- Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution deniedPTAB · Sep 20, 2024 · IPR2024-00822 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5‒6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. There is some overlap among these factors and some facts may be relevant to more than one factor. Id. In evaluating the factors, the Board takes a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review. Id.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“from his Declaration cited on page 17 of the Petition, however, Dr. Harwell essentially repeats verbatim the conclusions from the Petition quoted above: 98. As such, Ayers discloses that subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid. For example, fracturing fluid containing polyacrylamide, a common polymer additive to fracturing fluid, may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex with metal ions naturally present in the formation. Harwell Decl. ¶ 98, cited at Pet. 17. Dr. Harwell provides no additional scientific or technical basis for these conclusory restatements of Petitioner’s assertions, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15– 17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 31 (arguing that paragraph 98 of the Harwell Declaration “repeats the Petition essentially verbatim and fails to provide any further evidence or explanation on how Ayers discloses (or even suggests) the claimed subject matter”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also view Petitioner’s and Dr. Harwell’s conclusions as lacking because they fail to demonstrate that a “subterranean-formed metal-polymer complex” would necessarily have been present in Ayers’s subterranean formations. Instead, as noted by Patent Owner, both Petitioner and Dr. Harwell can muster only that “subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid” and that “fracturing fluid containing polyacrylamide . . . may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex . . . .” Pet. 17; Harwell Decl. ¶ 98 (emphasis added); see Prelim. Resp. 31–32 (presenting this argument). Even assuming these statements to be accurate, and even if the statements are unrebutted at trial, they are not sufficient on the record here to demonstrate compelling merits of anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).9” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states—without any supporting evidence—that Patent Owner (assumedly in the Parallel Litigation) has described a person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the [challenged p]atent [as having] at least a bachelor’s degree in chemistry, chemical engineering, petroleum engineering, geology, or the equivalent, and at least two years of experience in oil and natural gas well treatments, or an equivalent amount of relevant work and/or educational experience. Pet. 5. Petitioner “is prepared to adopt” this definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10–11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose constructions for any claim terms. See Pet. 11–12. In response, Patent Owner “agrees to accept the construction for any claim terms from the [challenged] patent it presented in district court . . . [,] none of which require a construction different from the plain import of the claim language itself.” Prelim. Resp. 12. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,697,282 - Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology LimitedInstitution deniedPTAB · Sep 22, 2023 · IPR2023-00587 · APJ Donna M Praiss · IPR · Institution
The Board denied institution for claims 1–17 under § 314(a), finding the parallel litigation favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel proceeding the grounds advanced in the petition. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 11–12, 12 n.5 (June 16, 2020) (informative). “The PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo, 7–8 (emphasis added); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A). Here, Petitioner’s stipulation extends to the same grounds raised in the Petition, but does not extend to any ground “that could have been reasonably raised,” pursuant to Sotera. Patent Owner points to the narrowness of the proffered stipulation in the Sur-Reply and asserts this factor “only marginally weighs in favor of institution.” Sur-Reply 3. Because Petitioner’s stipulation obviates some potential for duplication or redundancy with respect to the patentability of the challenged claims (albeit not to the extent a full Sotera-type stipulation would have) and the parallel litigation does not include claims 10–16, we determine that the fourth Fintiv factor weighs against denial of institution.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)). “[T]he reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable
“As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Fintiv Memo 4. While the Petition and Dr. Gido provide an explanation for the full range in which Iwai’s D90 necessarily would be found, the Petition and Dr. Gido identify only a single value for the adhesive porous layer thickness of Iwai’s Example 7 and Comparative Example 2. Pet. 48, 51; Ex. 1003 ¶¶ 165, 174. The Petition and Dr. Gido direct us to the average thickness “a” of Iwai’s adhesive porous layer without taking into account Iwai’s disclosure of the ratio of the average thickness layer “a” to the volume average particle diameter “r.” Iwai describes the volume average particle diameter “r” being “projected at a proper height . . . formed on a surface of the adhesive porous layer.” Ex. 1006 ¶ 43. Thus, the evidence of record purportedly mapping claim 1’s recited “thickness of the porous layer” to Iwai does not plainly lead to a conclusion that Iwai necessarily discloses to a POSA the claimed “ratio of Dv90 of the inorganic particles to the thickness of the porous layer is in a range from 0.3 to 3.0.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as anticipated by Iwai.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“In addition to the lack of support in the record for the Petition and Dr. Gido’s assumption that the porous layer thicknesses of Examples 4 and 5 are the same as the porous layer thickness of Example 1 discussed above in connection with the anticipation challenge of claim 1, the cited record does not plainly support Petitioner’s assertion that Nishikawa teaches or suggests claim 10’s recited “uniform coating solution.” The Petition acknowledges that Nishikawa teaches a mixed solvent containing DMAc and TPG to provide a coating slurry. Pet. 31; Ex. 1003 ¶ 64; Ex. 1005, 22:26–33 (Example 4), 22:46–51 (Example 5). Nishikawa teaches that the solvent mixture includes a polar solvent (DMAc preferred) and a poor solvent (such as TPG) that “induces a microscopic phase separation structure to facilitate formation of pores upon providing the heat resistant porous layer.” Ex. 1005, 11:1–5. The Petition does not sufficiently explain why such a phase separation structure produced by Nishikawa’s mixed solvent meets claim 10’s recited “uniform coating solution.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 10 as obvious over Nishikawa’s teachings.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,964,987 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677
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.