- 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 - Johns Manville Corporation v. Knauf Insulation, Inc.Institution deniedPTAB · Jan 4, 2016 · IPR2015-01683 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not sufficiently show the modified prior-art compositions would meet 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, even at this stage, a finding that it is likely that a block made from Example 3, modified by using phosphoric acid would meet claim 34 as it depends from claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable
“As noted earlier, we can assume arguendo that one skilled in the art more than likely would have found it obvious to use a phosphoric acid in place of ammonium sulfate. But, then one has to ask: “Where has Petitioner set out to prove that a Gogek Example 3 composition with a phosphoric acid used in place of ammonium sulfate meets the limitations of claim 34 as it depends from claim 1?” The relevant testimony is that of Dr. Frederick J. Hirsekorn. Ex. 1006, ¶ 103: 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 monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve the manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Agreeing arguendo with Dr. Hirsekorn’s observations, those observations at best prove that one would have found it obvious to use a phosphoric acid in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of phosphoric acid in place of ammonium sulfate would produce a block having the characteristics of the material of claim 34 as it depends from claim 1.” slip op. at 10
- BurdenInstitution denied
“1. Failure to articulate a difference Petitioner has failed to set out precise differences between Swift or Gogek and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicate consideration of a petition, both for the Board and the patent owner. See also 35 U.S.C. § 312(a)(3) (petition to point out with particularity); 37 C.F.R. § 41.104(b)(4). Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case.” slip op. at 12
§ 103 obviousnessPatents in suitUS 9,039,827 - Johns Manville Corporation v. Knauf Insulation, Inc.Institution deniedPTAB · Jan 4, 2016 · IPR2015-01633 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–15, 23–26, 28–31, 35–41, 50, 57, 62, 64–67, and 70–72 were anticipated by Gogek.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Anticipation—Inherency The applicable principles are set out in In re Robertson, 169 F.3d 743 (Fed. Cir. 1999): If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “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.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted) The standard of proof is a preponderance of the evidence.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“However, Dr. Hirsekorn does not explain what one skilled in the art would have understood “fines” to mean in the phrase “asbestos fines” as of the filing date (1 April 1958) or issue date (20 December 1960) of Gogek. Dr. Hirsekorn states that “Superwool 607 was designed to replace asbestos and is equivalent to asbestos for purposes of the insulating blocks made according to Example 3 of Gogek.” No prior art was offered by Petitioner in support of Dr. Hirsekorn’s statement. For example, no literature supporting Dr. Hirsekorn’s belief that Superwool 607 was designed to replace asbestos has been called to our attention. No literature is cited to show that Superwool 607 would have been considered by those skilled in the art to be “equivalent to asbestos” for making insulating blocks or that it would have been obvious to use Superwool 607 in place of asbestos fines to practice the Gogek invention. Certainly nothing in Gogek confirms the “equivalency” alleged by Petitioner. Nor is there any testimony that Superwool 607 is “fines” having particles sizes consistent with the meaning of “fines” as described in the Gogek patent. Dr. Hirsekorn also states that “[u]sing Superwool 607 instead of asbestos [fines] would not materially alter the physical properties of the insulating block and would not affect the amounts of residual ionic species of sulfates, phosphates, nitrates, carbonates, and combinations thereof that are assessed in a leach test.” Ex. 1004, page 20, last sentence of ¶ 48. No explanation is given as to why Dr. Hirsekorn is able to state his opinion, particularly since Dr. Hirsekorn does not address the differences, if any, between Gogek’s “asbestos fines” and Superwool 607. We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“C. Anticipation—Inherency The applicable principles are set out in In re Robertson, 169 F.3d 743 (Fed. Cir. 1999): If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “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.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted) The standard of proof is a preponderance of the evidence.” slip op. at 9
§ 102 anticipationPatents in suitUS 9,039,827 - Johns Manville Corporation v. Knauf Insulation, Inc.Institution deniedPTAB · Dec 17, 2015 · IPR2015-01569 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground for 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, even at this stage, 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 successMotivation foundNot shown unpatentable
“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 ’089 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 or sulfuric acid in place of ammonium sulfate would produce a block having the characteristics of the material of claim 32 as it depends from claim 1.” slip op. at 11
- BurdenNot shown unpatentable
“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 or sulfuric acid in place of ammonium sulfate would produce a block having the characteristics of the material of claim 32 as it depends from claim 1.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,940,089 - Johns Manville Corporation v. Knauf Insulation, Inc.Institution deniedPTAB · Dec 17, 2015 · IPR2015-01527 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Gogek inherently disclosed claim 1’s subject matter or that it would prevail on the dependent challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“However, Dr. Hirsekorn does not explain what one skilled in the art would have understood “fines” to mean in the phrase “asbestos fines” as of the filing date (1 April 1958) or issue date (20 December 1960) of Gogek. Dr. Hirsekorn states that “Superwool 607 was designed to replace asbestos and is equivalent to asbestos for purposes of the insulating blocks made according to Example 3 of Gogek.” No contemporaneous documentation was offered by Petitioner in support of Dr. Hirsekorn’s statement. Id. For example, no literature supporting Dr. Hirsekorn’s belief that Superwool 607 was designed to replace asbestos has been called to our attention. No literature is cited to show that Superwool 607 is considered by those skilled in the art to be “equivalent to asbestos” for making insulating blocks. Certainly nothing in Gogek confirms the “equivalency” alleged by Petitioner. Nor is there any testimony that Superwool 607 is “fines” having particles sizes consistent with the meaning of “fines” as described in the Gogek patent. Dr. Hirsekorn also states an opinion that “[u]sing Superwool 607 instead of asbestos [fines] would not materially alter the physical properties of the insulating block and would not affect the amounts of residual ionic species of sulfates, phosphates, nitrates, carbonates, and combinations thereof that are assessed in a leach test.” Ex. 1004 ¶ 48 (last sentence). No explanation is given as to why Dr. Hirsekorn is able to state his opinion, particularly since Dr. Hirsekorn does not address the differences, if any, between Gogek’s “asbestos fines” and Superwool 607. We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 . . . (Fed. Cir. 1991). “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.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted). The burden of showing something by a preponderance of the evidence simply requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence before the trier of fact may find in favor of the party who has the burden to persuade the trier of fact of the fact’s existence. Concrete Pipe & Products of California, Inc. v. Construction Laborers Pension Trust for Southern California, 508 U.S. 602, 622 (1993). At first blush one might conclude that there is a tension between Robertson’s probabilities and Concrete Pipe’s probable. The tension is resolved if one considers Robertson’s probabilities to mean “may” and Concrete Pipe’s probable to mean “likely.”” slip op. at 8
§ 102 anticipationPatents in suitUS 8,940,089 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9
- BurdenNot shown unpatentable
“those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 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. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. 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 mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 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. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,940,089 - Coalition For Affordable Drugs V LLC. v. Biogen Ma Inc.Rehearing deniedPTAB · Oct 23, 2015 · IPR2015-01136 · APJ Fred E Mckelvey · IPR · Rehearing
The Board denied the Petitioner’s rehearing request, leaving in place its decision not to institute because the petition did not establish a reasonable likelihood of success on the asserted obviousness theories.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“to be” on page 9 of the Decision. We gave more weight to pre-litigation statement by Kappos than to post-litigation conclusory expert testimony. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (holding that Board did not abuse its discretion in giving more weight to documentary evidence vis-à-vis witness testimony). Furthermore, as Patent Owner points out, the word “appear” is also synonymous with “seem” (http://www.merriam-webster.com/dictionary/appear), and is consistent with our statement that what counts is what is described, not what appears or seems to have been tested. Decision, page 9.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Decision misapprehended or overlooked Dr. Linberg’s statement that the Kappos 2005 dose-ranging study would not have been undertaken unless BG00012 had been determined to be therapeutically active in treating patients with MS and that the Decision cites no substantial evidence for interpreting Kappos in a fundamentally different way. The reference to “substantial evidence” is curious since “substantial evidence” is an appellate standard of review for fact finding. The argument should have been that our finding was not supported by a preponderance of the evidence. In any event, Petitioner, in effect, attempts to reargue a case it attempted to make out in the petition and fails to point out how we misunderstood Dr. Linberg’s testimony. Petitioner failed to explain adequately in the Petition why one of ordinary skill in the art, based on Kappos, would have understood that DMF was useful for treating multiple sclerosis (MS).” slip op. at 3
- Strike new argumentNew argument disregardedOther
“stating a fact, i.e., that DMF had been determined to be effective, which is why there would have been a reasonable expectation of success. The argument concerning reasonable expectation of success, as pointed out by Patent Owner in the opposition, is new and therefore could not have been overlooked. Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 1388 (Fed. Cir. 1989) (prescience is not a required characteristic of the board and the board need not divine all possible afterthoughts of counsel that might be asserted for the first time on appeal). Moreover, in our view Petitioner has not pointed out where there is a clear statement in Kappos 2005 that those skilled in the art knew that DMF was useful in treating MS.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“to be” on page 9 of the Decision. We gave more weight to pre-litigation statement by Kappos than to post-litigation conclusory expert testimony. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (holding that Board did not abuse its discretion in giving more weight to documentary evidence vis-à-vis witness testimony). Furthermore, as Patent Owner points out, the word “appear” is also synonymous with “seem” (http://www.merriam-webster.com/dictionary/appear), and is consistent with our statement that what counts is what is described, not what appears or seems to have been tested. Decision, page 9.” slip op. at 3
NonePatents in suitUS 8,399,514
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.