• Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaRehearing denied
  PTAB · Dec 21, 2020 · IPR2017-01753 · APJ Zhenyu Yang · IPR · Rehearing

  The Board denied Gilead’s rehearing request, leaving institution denied because Petitioner did not show the Board abused its discretion or misapprehended the obviousness record.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. Instead, 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. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2

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

    “before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5

  • BurdenDecided for patent owner

    “Under Rule 42.108(c), The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Thus, under the Rule, it is only genuine issues of material fact created by testimonial evidence provided by a patent owner with its preliminary response that we view “in the light most favorable to the petitioner.” 37 C.F.R. § 42.108(c) (2017).2 Because Patent Owner did not provide testimonial evidence in this proceeding, there is no “genuine issue of material fact created by such testimonial evidence.” Accepting Petitioner’s argument that we must always resolve any genuine dispute of material fact in the light most favorable to the petitioner would compel institution in every case where a petitioner presents unrebutted expert testimony. But a patent owner has no obligation to rebut the petitioner’s contentions or to submit an expert declaration rebutting the petitioner’s expert testimony. See 37 C.F.R. §§ 42.107(a) (“The patent owner may file a preliminary response to the petition.” (emphasis added)); 42.108(c) (“The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” (emphasis added)). And the Board is not required to accept every statement made by a petitioner’s expert as established fact simply because the patent owner does not submit contradictory expert testimony. Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020). Instead, “it is the Board’s duty to independently assess the strength of a petitioner’s argument and evidence.” Id., see also id. (“[I]n every case, it remains the Board’s essential function to make factual findings based on its view of the record.”).” slip op. at 3

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

    “In the Decision denying institution, we concluded that the evidence before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,815,830
• Energysource Minerals, LLC v. Terralithium LLCRehearing denied
  PTAB · Nov 6, 2020 · IPR2019-01601 · APJ Hubert C Lorin · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution for claims 9–16, finding the petition insufficient on anticipation by Maimoni and Jost and related obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3

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

    “the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 6

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

    “[u]nder these circumstances, where Jost raises the possibility of forming iron (III) hydroxide, while raising a doubt that iron (III) hydroxide even exists – we find that Jost does not describe, expressly or inherently, oxidizing to iron (III) hydroxide as claimed. At best, Jost is ambiguous about oxidizing to iron (III) hydroxide. But ambiguous references do not, as a matter of law, anticipate a claim See Wasica Finance GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (emphasis added) (“Anticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’ Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (emphasis added). For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim. See, e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (refusing to find claims anticipated when the prior art references were ‘unacceptably vague’); see also In re Hughes, 52 CCPA 1355, 345 F.2d 184, 188 (1965); In re Turlay, 49 CCPA 1288, 304 F.2d 893, 899 (1962) (‘It is well established that an anticipation rejection cannot be predicated on an ambiguous reference.’)”). Because Jost discloses only the possibility of iron (III) hydroxide and no other evidence has been provided to show that Jost nevertheless necessarily oxidizes to iron (III) hydroxide as claimed, based on the information, Petitioner has not shown sufficiently that the Jost reference anticipates, expressly or inherently, the claim step of “oxidizing the iron (II) salt to iron (III) hydroxide.” “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.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “an explanation as to how “the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5, as required by Claim 9” (Pet. 44). But “[t]here is no explanation” (Dec. 24). We reproduced ¶ 162 of the Gallup Declaration in the Decision (see Dec. 23–24), which states in full that The step in the Hazen process of sparging the brine with air (Stream 6) in the iron reactor will reduce the pH. The reduction of the pH is offset by the introduction of calcium hydroxide (Stream 5) to the iron reactor. In my opinion, the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5. Given the pH of the feed brine, these pH values occur as a result of the air oxidation and introduction of calcium hydroxide. We did not and still do not see Dr. Gallup providing any meaningful explanation as to why the steps of sparging and the addition of calcium hydroxide per the Hazen process set forth in Maimoni necessarily maintains the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,051,827
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCInstitution denied
  PTAB · Aug 10, 2020 · PGR2020-00020 · APJ Christopher G Paulraj · PGR · Institution

  The Board denied institution because Petitioner did not show that the sole design claim was more likely than not unpatentable under the asserted grounds.

  RulingsInstitution decision

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

    “A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has failed to demonstrate that it is more likely than not that the challenged claim is unpatentable based on the grounds presented. Therefore, we do not institute a post-grant review of that claim.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Designer of Ordinary Skill Petitioner contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design and work experience in the field of transportation design, or someone who has several years’ work experience in the field of transportation or automotive design. Pet. 31 (citing Ex. 1003 ¶¶ 37–42; Ex. 1004 ¶¶ 35–42). Patent Owner argues, without citation to evidence, that: [a] designer of ordinary skill in the art relevant to the ’099 Patent would have at least an undergraduate degree in automotive design, or other related industrial design field, with at least two years of relevant practical experience in designing automotive body parts. An increase in experience could compensate for less education, and an increase in education could likewise compensate for less experience. Prelim. Resp. 10. The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. For purposes of this decision and on the record currently before us, which includes testimony by Petitioner’s declarants, we adopt Petitioner’s proposed definition of the ordinary designer. Also, we point out that adopting Patent Owner’s definition would not alter the outcome of this Decision.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “November 13, 2018, we apply the same claim construction standard used in district courts. See 37 C.F.R. § 42.200(b) (2019). Generally in the context of a design patent, an illustration, rather than a verbal description, is the better representation of the claimed design. “As the Supreme Court has recognized, a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (quoting Dobson v. Dornan, 118 U.S. 10, 14, (1886)). Although preferably a design patent claim is not construed by providing a detailed verbal description, it may be “helpful to point out . . . various features of the claimed design as they relate to the . . . prior art.” Id. at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to the district court, in part, for a “verbal description of the claimed design to evoke a visual image consonant with that design”). Here, the overall visual appearance of the vehicle grille bezel design shown in Figures 1–5 of the ’099 design is clearly exemplified in the drawings. In other words, the elements and features of the ’099 design which contribute to the overall appearance of the design are readily discernable and apparent to any observer. We determine that the best description of the ornamental features of the ’099 design comes from the drawings themselves. Accordingly, we determine that no articulated verbal description is necessary to describe the overall ornamental nature of the ’099 design. Nonetheless, we have taken into account Petitioner’s verbal description of the design in our analysis, but agree with Patent Owner’s contention that Petitioner’s verbal description is an incomplete description of the actual design. Although we do not undertake a specific verbal construction, we acknowledge in our following analyses the relevant design characteristics of the ’099 design, including key similarities and distinctions in comparison to the prior art. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1332 (Fed. Cir. 2014) (Affirming that a verbal claim construction was unnecessary, the Federal Circuit explained that “the district court did not err by failing to provide an express verbal description of the claimed design; rather, it described the claimed design in the context of comparing it to the prior art.”).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “particular, we agree with Patent Owner that Petitioner’s analysis is deficient insofar as it fails to sufficiently consider the claimed design from the side perspective as shown in Figure 3 of the ’099 patent. The only photograph that Petitioner relies upon to show how the grille bezel of the 2014 Buick Enclave allegedly meets the claimed design from the side does not adequately show the features depicted in Figure 3. Petitioner provides a side-by-side comparison of Figure 3 of the ’099 Patent with the 2014 Buick Enclave, as reproduced below. The image above is offered by Petitioner to compare Figure 3 of Exhibit 1001 to page 1 of Exhibit 1007 to allegedly show that “the bezel is horizontally convexly curved, and the bottom of the u-shaped portion is forward of the substantially horizontal portion.” Pet. 44–45 (color in original). However, that photograph shows more of the front than the side of the grille bezel. It is not clear from the comparison photograph provided whether “the bottom of the u-shaped portion is forward of the substantially horizontal portion,” as required by Petitioner’s own textual claim construction. It is also not clear from the photograph that the “short, downward-pointing diagonal bezel segment at each end” as described in Petitioner’s textual construction extends backward from the “horizontal top portion” to meet the top end of the “substantially u-shaped bottom portion.” Petitioner does not explain why the ordinary observer would not have considered these features from the side perspective in determining the overall visual impression created by the claimed design. We agree with Patent Owner that Petitioner impermissibly ignores the full three-dimensionality of the claimed design.” slip op. at 19

  Claim construction§ 103 obviousness
• Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaInstitution denied
  PTAB · May 28, 2020 · IPR2017-02005 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9, 11, 12, and 28 were obvious over the ’787 patent and Brox.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . there is 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) (2012). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Parallel petitionsNot reached

    “ANALYSIS Discretionary Denial Patent Owner contends that we should exercise our discretion and deny institution because Petitioner filed four petitions to challenge the claims of the ’830 patent. Prelim. Resp. 11–12, 68. According to Patent Owner, “[f]our parallel petitions are inappropriate and have placed a substantial and unnecessary burden on the Board and Patent Owner.” Id. at 68. Petitioner points out that all four petitions were filed in 2017, before the Office started to disfavor multiple petitions against the same patent. Paper 33, 1. According to Petitioner, but for Patent Owner’s “efforts to stop these proceedings before they began” by asserting sovereign immunity, these proceedings would have concluded before the policy shift. Id. at 1–2. Under such circumstances, and because, as explained below, we deny institution based on substantive analysis of the Petition, we decline to consider whether institution should be denied on a discretionary basis.” slip op. at 7

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

    “Patent Owner discusses the terms “alkyl” and “aryl.” Prelim. Resp. 37–55. According to Patent Owner, “alkyl” means “a hydrocarbon group containing only single bonds.” Id. at 50. It points to Mcgraw-Hill Dictionary of Scientific and Technical Terms, which defines “alkyl” as “[a]n organic group that results from removal of a hydrogen atom from an acyclic, saturated hydrocarbon;” and “saturated hydrocarbon” as “[a] saturated carbon-hydrogen compound with all carbon bonds filled; that is, there are no double or triple bonds as in olefins and acetylenics.” Id. (quoting Ex. 2315, 64. 1754). Patent Owner argues that its construction is consistent with the disclosures of the ’830 patent. Id. at 50 (noting that in the ’830 patent, alkyl denotes “both straight and branched groups”) (quoting Ex. 1301, 5:15–16), Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018). 9 52 (observing that each named group of (C1-C6)alkyl in the ’830 patent is a hydrocarbon group containing only single bonds) (citing Ex. 1301, 6:37–39). Petitioner, although not offering any construction of the term, acknowledges that “alkyl” is “commonly understood” to include only saturated hydrocarbons. Pet. 21. On this record, we find Patent Owner’s argument persuasive and agree that “alkyl” is “a hydrocarbon group containing only single bonds.”” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For the R4 position, Petitioner argues that “aryl, aryl(C1-C6)alkyl” of the ’830 patent encompasses the “Ar” of the ’787 patent. Id., see also id. at 40 (“[B]oth the ’787 patent and the ’830 patent include an aryl substituent.”). We find that for the following two reasons, despite using the same term “aryl,” the R4 substituent options claimed in the ’830 patent does not encompass the “Ar” substituent selections of the ’787 patent. First, as discussed in the claim-construction section, the parties agree that “aryl,” as defined in the ’830 patent, excludes heteroaryl groups. Supra at 9; Pet. 21; Prelim. Resp. 42. “Aryl” in the ’787 patent, in contrast, “may be a heteroaromatic group containing one, two, three or four” heteroatoms. Ex. 1302, 4:65–5:3, see also id. at 3:56–58 (“Ar is a monocyclic aromatic ring moiety or a fused bicyclic aromatic ring moiety, either of which ring moieties is carbocyclic or heterocyclic and is optionally substituted.”). Second, when “aryl” is an ortho-fused bicyclic carbocyclic radical, the ’830 patent limits the system to “about nine to ten ring atoms.” Ex. 1301, 5:14–22. In contrast, in the ’787 patent, “an aryl group means an aromatic group containing 5 to 14 ring atoms.” Ex. 1302, 4:65–66. Because of at least these two differences, the “Ar” substituent selections of the ’787 patent are broader than the “aryl” substituent selections of the claims of the ’830 patent.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,815,830
• Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaInstitution denied
  PTAB · Apr 22, 2020 · IPR2017-01753 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9, 11–21, 23, 24, and 26–28 were obvious over the ’985 patent, Maruyama, and Sato.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is 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) (2012). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Parallel petitionsNot reached

    “ANALYSIS Discretionary Denial Patent Owner contends that we should exercise our discretion and deny institution because Petitioner filed four petitions to challenge the claims of the ’830 patent. Prelim. Resp. 9. According to Patent Owner, “[f]our parallel petitions are inappropriate and have placed a substantial and unnecessary burden on the Board and Patent Owner.” Id. Petitioner points out that all four petitions were filed in 2017, before the Office started to disfavor multiple petitions against the same patent. Paper 39, 1. According to Petitioner, but for Patent Owner’s “efforts to stop these proceedings before they began” by asserting sovereign immunity, these proceedings would have concluded before the policy shift. Id. at 1–2. Under such circumstances, and because, as explained below, we deny institution based on substantive analysis of the Petition, we decline to consider whether institution should be denied on a discretionary basis.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, and absent any special definitions, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any term expressly.” slip op. at 8

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

    “First, Petitioner relies on compounds 5 and 6 of the ’985 patent as the lead compounds for further modification. In each of those two compounds, the potential variables identified in formula VII are predetermined. Petitioner does not explain sufficiently why an ordinarily skilled artisan would have maintained the predetermined R16, R18, R19, R20, and W, and only modified R17. Second, the ’985 patent teaches that R17 of formula VII, which corresponds to R2 in challenged claim 1, could be “hydrogen, halo, hydroxy, (C1-C6)alkyl, (C3-C6)cycloalkyl, (C1-C6)alkoxy, (C3-C6)cycloalkyloxy, (C1-C6)alkanoyl, (C1-C6)alkanoyloxy, trifluoromethyl, azido, cyano, –N(Rz)C(=O)N(Raa)(Rab), –N(Rz)C(=O)ORac, or NRadRae.” Ex. 1102, 5:24– 29, 45:24–30. It further teaches that Rz is hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl; 14 Raa and Rab are each independently hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl; or Raa and Rab together with the nitrogen to which they are attached are pyrrolidino, piperdino or morpholino; and Rac is hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl; and Rad and Rae are each independently hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, pheneyl, or (C1-C6)alkanoyl; or Rad and Rae together with the nitrogen to which they are attached are pyrrolidino, piperidino or morpholino. Id. at 5:46–60, 45:49–64. Thus, the “several options” at the 2' position, according to Petitioner’s characterization (Pet. 39), in fact include thousands of possibilities. As Patent Owner correctly points out, “the ’985 Patent discloses many different substituents for the 2’ position and expresses no preference for the particular substituent (fluorine) [Petitioner] picked.” Prelim. Resp. 40.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,815,830
• Veterinary Orthopedic Implants, Inc. v. Depuy Synthes Products, Inc.Institution denied
  PTAB · Jan 22, 2020 · IPR2019-01332 · APJ Timothy G Majors · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 12–14 were unpatentable; claims 15–18 were disclaimed.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon considering the arguments and evidence, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that claims 12–14 are unpatentable. (Claims 15–18 are disclaimed as noted below). Thus, for reasons detailed below, we do not institute inter partes review of claims 12–18 of the ’921 patent.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “Patent Owner statutorily disclaimed claims 10, 11, and 15–18 of the ’921 patent. See Ex. 2023, 1; Prelim. Resp. 10 n.2; 37 C.F.R. § 42.107(e) (2019); 35 U.S.C. § 253; see Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Among 1 Petitioner identifies itself as the real party-in-interest. Pet. 62. 2 the claims challenged in this Petition, claims 15–18 are disclaimed and, thus, inter partes review cannot be instituted on those claims. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted on disclaimed claims.”); see, e.g., Paragon 28, Inc. v. Wright Med. Tech., Inc., IPR2019- 00894, Paper 17 at 29 (PTAB Sept. 25, 2019) (instituting review on some claims but not those that were disclaimed because “we conclude we cannot institute a trial on claims that have been disclaimed, and, thus, no longer exist.”); Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 at 2–3 (PTAB July 6, 2017) (precedential) (determining that review cannot be instituted where Patent Owner disclaimed all challenged claims). Accordingly, we do not further address Petitioner’s challenge to claims 15– 18 in this Decision.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at least a Bachelors of Science in Mechanical, Biomechanical or Biomedical engineering, or a related field of science, as well as at least three to seven years of experience in the field of orthopedic implants or would be a practicing veterinary surgeon with at least 3 years of experience and at least some experience in the design and/or use of orthopedic implants. Pet. 3–4; Ex. 1005 ¶ 28; Ex. 1027 ¶ 32. Patent Owner does not oppose this definition at this time. Ex. 2022 ¶ 7 (Dr. Kowaleski accepting Petitioner’s definition for purposes of his declaration). Because Petitioner’s proposed definition is unopposed and is not inconsistent with the cited prior art, we adopt it for the purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We disagree with Petitioner and conclude that the preamble is limiting. On this issue, the Federal Circuit’s decision in Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997) is instructive. In that case, the court noted that when a patentee “uses the preamble only to state the purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe, 112 F.3d at 478. The court noted, however, the corollary principle that the claim preamble has the import that the claim as a whole suggests for it, and that” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,523,921
• L’Oréal USA, Inc. v. University Of MassachusettsRehearing denied
  PTAB · Nov 16, 2018 · IPR2018-00779 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing and affirmed denial of institution because Petitioner did not show that the Board abused its discretion in construing the adenosine concentration limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Accordingly, Petitioner has not persuaded us that we have misapprehended or overlooked any matters with respect to our decision to deny institution. 37 C.F.R. § 42.71(d). III. CONCLUSION For the foregoing reasons, we conclude that Petitioner has not shown that the Board abused its discretion in denying institution of the challenged claims. See 37 C.F.R. § 42.71(d). ORDER Accordingly, it is ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 10

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

    “related grounds: that claims 1–7, and 9 are anticipated by JP ’1532; that claim 4 is obvious over JP ’153; and that claims 1–7 and 9 would have been obvious over the combination of JP ’153 and DE ’1073. Pet. 6–7. We declined to institute inter partes review. Dec.” slip op. at 3

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

    “adenosine may be topically applied to the epidermal layer of the skin, but also that adenosine so applied will penetrate the epidermis to reach the dermal layer. Dec. 9 (citing Ex. 1002, 5:20–23 (“For topical application, the penetration of the adenosine into skin tissue may be enhanced by a variety of methods known to those of ordinary skill in the art.”)). Topical application of adenosine will, therefore, result in adenosine being brought into contact with both the epidermis and the dermis. As also discussed in the Decision, the specification provides examples in which a concentration of adenosine within the range recited in the claims (10-4 M) is applied directly to dermal cells (fibroblasts), suggesting that the inventors considered it desirable for the dermal cells to receive the claimed concentration of adenosine. Id. In this context, the meaning of claim 1 is clear: adenosine is first topically applied to the epidermal layer of the skin and, only after it penetrates this outer skin layer, is a specific concentration (10-4 M to 10-7 M) of the adenosine “applied” to the dermal cells.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “A prosecution history disclaimer must be clear and unambiguous. “[W]hile the prosecution history can inform whether the inventor limited the claim scope in the course of prosecution, it often produces ambiguities created by ongoing negotiations between the inventor and the PTO. Therefore, the doctrine of prosecution disclaimer only applies to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (citing Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)). A “heavy presumption” exists in favor of the ordinary meaning of claim language. Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2013). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012).” slip op. at 7

  Claim constructioncites Phillips
  Patents in suitUS 6,645,513
• L’Oréal USA, Inc. v. University Of MassachusettsRehearing denied
  PTAB · Nov 16, 2018 · IPR2018-00778 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 1–7 and 9 because Petitioner did not show an abuse of discretion in the claim construction underlying the denial.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found 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. 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 the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “A prosecution history disclaimer must be clear and unambiguous. “[W]hile the prosecution history can inform whether the inventor limited the claim scope in the course of prosecution, it often produces ambiguities created by ongoing negotiations between the inventor and the PTO. . . . Therefore, the doctrine of prosecution disclaimer only applies to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (citing Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)). A “heavy presumption” exists in favor of the ordinary meaning of claim language. Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (internal quotation marks and citation omitted). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. (internal quotation marks and citations omitted). The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2013). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012).” slip op. at 7

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

    “As discussed in the Decision, the Specification discloses not only that adenosine may be topically applied to the epidermal layer of the skin, but also that adenosine so applied will penetrate the epidermis to reach the dermal layer. Dec. 10 (citing Ex. 1001, 5:13–14 (“For topical application, the penetration of the adenosine into skin tissue may be enhanced by a variety of methods known to those of ordinary skill in the art.”)). Topical application of adenosine will, therefore, result in adenosine being brought into contact with both the epidermis and the dermis. As also discussed in the Decision, the specification provides examples in which a concentration of adenosine matching the high end recited in the claims (10-4 M) is applied directly to dermal cells (fibroblasts), suggesting that the inventors considered it desirable for the dermal cells to receive the claimed concentration of adenosine. Id. In this context, the meaning of claim 1 is clear: adenosine is first topically applied to the epidermal layer of the skin and, only after it penetrates this outer skin layer, is a specific concentration (10-4 M to 10-7 M) of the adenosine “applied” to the dermal cells.” slip op. at 6

  Claim constructioncites Phillips
  Patents in suitUS 6,423,327
• Envirologix Inc. v. Ionian Technologies, Inc.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2018-00406 · APJ Ulrike W Jenks · IPR · Rehearing

  The Board denied EnviroLogix’s rehearing request, leaving institution denied because Ehses did not show a reasonable likelihood of proving any challenged claim anticipated.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is” slip op. at 2

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

    “anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 6

  § 102 anticipation
  Patents in suitUS 9,562,264
• Envirologix Inc. v. Ionian Technologies, Inc.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2018-00405 · APJ Christopher G Paulraj · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution, finding no reasonable likelihood that Ehses anticipated any challenged claim.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is” slip op. at 2

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

    “In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 4

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We remain unpersuaded by this argument. As discussed in our Decision, anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 19 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 82). In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “2 Although not established as prior art, the Ehses Dissertation indicates that TO- PRO-1 fluoresces in the presence of double stranded DNA, whereas SYBR Gold detects both double and single-stranded products. See Ex. 1004, 37. zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,562,263

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.