- PTAB · Feb 6, 2023 · IPR2022-01318 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 5, 6, and 8 based on a reasonable likelihood of unpatentability over Duan, and Duan with Wu.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“involved two petitioners accused of infringement based on the same product—made by one petitioner and incorporating technology licensed from the other. Valve I, at 9–10 (finding a significant relationship between the two petitioners “with respect to Patent Owner’s assertion” of the challenged patent); Valve II, at 10 (same); see Prelim. Reply 3. Patent Owner has asserted no such relationship here, and we conclude that Patent Owner has failed to establish that Petitioner has a significant relationship with the -522 IPR petitioner. Representation by the same counsel and being accused of infringing the same patent does not create a relationship that justifies discretionarily denying institution. Accordingly, Factor 1 weighs strongly against denying institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have had a Bachelor of Science (B.S.) in electrical or mechanical engineering, or similar advanced post-graduate education in this area, or would have possessed at least 2-3 years of experience in liquid cooling systems for computer systems or similar systems. A POSITA would be knowledgeable of the concepts, components, and their functions described as “prior art” in the ’355 patent such as, e.g., pumps, radiators, fans, reservoirs, and other techniques of heat dissipation and liquid cooling. (Ex-1001,1:11-47.) In addition, a POSITA would be knowledgeable about electric motors and their components (e.g., electromagnetic coils, rotors, stators, AC/DC motors, etc.) Pet. 6–7 (citing Ex. 1003 ¶¶ 13–18). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Based on our analysis of the issues in dispute at this stage of the proceeding, we conclude that no claim term requires express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 14
Claim constructionDiscretionary denialPatents in suitUS 10,078,355 - PTAB · Dec 28, 2021 · IPR2021-01195 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 6, 7, 11, and 12, finding a reasonable likelihood that the Batchelder-based obviousness grounds would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“Under the Board’s precedential decision in SharkNinja Operating LLC v. iRobot Corp., when no time-bar or estoppel would apply once determining Petitioner did not name all RPIs, the Board need not address the issue. IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential); see also Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (“[O]ur jurisdiction to consider a petition does not require a ‘correct’ identification of all RPIs in a petition.”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the ’354 patent, the overlap in the asserted prior art, and our prior determination of unpatentability regarding the ’354 patent, we conclude that the merits of Petitioner’s case in this proceeding are substantively strong. Thus, this factor weighs strongly in favor of institution. 7. Holistic assessment of factors and conclusion We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. In weighing the totality of the evidence, we decide not to exercise discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely related field, and would have possessed at least two or three years of experience in liquid cooling systems for computer systems or in similar systems. Pet. 7–8 (citing Ex. 1003 ¶¶ 23–26). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construe claim terms “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). The parties stipulated to constructions of “reservoir” and “chamber” in the district-court litigation. Ex. 1005, 2. Petitioner proposes additional constructions for “impeller” and “radiator.” Pet. 8–10. Patent Owner does not dispute those constructions. See generally Prelim. Resp. Based on our analysis of the issues in dispute at this stage of the proceeding, we conclude that none of the claim terms identified by the parties require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
Claim constructionDiscretionary denialPatents in suitUS 10,613,601 - Apple Inc. v. Voip-Pal.Com, Inc.Rehearing deniedPTAB · May 24, 2019 · IPR2016-01198 · APJ Scott R Boalick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving intact the finding that challenged claims of the ’005 and ’815 patents were not shown obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At the outset, we note that in a request for rehearing we do not review the merits of the Final Written Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked in the Final Written Decision. 37 C.F.R. § 42.71(d) (“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 conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- Expert testimonyPatent owner expert creditedDecided for patent owner
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“testimony by Dr. Mangione-Smith—when rejecting Petitioner’s view of the prior art and reason for the combination. See FWD 19 (citing Ex. 2016 ¶¶ 65–67); Reh’g Opp’n 6. Thus, when the panel concluded that Petitioner had not shown that Chu ’684’s method would apply to a number reformatted by the secondary references (see FWD 22–23), it relied on record evidence supporting its conclusion. We determine that the panel did not misapprehend the nature of the proposed combination; rather, based on the record, it resolved a factual dispute and concluded that Petitioner failed to show the proposed combination would operate as asserted.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,179,005 - PTAB · Oct 20, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied VirnetX’s rehearing request, rejecting its real-party-in-interest arguments and finding the challenged claims remained unpatentable based on the Petition and Kiuchi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 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.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Paper 82, 8. We are not persuaded by Patent Owner’s argument. Even assuming that Petitioner, in fact, “admitted that the US Feeder and the Cayman Feeder are ‘controlling shareholders’ of the Mangrove Petitioner,” as Patent Owner asserts, Patent Owner does not demonstrate persuasively that Petitioner also “admitted” that the “US Feeder and the Cayman Feeder” exerted control over the filing or preparation of the Petition. Nor does Patent Owner provide sufficient evidence demonstrating such control.” slip op. at 2
- Expert testimonyDecided for petitioner
“1003 is entitled to no weight and reverse its findings of unpatentability that improperly rely on Exhibit 1003.” Paper 82, 14. Reference to Exhibit 1003 in the Decision was made in conjunction with the Petition in describing the Kiuchi disclosure with respect to claim features. Decision 5. We note that Exhibit 1003 merely confirms what is already apparent in the Petition and/or the Kiuchi reference itself (both of which are also relied upon in consideration of the Kiuchi reference with respect to claim features). Hence, to the extent that any modifications might have been made to the relevant portions of Exhibit 1003, we conclude that such alleged potential modifications (if any) are of insubstantial relevance in view of the fact that analysis of the Petition and the Kiuchi reference itself (without reliance on Exhibit 1003 in this regard) indicate that Petitioner has met its burden by a preponderance of the evidence that claims 1, 2, 6–8, and 12–14 of the ’151 patent are unpatentable, as indicated in the Decision. See, e.g., Decision 1-4, 6-24, and 26-38. Reference to Exhibit 1003 in the Decision was also made in the Petition as corroboration that RFC documents are “publications [that] are prepared and distributed,” “published and widely distributed” for “a period for others to provide comments on the document,” “can be obtained from a number of Internet hosts using . . . document-retrieval systems,” and contain a date “in the top right corner of the first page of the document.” Decision 25. Such testimony merely corroborates what is already clear on its face. For example, the fact that RFC documents are prepared and distributed, are for others to provide comments, are published on a specific date, and that the top right corner of such documents specify a date is clear on simple inspection of the RFC document itself. Therefore, we determine that the importance of any alleged modifications to Dr. Guerin’s testimony confirming what is already apparent on its face is of insubstantial importance. Also, Patent Owner does not demonstrate sufficiently that any modifications were, in fact, made to Dr. Guerin’s testimony that RFC documents are published on a specific date and that the top right corner of such documents specify a date.” slip op. at 6
NonePatents in suitUS 7,490,151 - Mylan Pharmaceuticals Inc. v. Astrazeneca ABRehearing grantedPTAB · May 2, 2016 · IPR2015-01340 · APJ Rama G Elluru · IPR · Rehearing
The Board granted Mylan’s rehearing request and instituted IPR of claims 1, 2, 4, 6-22, 25-30, 32-37, and 39-42.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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, an opposition, or a reply. We grant Petitioner’s request for rehearing and institute an inter partes review of claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 of the ’186 patent for the reasons provided in the concurrently issued Decision on Institution. Paper 16.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“References Basis Claims challenged Ashworth I, Villhauer, Raag and, 1, 2, 4, 6–11, 25–28, § 103(a) Hanessian 32–35, 39, and 40 Ashworth I, Villhauer, Raag, 12–16, 29, 30, 36, 37, Hanessian, Bachovchin, and § 103(a) 41, and 42 GLUCOPHAGE Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin and, § 103(a) 12, 17, 18, and 22 XENICAL Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin, and § 103(a) 12, 19, 20, and 21” slip op. at 2
None - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR2016-00167 and its joinder with IPR2015-01047 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“because “the ’167 IPR is entirely devoid of any supporting expert testimony” but expert testimony was supposedly submitted in IPR2015-01047. Req. Reh’g 3–4. As previously explained, however, the record reflects that Petitioner has demonstrated a reasonable likelihood of prevailing and Patent Owner fails to demonstrate sufficiently that the absence of expert testimony alone indicates the failure to demonstrate a reasonable likelihood of prevailing in proving unpatentability of a challenged claim. See, e.g., Decision 4.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“(“Req. Reh’g” or “Request”), seeks reversal of the Board’s Decision granting institution in IPR2016-00167 and joining IPR2016-00167 with IPR2015-01047. See Req. Reh’g 1. The Board denies the requested relief.” slip op. at 2
NonePatents in suitUS 7,490,151 - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR2016-00063 and its joinder with IPR2015-01047 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Patent Owner’s arguments in the Request but find them unpersuasive to demonstrate that we misapprehended or overlooked any points.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner argues that we incorrectly granted institution of IPR2016-00062 under 35 U.S.C. § 315(b). See, e.g., Req. Reh’g 6–10. Contrary to Patent Owner’s contention, our granting of institution of IPR2016-00063 is in accordance with 35 U.S.C. § 315(b) for at least the reasons previously discussed. Decision 4. Patent Owner reiterates that an alternative interpretation of 35 U.S.C. § 315(b) should be adopted to permit denial of institution of IPR2016-00063. See, e.g., Req. Reh’g 6–10. In support of this contention, Patent Owner continues to cite the dissent in Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, dissent slip op. at 18 (PTAB Feb. 12, 2015) (Fitzpatrick, Bisk, & Weatherly, A.P.JJ., dissenting) (Paper 28) but does not explain why a dissent in this cited matter should compel us to adopt an alternate interpretation of 35 U.S.C. § 315(b). We therefore continue not to do so.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner argues that “Apple’s past conduct and the numerous challenges to the ’151 patent nonetheless compel that the Petition be denied under § 325(d).” Req. Reh’g 10. According to 35 U.S.C. § 325(d), “the Director may take into account whether, and reject the petition or request, because the same or substantially the same prior art or arguments previously were presented to the Office.” Having carefully considered Patent Owner’s arguments (Req. Reh’g 10–12), we decline to exercise our discretion to reject the petition or request because the same or substantially the same prior art or arguments previously were presented (allegedly) to the Office, even assuming that the same or substantially the same prior art or arguments were, in fact, previously presented to the Office.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner
“DISCUSSION In the Decision dated January 25, 2016, Paper 29 (“Decision”), we granted institution of IPR2016-00063 (filed by Apple Inc.) and joined IPR2016-00063 with the instant matter (i.e., IPR2015-01047). Decision 7.” slip op. at 2
Discretionary denialPatents in suitUS 7,490,151 - 10x Genomics, Inc. v. Raindance Technologies, Inc.Rehearing deniedPTAB · Feb 24, 2016 · IPR2015-01558 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving instituted review of claims 1–17 in place, including the implicitly raised obviousness ground for claims 1–7 and 12–17.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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.” slip op. at 2
- BurdenDecided for petitioner
“respond to Petitioner’s implicitly raised obviousness challenge. The obviousness ground that is instituted as to claims 1–7 and 12–17 is based upon the same arguments and evidence that Petitioner presents with respect to anticipation of these claims and obviousness of claims 10 and 11. Dec. 17. Patent Owner addressed these arguments in its Preliminary Response, Prelim. Resp. 4, 16, 17, 21–27, 30–33, and the Board considered Patent Owner’s arguments before instituting inter partes review, Dec. 8–18. Patent Owner will have another full and fair opportunity to respond to these challenges in its Patent Owner Response. 35 U.S.C. § 316(a)(8). By instituting review based on Petitioner’s implicitly raised obviousness ground, the Decision does not shift the burden of proof to Patent Owner. The burden remains with Petitioner to prove by a preponderance of the evidence that the challenged claims are unpatentable. 35 U.S.C. § 316(e).” slip op. at 4
NonePatents in suitUS 8,658,430 - Avx Corporation v. Greatbatch Ltd.Rehearing grantedPTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing
The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12
- BurdenMixed
“of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,327,553 - Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCRehearing deniedPTAB · Jan 12, 2016 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Petitioner’s request for rehearing, finding no overlooked or misapprehended matter or abuse of discretion in determining claim 10 was not shown unpatentable.
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 Final Decision, has the burden of showing the decision 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 and unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In our Final Decision, we credited Dr. Pickens’s testimony that designing a thick plate composition having the claimed properties would be costly and unpredictable, and that “one should have a specific service requirement in mind when attempting to design an alloy, given the sheer number of different applications in the aerospace industry.” Final Dec. 14– 15 (citing Ex. 2043 ¶ 18). We considered Petitioner’s evidence that there was a commercial need in the aerospace industry for the claimed thick plate aluminum alloys, and determined “that Mr. Balmuth and Dr. Starke fail[ed] to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art.” Id. at 15.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. Final Dec. 12. Inherency requires that the claim limitation in question is necessarily present in the reference. In re Montgomery, 677 F.3d 1375, 1379–1380 (Fed. Cir. 2012). “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.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotation omitted). Here, Petitioner offers Mr. Balmuth’s and Dr. Starke’s unsupported statements that the claimed properties would be inherent in a thick plate having the same chemistry of a thin plate. In the Request, Petitioner does not identify sufficiently evidence regarding the underlying facts and data on which Mr. Balmuth’s and Dr. Starke’s opinions are based that we overlooked or misapprehended. We are not persuaded that we abused our discretion in finding that the opinions of Mr. Balmuth and Dr. Starke are not persuasive because they are not supported by objective evidence. See Final Dec. 12.” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. Final Dec. 12. Inherency requires that the claim limitation in question is necessarily present in the reference. In re Montgomery, 677 F.3d 1375, 1379–1380 (Fed. Cir. 2012). “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.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotation omitted). Here, Petitioner offers Mr. Balmuth’s and Dr. Starke’s unsupported statements that the claimed properties would be inherent in a thick plate having the same chemistry of a thin plate. In the Request, Petitioner does not identify sufficiently evidence regarding the underlying facts and data on which Mr. Balmuth’s and Dr. Starke’s opinions are based that we overlooked or misapprehended. We are not persuaded that we abused our discretion in finding that the opinions of Mr. Balmuth and Dr. Starke are not persuasive because they are not supported by objective evidence. See Final Dec. 12. With respect to Petitioner’s contention that we overlooked Mr. Balmuth’s and Dr. Starke’s testimony regarding routine experimentation, we note that we specifically addressed these opinions in the Final Decision. See Final Dec. 14–16. We credited Dr. Pickens’s testimony regarding the difficulties a person having ordinary skill in the art would encounter in attempting to design a thick plate alloy with the claimed properties. Id. at 14–15. We did not overlook Mr. Balmuth’s or Dr. Starke’s testimony regarding routine testing. Rather, we found it unpersuasive. It is within the Board’s discretion to assign the appropriate weight to testimony offered by the witnesses. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that Board has discretion to give weight to one item of evidence over another “unless no reasonable trier of fact could have done so.”). We decline to reweigh the evidence in considering a motion for rehearing. Ex parte NTP, Inc., Appeal No. 2008-004594, 2010 WL 429233 at *1 (BPAI Feb. 4, 2010).” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,229,509
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.