- Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - PTAB · Jun 19, 2020 · IPR2019-00834 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Intel’s rehearing request and left in place its denial of institution for claims 1–3, 6, and 7 under §§ 325(d) and 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review 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).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“§ 325(d). Inst. Dec. 7–16. We evaluated each of the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“the Becton, Dickinson factors”). Id. We concluded that, “[o]f the six Becton, Dickinson factors, the first factor weighs strongly in favor of denying institution, the third and fifth factors weigh somewhat in favor of denying institution, the second and fourth factors are neutral, and the sixth factor weighs somewhat against denying institution.” Id. at 15–16. Petitioner now argues that this analysis was flawed, with the fourth, fifth, and sixth Becton, Dickinson factors all “strongly favor[ing] reaching the merits and instituting” inter partes review. Req. Reh’g 5–11.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“decision denying institution in the earlier proceeding. But the third General Plastic factor does not require access to the earlier institution decision; it requires only access to either that decision or the corresponding preliminary response. Here, at the time Petitioner filed this Petition, it already had received Patent Owner’s preliminary response in IPR2018-01574. This is sufficient to satisfy the third factor.” slip op. at 8
- Other 314aInstitution denied discretionary otherInstitution denied
“we interpret the Request for Rehearing as arguing that discretionary denial of a second petition is always improper whenever a first petition remains pending.7 Petitioner does not explain the authority for that legal position, and we can find none in either § 314(a) or § 325(d). Institution of inter partes review is never compulsory under § 314(a). Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367–68 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). As for § 325(d), the statutory language appears to refute Petitioner’s position directly. As long as “the same or substantially the same prior art or arguments previously were presented to the Office,” discretion exists to “reject the petition.” 35 U.S.C. § 325(d). There is no mention in the statute 7 Alternatively, the Request for Rehearing could be interpreted as arguing that we should have withheld any decision on the second petition until the rehearing request on the first petition was decided. If we were to interpret the argument this way, we would find it unpersuasive because it would have required us to violate 35 U.S.C. § 314(b)(1), which requires us to issue a decision on institution no later than three months after the filing of the preliminary response. of a limitation on that discretion that requires us to avoid “reject[ing] the petition” whenever the earlier proceeding in which “the same or substantially the same prior art or arguments previously were presented” remains pending. Id. Thus, we are not persuaded that any of the special circumstances that Petitioner describes warrants a conclusion that we abused our discretion in denying institution.” slip op. at 14
Discretionary denialPatents in suitUS 9,070,719 - PTAB · Jun 19, 2020 · IPR2018-01574 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the petition did not show a reasonable likelihood of proving claims 1–3, 6, and 7 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review 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).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“solely on Liaw’s Fig. 2C, ignoring the portions of Liaw relied on by [Petitioner] and the balance of the unrebutted evidence which uniformly established that a person of ordinary skill would have envisaged Liaw’s dielectric spacer layer as surrounding the gate line.” Req. Reh’g 12–13. We did not ignore any evidence. As discussed above, Petitioner argued that Liaw’s process of blanket deposition followed by anisotropic etching inherently would produce as a result the “spacer surrounding the gate line” recited in the challenged claims. A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). Here, Dr. Thompson testified that Liaw’s process would result in the formation of spacers surrounding the gate lines, Ex. 1002 ¶ 223, but Liaw itself showed that a process of blanket deposition followed by anisotropic etching need not necessarily produce that result. Ex. 1003, 3:61–4:6, Fig. 2C. That our Decision focused on the evidence demonstrating the failure of Petitioner’s inherency argument does not mean that we ignored any other evidence. Accordingly, we are not persuaded that this argument shows an abuse of discretion.” slip op. at 9
- Strike new argumentNew argument disregardedOther
“deposition alone,” without any later anisotropic etching, forms a spacer surrounding the gate line, “satisf[ying] the limitation at issue.” Req. Reh’g 7–9. This is a new argument, not previously presented by Petitioner. As noted above, Petitioner argued previously that Liaw’s entire process (including both blanket deposition and the anisotropic etching that follows) “leaves dielectric sidewall spacer material on all vertical surfaces (or sidewalls) of the gate line.” Pet. 33. Similarly, Dr. Thompson testified that “Liaw’s sidewall spacers surrounded the gate line” because, “[a]fter [Liaw’s] etching step, dielectric sidewall spacer material was left on the perimeter of the gate (i.e., spacers on the long lateral sides and at the end faces of the gate line).” Ex. 1002 ¶ 223. Dr. Thompson also testified that the process described in the challenged patent (including both “blanket deposition” and “Reactive Ion Etching”) “resulted in sidewall spacers that ‘surround the respective gate lines.’” Id. ¶¶ 269–270 (quoting Ex. 1001, 6:11–23). Petitioner argued the same. Pet. 33. In addition, Petitioner argued that Mandelman produced its spacers by blanket deposition followed by “reactive ion etching or plasma etching.” Id. at 62–63; see also Ex. 1002 ¶ 317 (Dr. Thompson testifying that Mandelman produces its spacers in this way). Thus, Petitioner’s argument on rehearing that a spacer surrounding the gate line would have been formed by blanket deposition alone, even in the absence of etching, is new. The presentation of such a new argument violates the requirement that Petitioner identify the place in the record where it previously addressed any argument it raises in the Rehearing Request. 37 C.F.R. § 42.71(d). Accordingly, this new argument is improper on rehearing, and we do not consider the merits of this argument.” slip op. at 5
NonePatents in suitUS 9,070,719 - Neptune Generics, LLC v. Aventis Pharma S.A.Rehearing deniedPTAB · Oct 15, 2019 · IPR2019-00136 · APJ Timothy G Majors · IPR · Rehearing
The Board denied Neptune’s rehearing request and left in place its discretionary denial of institution for claims 1 and 2 under § 325(d).
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). Moreover, 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 / argumentsInstitution denied 325dInstitution denied
“example, that the C-7 and C-10 positions on taxanes were available and/or attractive sites for substitution. Dec. 31–32. Petitioner does not demonstrate persuasively why comparing, for purposes of a § 325(d) analysis, one reliedon reference that discloses potential sites for molecular substitutions to a collection of background references that provide substantially the same teaching is “error” on the record here.5 The POSA’s understanding is informed by all the relevant background knowledge and art, not a figure culled from one reference purporting to summarize otherwise known substitution sites. Dec. 11. Moreover, in reaching our conclusion, we did not overlook or misunderstand Commerçon’s Figure 2 or its other teachings. Quite the opposite, the Decision provides a detailed discussion on Commerçon, and Commerçon’s Figure 2 is itself reproduced in the Decision. Id. at 10–12. As noted in the Decision, Commerçon relates primarily to synthesis of docetaxel and docetaxel side-chain analogs. Id. Indeed, insofar as Commerçon actually describes changes that should be made or investigated, Commerçon’s focus is at the C-3' side-chain position—not individual, much less simultaneous changes to C-7 and C-10 of paclitaxel. In other words, the” slip op. at 10
Discretionary denialPatents in suitUS 5,847,170 - PTAB · Oct 10, 2019 · IPR2019-00538 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the evidence did not overcome the prior art’s disparagements for the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentable
“[a]lthough Farrington notes certain concerns with shaft-mounted systems, such as swing effects, aesthetics, and the attachment mechanism’s gripping capability, it was known in the art, and within the POSA’s ability, how to adequately address and alleviate those concerns. See EX1011, ¶5; EX1009, ¶¶95-96. For instance, Hackman teaches providing a shaft-mounted system that does not interfere with the golfer’s swing, see EX1012, 4:7- 30 (acknowledging need for golfer to “swing in a normal manner”), and the POSA would have been aware of readily-available accelerometers, gyroscopes, and other sensors, that were sufficiently light and compact so that any impact on a swing would be negligible. EX1009, ¶¶97-98. In addition, for aesthetics, the POSA would have been aware of the wide variety of choices known in the art and would have understood how to design the removable unit for a certain “look and feel”. Id., ¶99. As for grip concerns, Hackman demonstrates the numerous mechanical options available to the POSA that would allow IMU attachment to the club’s shaft without loosening or moving during a swing. See, e.g., EX1012, 10:10-18 (teaching frictional engagement that “is sufficient to hold the analyzer 10 in place during swinging”), FIGS. 1, 4, 7-10; EX1009, ¶¶100-01.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“evidence of disparagement. Pet. 71–73 (citing Ex. 1009 ¶¶ 203– 219). Neither Petitioner nor Dr. Paradiso explains persuasively, however, why a person of ordinary skill in the art would have been persuaded to ignore Kirby’s disparagement of the use of accelerometers for swing measurement. Id. Dec. 28 (emphasis added); see id. at 25 (noting that “Petitioner argues that a person of ordinary skill in the art would have had reason to use an accelerometer-based device like that taught by Kimber and optionally by Kirby, located adjacent to the grip of a golf club, as taught by Kirby, rather than adjacent to the head of the golf club, as taught by Kimber. Pet. 71–73.”) (emphasis added). Thus, as indicated in the Decision, the panel considered all of the arguments and evidence presented by Petitioner in the Petition. However, the panel determined that these arguments and evidence did not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claims.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,589,114 - PTAB · Oct 7, 2019 · IPR2019-00537 · APJ John R Kenny · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution because the cited evidence did not overcome the references’ teachings against the proposed modifications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundDecided for patent owner
“As our Decision noted, however, the only support Dr. Paradiso cited for these propositions is a portion of Hackman and a portion of Exhibit 1017. Ex. 1008 ¶¶ 99–100; Dec. 17. In its Request for Rehearing, Petitioner identifies nothing from its evidence of the general knowledge of an ordinarily skilled artisan, background art, or reasonable expectation of success that provides any further support for these propositions. Req. Reh’g 4–7. Instead, Petitioner merely argues that an ordinarily skilled artisan would have recognized some benefits to using a shaft mounted system with a golf club and would have had a reasonable expectation of success for adding such a system to Farrington’s golf club. Id. None of that evidence, however, suffices to overcome Farrington’s disparagement. The mere fact that, for general purposes, externally mounted systems may have benefits or could be successfully added to Farrington’s golf club does not demonstrate that, as Dr. Paradiso testified, the weight, drag or other swing-related issues highlighted by Farrington associated with such a system would be readily overcome. Accordingly, we are not persuaded that we overlooked evidence that would overcome Farrington’s disparagement of using a swing analysis device mounted on the outside of its golf club. Background Art, and Reasonable Expectation of Success Petitioner argues that we overlooked evidence regarding the general knowledge of an ordinarily skilled artisan, background art, and reasonable expectation of success when we determined, for Ground 3 (based on Kirby and Kimber), that Petitioner made an insufficient showing to overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and to overcome Kimber’s disparagement of placing a swing measurement device near the grip. Req. Reh’g 7–12. None of the evidence cited by Petitioner regarding the level of skill in the art, background art, or a reasonable expectation of success, however, would overcome Kirby’s and Kimber’s disparagements. Id. The mere fact that, for general purposes, accelerometers may have some benefits or that there would be a reasonable expectation that they could be successfully added to Kirby’s golf club does not mean that such a modification would avoid the speed and cost issues noted by Kirby or outweigh them. Similarly, the mere fact that for general purposes there may be some advantages to placing an accelerometer near a grip and reasonable expectation that one could be successfully added near a grip would not overcome Kimber’s disparagement of placing a swing measurement device near the grip or outweigh that concern. Accordingly, we are not persuaded that we overlooked evidence that would overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and Kimber’s disparagement of placing a swing measurement device near the grip.” slip op. at 6
- BurdenNot reached
“Ground 3 (obviousness over Kirby and Kimber) that Kirby alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious. Reh’g Req. 2–3. Ground 4 (obviousness over Kirby, Kimber, and Nusbaum) that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 3. Petitioner, however, does not identify where in the Petition it contended that Kimber alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious or that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 2–3. To the contrary, according to the Petition, the basis for Ground 3 is “Obvious under §103(a) over the combination of U.S. Patent Application Publication 2007/0206837 (‘Kirby,’ EX1013) and Great Britain Patent Application Publication 2430890 (‘Kimber,’ EX1014).” Pet. 4. Similarly, the basis for Ground 4 is “Obvious under §103(a) over the combination of Kirby, Kimber, and Nusbaum.” Id. at 5. Accordingly, we are not persuaded that we overlooked any contention that Kirby alone or Kirby and Nusbaum by themselves would have rendered claims 1, 6–7, 9– 12, 13, 14, 16, and 18–19 obvious.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,831,905 - PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2
Claim constructionPatents in suitUS 7,072,849 - Bedra, Inc. / Berkenhoff GmbH et al. v. Seong, Ki ChulRehearing deniedPTAB · Feb 4, 2019 · IPR2018-00666 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution because Petitioner did not show the Korean application failed to disclose the claimed cracks.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). In addition, we may not consider an argument made in a request for rehearing unless the request “specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“arguments, we still are not persuaded that those arguments show that we abused our discretion in determining that the Korean application disclosed cracks in the alloy layer and the coating layer. Even if Petitioner is correct that Figure 2a2 shows no cracks or does not show cracks clearly enough, our Institution Decision cited other evidence that Petitioner does not dispute. First, as Petitioner admits, the Korean application discloses that its “coating layer” has cracks “uniformly formed” within it. Pet. 19 (citing Ex. 1013, 6–7). Petitioner interprets this disclosure of cracks in the “coating layer” as limited to the outermost layer of the Korean application’s wire, rather than also in any underlying alloy layer. Id. But, as Petitioner admits, the “coating layer” described in the Korean application is not merely the outermost layer, but is instead made up of “three parts”: “beta brass, a mixed portion of beta and gamma brass, and zinc on the surface.” Id. at 18–19. If cracks are “uniformly formed” within the “coating layer,” then they are present in all three of these parts, including the “beta brass” and “mixed . . . beta and gamma brass” layers, each of which is an alloy. See Dec. 8.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also are not persuaded by Petitioner’s argument that there is a genuine issue of material fact due to the competing testimony of the parties’ declarants. Req. 14–15. As discussed above and in our Institution Decision, we do not find support in the evidentiary record for Dr. Tomalin’s opinions. Despite testifying both that the “coating layer” of the Korean application includes “beta brass,” “beta/gamma brass,” and “zinc” layers, and that the “coating layer” contains uniform cracks, Dr. Tomalin also testifies that the cracks described in the Korean application are limited to the outermost zinc layer. Ex. 1004 ¶¶ 51–52, 56. This testimony is internally inconsistent, so it cannot create a genuine dispute of material fact.” slip op. at 5
NonePatents in suitUS 6,306,523 - 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 - L’Oréal USA, Inc. v. Liqwd, Inc.Rehearing deniedPTAB · Oct 18, 2018 · PGR2018-00024 · APJ Christopher M Kaiser · PGR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show an abuse of discretion in construing “bleach powder” or assessing written-description support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). In addition, we may not consider an argument made in a request for rehearing unless the request “specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing. slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“reconsider the issue of our construction of “bleach powder.” The parties agree that the specification of the ’954 patent does not contain an express definition of “bleach powder,” so we are required to give the term its “ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure.” Translogic, 504 F.3d at 1257; see Pet. 27–28 (arguing that, “[a]bsent any . . . clear intent, the BRI must be consistent with the interpretation that those skilled in the art would reach,” then offering no particular construction of “bleach powder”); Prelim. Resp. 29–30 (“A person of ordinary skill in the art would have understood that bleach powder combines persulfates with alkalinizing compounds . . . in a fine dry particulate form.” (citing only sources outside the ’954 patent)). In arguments that we may consider, the parties draw our attention to six sources of evidence about the ordinary understanding in the art of “bleach powder.” Req. 2–5 (citing Ex. 1039, 48:9–49:9); Prelim. Resp. 29– 30 (citing Ex. 1002, 15:45–65; Ex. 1011, 17; Ex. 2005, 6; Ex. 2007, 3; Ex. 2012 ¶¶ 34–36). There is evidence that supports Patent Owner’s view that the ordinary meaning of “bleach powder” is a powder that contains an alkalizing agent in addition to persulfates, as opposed to merely a persulfate powder. A textbook called “Hair Preparations” by Thomas Clausen and others states that, at least in paste bleaches, “a bleach powder” is used that “consists of a peroxodisulfate, an alkalinizing agent,” and other ingredients. Ex. 1011, 17. In the context of cream and gel bleaches, this reference teaches that “[p]eroxosulfate . . . can be added as a bleaching powder” but is silent about whether the “bleaching powder” contains any additional ingredients. Id. In a book chapter on “Hair Coloring” by Keith C. Brown, a “bleach booster” powder is discussed that “is usually a mixture of ammonium and potassium persulfates” and that has “metasilicates mixed in with the persulfates” to provide “[a]lkaline pH.” Ex. 2005, 6. Against this evidence is the testimony of Dr. Borish that “powder lighteners” or “bleach powders” include “persulfate salts.” Ex. 1039, 48:9–49:9. But Dr. Borish does not state affirmatively that the persulfate salt is all that is required for a powder to be a bleach powder, only that a persulfate salt is a necessary component of a bleach powder. Id. Accordingly, his testimony does not outweigh the evidence that, to a person of ordinary skill in the art, a bleach powder contains both a persulfate salt and an alkalizing agent. We are not persuaded, therefore, that we abused our discretion by construing “bleach powder” to require both of those components.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing.” slip op. at 2
Claim constructionPatents in suitUS 9,668,954
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.