- Swiss Pharma International AG v. Biogen IdecRehearing deniedPTAB · Feb 3, 2017 · IPR2016-00912 · APJ Lora M Green · IPR · Rehearing
The Board denied Swiss Pharma’s rehearing request, leaving institution denied for claims 1–16, 21, and 22 because the petition did not show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Patent Owner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“however, that the variable to be optimized had to be recognized as a result effective variable. Id. at 620. In the instant case, Petitioner only suggests changing the concentration of the antibody to allow it to be stored in known vials. Petitioner does not explain, however, how merely adding a sufficient concentration of natalizumab to a known vial is a result effective variable. As noted by Patent Owner (Prelim. Resp. 40), Dr. Brod testified that “the concentration of natalizumab is not important from the stand-point of administration as partial, single or multiple vials can be added to an intravenous bag in order to provide the proper dose.” Ex. 1011 ¶ 27. Thus, although the testimony may be read as demonstrating that the concentration is not critical, it also demonstrates that the concentration of the antibody in terms of its storage was not recognized as a result effective variable.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“however, that the variable to be optimized had to be recognized as a result effective variable. Id. at 620. In the instant case, Petitioner only suggests changing the concentration of the antibody to allow it to be stored in known vials. Petitioner does not explain, however, how merely adding a sufficient concentration of natalizumab to a known vial is a result effective variable. As noted by Patent Owner (Prelim. Resp. 40), Dr. Brod testified that “the concentration of natalizumab is not important from the stand-point of administration as partial, single or multiple vials can be added to an intravenous bag in order to provide the proper dose.” Ex. 1011 ¶ 27. Thus, although the testimony may be read as demonstrating that the concentration is not critical, it also demonstrates that the concentration of the antibody in terms of its storage was not recognized as a result effective variable.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We disagree. We noted in our decision that similarly to Soberra, Gordon also taught a 3 mg/ml infusion, and used a 5 mg/ml formulation. Dec. 12‒13. We then looked at the references relied upon by Dr. Schöneich in establishing that formulations were available in stoppered vials in a number of different volumes. Id. at 13. We noted that only one antibody solution was referenced by Dr. Schöneich, and that antibody solution contained 5 mg/ml of antibody. Id. The other references were directed to small molecule drugs, and we noted that Dr. Schöneich did not explain why the ordinary artisan would look to those references when formulating an antibody solution. Id. The fact that Petitioner may not agree with our consideration of the evidence does not mean that we overlooked that evidence, or that we misapprehended it.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,815,236 - Swiss Pharma International AG v. Biogen IdecRehearing deniedPTAB · Feb 3, 2017 · IPR2016-00915 · APJ Lora M Green · IPR · Rehearing
The Board denied Swiss Pharma’s rehearing request, leaving institution denied for claims 1–4 because the petition did not show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Patent Owner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As noted in our Decision, however, Petitioner failed to demonstrate that the adjustment of the concentration of natalizumab would have been only routine optimization. Dec. 11. Gordon teaches a 5 mg/ml formulation of natalizumab. Id. The other references relied upon by Petitioner to establish that “IgG formulations containing between 5 and 50 mg/ml were known in the art” do not relate to natalizumab, nor are they limited to the claimed excipient, and Petitioner does not address our concern as to how the concentrations of those antibodies could be extrapolated to natalizumab in the claimed excipient. Id. at 10‒12 (quoting Pet. 27). In fact, the references relied upon by Petitioner to teach the claimed excipient, contained 10 mg/ml (van Oosten) or 5 mg/ml (Zenepax) of antibody. Id. at 10. Moreover, Petitioner does not address our concern that two of the three references relied upon by Dr. Schöneich to establish that stoppered vials in different sizes were known related to small molecule drugs, and the one that related to antibodies, Zenepax, contained 5 mg/ml of antibody. See Dec. 12‒13.” slip op. at 7
- Obviousness (§103) › KSR rationalesMotivation not foundDecided for patent owner
“The court held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Id. at 456. The court noted, however, that “changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.” Id. In concluding that the patentability of the claims was not demonstrated, the court noted that “[a]ny chemist reading the article could logically assume that higher yields might be obtainable, and by experimentally varying the conditions of temperature and acidity could find the most productive conditions.” Id. at 458. In In re Antonie, 559 F.2d 618 (CCPA 1977), the court noted, however, that the variable to be optimized had to be recognized as a result effective variable. Id. at 620. In the instant case, Petitioner only suggests changing the concentration of the antibody to allow it to be stored in known vials. Petitioner does not explain, however, how merely adding a sufficient concentration of natalizumab to a known vial is a result effective variable. As noted by Patent Owner (Prelim. Resp. 40), Dr. Brod testified that “the concentration of natalizumab is not important from the stand-point of administration as partial, single or multiple vials can be added to an intravenous bag in order to provide the proper dose.” Ex. 1011 ¶ 27. Thus, although the testimony may be read as demonstrating that the concentration is not critical, it also demonstrates that the concentration of the antibody in terms of its storage was not recognized as a result effective variable.” slip op. at 7
- BurdenDecided for patent owner
“37 C.F.R. § 42.108 relates to institution of inter partes review. 37 C.F.R. § 42.108(c) states: Sufficient grounds. Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but 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. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause. 37 C.F.R. § 42.108(c), therefore, applies to those situations in which patent owner submits testimonial evidence to support its preliminary response. In those situations where that testimonial evidence creates an issue of material fact, the evidence will be considered in the light most favorable to the petitioner. Patent Owner did not submit any such testimonial evidence in support of its Preliminary Response in the instant proceeding. Moreover, the rule does not relieve Petitioner of its burden of demonstrating in its Petition a reasonable likelihood that at least one of the challenged claims is unpatentable, such that inter partes review may be instituted. In the instant proceeding, for the reasons discussed in the Decision, we determined that the Petition failed to make such a showing.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,349,321 - Swiss Pharma International AG v. Biogen IdecRehearing deniedPTAB · Feb 3, 2017 · IPR2016-00916 · APJ Lora M Green · IPR · Rehearing
The Board denied rehearing of its denial of institution because Petitioner did not show an abuse of discretion in finding the obviousness showing insufficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Patent Owner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As noted in our Decision, however, Petitioner failed to demonstrate that the adjustment of the concentration of natalizumab would have been only routine optimization. Dec. 11. Gordon teaches a 5 mg/ml formulation of natalizumab. Id. The other references relied upon by Petitioner to establish that “IgG formulations containing between 5 and 50 mg/ml were known in the art” do not relate to natalizumab, nor are they limited to the claimed excipient, and Petitioner does not address our concern as to how the concentrations of those antibodies could be extrapolated to natalizumab in the claimed excipient. Id. at 11‒12 (quoting Pet. 27‒28). In fact, the references relied upon by Petitioner to teach the claimed excipient, contained 10 mg/ml (van Oosten) or 5 mg/ml (Zenepax) of antibody. Id. at 11. Moreover, Petitioner does not address our concern that two of the three references relied upon by Dr. Schöneich to establish that stoppered vials in different sizes were known related to small molecule drugs, and the one that related to antibodies, Zenepax, contained 5 mg/ml of antibody. See Dec. 13.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“that the adjustment of the concentration of natalizumab would have been only routine optimization. Dec. 11. Gordon teaches a 5 mg/ml formulation of natalizumab. Id. The other references relied upon by Petitioner to establish that “IgG formulations containing between 5 and 50 mg/ml were known in the art” do not relate to natalizumab, nor are they limited to the claimed excipient, and Petitioner does not address our concern as to how the concentrations of those antibodies could be extrapolated to natalizumab in the claimed excipient. Id. at 11‒12 (quoting Pet. 27‒28). In fact, the references relied upon by Petitioner to teach the claimed excipient, contained 10 mg/ml (van Oosten) or 5 mg/ml (Zenepax) of antibody. Id. at 11. Moreover, Petitioner does not address our concern that two of the three references relied upon by Dr. Schöneich to establish that stoppered vials in different sizes were known related to small molecule drugs, and the one that related to antibodies, Zenepax, contained 5 mg/ml of antibody. See Dec. 13.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,900,577 - Vista Outdoor Operations LLC v. Liberty Ammunition, LLCRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00539 · APJ Michael L Woods · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution for claims 1–42 on all six grounds, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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, opposition, or a reply. Furthermore, when rehearing a decision on a motion, the Board will review the decision for an abuse of discretion. Id. at § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,748,325 - PTAB · Oct 19, 2016 · IPR2016-00379 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing and declined to institute review of claims 1–6 under § 325(d), finding substantially the same art and arguments had been presented previously.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen 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). The request must identify, specifically, 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 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Petitioner relies primarily on the same prior art that the examiner relied on during examination. See Dec. 9 (noting Petitioner and examiner both relied on Van Lommen1). Because, under 35 U.S.C. § 325(d), we have discretion to reject a Petition if “the same or substantially the same prior art or arguments previously were presented to the Office,” Petitioner has not established that we abused our discretion in denying the Petition because substantially the same prior art was previously before the Office. See § 325(d) (emphasis added).” slip op. at 3
Discretionary denialPatents in suitUS 6,545,040 - ZTE USA, Inc. v. Saint Lawrence Communications LLCInstitution deniedPTAB · Sep 14, 2016 · IPR2016-00705 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all challenged claims because Ozawa did not show the required comparison of pitch prediction errors across signal paths, and the obviousness grounds did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). We have reviewed the Petition and supporting declaration of Dr. Johnson, and these materials do not contain adequate support for Petitioner’s assertion that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Petitioner asserts that “vector selector 22 selects one of the candidate code vectors and one of the gain code vectors that minimize the distortion [i.e., pitch prediction error].” Pet. 18. Petitioner, however, does not cite persuasive evidence that Ozawa discloses calculating the distortion of a pitch codevector in each of at least two signal paths, or that Ozawa’s vector selector 22 performs a comparison between distortions calculated in at least two signal paths. See Pet. 17–19, 37–40, 58. Petitioner’s declarant, Dr. Johnson, testifies that vector selector 22 performs one type of comparison “during mode 1, 2, or 3,” and a different type of comparison “during mode 0.” See Ex. 1036 ¶ 98 (citing Ex. 1006, 6:21–40). Dr. Johnson, however, does not offer persuasive testimony or evidence that Ozawa discloses a comparison between distortions (i.e., pitch prediction errors) that were calculated in two different modes (i.e., signal paths). See Ex. 1036 ¶¶ 96–101, 145–147. For the reasons set forth above, Petitioner has not made an adequate showing that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to independent claims 1 and 55. For the same reasons, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to dependent claims 2, 5, 7, 8, 56, 59, and 62, all of which depend from either claim 1 or claim 55. 3.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“is . . . used for selecting a single path used for the computation of the codevector distortions” (i.e., the Petitioner-identified pitch prediction error).” Prelim. Resp. 27. “In other words, Ozawa does not calculate pitch prediction errors for subframes for each of the different modes [paths] and select the mode [path] with the lowest calculated pitch prediction error,” as required by independent claims 1 and 55. Id. (emphasis added). On this record, we find Patent Owner’s argument to be persuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Obviousness of Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60 over Ozawa, G.729, and/or Ordentlich Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60, all depend from either claim 1 or claim 55, and Petitioner’s obviousness arguments regarding these claims all rely on Petitioner’s assertion that Ozawa discloses all limitations of claims 1 and 55. See Pet. 24, 27, 35, 41– 60. Petitioner does not argue that G.729 and Ordentlich individually or collectively cure the deficiencies discussed above in Petitioner’s argument with respect to claims 1 and 55. See id. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its obviousness challenges to dependent claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60.” slip op. at 16
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,260,521 - PTAB · Jul 1, 2016 · IPR2016-00379 · APJ Tina E Hulse · IPR · Institution
The Board denied institution for claims 1–6 under § 325(d), finding substantially the same prior art and arguments had been presented during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the Petition under § 325(d) because Petitioner’s obviousness challenge is based on (i) the same primary reference addressed during prosecution, including by the Board in an appeal; and (ii) the same arguments regarding that primary reference and how it allegedly would have been modified. Prelim. Resp. 56–60. Upon reviewing the Petition, Preliminary Response, and the prosecution history of the ’040 patent, we agree. During prosecution, the examiner rejected the claims as obvious over Van Lommen. Here, Petitioner also relies primarily on Van Lommen to argue the claims are obvious. We, therefore, find that substantially the same prior art was previously presented to the Office. We also find that substantially the same arguments were previously presented to the Office, including to the Board. Petitioner argues that a person of ordinary skill in the art would have selected Compound 84 of Van Lommen as a base compound for investigation and would have been motivated to stereochemically separate the stereoisomers of Compound 84 using the chromatography techniques disclosed in the secondary prior art references. Pet. 33. As Patent Owner notes, however, the examiner repeatedly stated that “the skilled artisan would have seen optical isomer separation as a routine procedure leading to the compounds claimed herein.” Prelim. Resp. 57 (citing Ex. 1002, 48, 73, 88, 113). Thus, Petitioner asserts substantially the same argument that the examiner asserted during prosecution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The claims recite a composition “consisting of” the claimed compound. The parties agree that the transitional phrase “consisting of” is a term of art in patent law that “closes” the claim and excludes other elements, steps, or ingredients not specified in the claim. Pet. 29–30; Prelim. Resp. 23. 4 Armstrong et al., Separation of Drug Stereoisomers by the Formation of β- Cyclodextrin Inclusion Complexes, 232 SCIENCE 1132–35 (1986) (Ex. 1007). expected impurities or additional components or steps that are unrelated to the invention. Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1360 (Fed. Cir. 2006). Accordingly, we determine that the term “consisting of” does not exclude the presence of ordinary expected impurities or the presence of additional components that are unrelated to the invention.” slip op. at 5
- Obviousness (§103) › Objective indicia / secondary considerationsOther
“concluding the applicants’ evidence of unexpected results sufficient, and implicitly finding a sufficient nexus between the evidence and the claimed invention. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”) (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)). Finally, Petitioner argues that it has submitted “ample evidence” that the compounds of claims 1 and 2 would be the intended and expected result of combining the asserted references, and that claims 3–6 would not be an unexpected result of the suggested combination. Pet. 56 (citing Ex. 1050 ¶¶ 50, 56, 66, 73, 74, 81, 93, 106; Ex. 1052 ¶¶ 60–68, 93, 100). But Petitioner’s cited evidence relates to how a person of ordinary skill in the art would have considered separating and studying the stereoisomers of compound 84 to be ordinary and routine. See, e.g., Ex. 1050 ¶ 73 (“A POSITA at the time would have had an expectation that this stereochemical resolution could be easily achieved using known and commercially available techniques, without undue experimentation.”); Ex. 1052 ¶ 93 (“[I]t is my opinion that a POSITA at the time of the ’040 Patent’s priority date, would have been motivated to carry out standard new-drug investigation on each of the purified stereochemical forms in order to determine the effectiveness of each stereochemical form, to determine whether the drug could be administered as a racemic mixture or whether a purified enantiomer was required, to determine the interactions between stereoisomers if administered together, and to determine the effective amounts of each compound necessary for treatment of hypertension.”). The Board, however, assumed examiner established a prima facie case of obviousness. Ex. 1002, 199. Nevertheless, the Board still found the unexpected results evidence presented by the applicants to be sufficient. Finally, although the prior panel expressly set forth the deficiencies in the examiner’s position with respect to the evidence of unexpected results, the Petition is silent as to those deficiencies. In particular, Petitioner has not offered sufficient evidence to show why an ordinary artisan “would have expected the RSSS stereoisomer to have such [potentiating] properties” or to show “that the potentiating property, described in the declaration, is insignificant.” See Ex. 1002, 200. Because Petitioner has not addressed these issues, we are not inclined to reconsider the Board’s prior decision. Accordingly, under the facts and circumstances of this case, we find that readjudicating substantially the same prior art and arguments as those presented during prosecution would not be an efficient use of Board resources.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 6,545,040 - PTAB · Apr 8, 2016 · IPR2015-00720 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied rehearing and maintained denial of institution for claims 1–8 because Petitioner did not show the posters qualified as prior art printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen 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. Inc., 840 F.2d 1565,” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“In our Decision, we stated that we were “not persuaded that Petitioner has made a threshold showing that the posters were sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b).” Dec. 5 (emphasis added). We also stated that Petitioner had “not demonstrated adequately” that either poster constituted prior art to the ’685 patent. Id. (emphasis added). In other words, when considering the Petition and information before us, Petitioner did not demonstrate sufficiently that either poster constituted prior art, and consequently, Petitioner did not establish that there was a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition, as required under § 314(a). Petitioner’s assertions regarding the “proper standard” do not persuade us that we made a legal error in denying the Petition on that basis.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Once again, Petitioner essentially reargues, and attempts to bolster with new arguments now, the same contentions that we already considered and expressly addressed in our Decision. Dec. 3–5. As noted above, mere disagreement with the Board’s analysis or determination is not a proper basis for rehearing. Moreover, we will not consider new arguments made for the first time in a Request for Rehearing, especially when an opportunity to present arguments and information regarding the posters clearly existed at the time Petitioner filed its Petition. See, e.g., Berk-Tek LLC v. Belden Tech. Inc., Case IPR2013-00057, slip op. at 3 (PTAB May 15, 2013) (Paper 21) (“A request for rehearing is not an opportunity to submit new analysis, after the Decision has noted the deficiencies in the petitioner’s original analysis.”).” slip op. at 5
§ 102 anticipationPatents in suitUS 8,663,685 - PTAB · Apr 8, 2016 · IPR2015-00817 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution because Petitioner did not show the posters were publicly accessible printed publications qualifying as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen 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.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we stated that we were “not persuaded that Petitioner has made a threshold showing that the posters were sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b).” Dec. 5 (emphasis added). We also stated that Petitioner had “not demonstrated adequately” that either poster constituted prior art to the ’826 patent. Id. at 5–6 (emphasis added). In other words, when considering the Petition and information before us, Petitioner did not demonstrate sufficiently that either poster constituted prior art, and consequently, Petitioner did not establish that there was a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition, as required under § 314(a). Petitioner’s assertions regarding the “proper standard” do not persuade us that we made a legal error in denying the Petition on that basis.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“exactly when, where, and to whom the Hayes and Goodman posters were presented at scientific meetings. Dec. 3–6.” slip op. at 5
- Strike new argumentNew argument disregardedOther
“with new arguments now, the same contentions that we already considered and expressly addressed in our Decision. Dec. 3–6. As noted above, mere disagreement with the Board’s analysis or determination is not a proper basis for rehearing. Moreover, we will not consider new arguments made for the first time in a Request for Rehearing, especially when an opportunity to present arguments and information regarding the posters clearly existed at the time Petitioner filed its Petition. See, e.g., Berk-Tek LLC v. Belden Tech. Inc., Case IPR2013-00057, slip op. at 3 (PTAB May 15, 2013) (Paper 21) (“A request for rehearing is not an opportunity to submit new analysis, after the Decision has noted the deficiencies in the petitioner’s original analysis.”).” slip op. at 5
§ 102 anticipationPatents in suitUS 8,007,826 - Intermix Media, LLC v. Bally Gaming, Inc.Institution deniedPTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution
The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptNot shown unpatentable
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 5,816,918
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.