- PTAB · Sep 7, 2021 · PGR2021-00065 · APJ Terrence W Mcmillin · PGR · Institution
The Board denied PGR on all challenged claims because the petition did not show unpatentability and the claims were not PGR-eligible.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 112(a), the patent must enable a skilled artisan to practice the invention without undue experimentation. Wyeth & Cordis Corp. v. Abbott Labs, Inc., 720 F.3d 1380, 1384 (Fed. Cir. 2013). “An enablement analysis begins with the disclosure in the specification.” Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1000 (Fed. Cir. 2008). “It is the specification, not the knowledge of one skilled in the art, must supply the novel aspects of an invention in order to constitute adequate enablement.” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Claim 1 recites an apparatus and requires the receiving system be configured to “autonomously identify a hot spot,” which requires that the device perform the action itself. Thus, the claim language excludes a user performing the claimed identification.6 The question is whether the Specification supports that language. Patent Owner argues that the language in the Specification—“pre- identified . . . prior to operating the robotic device”—includes “during a prior operation of the robot (e.g., during a past cleaning operation).” Prelim. Resp. 33–35 (citing Ex. 1001, 27:42–28:11). We determine that this meaning is supported by the Specification. As Patent Owner contends, the Specification discloses identifying “hot spot” cells during an operation and using those cells to maneuver the device both during the same operation and also in a later operation. Id. Thus, a reasonable interpretation of “prior to operating the robotic device” includes “during a past cleaning mission of the 6 In an Applicant-Initiated Interview Summary, the Examiner wrote that he and the Applicant’s attorney “discussed, including specifying that the identify step is performed autonomously, or without human input.” Ex. 1001, 212 (emphasis added). In the Applicant’s attorney’s interview summary of the same conversation that was included with the claim amendment adding the “autonomously identify” limitation, the Examiner’s characterization of the meaning of “autonomously” was not disputed. Id. at 225. The Applicant relied on the addition of the “autonomously identify” limitation to the claims to distinguish the cited art but did not discuss its meaning. Id. at 226 (“Allen fails to describe autonomously identifying a hot spot. Independent claim 13 [issued claim 1] is therefore allowable over Taylor and Allen.”). However, both Petitioner and Patent Owner acknowledge that Allen (US Patent No. 5,995,884) discloses a user selecting a spot or zone. Pet. 25, Prelim. Resp. 41 (citing Ex. 1027 (Allen), 47:1–28). cleaning apparatus,” because such an interpretation is consistent with the Specification.” slip op. at 18
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable
“With specific regard to enablement, the Petitioner argues: The ’517 patent does not enable one skilled in the art to practice the inventions of claims 1, 4, and 15 because it does not provide any working example or guidance for performing the “autonomously identify” limitations—the very limitations that were allegedly novel over the prior art, resulting in the grant of the ’517 patent. Cowan [Ex. 1003], ¶¶ 90-91. Here, the ’517 patent’s complete lack of direction to the skilled artisan for the allegedly novel feature renders the claims invalid for lack of enablement. Pet. 51. Petitioner also argues that “the ’517 patent provides no working examples or guidance teaching one skilled in the art how to” “autonomously identify a hot spot or predefined zone in a map prior to initiation of a cleaning mission” and that “the ’517 patent does not even provide a ‘conceptual’ figure or description of how a receiving system performs the ‘autonomously identify’ limitation.” Id. at 53, 55. And still further, Petitioner argues that “[t]he ’517 patent’s complete failure to provide any example, direction, or guidance to the skilled artisan is dispositive and renders the claims invalid for lack of enablement.” Id. at 55. For factual support of its enablement argument, Petitioner refers back to its explanation as to how the ’517 patent fails to meet the written description requirement. Id. at 53. We reject Petitioner’s enablement ground for the same reasons we reject its written description ground. Based on the showing in the Petition, we are not persuaded that the Specification of the ’517 patent “does not provide any working example or guidance for performing the ‘autonomously identify’ limitation” or that there is no disclosure adequate to “teach[ ] one skilled in the art how to” “autonomously identify a hot spot or predefined zone in a map prior to initiation of a cleaning mission.” To the contrary, for the reasons detailed above, we determine that the “autonomously identify” limitations are adequately supported by the Specification of the ’517 patent and that the Specification of the ’517 patent would enable a skilled artisan to make and use the invention.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A skilled artisan would have had at least a four-year degree in mechanical engineering or electrical engineering or a closely related field and at least one year of experience in the design and implementation of robotics and embedded systems. Cowan [Ex. 1003], ¶¶ 17-19. Additional education could substitute for professional experience and vice versa.” slip op. at 8
Claim construction§ 112 disclosurecites NautilusPatents in suitUS 10,813,517 - BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution deniedPTAB · Sep 7, 2021 · PGR2021-00060 · APJ Ryan H Flax · PGR · Institution
The Board denied institution because the petition did not show claims 1–7 likely unpatentable, and a possible § 112(a) issue for claims 8–9 did not justify instituting on all claims and grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not demonstrated with particularity that it is more likely than not that most claims challenged in the petition are unpatentable under the asserted grounds. Although there is a reasonable argument that claims 8 and 9 may be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis is applicable to only these two dependent claims under a single ground for unpatentability, leaving Petitioner’s other ten grounds insufficient regarding independent claim 1 and dependent claims 2–7. As discussed above, instituting trial under these circumstances would not be an efficient use of the Board’s or the parties’ time and resources. See Chevron, IPR2018- 00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage derives from our review of the record presented. In accordance with the Court’s decision in SAS (138 S. Ct. at 1359– 60) and Office guidance, we deny institution of a post-grant review of the challenged claims of the ’631 patent on any grounds alleged by Petitioner. This decision does not reflect a final determination on the patentability of any claim.” slip op. at 66
- Other 314aInstitution denied discretionary otherInstitution denied
“Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.”). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53– 63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).1 We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1–7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board’s or the parties’ time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S. Ct. at 1359–60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“to read the concept of “flush with” into the claims. We agree with Petitioner’s position that such an interpretation is not supported by the ’631 patent’s written description, which illustrates and describes two embodiments, each having a turbine engine and reduction gearbox configured to be flush with one another, but refers to only the configuration of Embodiment 1 as being “directly connected” and refers to the configuration of Embodiment 2 as being merely “connected.” See Ex. 1001, 5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert witness confirming there is a difference between merely “connected” and “directly connected”). Thus, the intrinsic record supports a conclusion that the concept of “directly connected” is not related to whether one component is “flush with” another component. This disclosure of the ’631 patent also illuminates the meaning of “directly connected.” As shown in Embodiment 2, something may be connected with another thing even if there are intervening components, e.g., a transmission shaft or coupling; however, as shown in Embodiment 1, the ’631 patent uses the term “directly connected” only where no such intervening components are disclosed. Ex. 1001, 5:15– 6:19, Figs. 2, 3. Besides the guidance provided with respect to the embodiments discussed above, the ’631 patent does not otherwise expressly define the term “directly connected.” See generally Ex. 1001. Thus, we consider what the ordinarily skilled artisan would consider to be its ordinary and customary meaning. In this respect, Patent Owner also uses the word “uninterrupted” to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001 ¶¶ 61–71. We conclude based on this record that the concept of “uninterrupted” is more apt than the concept of “flush with,” and find it to be a better description for the ordinary and customary meaning of “directly connected.” For example, the ’631 patent describes, in Embodiment 1, “the turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27 (emphasis added). However, it is without question that Embodiment 1 positions a reduction gearbox between the turbine engine and plunger pump; thus, the engine and pump may be connected, but they are not directly connected. See, e.g., Fig. 2. On the other hand, regarding this same Embodiment 1, the ’631 patent describes that “the turbine engine 19 is directly connected to an input end of the reduction gearbox 24,” and there are no components illustrated or described as being between the turbine engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The connection between the turbine engine and reduction gearbox shown in Embodiment 1 is more aptly described as being uninterrupted. Thus, this illuminates the meaning of “directly connected.” In view of the above, we ascribe to the term “directly connected” its ordinary and customary meaning as it would have been understood by a person of ordinary skill in the art, and we find that ordinary and customary meaning to require that the turbine engine and reduction gearbox are connected with nothing intervening there-between so that their connection is uninterrupted.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s evidence shows that the Apollo 1 apparatus has two gearboxes and a clutch between its turbine engine and plunger pump, thus the Apollo 1 does not meet the claim limitation “the plunger pump is a plunger pump integrated with a reduction gearbox, the turbine engine is directly connected to an input end of the reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained by Mr. Zhang11 as having these two gearboxes and clutch, where at least one of the gearboxes and the clutch forecloses the system from having a single reduction gearbox that is both integrated on a pump and directly connected to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and, notably never attempted to explain exactly what is shown in the above-reproduced photograph from its own Exhibit 1017, even when given the opportunity to address Mr. Zhang’s testimony in its Reply. See generally Reply.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 10,865,631 - PTAB · Aug 12, 2021 · PGR2021-00026 · APJ Jamie T Wisz · PGR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–20 because Petitioner did not show error in the priority-support finding or improper burden shifting.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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). A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The ’611 provisional application discloses a first side (8) and a second side (9) of the beveled platform (5)/distal member wherein the first lateral blade (10) and the second lateral blade (11) are “along the sides of said beveled platform.” Ex. 1007, 38. As shown in the annotated figures below, the ’611 provisional application depicts right and left edges, which are the lines/borders between the sides (8, 9) and top of the distal member, wherein these edges extend towards the rearward end from the tip (6). Decision 39–40 (citing Prelim. Resp. 21, 45–46 (citing Ex. 1007, Figs. 1, 3)). Annotated Figures 1 and 3 include added lines and labels indicating the edges of the distal member. Petitioner’s argument appears to hinge on the contention that the beveled nature of the platform prevents it from being an edge. See Req. Reh’g 4, 6. However, Petitioner provides no persuasive arguments or evidence for this contention. We understand that Petitioner disagrees with the Board’s assessment, but simple disagreement is not effective to demonstrate an abuse of discretion.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“The ’611 provisional application discloses a first side (8) and a second side (9) of the beveled platform (5)/distal member wherein the first lateral blade (10) and the second lateral blade (11) are “along the sides of said beveled platform.” Ex. 1007, 38. As shown in the annotated figures below, the ’611 provisional application depicts right and left edges, which are the lines/borders between the sides (8, 9) and top of the distal member, wherein these edges extend towards the rearward end from the tip (6). Decision 39–40 (citing Prelim. Resp. 21, 45–46 (citing Ex. 1007, Figs. 1, 3)). Annotated Figures 1 and 3 include added lines and labels indicating the edges of the distal member.” slip op. at 5
- BurdenDecided for patent owner
“We are not persuaded by Petitioner’s arguments. Contrary to Petitioner’s assertions, Patent Owner’s arguments regarding the claim terms raised by Petitioner were not limited to only showing support in the ’391 patent. In fact, Patent Owner’s Preliminary Response discusses in detail where these claim terms are supported in the ’611 provisional application. See Prelim. Resp. 12–24, 39–41, 43–59. We also disagree with Petitioner’s contention that Patent Owner only provided “conclusory remarks” that the challenged claims were supported by priority applications other than the ’611 provisional. Req. Reh’g 11. For example, the Preliminary Response discusses how the challenged claim terms are supported by U.S. Patent No. 15/207,329 (“the ’329 application”). See Prelim. Resp. 24–27, 61, 63–64. Further, as noted in our Decision, Patent Owner also submitted a claim chart providing exemplary excerpts from the ’611 provisional, the ’329 application, and the ’391 patent to establish support for all elements of several exemplary challenged claims. See Decision 26 n.4 (citing Prelim. Resp., Appx. A). Petitioner has not demonstrated that we improperly shifted the burden to Petitioner. Instead, we concluded that the record before us supported Patent Owner’s contention that the non-disclaimed ’391 patent claims should receive priority to the ’611 provisional application. Decision 42.” slip op. at 8
§ 112 disclosurePatents in suitUS 10,786,391 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the 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 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on 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 judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence that could have been presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,015,446 - Marketdial, Inc. v. Applied Predictive Technologies, Inc.Institution deniedPTAB · Mar 3, 2021 · CBM2020-00025 · APJ Justin T Arbes · CBM · Institution
The Board denied institution of CBM review of claims 1–35 under Fintiv because the district court had already held the same claims invalid under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“institution decision.” Prelim. Resp. 6–7 (citing Snap, Paper 8). We agree. There will be no trial as to patent infringement because the district court already concluded that all claims of the ’916 patent are invalid under § 101. Patent Owner indicates that it will appeal that decision once the remainder of the district court case concludes. Id. at 3. The statutory deadline for a final written decision in this proceeding would be one year from institution. Under the particular factual circumstances of this case, we find that this factor strongly weighs in favor of exercising our discretion to deny the Petition.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8
§ 101 eligibilityDiscretionary denialPatents in suitUS 8,571,916 - Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing deniedPTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7
Claim construction§ 112 disclosurePatents in suitUS 10,155,039 - Supercell OY v. Gree, Inc.Institution deniedPTAB · Nov 12, 2020 · PGR2020-00063 · APJ Lynne H Browne · PGR · Institution
The Board denied institution of PGR on claims 1–9, finding the § 101 arguments previously presented to the Office and the other grounds insufficient to show likely unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The Board recently explained a two-part framework that the Board uses under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or 4 “ObjectLabel” (Ex. 1007, “ObjectLabel”). 5 US 2015/0153913 A1, issued June 4, 2015 (Ex. 1008, “Ballard”). substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Board further explained that “[i]f a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute.” Id. at 8–9. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. The Becton, Dickinson6 factors, which address discretion to deny when a Petition presents the same or substantially the same prior art or arguments previously presented to the Office, are instructive. Id. (“[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” (Footnote omitted)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“the ’432 patent”). Supercell Oy (“Supercell”) filed a petition requesting post-grant review of claims 1–9 of the ’432 patent. Paper 2 (“Pet.”). GREE, in turn, filed a preliminary response. Paper 8 (“Prelim. Resp.”). After considering the petition and the preliminary response, as well as all supporting evidence, we determine the petition does not demonstrate that it is more likely than not that at least one of the challenged claims of the ’432 patent is unpatentable. 35 U.S.C. § 324(a). Thus, we do not institute post-grant review of claims 1–9 of the ’432 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“‘“the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.’” Prelim. Resp. 11 (citing Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). “Rather, ‘the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had ‘possession’ of the claimed subject matter as of the filing date.’” Id. (citing Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“information.” Id. at 7:34–41. In particular, Ross explains that “[t]he user may interact with the secondary, tertiary, etc., virtual reality content and then return his view back to the movie wherein the movie has been adjusted to reflect the user’s interaction with the secondary, tertiary, etc., virtual reality content.” Id. at 7:41–45. Ross explains further that “while a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content (e.g., additional characters) is available in a different (e.g., secondary, tertiary, etc.) content area.” Id. at 7:46–50. Thus, we understand Ross to disclose a system wherein a user can turn their gaze from a primary area to a secondary, tertiary, etc., area to view content related to the content in the primary area. See Ross, 7:21–33 (“Responsive to the user turning his view from the primary virtual reality content . . . a sensory cue comprising . . . secondary, tertiary, etc., . . . may be displayed to the user.”). Further, we understand Ross to disclose a system wherein the user’s focus on an item in the primary area may activate a “popup” cue in the primary area directing the user to additional virtual reality content in a secondary, tertiary, etc., area. See id. at 7:46–50 (“[W]hile a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content . . . is available in a different (e.g., secondary, tertiary, etc.) content area.”). We do not, however, understand Ross’ “pop-up” cue to be activated in a secondary, tertiary, etc. area based on the user’s gaze position moving to the second area from the first area as required by claims 1, 8, and 9. See id. Therefore, because Ross describes displaying a “pop-up” cue while a user is viewing primary virtual reality content (see Ross, 7:46–50), Petitioner does not show persuasively that Ross discloses that “a gaze position moving to the second area from the first area” is an “information providing condition.” Furthermore, Petitioner’s cited testimonial evidence does not explain sufficiently how Ross discloses the recited “information providing condition.” See Ex. 1003 ¶ 73. For the reasons above, Petitioner does not show adequately that Ross discloses an “information providing condition [that] is a condition of a gaze position moving to the second area from the first area.”” slip op. at 18
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,406,432 - Lassen Therapeutics 1, Inc. v. Singapore Health Services Pte Ltd., And National University Of SignaporeInstitution deniedPTAB · Feb 6, 2020 · PGR2019-00053 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that claims 1–10 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we determine that the information presented fails to demonstrate it is more likely than not that at least 1 of the challenged claims of the ’603 patent is unpatentable. Accordingly, we deny institution of post-grant review of claims 1–10 of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that, for purposes of the preliminary response only, it does not challenge Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed description of the person of ordinary skill in the art. Furthermore, we find that the prior art of record reflects this level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “Interleukin 11 receptor α (IL- 11Rα) antibody” should not be construed to include antibodies that bind to IL-11Rα of non-human species but not to the human version of this protein because such a construction does not comport with the language of claim 1, which is clearly directed to treating a human subject. See Pause Tech. v. TiVo, 419 F.3d 1326, 1331 (Fed. Cir. 2005) (rejecting interpretation of claim element that ignored “other language appearing later in the claim” in stating that ‘“[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.’”) (citing Hockerson– Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.Cir.1999)). Construing this term to include antibodies that bind solely to non-human IL- 11Rα would be inconsistent with a claim directed to treatment of a human. Accordingly, for purposes of this decision, we construe “Interleukin 11 receptor α (IL-11Rα) antibody” to mean “any natural or synthetic, monoclonal or polyclonal antibody made using any animal system including phage, or fragment or derivative thereof, that binds to human IL-11Rα.”” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“We agree with Patent Owner that Petitioner appears to have overlooked the ’603 patent Specification’s disclosure of anti-IL-11Rα antibodies. Specifically, the ’603 patent lists “monoclonal antibody clone 025 (Sino Biological), clone EPR5446 (Abcam), clone 473143 (R & D Systems), clones 8E2 and 8E4 described in US 2014/0219919 A1 [Edwards] and the monoclonal antibodies described in Blanc et al (J. Immunol Methods. 2000 Jul. 31; 241(1–2); 43–59).” Ex. 1001, 18:41–46; Ex. 1003 ¶ 176.6 Edwards, which Petitioner relies on for its obviousness and anticipation grounds, is directed to antibodies “that bind to IL-11Rα and neutralize IL-11 signaling.” Ex. 1008 ¶ 13. Table 1 of Edwards lists clones 8E2 and 8E4 and sixty-three other antibodies (including variants of 8E2) as “exemplary IL-11Rα-binding proteins.” Id. ¶ 362. Table 1 of Edwards also includes the sequence ID numbers for the heavy and light chains of the variable regions of each of these sixty-five clones and the amino acid sequences for each are disclosed in the sequence listing. Id. ¶ 362, p. 46– 104.7” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,106,603 - Agilent Technologies, Inc. v. Bio-Rad Laboratories, Inc.Rehearing deniedPTAB · Oct 23, 2019 · IPR2019-00266 · APJ Michelle N Ankenbrand · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution because Petitioner failed to show a reasonable likelihood of prevailing on its anticipation and obviousness challenges to claims 1–22.
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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION In sum, we determine that, in its Petition, Petitioner did not establish a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claims. On rehearing, Petitioner does not persuade us that our decision was based on an erroneous conclusion of law or clearly erroneous factual findings. Accordingly, we conclude that Petitioner has not demonstrated that we abused our discretion in denying institution of the challenged claims.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“In our Decision, we agreed with Patent Owner that “a patent applicant need not describe information that is ‘well-known in the art’ in order to satisfy the written description requirement.” Dec. 14 (citing Prelim. Resp. 31 (quoting Boston Sci., 647 F.3d at 1366)). We further explained that the Federal Circuit had set forth a number of factors for evaluating the adequacy of the disclosure for generic claims, including “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. at 14 (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). And we noted that Petitioner did not address the factors, whereas Patent Owner directed us to evidence in the record “indicating that the broader category of heaters was well-known before 2003, given the existing knowledge in the field, the extent and content of the prior art, and the maturity of the technology.” Id. at 15. Based on that evidence, we concluded, “the disclosure in the priority applications of a lid heater reasonably conveys to those of ordinary skill in the art that the inventor was in possession of the broader genus of a ‘heating element’/‘heater.’” Id. at 16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“to improve similar and related devices.” Id. at 4 (quoting Pet. 57). But a generalized desire to improve existing devices is different from a specific reasoning to combine the prior art asserted in this proceeding. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004) (“Recognition of a need does not render obvious the achievement that meets that need.”).” slip op. at 7
§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,236,504 - Bedra, Inc. / Berkenhoff GmbH et al. v. Seong, Ki ChulRehearing deniedPTAB · Feb 4, 2019 · IPR2018-00668 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the rehearing request, leaving in place denial of institution for claims 2, 5, 7, 8, and 10 because Petitioner did not show the claims lacked Korean Application priority support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing it should be modified. Id. When rehearing a decision on a petition, the Board will 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.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“we are not persuaded that we abused our discretion in determining that the Korean Application adequately describes cracks in the alloy layer and the coating layer as required by the challenged claims. Dec. 9–11. Assuming arguendo that Petitioner is correct that Figure 2a2 does not show such cracks, our Decision is supported by other evidence of record that Petitioner does not dispute. For example, in response to Petitioner’s argument that the Korean Application “only describes cracks within the ‘coating layer’ and not within any ‘alloy layer,’” (Pet. 20), we stated that the Korean Application “describes the ‘coating layer’ as comprising two sub-layers, one of which is the outer zinc coating layer of the ’036 patent and the other of which is the inner copper-zinc alloy layer of the ’036 patent.’” Dec. 9–10 (quoting Ex. 1013, 7; citing Ex. 1013, Fig. 3; Ex. 1003, Fig. 3b). Based on this disclosure, we concluded that “the Korean Application’s description of cracks in the ‘coating layer’ does not necessarily mean that those cracks are confined to the outer zinc layer and fail to reach the inner alloy layer.” Id. at 10.” slip op. at 4
§ 112 disclosurePatents in suitUS 6,492,036
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.