- Axalta Coating Systems, LLC v. PPG Industries Ohio, Inc.Institution deniedPTAB · Sep 12, 2022 · IPR2022-00676 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–19 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . 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). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“would have had “at least a Bachelor’s or Master’s degree in the field of polymer chemistry, polymer coatings, materials science and/or a related field and at least two years of practical experience in the development of coating systems for consumer products.” Pet. 11. For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s definition of a POSA, which is consistent with the scope and content of the ’505 Patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not need to resolve any claim construction disputes for purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in Kasari or Hall would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[Kasari] and Kondo each teach multi-layer systems with a transparent colored middle layer that can be used in the automobile industry” (Pet. 20) and makes a similar assertion about Hall and Kondo (Pet. 48), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to the intermediate coating layer of Kasari or Hall that a POSA would have applied Kondo’s teachings to the organic pigments that may be used in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39–47, 3:2–9. In contrast, Kasari and Hall both teach an intermediate coating layer that may contain an organic or inorganic pigment. Ex. 1009, 9:50–64; Ex. 1010 ¶ 32. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in the intermediate coating layer of Kasari or Hall. Petitioner also does not explain why a POSA would rely on the particle size of Kondo’s particles in isolation from Kondo’s teaching of inorganic pigments as the ultra-fine particles. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,981,505 - Axalta Coating Systems, LLC v. PPG Industries Ohio, Inc.Institution deniedPTAB · Sep 12, 2022 · IPR2022-00675 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Axalta did not show a reasonable likelihood that claims 1–19 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . 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). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“for combining the teachings of EP ’931 and Kondo in a manner that would result in the claimed invention. Petitioner does not show sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in EP ’931 would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[b]oth EP ’931 and Kondo teach multi-layer systems intended for use in the automobile industry” (Pet. 20), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to EP ’931’s intermediate coating layer that a POSA would have applied Kondo’s teachings to the organic pigments in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39– 47, 3:2–9. In contrast, EP ’931 teaches an intermediate coating layer containing organic pigments that interact with metallic flake in the base coat to provide a color shift that varies with viewing angle. Ex. 1005, 6:41–47. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in EP ’931’s color-shifting intermediate coating layer. Nor does Petitioner address whether or how applying Kondo’s particle size teaching to EP ’931’s intermediate layer would affect the color-shifting property of that layer. Petitioner also does not explain why a POSA would rely on the particle size of Kondo’s particles in isolation from Kondo’s teaching of inorganic pigments as the ultra-fine particles. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“for combining the teachings of EP ’931 and Kondo in a manner that would result in the claimed invention. Petitioner does not show sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in EP ’931 would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[b]oth EP ’931 and Kondo teach multi-layer systems intended for use in the automobile industry” (Pet. 20), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to EP ’931’s intermediate coating layer that a POSA would have applied Kondo’s teachings to the organic pigments in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39– 47, 3:2–9. In contrast, EP ’931 teaches an intermediate coating layer containing organic pigments that interact with metallic flake in the base coat to provide a color shift that varies with viewing angle. Ex. 1005, 6:41–47. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in EP ’931’s color-shifting intermediate coating layer. Nor does Petitioner address whether or how applying Kondo’s particle size teaching to EP ’931’s intermediate layer would affect the color-shifting property of that layer. Petitioner also does not explain why a POSA would rely on the particle size” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“POSA would combine EP ’931 and Kondo and that the proposed combination is based on impermissible hindsight. Id. at 33–39. Patent Owner argues that Grubenmann teaches away from the claimed subject matter and does not support Petitioner’s contentions. Id. at 16, 40–41. Patent Owner argues that JP ’535 does not cure the deficiencies in EP ’931 and Kondo because JP ’535 teaches opaque, hiding layers for concealment of a substrate and teaches away from a transparent layer. Id. at 17–18, 42–44. After considering the parties’ arguments and evidence, we agree with Patent Owner that Petitioner does not make a sufficient showing of obviousness. Our reasoning is two-fold. First, Petitioner’s EP ’931-led grounds are based on a hindsight-biased view of the teachings of Grubenmann and unsupported assertions about the teachings of Kondo and ’JP 535. Second, Petitioner fails to provide a sufficient, non-hindsight biased rationale for combining the three-layer coating of EP ’931 with the teachings of Kondo, Grubenmann, and JP ’535 regarding particle size in a manner that would have led a POSA to the claimed invention. We address each of these shortcomings below.” slip op. at 13
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,981,505 - Guangdong Mic-Power New Energy Co. Ltd. / Peag LLC D/B/A Jlab Audio et al. v. Varta Microbattery GmbHInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01207 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“one of ordinary skill in the art would have sought to modify the battery of Comparative Example 1 to arrive at the subject matter of claim 1. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“one of ordinary skill in the art would have sought to modify the battery of Comparative Example 1 to arrive at the subject matter of claim 1. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)).” slip op. at 15
§ 103 obviousnessPatents in suitUS 10,804,506 - Guangdong Mic-Power New Energy Co. Ltd. / Peag LLC et al. v. Varta Microbattery GmbHInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01206 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any challenged claim of the ’776 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“agree with Patent Owner that Petitioner fails to adequately explain why one of ordinary skill in the art would have sought to use the welding technique of Martin when assembling the battery of Comparative Example 1. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)). Nor has Petitioner demonstrated sufficiently that one of ordinary skill in the art would have had a reasonable expectation of success in combining Kannou and Martin to arrive at the subject matter of claim 1. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (explaining that a petitioner must demonstrate that one of ordinary skill in the art would have had a reasonable expectation of success in combining the identified references to meet the limitations of the claimed invention).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party asserts that any terms of the ’776 require construction for purposes of this Decision. Pet. 24; Prelim. Resp. 12. And, upon review of the parties’ arguments and supporting evidence, we agree that no terms of the ’776 patent require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 10,971,776 - Autostore System Inc. v. Ocado Innovation LimitedInstitution deniedPTAB · Oct 8, 2021 · IPR2021-00798 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“storage locations, but that this grid is defined by a structural framework. Ex. 1001, 14:5–6. Thus, we agree with Patent Owner that the language of claims 1 and 23 strongly suggests that the structural framework defines the grid of storage locations, and not merely that the structural framework provides open areas within which storage containers could be arranged in a grid-like pattern.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the parties’ arguments and evidence, for the reasons set forth below, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed in Section II.A.2 above, we construe “a structural framework defining a grid of storage locations,” as recited in claims 1 and 23, to require that a “structural framework” define the grid of storage locations, as opposed to these locations being defined merely by the orientation or location of stacked containers. Petitioner identifies no Accordingly, we are not persuaded that Petitioner demonstrates a reasonable likelihood that independent claims 1 and 23 are anticipated by Lert.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“would have been obvious over Lert. Pet. 21–53. Petitioner’s obviousness arguments with respect to these claims do not resolve the issues noted above with respect to independent claims 1, 13, and 23. In particular, Petitioner provides no persuasive argument that one of ordinary skill in the art would have modified Lert to have a structural framework that defines the storage locations or to have delivery containers stored within storage containers and delivered to picking workstations. Accordingly, Petitioner has not shown a reasonable likelihood that claims 1–8, 13–20, and 23 would have been obvious over the disclosures of Lert.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,796,080 - TCT Mobile (US), Inc. / TCT Mobile (US) Holdings, Inc. et al. v. Fundamental Innovation Systems International LLCInstitution deniedPTAB · Aug 30, 2021 · IPR2021-00598 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over Morita and the knowledge of a person of ordinary skill.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“current that exceeds the USB limits, Petitioner’s assertion that it would be obvious for the videophone to detect an SE1 signal provided by Morita’s adapter is unpersuasive. Rather, we are persuaded by Patent Owner’s arguments that the proposed combination of Morita and the implementation of an SE1 signal as the “abnormal condition” would render Morita inoperable for its intended purpose. Prelim. Resp. 5161. Morita is configured to maintain USB communication between the mobile device and the hub, and with the external peripherals. Morita ¶¶ 18, 19, 22. According to Petitioner, however, the SE1 signal renders normal USB communication impossible. Pet. 24; Baker Decl. ¶¶ 8182. Thus, it is unreasonable to alter Morita’s configuration to include a signal that would render inoperable the very USB communications Morita is designed to maintain. Patent Owner correctly argues that a redesign of Morita that changes the principles under which Morita was designed to operate is evidence of non-obviousness. Prelim. Resp. 5253 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundNot shown unpatentable
“current that exceeds the USB limits, Petitioner’s assertion that it would be obvious for the videophone to detect an SE1 signal provided by Morita’s adapter is unpersuasive. Rather, we are persuaded by Patent Owner’s arguments that the proposed combination of Morita and the implementation of an SE1 signal as the “abnormal condition” would render Morita inoperable for its intended purpose. Prelim. Resp. 5161. Morita is configured to maintain USB communication between the mobile device and the hub, and with the external peripherals. Morita ¶¶ 18, 19, 22. According to Petitioner, however, the SE1 signal renders normal USB communication impossible. Pet. 24; Baker Decl. ¶¶ 8182. Thus, it is unreasonable to alter Morita’s configuration to include a signal that would render inoperable the very USB communications Morita is designed to maintain. Patent Owner correctly argues that a redesign of Morita that changes the principles under which Morita was designed to operate is evidence of non-obviousness. Prelim. Resp. 5253 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“support the premise that the adapter would need a signal to indicate the so-called “charge-only” mode. Rather, Patent Owner persuasively shows that Morita has no need for such a signal. For instance, Morita’s USB port 21 (connected to the videophone) derives its power from power supply connection 22 and charges that mobile device whether there is a PC host or not. See Prelim. Resp. 3839 (citing Morita ¶¶ 14, 16; Ex. 2009 ¶¶ 8991, 119). And Morita’s adapter is configured as a self-powered hub and USB port 21 would be a high-powered hub port. Id. at 3941 (citing Ex. 1009, 134, 136, Fig. 7-33, 171; Ex. 2009 ¶¶ 9091, 119). Thus, Morita already provides high-rate charging of the videophone, without having to signal how much power or current the videophone may draw in any of Morita’s modes of operation. As Dr. Kenneth Fernald (Patent Owner’s declarant) opines, and we agree, because the ports of Morita’s adapter operate as high-power hub ports in the first and second modes of operation, there is no situation in Morita “where USB port 21 would not be able to meet the current demanded by a high-power function, and need a signal to indicate to the mobile device that it is connected to a high-power hub port or not connected to a lower-power hub port.” Ex. 2009 ¶ 119 (“Fernald Decl.”). We credit this testimony. It is consistent with Morita’s disclosure and the USB Specification as noted by Dr. Fernald. Id.” slip op. at 11
- Skill levelOther
“have either a bachelor’s degree in electrical engineering, computer science, or a related field, plus 3-5 years of experience in design of systems with Universal Serial Bus (‘USB’) or equivalent buses that follow the USB 2.0 and earlier specifications, or a master’s degree in electrical engineering, computer science, or a related field, plus 1-2 years of experience in design of systems with USB or equivalent buses that follow the USB 2.0 and earlier specifications at the time of the ’766 patent’s priority date.” Pet. 1415 (citing Becker Decl. ¶ 68). Patent Owner states that “[f]or purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.” Prelim. Resp. 20. At this juncture, we do not find it necessary to define the level of skill, especially when neither party raises a dispute on the issue.” slip op. at 7
§ 103 obviousnesscites GrahamPatents in suitUS 8,232,766 - PTAB · Jun 12, 2020 · IPR2019-01544 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because Petitioner did not show abuse of discretion in the findings on analogous art or motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is analogous prior art (1) if it is from the same field of endeavor regardless of the problem addressed, or (2) if it is not within the field of the inventor’s endeavor, it is reasonably pertinent to the particular problem with which the inventor is involved. Id. Petitioner argues that we erred in applying both prongs of the Bigio test. Req. Reh’g 1–7.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 9,017,488 - PTAB · Jun 12, 2020 · IPR2019-01540 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show error in the finding that its obviousness grounds lacked adequate analogous-art and motivation-to-combine support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is analogous prior art (1) if it is from the same field of endeavor regardless of the problem addressed, or (2) if it is not within the field of the inventor’s endeavor, it is reasonably pertinent to the particular problem with which the inventor is involved. Id. Petitioner argues that we erred in applying both prongs of the Bigio test. Req. Reh’g 1–7.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“Petitioner does not show that we overlooked or misapprehended any argument or evidence sufficient to show a persuasive reason why a POSA would have modified Foutsitzis’s contaminant removal method by using selected ones of the carrier gases disclosed by Allen and by delivering the solvent as a vapor. Merely pointing out the differences between the two references (or the absence of differences) is not enough to show a reason to modify one reference’s method in view of the teachings of another reference. Metalcraft of Mayville, Inc. v. Toro Co., 848 F. 3d 1358, 1367 (Fed. Cir. 2017) (To show obviousness, “[o]ne needs to provide an explanation or reasoning for concluding that one of skill in the art would have combined these particular references to produce the claimed invention.”).” slip op. at 9
- BurdenDecided for patent owner
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
§ 103 obviousnesscites KSRPatents in suitUS 8,480,812 - Nof Corporation v. Nektar TherapeuticsRehearing deniedPTAB · Jun 10, 2020 · IPR2019-01396 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied NOF Corporation’s rehearing request, leaving institution denied on all challenged claims because the petition did not show Bentley taught or suggested using its star molecules for biological applications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When rehearing a decision on institution, the Board reviews 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). A rehearing request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“How much we credit an expert’s testimony, however, depends on whether the opinion adequately addresses the disclosures of a reference as a whole and adequately provides the justification for its conclusions. See TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359–60 (Fed. Cir. 2019). Here, Dr. Yamamoto did not adequately explain why Bentley’s disclosure of being able to conjugate nearly any polymer to nearly any amine-containing material teaches or suggests the specific polymer identified at column 7, lines 14–20 of Bentley, would be useful when conjugated to biologically active molecules. Moreover, Bentley generally teaches that activated PEG polymers can be conjugated to molecules or surfaces and specifically incorporates by reference Merrill, which discloses conjugating “star” molecules to the support surface of an affinity column. Ex. 1015, 6:12–13; Ex. 2020, 2:5–8. Dr. Yamamoto did not address these disclosures or explain adequately why one of ordinary skill in the art would have sought to conjugate the specific activated PEG molecule disclosed in Bentley (Ex. 1015, 7:14–20) to a biologically active molecule, as opposed to the support surface of an affinity column (Ex. 2020, 2:5–8). Indeed, Dr. Yamamoto did not persuasively identify any actual properties of the specific activated PEG molecule of Bentley relied upon in the Petition. As a result, although we considered Dr. Yamamoto’s testimony, we accorded it proper weight. Petitioner has not established that we erred in doing so.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for patent owner
“The level of ordinary skill in the art asserted by Petitioner is high. A high level of skill in the art tends to favor an obviousness conclusion. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness, and thus the patentee, while a higher level of skill favors the reverse.”). Despite so, to meet its burden for institution, Petitioner still must adequately explain why the art and such a high skill level would have led to the claimed invention. As noted above, we do not find that Petitioner and Dr. Yamamoto did so. Thus, Petitioner has not established that we overlooked its argument as to this issue.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In other words, Bentley does not teach that all of the PEG conjugates would be useful for all possible purposes. Nor does it describe how to determine which conjugates will be useful for any particular desired application. Instead, Bentley discloses a tool that can be used to conjugate a broad variety of polymers to nearly any amine-containing substance or surface. Petitioner does not persuasively explain why such a general disclosure teaches or suggests a conjugate of any particular PEG polymer to any particular type of amine-containing substance.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,809,453 - Nof Corporation v. Nektar TherapeuticsRehearing deniedPTAB · Apr 21, 2020 · IPR2019-01395 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied NOF’s rehearing request, leaving institution denied for claims 1–6 because Bentley did not sufficiently teach or suggest the claimed conjugations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single 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. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s 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).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“these conjugates would be useful for all possible purposes. Dec. 11–12. Nor does it describe how to determine which conjugates will be useful for any particular desired application. At most, Bentley discloses a tool that can be used to conjugate a broad variety of polymers to nearly any amine-containing substance or surface. Petitioner does not persuasively explain why a disclosure that a particular tool may be used to conjugate polymers to amine-containing materials is a teaching or suggestion to conjugate any particular PEG polymer to any particular type of amine-containing substance.” slip op. at 4
- Expert testimonyDecided for patent owner
“We need not credit expert testimony that does not adequately address the disclosures of a reference as a whole or adequately provide the justification for certain conclusions. See TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359–60 (Fed. Cir. 2019); Ashland Oil, Inc. v. Delta Resins & Refractories, 776 F.2d 281, 294–95 (Fed. Cir. 1985). As discussed above, Petitioner and Dr. Yamamoto did not adequately explain why Bentley’s disclosure of being able to conjugate nearly any polymer to nearly any amine-containing material is a teaching or suggestion that nearly any polymer, or the specific polymer identified at column 7, lines 14–20, would be useful when conjugated to any amine-containing substance identified in Bentley, including biologically active molecules. Moreover, Bentley generally discloses that activated PEG polymers can be conjugated to molecules or surfaces and specifically incorporates by reference Merrill, which discloses conjugating “star” molecules to the support surface of an affinity column. Ex. 1015, 6:12–13; Ex. 2020, 2:5–8. Dr. Yamamoto does not address these disclosures or explain adequately why one of ordinary skill in the art would have sought to conjugate the specific activated PEG molecule disclosed in Bentley (Ex. 1015, 7:14–20) to a biologically active molecule, as opposed to the support surface of an affinity column. Ex. 2020, 2:5–8. Indeed, Dr. Yamamoto does not persuasively identify any actual properties of the specific activated PEG molecule of Bentley relied upon in the Petition.” slip op. at 6
- Skill levelDecided for patent owner
“A high level of skill in the art tends to favor an obviousness conclusion. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness, and thus the patentee, while a higher level of skill favors the reverse.”). Even when the level of skill is high, to meet its burden for institution, Petitioner must still adequately explain why the art and such high skill would have led to the claimed invention. As noted above, we do not find that Petitioner and Dr. Yamamoto did so. Thus, Petitioner has not established that we overlooked its argument as to this issue.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,872,072
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.