- Phillips 66 v. Magēmā Technology LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01175 · APJ Brian D Range · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–4 were obvious over any asserted combination of references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are obvious over the combination of Weiss ’974, Weiss ’515, and ISO 8217:2017. Petitioner’s arguments show only that the fuel oil is a bunker fuel that complies with ISO 8217. See, e.g., Pet. 27, 47. These arguments alone are insufficient because ISO-8217-compliant bunker fuels can be either distillate-based or residual-based. Ex. 1003, 14–17; Ex. 1082 ¶ 29; Ex. 2007 ¶ 25. Thus, showing that a fuel is a bunker fuel or that a fuel complies with ISO 8217 does not show that the fuel is residual-based.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,533,141 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01174 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, or 5 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), 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.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has shown sufficiently that a person of ordinary skill in the art would have found it obvious to use Buchanan’s blending units to carry out Parkash’s blending process to produce any of HSFO1, HSFO2, or HSFO3. First, paragraph 40 of Buchanan teaches blending a generic “residual fuel product” with a generic “distillate fuel oil product” in order “to form a homogeneous final blended fuel oil product.” Ex. 1049 ¶ 40. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s generic blending teachings to apply to the production of the specific fuel oils Petitioner identifies as HSFO1, HSFO2, and HSFO3. Second, to the extent that Petitioner contends that Buchanan’s teaching applies to any mixture of two fuel oils, one residual and one distillate, we note that Parkash teaches blending multiple process streams, including several distillate streams and at least two residual streams. Ex. 1102, 14. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s two-stream blending unit to apply to Parkash’s multi-stream blending process. Third, Petitioner’s statement that “it would have been obvious to employ ‘[a]ny blending process as known by a [POSITA]’” in carrying out Parkash’s blending method is conclusory. Pet. 67. “[A] finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010)). In other words, Petitioner must provide “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A conclusory statement without supporting evidence or rationale does not provide the requisite reasoning. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 10–30. Petitioner disagrees. Pet. 7–13. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,604,709 - Berkeley Lights, Inc. v. The University Of British ColumbiaInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01250 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 9 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute this proposed level of ordinary skill in its Preliminary Response. See Prelim. Resp. 5–6. Because it is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’936 patent, we adopt Petitioner’s proposed level of ordinary skill in the art for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Regardless of whether Patent Owner is correct that the Petition is deficient under § 42.104(b)(3), our decision not to institute does not depend on the construction of “chamber” or whether claim 6 invokes § 112 para. 6. Thus, we do not need to construe either term explicitly for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Petitioner has the ultimate burden of persuasion on the question of whether a claim is entitled to the priority date of an earlier application. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). “[A] patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). In particular, “[t]o be entitled to a parent’s effective filing date, a continuation must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1.” In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013) (citations omitted). The test for the written description requirement “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). A prior application need not contain precisely the same words as are found in the asserted claims. See Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995); Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). On the other hand, “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997). A key factor in this written description analysis, which Petitioner did not clearly address in its Petition, is the meaning of “measuring a cell product” in limitation 1D. The ’936 patent discloses that “[t]he measuring the cell product [step] may be selected from one or more of: lineage staining; cell-surface protein staining; antibody staining; enzymatic assay; RT-PCR analysis; PCR analysis; sequencing; functional assay; and bead capture assay to characterize the cells.” Ex. 1001, 6:47–51. This appears to be definitional, such that the meaning of “measuring a cell product secreted by the individual clonal cell populations, or subset thereof,” as in limitation 1D, would include using any one of these listed techniques to analyze cell secretion products. This passage is also consistent with the other claims in the ’936 patent, such as claim 18, which depends from claim 1 and further states that the “measuring the cell product” step “comprises flowing a fluid comprising an immunostaining agent, an enzymatic reagent, a dye or a functionalized bead into the individual chambers.” Id. at 48:29–32; see also id. at 48:33–48 (similar limitations in claims 19–23). As Patent Owner persuasively shows on the present record, the ’213 application discloses many of these analytical techniques, including staining, functional assay, and bead capture. See Prelim. Resp. 15–17. We also find persuasive Dr. Pelanda’s testimony that a person of ordinary skill in the art would have understood that the references in the ’213 application to these analytical techniques relate to analysis of secreted cell products, and that a particular focus of the ’213 application was to use the microfluidic device for analyzing autocrine signaling, which involves detecting or analyzing cell secretions. See Ex. 2008 ¶¶ 22–32. For the above reasons, on the present record, Petitioner has not shown sufficiently that the ’213 application lacks disclosure such that Lecault is prior art to the challenged patent. Accordingly, we determine that Petitioner has not shown that there is a reasonable likelihood that it would prevail on its first and third grounds with respect to any of the challenged claims.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,421,936 - Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.Institution deniedPTAB · Nov 23, 2021 · IPR2021-01003 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that the challenged claims were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’236 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Preliminary Response, we determine that the Petition fails to meet the reasonable likelihood threshold of institution.9 As stated above, we find that the Petition lacks evidence that Ustun teaches a FIFO buffer, or any other buffer for that matter, that holds and outputs scanning data, or that it would have been obvious to implement a DMA controlled FIFO buffer as asserted because the Petition does not present a reasonable rationale, with rational underpinnings, supporting the combination of teachings. We also determine that the Petition fails to show how the limitations further recited in claims 34 and 18 are taught by the prior art. IV. CONCLUSION As stated in the paragraph above, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable as asserted. Accordingly, we deny the Petition. 9 Patent Owner presents additional arguments concerning discretionary denial under 35 U.S.C. § 325(d). Because we determine that the Petition is deficient on the merits, we need not address that issue.” slip op. at 23
- Skill levelOther
“minimum standard at having a Bachelor’s degree in electrical engineering, computer science, or a related field, and three to four years of industry experience. Pet. 8. Patent Owner agrees that a degree in electrical engineering is necessary and adds that a person of ordinary skill in the art must understand the electronic components at issue. Prelim. Resp. 17. Patent Owner further remarks that Petitioner’s declarant, Dr. Huber, lacks the qualifications to meet the proffered level of ordinary skill in the art because Dr. Huber lacks the proposed bachelor’s degree. Id. Patent Owner further remarks that Dr. Kia, on the other hand, satisfies the proffered level of ordinary skill in the art because Dr. Kia has a Ph.D. in electrical engineering and has the requisite work experience. Id. 7 Manish Kankaria, Design and construction of a fast spectrometer for Fourier domain optical coherence tomography, Doctoral Thesis, University of Texas at Arlington, May 2006, filed as Exhibit 1011 (“Kankaria”). level of ordinary skill in the art or whether any of the declarants satisfies such a level. Neither party argues that the obviousness determination hinges on the level of ordinary skill. Accordingly, we do not find it necessary to define the level of skill with specificity save to note that the level of ordinary skill is evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“would have implemented a DMA-controlled FIFO in Ustun because it would significantly improve data speeds. Pet. 17. But as Patent Owner points out, Ustun’s design specifically addresses the speed of the data transfer as “sufficient.” PO Resp. 38 (citing Ustun at 5). Dr. Kia explains that Ustun intentionally chose to make the transfer “low speed” because it was more than sufficient. Kia Decl. ¶ 94. In contrast, Dr. Huber states that a DMA FIFO configuration was particularly appropriate for transferring large amounts of data, “such as the scanning data for OCT in Ustun.” Huber Decl. ¶ 64. This explanation is insufficient because Ustun does not describe the size of its transferred data, such that a person of ordinary skill in the art would recognize that higher speeds would be desirable. The lack of detail in Dr. Huber’s testimony, in comparison with the detailed explanations provided by Dr. Kia, supported by Ustun’s disclosures, leads us to the conclusion that Petitioner’s proffered rationale of data speed improvement is untenable on the present record. Nevertheless, even if Ustun’s data transfer speed were a reason to try a DMA-controlled FIFO configuration, Dr. Kia explains that Ustun’s speed would not actually increase because the speed constraint in Ustun is frame rate. Id. ¶ 95. In other words, speeding up the transfer of the initialization data would not change the speed at which the “real-time” images are obtained and displayed. We credit Dr. Kia’s testimony on this issue over the testimony of Dr. Huber, which does not provide any details of the asserted implementation. Compare Huber Decl. ¶ 64 (stating in one conclusory sentence that a person of ordinary skill in the art would have known that DMA FIFO was particularly appropriate for transferring large amounts of data, such as the scanning data for OCT in Ustun) with Kia Decl. ¶¶ 94−95 (providing explanation of Ustun’s operation and the alleged speed constraints in Ustun which would not be improved by implementing a DMA-controlled FIFO buffer). Thus, Patent Owner has shown persuasively the impact of Petitioner’s reliance on a generic rationale of improving speed that is divorced from the realities of the application sought to improve. See ActiveVideo Networks Inc. v. Verizon Comm., Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (finding that expert testimony of motivation to combine “to build something better,” be “more efficient, cheaper, or” something that “had more features” was generic and insufficient). Accordingly, we are not persuaded that Petitioner’s proffered rationale of improving data speeds is sufficient to implement a DMA-controlled FIFO buffer instead of the standard BlockRAM.” slip op. at 17
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,398,236 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Nov 2, 2021 · IPR2021-00800 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on all grounds because the Petition’s deficient, unclear arguments did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
- BurdenDenied
“Although it might be possible for us to guess at the support Petitioner intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
NonePatents in suitUS 10,289,154 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Sep 3, 2021 · IPR2021-00681 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because the Petition did not sufficiently identify where the challenged claim limitations were taught or explain the evidence supporting its grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to explain Petitioner’s positions fully. Where the Petition provides some explanation, it does so only through a web of internal cross-references that require the reader to engage in extensive analysis just to decipher what is being argued, much less evaluate the merits of that argument. Although it might be possible for us to wade through this voluminous information and separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Instead, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999), Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’688 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 16
NonePatents in suitUS 8,289,688 - Daiichi Sankyo, Inc. / Astrazeneca Pharmaceuticals, LP v. Seagen Inc.Institution deniedPTAB · Jun 24, 2021 · PGR2021-00042 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution of PGR on claims 6–8 under § 324(a), finding that the Fintiv factors favored discretionary denial despite potential merit in the enablement challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“parties. We recognize that many legitimate reasons may lead a party not to file a motion to stay a parallel proceeding prior to the Board’s institution decision, including because such a motion may be viewed as premature. Be that as it may, our precedential guidance instructs us to consider whether the court has granted a stay of the parallel proceeding, or whether evidence exists that a stay may be granted upon institution. Fintiv Order at 5–6. As it stands, the record lacks sufficient evidence to suggest that a stay has been granted, or may be granted in the future. It is a judge who determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties. We decline to infer, based on actions taken in different cases with different facts, how the district court judge would rule should a stay be requested in the Texas Litigation. For these reasons, we determine that the facts underlying this factor are neutral.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard is set forth in § 324(a), which provides that a post-grant review shall not be instituted unless “the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
Discretionary denialPatents in suitUS 10,808,039 - Daiichi Sankyo, Inc. / Astrazeneca Pharmaceuticals, LP v. Seagen Inc.Institution deniedPTAB · Jun 24, 2021 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution of post-grant review for claims 1–5, 9, and 10 under § 324(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Additionally, the Board’s precedential Fintiv Order identifies several factors to be considered when analyzing issues related to the Director’s discretion to deny institution, with the goal of balancing efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“the Fintiv Order”). These factors include: 1) whether a stay exists or is likely to be granted if a” slip op. at 10
Discretionary denialPatents in suitUS 10,808,039 - PTAB · Jun 19, 2020 · IPR2018-01574 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the petition did not show a reasonable likelihood of proving claims 1–3, 6, and 7 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“solely on Liaw’s Fig. 2C, ignoring the portions of Liaw relied on by [Petitioner] and the balance of the unrebutted evidence which uniformly established that a person of ordinary skill would have envisaged Liaw’s dielectric spacer layer as surrounding the gate line.” Req. Reh’g 12–13. We did not ignore any evidence. As discussed above, Petitioner argued that Liaw’s process of blanket deposition followed by anisotropic etching inherently would produce as a result the “spacer surrounding the gate line” recited in the challenged claims. A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted). “Inherency, however, 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.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). Here, Dr. Thompson testified that Liaw’s process would result in the formation of spacers surrounding the gate lines, Ex. 1002 ¶ 223, but Liaw itself showed that a process of blanket deposition followed by anisotropic etching need not necessarily produce that result. Ex. 1003, 3:61–4:6, Fig. 2C. That our Decision focused on the evidence demonstrating the failure of Petitioner’s inherency argument does not mean that we ignored any other evidence. Accordingly, we are not persuaded that this argument shows an abuse of discretion.” slip op. at 9
- Strike new argumentNew argument disregardedOther
“deposition alone,” without any later anisotropic etching, forms a spacer surrounding the gate line, “satisf[ying] the limitation at issue.” Req. Reh’g 7–9. This is a new argument, not previously presented by Petitioner. As noted above, Petitioner argued previously that Liaw’s entire process (including both blanket deposition and the anisotropic etching that follows) “leaves dielectric sidewall spacer material on all vertical surfaces (or sidewalls) of the gate line.” Pet. 33. Similarly, Dr. Thompson testified that “Liaw’s sidewall spacers surrounded the gate line” because, “[a]fter [Liaw’s] etching step, dielectric sidewall spacer material was left on the perimeter of the gate (i.e., spacers on the long lateral sides and at the end faces of the gate line).” Ex. 1002 ¶ 223. Dr. Thompson also testified that the process described in the challenged patent (including both “blanket deposition” and “Reactive Ion Etching”) “resulted in sidewall spacers that ‘surround the respective gate lines.’” Id. ¶¶ 269–270 (quoting Ex. 1001, 6:11–23). Petitioner argued the same. Pet. 33. In addition, Petitioner argued that Mandelman produced its spacers by blanket deposition followed by “reactive ion etching or plasma etching.” Id. at 62–63; see also Ex. 1002 ¶ 317 (Dr. Thompson testifying that Mandelman produces its spacers in this way). Thus, Petitioner’s argument on rehearing that a spacer surrounding the gate line would have been formed by blanket deposition alone, even in the absence of etching, is new. The presentation of such a new argument violates the requirement that Petitioner identify the place in the record where it previously addressed any argument it raises in the Rehearing Request. 37 C.F.R. § 42.71(d). Accordingly, this new argument is improper on rehearing, and we do not consider the merits of this argument.” slip op. at 5
NonePatents in suitUS 9,070,719 - Gilead Sciences, Inc. v. The United States Of America, Represented By The Secretary Of The Department Of Health & Human ServicesInstitution deniedPTAB · Feb 20, 2020 · IPR2019-01453 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–11 and 13 unpatentable over Szekeres, Smith, or their combination.
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). 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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Neither Szekeres nor Smith was cited during examination of the ’509 patent. Pet. 87–88. Instead, they “were considered during examination of a subsequently filed application.” Id. at 88; see also Prelim. Resp. 20 (Patent Owner conceding that “the Examiner considered Petitioner’s asserted references in the ’191 patent after the ’509 patent issued”). Under such circumstances, and because, as explained below, we deny institution based on substantive analysis of the Petition, we decline to decide whether institution should be denied on a discretionary basis under § 325(d).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“facts unique to each patent. See, e.g., Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373–76 (Fed. Cir. 2019) (affirming construction that result or efficacy language appearing in a wherein clause was limiting in light of the intrinsic evidence as a whole). Indeed, determining whether allegedly non-limiting language in a preamble or otherwise “involves examination of the entire patent record to determine what invention the patentee intended to define and protect.” Rowe v. Dror, 112 F.3d 473, 478–80 (Fed. Cir. 1997); Allergan, 935 F.3d at 1374 (holding the court “must read the claims in view of the entire specification” and prosecution history) (internal quotation marks and citations omitted). Based on the entire intrinsic record, we find “protection” is at the heart of the ’509 patent’s invention. In the body of claim 1, step (a) recites “selecting a primate host not infected with the immunodeficiency retrovirus.” Ex. 1001, 12:41–42 (emphases added). The “immunodeficiency retrovirus” in step (a), therefore, requires the preamble language for antecedent basis. Also, the preamble provides meaning about the nature of the infection recited in the body of the claim: “a self-replicating infection by an immunodeficiency retrovirus.”4 Id. at 12:38–39.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Moreover, the brief, high-level mention in Szekeres of Truvada’s FDA-approval does not sufficiently describe Truvada’s use in a PrEP treatment that satisfies step (b) of the claims. When anticipation is the issue, close is not enough. Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1560 (Fed. Cir. 1985) (holding “anticipation is not shown by a prior art disclosure which is only ‘substantially the same’ as the claimed invention”), overruled on other grounds, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc). Indeed, “[a] prior art disclosure that ‘almost’” discloses all the elements arranged exactly as in the claim, “may render the claim invalid under § 103, [but] it does not 18 ‘anticipate.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.”). Here, Petitioner’s theory pieces together a host of disclosures, such as a potential for resistance with certain agents, and then filters and combines those disclosures based on what an ordinarily skilled person allegedly would have “understood” to ultimately conclude that Szekeres unambiguously describes PrEP combination therapy with Truvada.5 Pet. 38–42. But Szekeres simply does not describe in any adequate detail actual or prophetic use of Truvada in a PrEP regimen. In sum, Szekeres does not disclose step (b).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,044,509
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.