- Arconic Technologies LLC v. Novelis Inc.Rehearing deniedPTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing
The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13
NonePatents in suitUS 11,807,942 - Sports Nutrition Research, Ltd. v. Chemi NutraRehearing deniedPTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The 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 in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9
Claim constructionPatents in suitUS 10,869,843 - Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01262 · APJ Robert A Pollock · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show the prior art disclosed or enabled access to the mammalian FUT8 gene sequence required by claims 1–6.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“6, 2000 concerning the means and methods for creating cells in which the gene for the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 12. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6- fucosyltransferase, focusing, instead, on the “basic enabling techniques described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 14 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269(20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 73. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 17. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how that the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 6
NonePatents in suitUS 7,425,446 - Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01254 · APJ Robert A Pollock · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5 because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- BurdenDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Because Petitioner raised none 1 Genbank entry AB025198.1. “Mus musculus mRNA for alpha-1,6- fucosyltransferase, complete cds,” https://www.ncbi.nlm.nih.gov/nuccore /%20AB025198. 2 Yanagidani et al., Purification and cDNA Cloning of GDP-i-Fuc:N-acetyl- β-d-glucosaminyl fucosyltransferase (α1-6FucT) from Human Gastric CancerMKN45 Cells, 121 J. Biol. Chem. 626-632 (1997). 3 Naofumi Uozumi, Purification and cDNA Cloning of Porcine Brain GDPL-Fuc:N-Acetyl-β-D-Glucosaminide α1→6Fucosyltransferase, 271 J. Biol. Chem. 27810-27817 (1996). of the above arguments in the Petition, nor timely submitted any of Exhibits 1039, 1042, and 1043, Petitioner has not established that we misapprehended or overlooked this evidence. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866– 67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“of Drs. Van Ness and Jefferis. Req. Reh’g 12–14 (citing Ex. 1007 ¶¶ 18–20, 40–43, 77; Ex. 1026 ¶¶ 11–13). With respect to the latter, Petitioner points to Dr. Jefferis’s statement that a person of ordinary skill in the art “would have had knowledge of the scientific literature no later than October 6, 2000 concerning the means and methods for creating cells in which the gene for the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 11. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6-fucosyltransferase, focusing, instead, on the “basic enabling techniques described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 13 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269(20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 68. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 16–17. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 5
NonePatents in suitUS 8,067,232 - Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01252 · APJ Robert A Pollock · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1–12 because the petition did not establish access to the necessary mammalian FUT8 genetic material.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“isolated fucosyltransferase knock-out host cell.” Consistent with Patent Owner’s position, we construed the fucosyltransferease knock-out as “a disruption of FUT8, the gene encoding α1,6-fucosyltransferase.” Dec. 13. In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious the challenged claims because it failed to present sufficient evidence that one of ordinary skill in the art would have had access to the necessary genetic starting material. Dec. 19– 24. In particular, we determined that “Petitioner fails to establish adequately that DNA encoding a mammalian α1,6-fucosyltransferase was either available, or could be routinely obtained by those of ordinary skill in the art.” Id. at 24. According to Petitioner, our finding is “clearly erroneous” and based on “misunderstandings about the record evidence, as well as a failure to weigh, in full, unrebutted expert testimony before the Board.” Req. Reh’g 1. We do not find Petitioner’s argument persuasive.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Because Petitioner raised none of the above arguments in the Petition, nor timely submitted any of Exhibits 1 Genbank entry AB025198.1. “Mus musculus mRNA for alpha-1,6- fucosyltransferase, complete cds,” https://www.ncbi.nlm.nih.gov/nuccore /%20AB025198. 2 Yanagidani et al., Purification and cDNA Cloning of GDP-i-Fuc:N-acetyl- β-d-glucosaminyl fucosyltransferase (α1-6FucT) from Human Gastric CancerMKN45 Cells, 121 J. Biol. Chem. 626-632 (1997). 3 Naofumi Uozumi, Purification and cDNA Cloning of Porcine Brain GDPL-Fuc:N-Acetyl-β-D-Glucosaminide α1→6Fucosyltransferase, 271 J. Biol. Chem. 27810-27817 (1996). 1038, 1041, and 1042, Petitioner has not established that we misapprehended or overlooked this evidence. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866– 67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 11. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6-fucosyltransferase, focusing, instead, on the “basic enabling techniques to create the modified-antibody-producing mammalian cells described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 13 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269 (20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 77. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 20–21. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of the α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 6
NonePatents in suitUS 6,946,292 - PTAB · Nov 7, 2017 · DER2016-00003 · APJ Jameson Lee · DER · Institution
The Board denied institution because the petition lacked substantial evidence of derivation for any challenged claim, including sufficient proof of conception, communication, and the required claim comparisons.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support the assertion of derivation.4 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). A petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974). The showing of communication must be corroborated. 37 C.F.R. § 42.405(c). Assuming that corroborated conception and communication both are established, a petitioner would be able to regard as a derived invention those” slip op. at 3
- BurdenDenied
“B. The Alleged Invention – Conception and Communication First, Petitioner has not sufficiently specifically identified the features of an invention that he allegedly conceived. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “Petitioner Sindoni conceived of a major advance in the pickup truck equipment field”; and (2) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application.” Pet. 3, 16. We do not understand the position of Petitioner to be that Mr. Sindoni conceived of the very first ramp system for a pickup truck. An Information Disclosure Statement submitted by Petitioner during prosecution of the ’548 Application identifies three prior art references disclosing a ramp system for a pickup truck, i.e., U.S. Patent Nos. 3,976,209; 4,624,619; and 7,445,268. Ex. 3002. Also, Petitioner’s ’548 Application generally refers to preexisting ramps for pickup trucks and characterizes them as unsatisfactory. Ex. 1002 ¶ 5. Yet, neither the Petition nor the Declaration of Mr. Sindoni sets forth any particular feature of the “ramp system for a pickup truck” that Petitioner allegedly conceived, much less the entirety of what Petitioner has conceived. This deficiency alone dooms the Petition, because we do not know what was conceived by Petitioner. Second, Petitioner has not sufficiently identified the features of any invention that he allegedly communicated to Respondent. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application”; and “Petitioner disclosed the invention to Respondent to this end, and Respondent acknowledged receipt of the disclosure.” Pet. 3, 16. The Petition does not, however, point to corroborating evidence of communication or evidence of how Respondent has acknowledged receipt of Petitioner’s conceived “invention” at any time. The Declaration of Mr. Sindoni, the Petitioner, is no better. Mr. Sindoni testifies: “Details of the invention were communicated to FCA US LLC by me more than a year before FCA US LLC filed the Chrysler application and more than two years before the Sindoni application was filed.” Ex. 1003 ¶ 7 (emphasis added). However, Mr. Sindoni in his Declaration nowhere identifies or explains the referenced “[d]etails of the invention.” Submitted by Petitioner as Exhibit 1006 is a document that appears to be signed by Mr. Sindoni and a representative of an entity named “U.S. Patent Commission,” that pertains to disclosure by Mr. Sindoni of an invention to U.S. Patent Commission at some time. But that document has not been addressed in the declaration testimony of Mr. Sindoni. Nor is there a declaration from Angela Stevens, the individual who signed on behalf of U.S. Patent Commission, addressing the document. Thus, it has not been authenticated. Also, although the Petition generally refers to Exhibit 1006 as “Petitioner’s Invention Disclosure,” (Pet. 9–14), we do not know specifically what subject matter the Petitioner possibly had conceived because the Petitioner makes no averment in that regard. Furthermore, the content of Exhibit 1006 has not been explained either in the Petition or in the Declaration of Mr. Sindoni. Pages 4 and 5 of Exhibit 1006 appear to contain technical illustrations but are substantially illegible. On May 3, 2017, we issued an Order (Paper 7) stating: “[I]f Petitioner can provide a more legible copy of the last two pages of Exhibit 1006, then another full copy of Exhibit 1006, including the more legible last two pages, shall be filed within two weeks of the date of this communication.” Paper 7, 3. Petitioner filed no replacement copy of Exhibit 1006. We note also that the signature of Angela Stevens, on behalf of U.S. Patent Commission, on page 1 of Exhibit 1006, is undated, and Petitioner submitted no declaration of Angela Stevens to substantiate and explain her signature, e.g., when she received the document. In any event, Petitioner makes no explanation as to the relationship, if any, between U.S. Patent Commission and Respondent. We decline to assume that they are the same entity. Thus, we will not assume communication with U.S. Patent Commission is the same as communication with Respondent. For the foregoing reasons, the Petition is fatally deficient with regard to the” slip op. at 5
NonePatents in suitUS 9,067,525 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Institution deniedPTAB · Oct 25, 2017 · IPR2017-01294 · APJ James T Moore · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and “must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). (Emphasis added). Here, the Petition fails to identify any portion of the ’962 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations, and references a different document. See Pet. 24–25; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below. B. Asserted Grounds of Unpatentability To show that a challenged claim containing a means-plus-function limitation is unpatentable over the asserted prior art, Petitioner must show that the structure that corresponds to a claimed function, or its equivalent, is found in, or obvious over, the applied prior art. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice.” (emphases added)). In this case, Petitioner’s failure to construe the claims in accordance with our Rules is determinative. By failing to identify the structure, material, or acts in the ’962 patent Specification that correspond to the claimed functions, Petitioner necessarily has not shown where that structure, material, acts, or their equivalents are disclosed in the applied prior art. Compare Pet. 24–25, with id. at 37 (discussing “expandable inflatable means”), 37–38 (discussing “mounting and retaining means”), 45–46 (discussing “means for inflating”).” slip op. at 11
- BurdenDecided for patent owner
“challenged claim contains a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to construe the limitation and “must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). (Emphasis added). Here, the Petition fails to identify any portion of the ’962 patent Specification that describes the structure, material, or acts that correspond to the functions recited in the above-referenced limitations, and references a different document. See Pet. 24–25; see also 37 C.F.R. § 42.6(a)(3). It is not this panel’s responsibility to identify the portions of the Specification upon which it believes Petitioner may rely to support its positions with respect to 35 U.S.C. § 112 ¶ 6. Our Rules place this burden on Petitioner, so that the panel may evaluate effectively the challenged claims vis-à-vis the asserted prior art, as discussed below.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“With respect to these limitations, Petitioner contends that these limitations in some instances do and in others do not invoke 35 U.S.C. § 112 ¶ 6. Pet. 24–25. Petitioner, however, does not discuss the presumption associated with use of the word “means” in these limitations and does not provide a single citation to persuasive intrinsic or extrinsic evidence to suggest that the presumption is either warranted or unwarranted in any case. Instead, Petitioner incorporates by reference a letter between counsel in the co-pending district court litigation. Id. (citing Ex. 1007). Even if Petitioner’s incorporation of counsel’s positions in litigation by reference were proper,5 the cited letter also fails to explain how or why applicable intrinsic or extrinsic evidence warrants in selected instances only deviating from the presumption that use of the term “means” invokes 35 U.S.C. § 112 ¶ 6. Although this letter suggests that the parties may agree that § 112 ¶ 6 should or should not apply to these limitations, a non-binding agreement 5 See 37 C.F.R. § 42.6(a)(3), prohibiting incorporation by reference of arguments. between parties does not constitute persuasive evidence and does not suspend operation of our Rules requiring the Petitioner to identify the corresponding structure and function, or explain otherwise. Further, claim construction, and whether § 112 ¶ 6 applies, is a legal determination made based on a hierarchy of evidence––intrinsic evidence being the most persuasive. Lawyer argument is among the least persuasive.” slip op. at 10
Claim constructioncites PhillipsPatents in suitUS 6,371,962 - Duane Brockman v. Wesley BainterInstitution deniedPTAB · May 11, 2017 · DER2016-00002 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding because the petition did not provide substantial evidence that the challenged claims were the same or substantially the same as the invention conceived and communicated.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature. Claim 6 requires a motor movably mounted to a frame for translation between a retracted position and an extended position, and a control unit that causes both the motor and the anchor member to move from a retracted position to an extended position and from an extended position to a retracted position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such motor and control module, and the Petition does not account for such a feature.” slip op. at 8
- Adverse judgmentAdverse judgmentDenied
“II. Discussion In its Response to the Show Cause Order, Petitioner argues that 35 U.S.C. § 135 does not require a petitioner’s involved application to be maintained after a derivation petition has been filed, that Petitioner’s entire purpose for filing the Petition was for the Board to direct that “the Petitioner be added as a named inventor [in] Respondent[’s] Application,” and that “the Respondent be removed as a named inventor from the Respondent Application.” Paper 6, 1–2. Under the circumstances here, we do not enter adverse judgment against Petitioner for having abandoned the ’929 Application. Hereinafter, we discuss the merits of the Petition for purposes of determining whether a derivation proceeding should be instituted.” slip op. at 2
- BurdenNot shown unpatentable
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature.” slip op. at 8
NonePatents in suitUS 9,215,847 - Tietex International, Ltd. v. Precision Fabrics Group, Inc.Institution deniedPTAB · Feb 11, 2016 · IPR2015-01671 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution on both asserted § 103 grounds, finding no reasonable likelihood of success and exercising § 314(a) discretion for the Radwanski, Rowan, and Murch ground.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“We approach our discretion to deny a petition on a case-by-case basis. There are sufficient reasons under the specific facts of this case to exercise our discretion to deny institution on Petitioner’s asserted ground that claims 1–30 of the ’162 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Notably, in this proceeding, the claims of the ’162 patent are so similar in scope and content to those in the ’639 patent that Petitioner is relying on the same arguments that we found to be unpersuasive in the 1248 Final Decision. See Pet. 29; 1248 Final Dec. 22. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting an inter partes review in this proceeding when the same prior art references and arguments are asserted against substantially the same claim limitations as in the 1248 IPR.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“terminology as the claims in related US patent 8,501,639, which is the subject of [the] previously instituted [1248 IPR]” and argues “that for purposes of this proceeding, the same definitions should apply.” Pet. 7. In the 1248 IPR, we determined that the broadest reasonable interpretation of the term “intumescent” in light of the specification is “a substance that swells and chars upon exposure to heat or flame.” Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., Case IPR2014-01248, slip op. at 5–6 (PTAB Jan. 30, 2015) (Paper 14); see id., slip. op. at 4–5 (PTAB Jan. 27, 2016) (Paper 39). Petitioner and Patent Owner agree that “intumescent” as used in claim 1 of the ’162 patent should be interpreted the same way in this proceeding. Pet. 7; Prelim. Resp. 17. Therefore, for purposes of this Decision, we interpret “intumescent” to mean “a substance that swells and chars upon exposure to heat or flame.” B.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,796,162 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Jan 4, 2016 · IPR2015-01673 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds, finding the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1. Our analysis applies with equal force to the remaining claims forming the basis of the Ground 1 challenge.” slip op. at 12
- BurdenDecided for patent owner
“Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“found sulfuric acid described as an alternative for ammonium sulfate. But, then one has to ask: “Where has Petitioner set out to prove that a Gogek Example 3 composition with sulfuric acid used in place of ammonium sulfate meets the limitations of claim 32 as it depends from claim 1?” The relevant testimony is that of Dr. Frederick J. Hirsekorn. Ex. 1005, ¶ 84: Gogek renders the . . . [sulfuric acid] limitation of . . . Claim 32 . . . obvious at least because it discloses that the chemical adjunct may comprise sulfuric acid. Ex. 1003, 1:72–2:4. At the time of the . . . invention of the ’827 Patent, it would have been obvious to a person of ordinary skill in the art to add a small amount of the sulfuric acid as taught in Gogek to the specific formulation of Example 3 of Gogek in order to acid catalyze the inversion of the sucrose in the molasses to produce additional reducing sugars (e.g., dextrose) available for consumption during curing. Producing additional reducing sugar reactants in situ would help ensure that all of the ammonium cations react with the carbonyl group of a reducing sugar, and allow the reaction to run to completion through the consumption of all reactants. Completing the reaction would also improve the quality of the binder. Therefore, one of ordinary skill in the art would have been motivated to use the sulfuric acid expressly disclosed in Gogek with the ammonium sulfate used in the formulation from Example 3 of Gogek in order to achieve these well-known benefits. Agreeing arguendo with Dr. Hirsekorn’s observations, those observations at best prove that one would have found it obvious to use sulfuric acid along with, or possibly in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of ammonium sulfate with a small amount of sulfuric acid would produce a block having the characteristics of the material of claim 32 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1003, col. 1:72. As is often the case in patent specifications, Gogek does not say why ammonium sulfate is preferred. It is not unreasonable to assume that Gogek had some reason for making the statement. Once Example 3 is replicated with a change that would not be the preferred embodiment, it is not unreasonable to assume that a non-preferred embodiment may have properties differing from those of a block made in accordance with Example 3 without sulfuric acid. Petitioner bears the burden of proof. We have not been given” slip op. at 10
§ 103 obviousnessPatents in suitUS 9,039,827
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.