• Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLCInstitution denied
  PTAB · Nov 18, 2021 · IPR2021-00851 · APJ Wesley B Derrick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the challenged claims were obvious, chiefly failing to establish the required one-step nucleic acid extraction.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “A party that petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner asserts that [a] person of ordinary skill in the art . . . would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 7–8 (citing Ex. 1002 ¶¶ 34–35). Patent Owner does not dispute Petitioner’s proposed definition at this stage. Prelim. Resp. 7. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’330 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “A party that petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.” slip op. at 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,415,330
• BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution denied
  PTAB · 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 · Nautilus
  Patents in suitUS 10,865,631
• Boragen, Inc. v. Syngenta Participations AGRehearing denied
  PTAB · Aug 10, 2020 · IPR2020-00124 · APJ Timothy G Majors · IPR · Rehearing

  The Board denied Boragen’s rehearing request and left in place the denial of institution under § 325(d), finding no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “whether to institute trial for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if there was an erroneous interpretation of law, a factual finding not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors. 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). The rehearing request “must specifically identify all matters the [requesting] party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “Petitioner contends the Board “failed to exercise its discretion under 325(d)” (Req. 2), but this is plainly inconsistent with the Decision, because we did exercise discretion under § 325(d) and denied the Petition because it was based on substantially the same prior art as already considered by the Office. See Dec. 6–35 (analyzing, inter alia, the asserted prior art, the prosecution history, declarant testimony, and the precedential Becton, Dickinson factors under a framework explained further in Advanced Bionics, in route to denial under § 325(d)).1 Petitioner continues, arguing the Board “improperly” slip op. at 3

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “expert” may opine on the unpatentability of the challenged claims generally represents one factor that we account for in exercising our discretion under § 325(d) (e.g., insofar as it may comprise “additional evidence” addressing prior art that the Office may have already considered). Becton, Dickinson at 17–18. It is not, however, a super-factor that overrides others in the manner urged by Petitioner that would, in effect, require we institute inter partes review so long as the challenge is accompanied by “new” testimony slip op. at 4

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “precedential after the Petition was filed, and requests “additional briefing to directly address the Advanced Bionics factors” if this Request is denied. Req. 1 n.1. Petitioner’s request for additional briefing is denied. Additional briefing is unnecessary because the arguments and evidence already submitted by the parties is sufficient for us to make a determination based on the two-part framework in Advanced Bionics. Furthermore, we have reviewed the arguments based on Advanced Bionics submitted by Petitioner on rehearing and do not find them persuasive. Req. 8–10 (“Petitioner highlights such errors herewith separately under the guidelines set forth in Advanced Bionics”). Moreover, Advanced Bionics became precedential six weeks before we denied institution in this case, where discretionary denial” slip op. at 10

  Discretionary denial
  Patents in suitUS 10,130,096
• Boragen, Inc. v. Syngenta Participations AGInstitution denied
  PTAB · May 5, 2020 · IPR2020-00124 · APJ Timothy G Majors · IPR · Institution

  The Board denied institution of IPR on claims 1–12 under § 325(d), finding the asserted prior art and arguments were substantially the same as those considered during prosecution and no material error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated error. Advanced Bionics at 8–10. “If the petitioner fails to show that the Office erred, the Director may exercise his discretion not to institute inter partes review.” Id. at 8–9 (“If a condition in the first part of the framework [i.e., substantially same art or arguments] is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review”). “At bottom, this [§ 325(d)] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 14 9. On the question of material error, “[i]f 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.” slip op. at 14

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes may not be instituted unless the Petition “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.” Upon considering the arguments and evidence, we deny review of the Petition on a discretionary basis under 35 U.S.C. § 325(d). Thus, for reasons further explained below, we do not institute inter partes review of claims 1–12 of the ’096 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner makes the same points about Kohn here. According to Petitioner, Kohn teaches “compounds with an oxaborole core structure could be used as fungicides to treat plants and seeds.” Pet. 26–27; see also id. at 42–43 (block quoting, with apparent approval, the Examiner’s findings about Kohn in combination with Austin). Like the Examiner, Petitioner cites Kohn’s teaching of the use of “boroxarophenanthrenes” as fungicides, and the application of such fungicides in effective amounts on vegetative hosts. Pet. 46 (claim chart, citing Kohn’s teachings). Indeed, Petitioner expressly invokes the reasons offered by the Examiner during prosecution as motivating the combination of Austin and Kohn. Pet. 44 (“For all the reasons discussed above and in the prosecution history, a POSITA would have been motivated to combine the teachings of Austin and Kohn with a reasonable expectation of success.”).14 14 In fact, the only reasons that are expressly offered in the Petition for combining Austin and Kohn come from the Examiner. Pet. 42–49 (Ground 2). Petitioner’s assertion that the declaration submitted during prosecution was “misleading” is not a reason for combining Austin and Kohn. Pet. 43–44. Nor do vague citations to testimony of Petitioner’s declarants, without any adequate explanation in the Petition itself, suffice to demonstrate persuasive reasons for combining the art. Id.; see also id. at 23 (asserting vaguely in a section titled “Overview of Grounds” that “[a] POSITA would also be motivated to combine Austin and Kohn to arrive at the claimed invention”) (citing Ex. 1003 ¶ 82; Ex. 1018 ¶¶ 63–65, 82–85). Even the cited testimony here is unpersuasive. For example, Dr. Hall’s cited testimony merely repeats that a skilled person “would have been motivated to combine Austin and Kohn with a reasonable expectation of success.” Ex. 1003 ¶ 82; Ex. 1018 ¶¶ 63–65 (conclusory opinion about an alleged “structure similar to that of a benzoxaborole compound” in Kohn), ¶¶ 82–85” slip op. at 19

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “14 In fact, the only reasons that are expressly offered in the Petition for combining Austin and Kohn come from the Examiner. Pet. 42–49 (Ground 2). Petitioner’s assertion that the declaration submitted during prosecution was “misleading” is not a reason for combining Austin and Kohn. Pet. 43–44. Nor do vague citations to testimony of Petitioner’s declarants, without any adequate explanation in the Petition itself, suffice to demonstrate persuasive reasons for combining the art. Id.; see also id. at 23 (asserting vaguely in a section titled “Overview of Grounds” that “[a] POSITA would also be motivated to combine Austin and Kohn to arrive at the claimed invention”) (citing Ex. 1003 ¶ 82; Ex. 1018 ¶¶ 63–65, 82–85). Even the cited testimony here is unpersuasive. For example, Dr. Hall’s cited testimony merely repeats that a skilled person “would have been motivated to combine Austin and Kohn with a reasonable expectation of success.” Ex. 1003 ¶ 82; Ex. 1018 ¶¶ 63–65 (conclusory opinion about an alleged “structure similar to that of a benzoxaborole compound” in Kohn), ¶¶ 82–85” slip op. at 19

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,130,096
• Firstspear, LLC v. Lineweight, LLCRehearing denied
  PTAB · Mar 25, 2020 · IPR2019-01170 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because Petitioner did not show that combining Fegen and Stevens would have made the claimed openings compatible with the asserted properties.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “37 C.F.R. § 42.71(d), which provides: 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. We review our Decision under an abuse of discretion standard. 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

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “motivated to adhere Fegen’s exterior garment layer to a substrate in order to provide a substrate material having water-proofing or scent blocking properties as taught by Stevens.” Pet. 31–32 (citing Ex. 1002 ¶ 55; Ex. 1006, 2:1–4, 3:50–53). In addition, the Petition asserts that one of ordinary skill in the art “would understand that the slits in Fegen extend all the way through the exterior layer and the substrate in order to permit attachments to be more easily secured to Fegen’s garment.” Id. at 35 (citing Ex. 1002 ¶ 62; Ex. 1005, Fig. 3). In the Decision, we determined that Petitioner had failed to establish sufficiently that it would have been obvious to one of ordinary skill in the art to combine Fegen and Stevens in the manner proposed. Dec. 14–16. In particular, we determined that providing slits or openings in the substrate of the proposed combination of Fegen and Stevens “would defeat, or at least greatly diminish, any water-proofing or scent blocking properties of the substrate.” Id. at 15. Thus, we disagreed with Petitioner’s contention that one of ordinary skill in the art would have been motivated to add a substrate to Fegen’s garment for the purpose of providing water-proofing or scent blocking properties. Id.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We disagree with this broad assertion because the Petition does not demonstrate sufficiently why providing openings in the substrate, as the claims require, would not have led one of ordinary skill in the art to consider such openings detrimental to the rationale of providing water-proofing or scent blocking properties. Petitioner’s assertion also ignores the fact that the corresponding openings in the substrate would allow sweat and odor to pass through freely, thereby decreasing the effectiveness of water-proofing and scent blocking properties. Although no evidence of record appears to state expressly that openings of the size claimed would allow sweat and odor to pass freely through the substrate, this fact would have been readily apparent to one of ordinary skill in the art. Thus, the Rehearing Request fails to demonstrate that a reasonable fact finder could not have arrived at this fact, such that our determination is supported by substantial evidence. See OSI Pharm., 939 F.3d at 1381–82.” slip op. at 4

  • BurdenDecided for patent owner

    “Petitioner also argues that “[t]here is no evidence supporting a difference in effectiveness of the water-proofing and scent blocking properties of the substrate whether the substrate is a solid sheet of material or the substrate contains slots or openings in the same location as the exterior layer.” Reh. Req. 3. This argument, however, attempts to improperly shift the burden of persuasion away from Petitioner. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion rests with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Thus, Petitioner has the burden of presenting evidence supporting its assertion that there is no difference in effectiveness of the water-proofing and scent blocking properties of the substrate with or without openings.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,173,436
• Lassen Therapeutics 1, Inc. v. Singapore Health Services Pte Ltd., And National University Of SignaporeInstitution denied
  PTAB · 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 · Graham
  Patents in suitUS 10,106,603
• L’Oréal USA, Inc. v. University Of MassachusettsRehearing denied
  PTAB · Nov 16, 2018 · IPR2018-00779 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing and affirmed denial of institution because Petitioner did not show that the Board abused its discretion in construing the adenosine concentration limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Accordingly, Petitioner has not persuaded us that we have misapprehended or overlooked any matters with respect to our decision to deny institution. 37 C.F.R. § 42.71(d). III. CONCLUSION For the foregoing reasons, we conclude that Petitioner has not shown that the Board abused its discretion in denying institution of the challenged claims. See 37 C.F.R. § 42.71(d). ORDER Accordingly, it is ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “related grounds: that claims 1–7, and 9 are anticipated by JP ’1532; that claim 4 is obvious over JP ’153; and that claims 1–7 and 9 would have been obvious over the combination of JP ’153 and DE ’1073. Pet. 6–7. We declined to institute inter partes review. Dec.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “adenosine may be topically applied to the epidermal layer of the skin, but also that adenosine so applied will penetrate the epidermis to reach the dermal layer. Dec. 9 (citing Ex. 1002, 5:20–23 (“For topical application, the penetration of the adenosine into skin tissue may be enhanced by a variety of methods known to those of ordinary skill in the art.”)). Topical application of adenosine will, therefore, result in adenosine being brought into contact with both the epidermis and the dermis. As also discussed in the Decision, the specification provides examples in which a concentration of adenosine within the range recited in the claims (10-4 M) is applied directly to dermal cells (fibroblasts), suggesting that the inventors considered it desirable for the dermal cells to receive the claimed concentration of adenosine. Id. In this context, the meaning of claim 1 is clear: adenosine is first topically applied to the epidermal layer of the skin and, only after it penetrates this outer skin layer, is a specific concentration (10-4 M to 10-7 M) of the adenosine “applied” to the dermal cells.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “A prosecution history disclaimer must be clear and unambiguous. “[W]hile the prosecution history can inform whether the inventor limited the claim scope in the course of prosecution, it often produces ambiguities created by ongoing negotiations between the inventor and the PTO. Therefore, the doctrine of prosecution disclaimer only applies to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (citing Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)). A “heavy presumption” exists in favor of the ordinary meaning of claim language. Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2013). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012).” slip op. at 7

  Claim constructioncites Phillips
  Patents in suitUS 6,645,513
• L’Oréal USA, Inc. v. University Of MassachusettsRehearing denied
  PTAB · Nov 16, 2018 · IPR2018-00778 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 1–7 and 9 because Petitioner did not show an abuse of discretion in the claim construction underlying the denial.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found 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. U.S., 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “A prosecution history disclaimer must be clear and unambiguous. “[W]hile the prosecution history can inform whether the inventor limited the claim scope in the course of prosecution, it often produces ambiguities created by ongoing negotiations between the inventor and the PTO. . . . Therefore, the doctrine of prosecution disclaimer only applies to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (citing Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)). A “heavy presumption” exists in favor of the ordinary meaning of claim language. Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (internal quotation marks and citation omitted). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. (internal quotation marks and citations omitted). The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2013). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “As discussed in the Decision, the Specification discloses not only that adenosine may be topically applied to the epidermal layer of the skin, but also that adenosine so applied will penetrate the epidermis to reach the dermal layer. Dec. 10 (citing Ex. 1001, 5:13–14 (“For topical application, the penetration of the adenosine into skin tissue may be enhanced by a variety of methods known to those of ordinary skill in the art.”)). Topical application of adenosine will, therefore, result in adenosine being brought into contact with both the epidermis and the dermis. As also discussed in the Decision, the specification provides examples in which a concentration of adenosine matching the high end recited in the claims (10-4 M) is applied directly to dermal cells (fibroblasts), suggesting that the inventors considered it desirable for the dermal cells to receive the claimed concentration of adenosine. Id. In this context, the meaning of claim 1 is clear: adenosine is first topically applied to the epidermal layer of the skin and, only after it penetrates this outer skin layer, is a specific concentration (10-4 M to 10-7 M) of the adenosine “applied” to the dermal cells.” slip op. at 6

  Claim constructioncites Phillips
  Patents in suitUS 6,423,327
• Envirologix Inc. v. Ionian Technologies, Inc.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2018-00406 · APJ Ulrike W Jenks · IPR · Rehearing

  The Board denied EnviroLogix’s rehearing request, leaving institution denied because Ehses did not show a reasonable likelihood of proving any challenged claim anticipated.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 6

  § 102 anticipation
  Patents in suitUS 9,562,264
• Envirologix Inc. v. Ionian Technologies, Inc.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2018-00405 · APJ Christopher G Paulraj · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution, finding no reasonable likelihood that Ehses anticipated any challenged claim.

  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” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 4

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We remain unpersuaded by this argument. As discussed in our Decision, anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 19 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 82). In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “2 Although not established as prior art, the Ehses Dissertation indicates that TO- PRO-1 fluoresces in the presence of double stranded DNA, whereas SYBR Gold detects both double and single-stranded products. See Ex. 1004, 37. zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,562,263

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.