- Google LLC v. 138 East LCD Advancements LimitedInstituted in partPTAB · Jan 8, 2025 · IPR2024-00957 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–8, 10–16, and 18 on all petitioned grounds, but did not institute review of disclaimed claims 9 and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that claims 1–8, 10–16, and 18 are unpatentable, considering all grounds in the Petition directed to those claims. We do not institute review as to claims 9 and 17 on any ground because they have been disclaimed. See 37 C.F.R. § 42.107(e).” slip op. at 2
- Adverse judgmentAdverse judgment
“disclaimer,” and “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). As a result of the statutory disclaimer, claims 9 and 17 are no longer regarded as claims challenged in the Petition. See Vectra, 162 F.3d at 1383 (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)); see also Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1372–75 (Fed. Cir. 2019) (disclaimer of claims during District Court patent infringement litigation “mooted any controversy” over the disclaimed claims, ending the Article III case or controversy requirement for District Court jurisdiction). In considering Federal Circuit precedent and our rules, we conclude we cannot institute a trial on claims that have been disclaimed, and, thus, no longer exist. Our conclusion is consistent with the statutory scope of inter partes review as laid out in 35 U.S.C. §§ 311(b) and 318(a) and is not at odds with SAS, supra. See, e.g., SAS, 584 U.S. at 367 (recognizing that “the claims challenged ‘in the petition’ will not always survive to the end of the case; some may drop out thanks to the patent owner’s actions”). Accordingly, we treat claims 9 and 17 as having never been part of the ’056 patent, such that Petitioner cannot seek inter partes review of those claims. Thus, we deny institution of review as to whether disclaimed claims 9 and 17 are unpatentable per Petitioner’s Grounds Three and Four.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 8; Ex. 2001 ¶¶ 27–28. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’056 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner argues “[n]o terms need to be construed . . . to resolve unpatentability.” Pet. 16–17. “Patent Owner contends that the claim terms should receive their ordinary and customary meaning in light of the specification and prosecution history, as understood by a person of ordinary skill in the art.” Prelim. Resp. 8. Patent Owner does not proffer any constructions for particular terms. See id. Based on the arguments and evidence presented at this time, we determine no explicit construction is needed to resolve the parties’ controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,454,056 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00780 · APJ James A Worth · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no overlooked or misapprehended arguments concerning the denied grounds for claims 9, 10, 12–19, and 38.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 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 Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The panel addressed Petitioner’s theory of modifying Radermacher’s teachings with Kenna’s teachings on, inter alia, pages 20–21 of the Decision, as referred to by Petitioner immediately above. Id.; see also id. at 16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21. Accordingly, we conclude that the Decision did not misapprehend or overlook any arguments in the Petition.” slip op. at 5
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,062,302 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00779 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving in place the denial of institution on claims 9, 10, 12–19, and 38.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 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 Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an inter partes review of claims 1–3, 5–8, 11, 20, 21, 24, 25, 28–37, 39–43, 47, and 95–125 as obvious over Radermacher, Alexander, and Woolson, and denied institution of the remaining grounds presented in the Petitions. Dec. 1, 3, 6, 39–40. For example, we found that Petitioner had failed to make a threshold showing that claims 13, 18, and 38 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, Woolson, and Kenna, or over the combination of Radermacher, Fell, Woolson, and Kenna. See id. at 16–23. Additionally, we found that Petitioner had failed to make a threshold showing that claims 9, 10, and 12 of the ’302 patent are unpatentable under 35 U.S.C. § 103(a) over the combination of Radermacher, Alexander, and Woolson. See id. at 23–24. We also found that Petitioner had failed to make a threshold showing that claims 14–17 and 19 of the ’302 patent are unpatentable under” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21.” slip op. at 6
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,062,302 - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Amerigen’s rehearing request, leaving claims 1–3, 5, 8, 9, and 11 uninstituted because Mehta did not disclose the claimed release limitation.
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 Amerigen’s arguments with these principles in mind.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“These arguments are not persuasive. First, Petitioner cites no authority for the proposition that a generic disclosure, such as that discussed above, is an express disclosure of every possible permutation of that generic disclosure. Second, even if we were to accept, for the sake of argument, that Mehta’s combined disclosures constitute an express disclosure of a composition capable of delayed release of “essentially all [of the drug] . . . within about 60 minutes,” non-instituted claims 1–3, 5, 8, 9, and 11 further require that the delayed release is enteric (i.e., the composition releases the second dose of the drug in the intestines, not the stomach). As we noted in the Decision, however, Mehta does not use the word “enteric,” nor does Mehta discuss delivery of the delayed dose to the intestines. Dec. 28. Nevertheless, we considered the possibility that Mehta might inherently disclose a composition that releases into the intestine not less than 80% of the second dose of the drug within about 60 minutes of the delayed release. Accordingly, we turned to Mehta’s Examples 1–5, but determined that not one of the exemplified delayed release compositions achieved a release of “essentially all” of the drug from a delayed release coating within about 60 minutes—regardless of whether the delay was long enough to be considered enteric.3 Id. at 24. As we noted in the Decision,” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“This argument is not persuasive. We considered, for example, Dr. Elder’s testimony that one of ordinary skill in the art would expect “that the number of variables and number of experimental runs to optimize the coating for the amphetamine would present no unusual problems of technology or expense” because one “can use statistical experimental design to optimize a formulation within the 21 trials that Mehta discloses to design one for amphetamine salts” (Ex. 1005 ¶ 471), as well as Dr. Elder’s testimony that one would expect “that routine optimization of the coating using the parameters identified by Mehta would provide enough guidance for controlling the release timing” (id. ¶ 512). Nevertheless, we found the actual results reported by Mehta to be more compelling. As we stated in the Decision: [N]one of Mehta’s delayed release formulations that could be considered to be enteric by virtue of their delay periods (i.e., those with delays of 4 or 5 hours) had release rates of “essentially all” of the drug anywhere near the required time period. Even if Mehta could be read to suggest that a delay of 4 or 5 hours followed by a release of essentially all of the delayed dose within 60 minutes would be desirable, we are not persuaded that Mehta’s disclosure that “the amount of drug released is influenced by: amount of coating, ratio of the two 4 Amerigen supported its challenges with the Declaration of Edmund J. Elder, Jr., Ph.D., R.Ph., executed September 30, 2015 (“Elder Declaration”) (Ex. 1005). polymers, amount of talc, and curing time” is adequate guidance for one of ordinary skill in the art to achieve such a dosage form. In general, Mehta demonstrates that longer delays are accompanied by longer release times, with formulations that could be considered to provide enteric release (i.e., a release after a 4 or 5 hour [delay]) having 85% release times of 8 or more hours. Dec. 33–34 (citing Ex. 1003, Table 1).” slip op. at 8
§ 102 anticipation§ 103 obviousness - PTAB · May 20, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Rehearing
The Board denied rehearing, leaving claims 6 and 13 uninstituted over Raymond and Mutti and over Mutti, Kano, and Suffa.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are 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, an opposition, or a reply. For the reasons stated below, Petitioners’ request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“regarding “cap” and “valve holder” for claims 6 and 13. Reh’g Req. 1–5 (citing Pet. 17–19, 28). Petitioners explain that the Petition asserted clamping ring 27, body 16, nipple pieces 15, and upper membrane 7 combined are the required “cap” of claim 1. Id. at 2–4 (discussing Pet. 17– 19). Petitioners also explain that the Petition asserted clamping ring 27 meets the “valve holder” of dependent claims 6 and 13 “because the cap in Raymond is much more than clamping ring 27” and clamping ring 27 “is separable from the other parts of the claimed ‘cap.’” Id. at 5 (discussing Pet. 28). Petitioners further argue that the claims, specification, and case law do not require the recited valve holder and cap to be separate structures. Id. at 6–7, 12–13 (citing Ex. 1001, 6:38–41; Ex. 1013; Dec. 16).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“on Mutti, Kano, and Suffa was also misapprehended and should have been instituted. Reh’g Req. 2, 14–15. Petitioners acknowledge that they rely on Figure 6 for claim 1 and rely on Figures 1–5, which depict another embodiment, for claim 6 which depends from claim 1. Id. Petitioners, however, argue that the “motivation to combine the teachings of Mutti in one embodiment with the teachings of Mutti in another embodiment is entirely obvious—it’s the same reference.” Id. at 15. Petitioners do not identify where the asserted motivation was presented in their Petition. See 37 C.F.R. § 42.71(d). Even if the Petition included this particular motivation, it does not address the deficiency identified in the Decision. Citing to two embodiments in the same reference does not explain “how and why stop ring 23 of Figure 1 . . . , which holds membrane 22 in position . . . , would be combined with outer part 14b of Figure 6 . . . , which includes inner part/body 14a . . . that also holds membrane 22 in place . . . . In other words, inner part/body 14a, which is an integral part of outer part 14b, already holds membrane 22 in place.” Dec. 21. The Petition does not explain why one of ordinary skill in the art would be motivated to add stop ring 23 of Figure 1 to outer part 14b of Figure 6, when Mutti teaches each can hold a membrane in place. In particular, the Petition does not explain why both would be required when Mutti teaches that one is adequate. Without such an explanation in the Petition, we are not persuaded to modify our Decision regarding claims 6 and 13 as rendered obvious by Mutti, Kano, and Suffa.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,695,841 - Meyer Products, LLC v. Douglas Dynamics, L.L.C.Rehearing deniedPTAB · Feb 29, 2016 · IPR2015-01247 · APJ James A Worth · IPR · Rehearing
The Board denied rehearing, leaving institution on claims 18 under Pruss and Keeler and claims 1, 4–7, and 18 under Coates and Hetrick; other grounds failed the institution threshold.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. 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) (citations omitted). The request must identify, specifically, 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)Institution denied meritsMixed
“The petition must 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). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“back bar and a pair of side bars arranged in a triangular or ‘A’ configuration,” the Board misapprehended or overlooked the fact that the Specification of the ’757 patent does not define the term “A-frame,” that the Specification states that the patent is “limited . . . by the scope of the following claims and their equivalents,” and that the Specification also uses the term “frame” without the prefix “A-” or uses the term preceded by “mount,” “lift,” or “A-”. Request 3–6. Petitioner argues that this misapprehension causes the Board’s construction to be divorced from the Specification and the record evidence. Request 6 (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). As an initial matter, we note that Petitioner only cited to two portions of the Specification in the Petition in supporting its construction of “A-frame”: Ex. 1001, 4:62–64, 8:36–40. Pet. 8–9. Accordingly, we restrict ourselves to reconsideration of only this portion of the Specification. And upon reconsideration, we determine that the Board did not misapprehend or overlook the aforementioned cited portions of the Specification in construing “A-frame”; instead, the Board considered those portions expressly, but came to a different conclusion. Specifically, as set forth in the Decision, the fact that other shapes may be referred to in the Specification does not broaden the “A” shape of the “A-frame,” as recited in claims 1 and 4–7. The Decision notes Patent Owner’s suggestion that other claims, not at issue, might still allow for use of the invention with another shape for the frame. Decision 7. Petitioner argues that these other claims do not refer to an “A-frame.” Request 6. We agree. This argument is misplaced, however, as the lack of specificity of shape for the corresponding frame in the other claims is fully consistent with the notion that these other frames use a non-A-frame shape. Therefore, we are not persuaded that the Decision misapprehended or overlooked any arguments with respect to the asserted ground of anticipation by Pruss.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The petition must 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). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 6,928,757 - Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing deniedPTAB · Sep 2, 2015 · IPR2014-01258 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Hamilton Beach’s rehearing request, leaving institution denied for claims 22–24, 49–51, 54, 55, 65, and 66 based on insufficient § 103 showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are 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, an opposition, or a reply. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of prevailing on its assertion that claims 22–24, 49–51, 54, 55, 65, and 66 of the ’512 patent as unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 6,164,191 to Liu, iss. Dec. 26, 2000 (Ex. 1002, “Liu”); U.S. Patent No. 5,840,189 to Sylvan, iss. Nov. 24, 1998 (Ex. 1003, “Sylvan”); and U.S. Patent No. 3,446,624 to Luedtke, iss. May 27, 1969 (Ex. 1004, “Luedtke”) or over U.S. Patent No. 3,620,155 to Bixby, iss. Nov. 16, 1971 (Ex. 1005, “Bixby”); Sylvan; and Luedtke. Dec. 15–17, 18. Specifically, for claims 22–24 and 49–51, we determined that the Petition failed to explain how the relied upon references teach the limitations and how those same references would be combined. Dec. 12–13, 15. For claims 54, 55, 65, and 66, we agreed with Patent Owner that the Petition fails to explain where limitations are found and improperly incorporates arguments by reference to a Declaration of Alexander H. Slocum (Ex. 1009, “Slocum Declaration”). Dec. 17, 19.” slip op. at 2
- BurdenDecided for patent owner
“A petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). The Slocum Declaration contains argument, not discussed adequately in the Petition, regarding where limitations are found in the references and why an ordinary artisan would have been led to combine the references to attain the subject matter of claim 26. Under these circumstances, the Petition violates our rule that prohibits arguments made in a supporting document from being incorporated by reference into a petition. See 37 C.F.R. § 42.6(a)(3). After considering the cited portions of the Petition, we determine Petitioner has not shown that the Board misapprehended or overlooked a matter addressed in the Petition, and therefore, has not carried its burden of demonstrating an abuse of discretion in the Board’s decision.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“hospitality industry regulations teaches this limitation.” Pet. 33, 37 (citing Ex. 1007 ¶¶ 53–55; Ex. 1009 ¶¶ 100, 108). The portion of the Petition now cited by Petitioner provides a description of Liu, Sylvan, and Luedtke (Pet. 17–19) and a “Motivation to Combine Liu with Sylvan and Luedtke” (Pet. 19–22). Petitioner’s arguments do not explain how the descriptions of Liu, Sylvan, and Luedtke, and the asserted rationales to combine these particular references, support the contention that “Liu in view of relevant hospitality industry regulations teaches this limitation”—where the cited portions do not discuss “relevant hospitality industry regulations.” In sum, Petitioner does not direct us to any argument in the Petition that would have supported extending our analysis, regarding independent claims 53 and 64 and Liu, Sylvan, and Luedtke, to claims 54 and 65, or an analysis of “Liu in view of relevant hospitality industry regulations.” We are, therefore, unpersuaded to modify our Decision regarding claims 54 and 65.” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,770,512 - Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing deniedPTAB · Sep 2, 2015 · IPR2014-01257 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Hamilton Beach’s rehearing request, leaving claims 6, 7, 19, and 26 uninstituted because the Petition did not adequately explain the asserted obviousness combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are 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, an opposition, or a reply. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2
- BurdenNot shown unpatentable
“Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner cites a part of its Petition that is titled “Motivation to Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 7,311,037 - Informatica Corporation v. Protegrity CorporationRehearing deniedPTAB · Aug 6, 2015 · CBM2015-00010 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied both rehearing requests, leaving institution and denial of the identified claims and grounds unchanged after finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership 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 identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“LLC. See Decision 9–10. As we stated in our Decision, a party may not petition for post-grant review if it has filed a civil action challenging the validity of a claim of the patent before the petition is filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a); see Securebuy, LLC, CBM2014-00035, (PTAB Apr. 25, 2014) (Paper 12, precedential) (explaining that 35 U.S.C. § 325(a)(1) applies to covered business method patent review proceedings). In this case, however, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See id. Dismissal without prejudice does not trigger the statutory bar. See Decision 9 (citing Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013-00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21).); “The dismissal of an action without prejudice leaves the parties as though the action had never been brought. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). In SecureBuy, LLC, the Board determined the 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy, LLC, CBM2014-00035 (PTAB April 25, 2014)( Paper 12).” slip op. at 4
- BurdenDecided for patent owner
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. Petitioner alternatively argues that Denning’s objects at the top of the columns of the access matrix model are associated with a data category, when “data category” is given the broadest reasonable construction adopted in the Decision. Pet. Req. 3, 9. Petitioner states: “[f]or example, M1 refers to a division of data that shares a common attribute of being stored in memory segment M1.” Id. Petitioner, however, does not identify where this argument was raised in the first instance in the Petition, and we can find no such argument in the Petition. We could not have overlooked or misapprehended an argument that was not raised in the Petition. We, thus, are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 15, 31, 33, and 47 on the ground of obviousness over Denning. slip op. at 14
§ 101 eligibility§ 102 anticipationDiscretionary denialPatents in suitUS 8,402,281 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part, instituting review of claims 42–44, 47–51, 53, 55, and 56 for anticipation and claim 57 for obviousness.
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
“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 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, 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. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 5
- 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 ¶ 99. 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 ¶ 99 (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. ¶¶ 101–102. 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 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, 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. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“terms, and we agree, for purposes of this decision, that claim 42 does not require a specific quantity of DME in the distillation overhead. We do not agree with Petitioner, however, that the Singh and ’507 patent disclosures are identical with respect to the addition of water to distillation column 22. As indicated in our Decision, both Singh and the ’507 patent describe adding small amounts of water to column 22 for the purpose of inhibiting impurity formation. See Dec. 5–6. The ’507 patent, however, includes additional description of adding water to column 22 for the purpose of producing DME in the distillation overhead. See id. at 7 (citing Ex. 1002, col. 11). This additional description of adding water to produce DME in the distillation overhead does not refer back to the description of adding water as an inhibitor (see Ex. 1002, 10:9–32), or otherwise indicate that the small amounts of water used to inhibit impurity formation in the ’507 patent and Singh processes would produce DME in a distillation overhead. In addition, for the reasons explained in our Decision (Dec. 25–26), Petitioner has not persuaded us that the prosecution history of the ’507 patent includes an admission by Patent Owner that the addition of any amount of water to the distillation step would result in DME in an overhead stream. See Req. Reh’g 10. In sum, Petitioner has not convinced us that our Decision was based on an erroneous claim interpretation or that we overlooked evidence that the addition of any amount of water in the steps common to the Singh and the ’507 patent processes would necessarily result in the presence of DME in a distillation overhead. With respect to Petitioner’s assertions regarding Akinori, we note the Petition relied on Akinori as evidence that DME was necessarily produced in the ’095 patent process. See Pet. 43. Petitioner did not explain how Akinori was relevant to show the presence of DME in the distillation overhead of Singh. For the above reasons, the Request for Rehearing is denied as to the challenge based on Singh in view of the ’095 patent and Akinori.” slip op. at 7
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents 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.