- Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Rehearing deniedPTAB · Dec 19, 2025 · IPR2025-00434 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied because Shen and Soldano did not establish a reasonable likelihood of anticipating claims 1–7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing the decision should be modified, and the 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” in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS In our Decision, we concluded that Petitioner had failed to carry its burden of demonstrating a reasonable likelihood of prevailing that either Shen or Soldano anticipated claims 1–7. Dec. 18, 26. Petitioner argues that we should institute review for three reasons. First, Petitioner argues that we abused our discretion by (a) “refusing” to interpret the scope of the claimed” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s interpretation of “carrier” as meaning “one or more components for supporting ROSA components such as an AWG.” Dec. 9 (quoting Pet. 11). For our analysis of Petitioner’s challenges, we referred to this interpretation of “carrier” as Petitioner’s second alternative construction. Id. We also noted that Petitioner appeared to dispute Patent Owner’s interpretation when it argued that “carrier” should mean “a ceramic or silicon substrate.” Id. (quoting Pet. 10). We referred to this interpretation of “carrier” as the first alternative construction. Id. Rather than resolve this apparent dispute about the meaning of “carrier,” we found that both of Petitioner’s anticipation challenges failed under both interpretations of “carrier.” Id. at 10–26. Because we found that Petitioner had failed to carry its burden regardless of which interpretation of “carrier” applied, we found it unnecessary to resolve the dispute over that interpretation. Id. at 9–10. For the reasons expressed in Parts II.B–C below, we maintain our conclusion that Petitioner has failed to demonstrate a reasonable likelihood of proving that either Shen or Soldano anticipates any claim under either interpretation of “carrier.” Accordingly, Petitioner fails to demonstrate an abuse of discretion in our alleged “refusal” to interpret “carrier.”” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 14. We cannot weigh Petitioner’s arguments based on its assertions about “caselaw” because Petitioner cited no cases to support its arguments. See id. Nevertheless, we infer that Petitioner intends its statements of “caselaw” to refer to the requirements to make out a case for anticipation. If so, Petitioner demonstrably miscasts what appear to be the legal principles for proving anticipation. As stated in our Decision: “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 California, 814 F.2d 628, 631 (Fed. Cir. 1987).” Dec. 7. Making a showing that a prior art reference anticipates a patent claim thus necessarily requires proof that a single reference “expressly or inherently” describes every element of that claim and with all elements being arranged in the reference as they are in the” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Medivis, Inc. v. Novarad Corp.Rehearing deniedPTAB · Apr 23, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Rehearing
The Board denied Medivis’s rehearing request, leaving in place the decision that claims 1–6 and 11–20 were not shown unpatentable because the cited references’ public accessibility was not established.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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, a reply, or a sur-reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. With this in mind, we address the arguments presented in turn.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility, except the references Chen, 3D Visualization, and 3D Slicer themselves. This is insufficient and tantamount to submitting no proof of public accessibility. To find public accessibility, we must determine that a “document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008), quoted in Dec. 26–27. Petitioner has insufficiently explained, by a preponderance of the evidence, how Chen, 3D Visualization, and 3D Slicer themselves answer the question of whether they have been disseminated or otherwise made available to those of ordinary skill in the art. Thus, we did not overlook or misapprehend any evidence of public accessibility on pages 29–30 of the Petition.” slip op. at 4
- Strike new argumentNew argument disregardedOther
“declaration by reference, we exercised our discretion to address a portion of it in our Decision. Dec. 30–31. We did so because we noted that his testimony was “particularly deficient for [the 3D Slicer] reference.” Id. at 30. Petitioner now asserts that in doing so, we “misapprehended or overlooked the logic that application documentation” like 3D Slicer’s “must be accessible to potential application users because it serves to help users use the application.” Req. 7. But Petitioner’s assertion that “application documentation must be accessible to potential application users because it serves to help users use the application” is a new argument, not raised in the Petition or Reply. Even if Petitioner’s assertion were correct, it falls far short of the evidence required to prove that 3D Slicer was actually disseminated to interested members of the public. See, e.g., Weber, 92 F.4th at 1068. Thus, Petitioner’s argument fails to persuade us that we overlooked or misapprehended anything.” slip op. at 11
§ 102 anticipationPatents in suitUS 11,004,271 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.Rehearing deniedPTAB · Apr 2, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied SMA’s rehearing request, leaving institution denied for claims 1–20 because the request showed no overlooked matter, misapplication of law, or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Rule 42.71(d) states: 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, a reply, or a sur-reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reads on the micro-controller recited in the claims of the ’848 patent” (Req. 6), the test for anticipation is not whether the prior art reads on the claims, but rather whether the claims read on the prior art. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth. slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“D. Petitioner’s Section 103 Argument Petitioner argues throughout the Request that Mieth also discloses the “micro-controller” limitation under 35 U.SC. § 103. See Req. 7, 9–11, 13– 15. As explained above, however, the Request does not identify any matters that the Board misapprehended or overlooked. We addressed Petitioner’s obviousness arguments in our Institution Decision, and determined that those arguments failed to demonstrate a reasonable likelihood that Petitioner would prevail on its arguments that Mieth and Balogh, or Mieth, Balogh, and Liu, teach or suggest the claimed “micro-controller” limitation. Inst. Dec. 13–15.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,966,848 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 review our Decision under an abuse of discretion standard. 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 the decision represents an unreasonable judgment in weighing relevant factors. 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). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - Peddinghaus Corporation v. Ficep CorporationRehearing deniedPTAB · Oct 8, 2021 · IPR2020-01707 · APJ Jameson Lee · IPR · Rehearing
The Board denied Peddinghaus’s rehearing request, finding no abuse of discretion in denying institution on claims 1–14 because Hashimoto did not disclose the claimed intersection parameters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Reh’g Req. 7–8. Although Petitioner avers that the “identifying” of intersection parameters, or connecting holes, is completed in Hashimoto by the member totaling module before any order list is prepared, the order list is pertinent evidence for that assertion and there is nothing inappropriate in discussing that evidence. We recognize no other evidence which was identified by the Petitioner in the Petition, and Petitioner points to no such other evidence that we overlooked. Indeed, Petitioner states: “The Petition references the order list depicted in Figure 19 as merely providing a summary of the information (the ‘total’) that was previously identified and extracted by the member totaling module.” Id. at 8 (emphasis added). As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“meaning of “fastening holes” changes from the first to second embodiment.3 For example, in the Background section of Hashimoto, “fastening holes” are defined generally as holes formed “in the light gauge shape steel for the fastening tools.” Ex. 1005 ¶ 4. The same Background paragraph provides examples of “fastening tools such as a tapping screw and a one-side rivet.” Id. (Emphasis added). Thus, this definition does not strictly limit fastening holes to connecting holes, since it does not foreclose the likely possibility of fastening tools including wires or wiring. Moreover, a “machine for forming the fastening holes” is also disclosed in the Background, the same “non-stationary fastening hole forming machine 5” discussed in Figures 20-21 of the second embodiment. Id. ¶ 5. Thus, when “fastening holes for passing the electrical wiring” (emphasis added) are disclosed in the discussion of Figures 20-21 in Hashimoto’s paragraph 154, there is no evidence suggesting that a different type of “fastening hole” other than what has been generally described in the Background is being mentioned. Id. ¶ 154. The same applies for the 3 The statement made in footnote 3 on pages 11–12 of the Rehearing Request that the only holes in Figure 18 are joints only establishes that the holes in Figure 18 may be connecting holes, not all “fastening holes” in Hashimoto. disclosure that “fastening hole information includ[es]…[where] the wiring holes [are] formed in the stud” in paragraph 156 and how character c in Figure 23 “designates a hole for electrical wiring or a fastening hole for mounting the stud on the structural face plate” (emphasis added) in paragraph 157. Id. ¶¶ 156–157. Thus, it is a much more reasonable reading that in all embodiments of Hashimoto, the definition of “fastening holes” includes both connecting holes and non-connecting holes – such as those for wiring.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 7,974,719 - Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing deniedPTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review 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 the decision represents an unreasonable judgment in weighing relevant factors. 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7
Claim construction§ 112 disclosurePatents in suitUS 10,155,039 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Nov 6, 2020 · IPR2019-01601 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied rehearing and maintained denial of institution for claims 9–16, finding the petition insufficient on anticipation by Maimoni and Jost and related obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“[u]nder these circumstances, where Jost raises the possibility of forming iron (III) hydroxide, while raising a doubt that iron (III) hydroxide even exists – we find that Jost does not describe, expressly or inherently, oxidizing to iron (III) hydroxide as claimed. At best, Jost is ambiguous about oxidizing to iron (III) hydroxide. But ambiguous references do not, as a matter of law, anticipate a claim See Wasica Finance GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (emphasis added) (“Anticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’ Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (emphasis added). For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim. See, e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (refusing to find claims anticipated when the prior art references were ‘unacceptably vague’); see also In re Hughes, 52 CCPA 1355, 345 F.2d 184, 188 (1965); In re Turlay, 49 CCPA 1288, 304 F.2d 893, 899 (1962) (‘It is well established that an anticipation rejection cannot be predicated on an ambiguous reference.’)”). Because Jost discloses only the possibility of iron (III) hydroxide and no other evidence has been provided to show that Jost nevertheless necessarily oxidizes to iron (III) hydroxide as claimed, based on the information, Petitioner has not shown sufficiently that the Jost reference anticipates, expressly or inherently, the claim step of “oxidizing the iron (II) salt to iron (III) hydroxide.” “Inherency . . . 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 Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“an explanation as to how “the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5, as required by Claim 9” (Pet. 44). But “[t]here is no explanation” (Dec. 24). We reproduced ¶ 162 of the Gallup Declaration in the Decision (see Dec. 23–24), which states in full that The step in the Hazen process of sparging the brine with air (Stream 6) in the iron reactor will reduce the pH. The reduction of the pH is offset by the introduction of calcium hydroxide (Stream 5) to the iron reactor. In my opinion, the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5. Given the pH of the feed brine, these pH values occur as a result of the air oxidation and introduction of calcium hydroxide. We did not and still do not see Dr. Gallup providing any meaningful explanation as to why the steps of sparging and the addition of calcium hydroxide per the Hazen process set forth in Maimoni necessarily maintains the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 5
§ 102 anticipationPatents in suitUS 9,051,827 - Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing deniedPTAB · Sep 17, 2020 · IPR2019-00338 · APJ Ken B Barrett · IPR · Rehearing
The Board denied Cooler Master’s rehearing request, leaving intact the determination that claim 8 was not shown obvious over Morikawa and Takahashi because the petition did not establish the claimed top shoulder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that “Petitioner has not demonstrated that Morikawa discloses the recited [top shoulder limitation].” Final Dec. 45. In other words, our determination was that Petitioner had not met its burden of proving that a limitation was taught by the prior art, and therefore had not met its burden of proving that the challenged claim is unpatentable.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In the Final Decision, we stated: Petitioner’s implied construction is that the claimed “shoulder” is the top end of a column. This is inconsistent with the claim language which recites that the “hollow column . . . has a top shoulder disposed near a top end” thus indicating that the top shoulder is not merely the top end of the column but a structure “near” and discernable from the top end of the hollow column.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“based on a misapprehension of the arguments associated with a figure . . . [from page 57] in the Petition,” and that “the Board incorrectly inferred Petitioner’s ‘implied construction’ for the term, ‘[a top] shoulder,’ in claim 8 of the ’680 patent as ‘the top end of a column.’” Req. Reh’g 1 (citing Final Dec. 45). Petitioner further argues that it “has always and consistently pointed to the corner portions located around the top outer rim of the hollow column as meeting the limitation of ‘a top shoulder,’ as shown [in the two figures from pages 56 and 57 of Petition and reproduced above].” Id. at 5–6.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,100,680
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.