- Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing was granted and IPR instituted on claims 1–28 because the petition showed a reasonable likelihood that claim 1 was obvious over Linnarsson, McCloskey, and ordinary skill.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can provide a distinction based on a ‘polynucleotide sequence.’” Req. 6 (quoting Dec. 14 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we erroneously determined that the proposed modification could not achieve the claim language, stating the following: Petitioner’s proposal appears to defeat satisfaction of another portion of claim 1, namely a “second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.” Ex. 1001, 30:62–64. For if the second tag is “added to the CDS or TSO after extension,” as opposed to the sample polynucleotide, as Petitioner argues (Pet. 39 (emphasis added)), it would appear that the second tag would be incapable of distinguishing any sample polynucleotide from other sample polynucleotides. Rather, the second tag would be ligated to each and every extension product bearing a CDS or TSO without regard to the sequence of any sample polynucleotide. Dec. 16. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis. 2. Advanced Bionics Part Two Patent Owner argues that the Petition “fails to show any error in the Examiner’s application during prosecution of the prior art teachings Petitioner now purports to invoke from . . . McCloskey.” Prelim Resp. 23; see also id. at 24–25 (“Revisiting the same art and arguments already overcome during prosecution is a waste of the Board’s limited resources and would unfairly burden PO.”). However, Petitioner argued that “the Examiner committed major error in Examination by erroneously stating that the prior art fails to teach a dual tagging approach when, in fact, this approach is plainly taught in both McCloskey and McCloskey II.” Pet. 67. The record supports Petitioner’s position, and we agree that the error was material to patentability. See Ex. 1005, 131 (Notice of Allowance). Accordingly, and having considered all of the Becton, Dickinson factors, we do not exercise discretionary denial.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey with the knowledge of a person of ordinary skill in the art to obtain the claimed subject matter. 8. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 21
- Obviousness (§103) › Analogous artNot reached
“the three references is analogous art to the ’013 patent as opposed to each other. Prelim. Resp. 46 (citing Pet. 35; Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi- Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’013 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,697,013 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing granted and IPR instituted on claims 1–26; the Board found a reasonable likelihood that claim 1 would have been obvious over Linnarsson and McCloskey.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can ‘provide a distinction based on a polynucleotide’s sequence.’” Req. 6 (quoting Dec. 15 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we denied the Petition because “adding a second tag sequence to Linnarsson’s CDS and/or TSO would do nothing to achieve such a distinction,” i.e., “a distinction based on a polynucleotide’s sequence.” Id. at 15. That was error. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the ’197 patent. See Ex. 1001, code (56) (listing McCloskey II under “References Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey to obtain the claimed subject matter. 6. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 18
- Obviousness (§103) › Analogous artNot reached
“GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi-Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’197 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,240,197 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we 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)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02144 · APJ Robert L Kinder · IPR · Rehearing
Rehearing was granted in all four proceedings, and review was instituted on all challenged claims and grounds, except claims 12 and 20, which were disclaimed.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“’569 patent was entitled to priority and adequately disclosed by the ’894 Provisional.8 Claim 11 requires “disabling golf cart movement towards the predetermined area further comprises disabling golf cart movement except in a reverse direction,” and Petitioner contends that this limitation was not adequately supported in the ’894 Provisional. Petitioner argues that we improperly weighed competing expert testimony at this phase of the proceeding to resolve the disputed issue in favor of Patent Owner. Specifically, Petitioner argues:” slip op. at 8
- Adverse judgmentAdverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
§ 102 anticipationPatents in suitUS 7,480,569 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - PTAB · Mar 29, 2017 · IPR2016-01492 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board granted rehearing in part to explain institution on Eizenhöfer and Miller anticipation grounds for claims 13–15 and require claim-interpretation briefing; it denied rehearing on § 325(d).
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“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. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“terminal demand” in a single sentence supported by citations to portions of the Specification and testimony from Dr. Lomp. Id. at 15–16 (citing Ex. 1001, 7:8–11, 18:50–54, 19:1–4, Figure 15A; Ex. 2001 ¶¶ 7, 16, 19–21). Based on our review of the cited portions of the Specification, it is not apparent how those sections support WPI’s proffered meaning of “subscriber terminal demand.” None of the cited portions explicitly defines “subscriber terminal demand” or uses the term, and WPI does not explain why those cited portions are relevant to the inquiry. The cited testimony from Dr. Lomp reflects his opinion but is not supported by any citations to other evidence, including the Specification itself. To the extent that WPI’s argument regarding the meaning of “subscriber terminal demand” relies upon Dr. Lomp’s testimony, we currently find that argument unpersuasive because it is unsupported by other evidence. TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“reasons. First, WPI has failed, as required under Rule 42.71(c), to identify an abuse of discretion stemming from our allegedly “unreasonable” failure to exercise discretion under § 325(d) and deny institution of challenges based on Miller. Second, WPI merely reiterates an argument already considered and rejected, and thus fails to meet its obligation under Rule 42.71(d) to “identify all matters . . . misapprehended or overlooked.” We disagree that WPI offered a “clear comparison” of the entirety of the claims that were allegedly previously considered by the Office during reexamination of the ’326 patent to the claims at issue in this proceeding. Describing claims in the ’326 patent as “closely related” or reciting “similar features” without providing the actual text of those claims fails to provide an adequate basis for comparing those claims to the claims at issue in this proceeding. The paraphrased comparison of claims in the ’326 patent to the claims here is similarly lacking in clarity. Third, even if we were to determine that WPI sufficiently compared the “orthogonal code generator” recited in claims of the ’326 patent to the one recited in the claims at issue, such a comparison fails to demonstrate enough similarity in the claims overall to justify a discretionary denial of TCT’s challenge based on Miller.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 5
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 6,381,211 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part; IPR was instituted on claims 58–60, 67, 69, 71, and 72 for anticipation by the ’095 patent and claim 73 for obviousness over the ’095 patent and JP ’712.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing 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 Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 99–100. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 58 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 59, 60, 67, 69, 71, and 72, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 25–30.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“on the combination of the ’095 patent and Akinori, based on our determination in Section 1.A., above, that Petitioner had established a reasonable likelihood it would prevail on the merits in showing claim 58 was anticipated by the ’095 patent alone, and the Petition did not articulate a substantive difference between the two challenges. In the present challenge, the Petition fails to explain how Akinori is relied upon for a teaching of a claim 73 feature not described in the ’095 patent. See Pet. 47–51. The Petition does explain, however, why claim 73 would have been obvious over the combination of the ’095 patent and JP ’712. See id. at 50–51. Based on the record before us, Petitioner has established a reasonable likelihood it would prevail in showing claim 73 would have been obvious over the ’095 patent and JP ’712. Therefore, the Request for Rehearing is granted as to claim 73, and trial is instituted based on the combination of the ’095 patent and JP ’712.” slip op. at 11
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part and review instituted on claims 1–4, 6–11, and 13 as obvious over Singh, the ’095 patent, and Akinori.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing 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
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50. In sum, upon reconsideration of this challenge in light of the Request for Rehearing, we determine Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that it would prevail on the merits in showing claims 1–4, 6–11, and 13 would have been unpatentable over Singh, the ’095 patent, and Akinori. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“declaration testimony; rather, we assessed the persuasiveness of Mr. Miura’s testimony in light of other factual evidence in the record. See Dec. 16–20; Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate. . . . In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within that discretion.”). We did not conclude DME is absent in the distillation overhead in the ’095 patent Example. We found Mr. Miura’s testimony and Experiment 1 were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example given the differences in the ’095 patent Example and Experiment 1 reaction liquids. Thesedifferences were not addressed adequately by Mr. Miura. In this regard, we found Mr. Miura’s dismissal of these differences as “slight,” without further discussion, was not persuasive in light of our actual comparison of the ’095 patent Example and Experiment 1, that revealed “Miura’s Experiment 1 contained more than twice the amount of rhodium and about 34% of the amount of water used in the ’095 patent Example,” Dec. 19, and our review of the ’095 patent and Petitioner’s own patent, U.S. Patent No. 7,683,212 B2 (Ex. 2014), that indicate these differences would affect the reaction product, Dec. 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,076,507
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.