2017-00780 · APJ James A Worth · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, finding no overlooked or misapprehended arguments concerning the denied grounds for claims 9, 10, 12–19, and 38.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 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 Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “The panel addressed Petitioner’s theory of modifying Radermacher’s teachings with Kenna’s teachings on, inter alia, pages 20–21 of the Decision, as referred to by Petitioner immediately above. Id.; see also id. at 16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21. Accordingly, we conclude that the Decision did not misapprehend or overlook any arguments in the Petition.” slip op. at 5

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 8,062,302
• Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
  PTAB · Jan 12, 2018 · IPR2017-00779 · APJ James A Worth · IPR · Rehearing

  The Board denied Smith & Nephew’s rehearing request, leaving in place the denial of institution on claims 9, 10, 12–19, and 38.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 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 Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “an inter partes review of claims 1–3, 5–8, 11, 20, 21, 24, 25, 28–37, 39–43, 47, and 95–125 as obvious over Radermacher, Alexander, and Woolson, and denied institution of the remaining grounds presented in the Petitions. Dec. 1, 3, 6, 39–40. For example, we found that Petitioner had failed to make a threshold showing that claims 13, 18, and 38 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, Woolson, and Kenna, or over the combination of Radermacher, Fell, Woolson, and Kenna. See id. at 16–23. Additionally, we found that Petitioner had failed to make a threshold showing that claims 9, 10, and 12 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, and Woolson. See id. at 23–24. We also found that Petitioner had failed to make a threshold showing that claims 14–17 and 19 of the ’302 patent are unpatentable under” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached

    “16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21.” slip op. at 6

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 8,062,302
• Cpi Card Group Inc. v. Gemalto S.A.Rehearing denied
  PTAB · Mar 14, 2017 · IPR2016-01092 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution for claims 6, 8–11, 15, and 16 over Griffin alone or with Matsumura.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s arguments as to the construction of “means for decorrelating” under 35 U.S.C. § 112, ¶ 6, as it relates to the second and third structures. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable

    “The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “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). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
  • BurdenNot shown unpatentable

    “The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “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). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5

  Claim construction
  Patents in suitUS 5,944,833
• Amerigen Pharmaceuticals Limited v. Shire LLCRehearing denied
  PTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing

  The Board denied Amerigen’s rehearing request, leaving claims 1–3, 5, 8, 9, and 11 uninstituted because Mehta did not disclose the claimed release limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Amerigen’s arguments with these principles in mind.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “These arguments are not persuasive. First, Petitioner cites no authority for the proposition that a generic disclosure, such as that discussed above, is an express disclosure of every possible permutation of that generic disclosure. Second, even if we were to accept, for the sake of argument, that Mehta’s combined disclosures constitute an express disclosure of a composition capable of delayed release of “essentially all [of the drug] . . . within about 60 minutes,” non-instituted claims 1–3, 5, 8, 9, and 11 further require that the delayed release is enteric (i.e., the composition releases the second dose of the drug in the intestines, not the stomach). As we noted in the Decision, however, Mehta does not use the word “enteric,” nor does Mehta discuss delivery of the delayed dose to the intestines. Dec. 28. Nevertheless, we considered the possibility that Mehta might inherently disclose a composition that releases into the intestine not less than 80% of the second dose of the drug within about 60 minutes of the delayed release. Accordingly, we turned to Mehta’s Examples 1–5, but determined that not one of the exemplified delayed release compositions achieved a release of “essentially all” of the drug from a delayed release coating within about 60 minutes—regardless of whether the delay was long enough to be considered enteric.3 Id. at 24. As we noted in the Decision,” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “This argument is not persuasive. We considered, for example, Dr. Elder’s testimony that one of ordinary skill in the art would expect “that the number of variables and number of experimental runs to optimize the coating for the amphetamine would present no unusual problems of technology or expense” because one “can use statistical experimental design to optimize a formulation within the 21 trials that Mehta discloses to design one for amphetamine salts” (Ex. 1005 ¶ 471), as well as Dr. Elder’s testimony that one would expect “that routine optimization of the coating using the parameters identified by Mehta would provide enough guidance for controlling the release timing” (id. ¶ 512). Nevertheless, we found the actual results reported by Mehta to be more compelling. As we stated in the Decision: [N]one of Mehta’s delayed release formulations that could be considered to be enteric by virtue of their delay periods (i.e., those with delays of 4 or 5 hours) had release rates of “essentially all” of the drug anywhere near the required time period. Even if Mehta could be read to suggest that a delay of 4 or 5 hours followed by a release of essentially all of the delayed dose within 60 minutes would be desirable, we are not persuaded that Mehta’s disclosure that “the amount of drug released is influenced by: amount of coating, ratio of the two 4 Amerigen supported its challenges with the Declaration of Edmund J. Elder, Jr., Ph.D., R.Ph., executed September 30, 2015 (“Elder Declaration”) (Ex. 1005). polymers, amount of talc, and curing time” is adequate guidance for one of ordinary skill in the art to achieve such a dosage form. In general, Mehta demonstrates that longer delays are accompanied by longer release times, with formulations that could be considered to provide enteric release (i.e., a release after a 4 or 5 hour [delay]) having 85% release times of 8 or more hours. Dec. 33–34 (citing Ex. 1003, Table 1).” slip op. at 8

  § 102 anticipation§ 103 obviousness
• Meyer Products, LLC v. Douglas Dynamics, L.L.C.Rehearing denied
  PTAB · Feb 29, 2016 · IPR2015-01247 · APJ James A Worth · IPR · Rehearing

  The Board denied rehearing, leaving institution on claims 18 under Pruss and Keeler and claims 1, 4–7, and 18 under Coates and Hetrick; other grounds failed the institution threshold.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsMixed

    “The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “back bar and a pair of side bars arranged in a triangular or ‘A’ configuration,” the Board misapprehended or overlooked the fact that the Specification of the ’757 patent does not define the term “A-frame,” that the Specification states that the patent is “limited . . . by the scope of the following claims and their equivalents,” and that the Specification also uses the term “frame” without the prefix “A-” or uses the term preceded by “mount,” “lift,” or “A-”. Request 3–6. Petitioner argues that this misapprehension causes the Board’s construction to be divorced from the Specification and the record evidence. Request 6 (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). As an initial matter, we note that Petitioner only cited to two portions of the Specification in the Petition in supporting its construction of “A-frame”: Ex. 1001, 4:62–64, 8:36–40. Pet. 8–9. Accordingly, we restrict ourselves to reconsideration of only this portion of the Specification. And upon reconsideration, we determine that the Board did not misapprehend or overlook the aforementioned cited portions of the Specification in construing “A-frame”; instead, the Board considered those portions expressly, but came to a different conclusion. Specifically, as set forth in the Decision, the fact that other shapes may be referred to in the Specification does not broaden the “A” shape of the “A-frame,” as recited in claims 1 and 4–7. The Decision notes Patent Owner’s suggestion that other claims, not at issue, might still allow for use of the invention with another shape for the frame. Decision 7. Petitioner argues that these other claims do not refer to an “A-frame.” Request 6. We agree. This argument is misplaced, however, as the lack of specificity of shape for the corresponding frame in the other claims is fully consistent with the notion that these other frames use a non-A-frame shape. Therefore, we are not persuaded that the Decision misapprehended or overlooked any arguments with respect to the asserted ground of anticipation by Pruss.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,928,757
• Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing denied
  PTAB · Sep 2, 2015 · IPR2014-01258 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied Hamilton Beach’s rehearing request, leaving institution denied for claims 22–24, 49–51, 54, 55, 65, and 66 based on insufficient § 103 showing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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 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. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “likelihood of prevailing on its assertion that claims 22–24, 49–51, 54, 55, 65, and 66 of the ’512 patent as unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 6,164,191 to Liu, iss. Dec. 26, 2000 (Ex. 1002, “Liu”); U.S. Patent No. 5,840,189 to Sylvan, iss. Nov. 24, 1998 (Ex. 1003, “Sylvan”); and U.S. Patent No. 3,446,624 to Luedtke, iss. May 27, 1969 (Ex. 1004, “Luedtke”) or over U.S. Patent No. 3,620,155 to Bixby, iss. Nov. 16, 1971 (Ex. 1005, “Bixby”); Sylvan; and Luedtke. Dec. 15–17, 18. Specifically, for claims 22–24 and 49–51, we determined that the Petition failed to explain how the relied upon references teach the limitations and how those same references would be combined. Dec. 12–13, 15. For claims 54, 55, 65, and 66, we agreed with Patent Owner that the Petition fails to explain where limitations are found and improperly incorporates arguments by reference to a Declaration of Alexander H. Slocum (Ex. 1009, “Slocum Declaration”). Dec. 17, 19.” slip op. at 2

  • BurdenDecided for patent owner

    “A petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). The Slocum Declaration contains argument, not discussed adequately in the Petition, regarding where limitations are found in the references and why an ordinary artisan would have been led to combine the references to attain the subject matter of claim 26. Under these circumstances, the Petition violates our rule that prohibits arguments made in a supporting document from being incorporated by reference into a petition. See 37 C.F.R. § 42.6(a)(3). After considering the cited portions of the Petition, we determine Petitioner has not shown that the Board misapprehended or overlooked a matter addressed in the Petition, and therefore, has not carried its burden of demonstrating an abuse of discretion in the Board’s decision.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “hospitality industry regulations teaches this limitation.” Pet. 33, 37 (citing Ex. 1007 ¶¶ 53–55; Ex. 1009 ¶¶ 100, 108). The portion of the Petition now cited by Petitioner provides a description of Liu, Sylvan, and Luedtke (Pet. 17–19) and a “Motivation to Combine Liu with Sylvan and Luedtke” (Pet. 19–22). Petitioner’s arguments do not explain how the descriptions of Liu, Sylvan, and Luedtke, and the asserted rationales to combine these particular references, support the contention that “Liu in view of relevant hospitality industry regulations teaches this limitation”—where the cited portions do not discuss “relevant hospitality industry regulations.” In sum, Petitioner does not direct us to any argument in the Petition that would have supported extending our analysis, regarding independent claims 53 and 64 and Liu, Sylvan, and Luedtke, to claims 54 and 65, or an analysis of “Liu in view of relevant hospitality industry regulations.” We are, therefore, unpersuaded to modify our Decision regarding claims 54 and 65.” slip op. at 3

  § 103 obviousness
  Patents in suitUS 7,770,512
• Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing denied
  PTAB · Sep 2, 2015 · IPR2014-01257 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied Hamilton Beach’s rehearing request, leaving claims 6, 7, 19, and 26 uninstituted because the Petition did not adequately explain the asserted obviousness combinations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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 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. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2

  • BurdenNot shown unpatentable

    “Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Petitioner cites a part of its Petition that is titled “Motivation to Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4

  § 103 obviousnesscites KSR
  Patents in suitUS 7,311,037
• Daicel Corporation v. Celanese International CorporationRehearing granted
  PTAB · Jun 26, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing

  Rehearing was granted in part, instituting review of claims 42–44, 47–51, 53, 55, and 56 for anticipation and claim 57 for obviousness.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a 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). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted

    “the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 99. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 99 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 101–102. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “terms, and we agree, for purposes of this decision, that claim 42 does not require a specific quantity of DME in the distillation overhead. We do not agree with Petitioner, however, that the Singh and ’507 patent disclosures are identical with respect to the addition of water to distillation column 22. As indicated in our Decision, both Singh and the ’507 patent describe adding small amounts of water to column 22 for the purpose of inhibiting impurity formation. See Dec. 5–6. The ’507 patent, however, includes additional description of adding water to column 22 for the purpose of producing DME in the distillation overhead. See id. at 7 (citing Ex. 1002, col. 11). This additional description of adding water to produce DME in the distillation overhead does not refer back to the description of adding water as an inhibitor (see Ex. 1002, 10:9–32), or otherwise indicate that the small amounts of water used to inhibit impurity formation in the ’507 patent and Singh processes would produce DME in a distillation overhead. In addition, for the reasons explained in our Decision (Dec. 25–26), Petitioner has not persuaded us that the prosecution history of the ’507 patent includes an admission by Patent Owner that the addition of any amount of water to the distillation step would result in DME in an overhead stream. See Req. Reh’g 10. In sum, Petitioner has not convinced us that our Decision was based on an erroneous claim interpretation or that we overlooked evidence that the addition of any amount of water in the steps common to the Singh and the ’507 patent processes would necessarily result in the presence of DME in a distillation overhead. With respect to Petitioner’s assertions regarding Akinori, we note the Petition relied on Akinori as evidence that DME was necessarily produced in the ’095 patent process. See Pet. 43. Petitioner did not explain how Akinori was relevant to show the presence of DME in the distillation overhead of Singh. For the above reasons, the Request for Rehearing is denied as to the challenge based on Singh in view of the ’095 patent and Akinori.” slip op. at 7

  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,076,507
• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.Rehearing granted
  PTAB · Jun 1, 2015 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing

  Rehearing was granted for claims 1 and 7 under § 103 over He and Korodi, and denied for the He and Currie ground.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground. III. CONCLUSION For the foregoing reasons, on rehearing, based on our review of the record before us, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the combination of He and Korodi. Therefore, we modify our Decision to institute an inter partes review of claims 1 and 7 for obviousness over He and Korodi. We determine, however, that we did not abuse our discretion in declining to institute review on the asserted ground based on He and Currie, and rehearing is denied as to that ground. At this stage in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, including the claim construction.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther

    “Based on the record before us, we are persuaded Petitioner has shown a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103. Accordingly, based on the record before us, we are persuaded the combination of He and Korodi is a proper combination.” slip op. at 10

  • Burden

    “With regard to the asserted ground of unpatentability of claims 1 and 7 for obviousness over He and Currie, Petitioner does not explain adequately the relative strengths or weaknesses of this ground and the grounds on which we have instituted. See Cisco Systems, Inc. v. Constellation Tech. LLC, Case IPR2014-01180, slip op. at 29–30 (PTAB Feb. 8, 2015) (Paper 8). The Currie reference has a filing date of September 24, 2004 and an issuance date of October 17, 2006. Thus, the Currie reference would not be prior art if Patent Owner were successful in establishing a conception date “at least as early as April 2004” and diligence from conception to reduction to practice. See Prelim. Resp. 11. Accordingly, the arguments presented in Petitioner’s Request for Rehearing do not apply to the combination of He and Currie. Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground.” slip op. at 11

  § 103 obviousnesscites KSR
  Patents in suitUS 7,671,279
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCRehearing granted
  PTAB · Feb 20, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Rehearing

  Rehearing was granted in part; review was instituted on four §103 grounds for claims 1–23, while the Boer-based challenge did not meet the institution threshold.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “patent in IPR2014-00553 (“this proceeding”). Paper 17 (“Dec.”). We observed that the grounds advanced in this proceeding “rely on teachings from Boer[1] and Wu[2] that Petitioner already identifies as disclosed by Webster” and that “Petitioner [had] not shown, and we [were] not convinced, that any of the additional grounds add substantively to the grounds on which we institute[d] inter partes review [in the related proceeding].” Dec. 16, 18. On January 2, 2015, Petitioner filed a Request for Rehearing (Paper 18, “Req. Reh’g”) that notes Patent Owner now raises an issue under 35 U.S.C. § 103(c) with respect to Webster in the related proceeding that it had not raised in its Preliminary Response. Req. Reh’g 1. Specifically, Patent Owner contends that Webster is not prior art to the ʼ195 patent because Webster and the ʼ195 patent “were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. § 103(c)(1). In view of Patent Owner’s new contention, which was not advanced until after institution, Petitioner requests rehearing of our denial of institution in this proceeding. See Req. Reh’g 4–5. We agree that, under these circumstances, rehearing is appropriate and we therefore reconsider our decision not to proceed on Petitioner’s challenges based on Boer and Wu.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed

    “We agree with Patent Owner that Boer lacks sufficient detail, even in combination with the other cited art, to support Petitioner’s challenge. See Prelim. Resp. 20. Consequently, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its challenge of claims 1–23 as obvious over Boer and other art.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Although each of the modulation schemes in this structure is a single- carrier modulation scheme, Petitioner contends that a person of ordinary skill in the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system,” observing that Wu references the 802.11a standard as a multi-carrier OFDM scheme able to achieve data rates faster than the 802.11b transmission rates. Pet. 48. Petitioner supports this contention with testimony by Dr. Almeroth, which we credit. See Ex. 1103 ¶ 66. Petitioner further reasons that the addition of the multi-carrier 802.11a modulation scheme “would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme.” Pet. 48 (citing Ex. 1103 ¶¶ 43–47, 65–68). Petitioner cites Böhnke for such a technique. Pet. 49. We are persuaded by Petitioner’s analysis on the present record.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “carrier modulation scheme, Petitioner contends that a person of ordinary skill in the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system,” observing that Wu references the 802.11a standard as a multi-carrier OFDM scheme able to achieve data rates faster than the 802.11b transmission rates. Pet. 48. Petitioner supports this contention with testimony by Dr. Almeroth, which we credit. See Ex. 1103 ¶ 66. Petitioner further reasons that the addition of the multi-carrier 802.11a modulation scheme “would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme.” Pet. 48 (citing Ex. 1103 ¶¶ 43–47, 65–68). Petitioner cites Böhnke for such a technique. Pet. 49. We are persuaded by Petitioner’s analysis on the present record.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 6,754,195

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.