- Liquidia Technologies, Inc. v. United Therapeutics CorporationRehearing deniedPTAB · Feb 2, 2023 · IPR2021-00406 · APJ Christopher M Kaiser · IPR · Rehearing
Rehearing was denied; claims 1–8 remain unpatentable because conference distribution established Voswinckel JESC and Voswinckel JAHA as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the abuse of discretion standard. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 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, reply, or a sur-reply.” Id. An abuse of discretion may be found where a decision “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)). D. We Overlooked Patent Owner’s Argument Patent Owner is correct that its argument that the Ghofrani and Sulica research aids were dated after May 15, 2005, appeared in the Sur-Reply. Sur-Reply 9–11. Patent Owner also is correct that we overlooked this argument in relying on these research aids as supporting that Petitioner had established that Voswinckel JESC and Voswinckel JAHA were prior art to the ’793 patent. Final Dec. 11–12; Paper 81, 2 (“the Board’s analysis did not consider whether the research aids themselves were available prior to the critical date”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “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.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Under at least some circumstances, a reference may be a printed publication under § 102(b) if it was “displayed to the public,” even if it “was not later indexed in any database, catalog, or library.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). There are several factors relating to whether such a display is sufficient to constitute a printed publication, including “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. In addition, distribution of a reference at a professional conference may, under at least some circumstances, constitute sufficient dissemination to show public accessibility. Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1375–80 (Fed. Cir. 2018); Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380–83 (Fed. Cir. 2018).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether the Voswinckel JESC and Voswinckel JAHA references qualify as prior art” and in particular “whether the Voswinckel JESC and Voswinckel JAHA references were publicly accessible by way of their presentation and/or inclusion in distributed materials, such as at a conference.” Paper 81, 3. As discussed above, we find that both references were distributed sufficiently at professional conferences to be publicly accessible at the time of those conferences. By virtue of this public accessibility, both Voswinckel JESC and Voswinckel JAHA were printed publications early enough to qualify as prior art under 35 U.S.C. § 102(b). G. Asserted Obviousness over ’212 Patent, Voswinckel JESC, and Voswinckel JAHA Petitioner argues that claims 1–8 would have been obvious over the combination of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA. Pet. 30–46. As discussed above, Petitioner has shown by a preponderance of the evidence that both Voswinckel JESC or Voswinckel JAHA qualify as prior art. Accordingly, we do not disturb the obviousness analysis in the Final Written Decision, which relies on the prior-art status of Voswinckel JESC and Voswinckel JAHA. Final Dec. 12–35. slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,716,793 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · Nov 10, 2020 · PGR2019-00003 · APJ Sheridan K Snedden · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–14 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘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.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was 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.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘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.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was 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.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3
§ 102 anticipationPatents in suitUS 9,867,839 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving unpatentable claims 1-4, 9, 10, 12, 14, 16-18, 23-25, and 27-29 based on Varenna 2012 anticipation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “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 (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); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“acknowledged Acceleration Bay and addressed with particularity the evidence of record tending to show that each of Petitioner’s References “was 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.” Dec. 15. Specifically, in our Decision, we credited indicia on the face of Verrena 2012, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including “the statement ‘Advance Access publication 30 November 2012,’” and a conventional edition identifier from the journal Rheumatology. Dec. 17 (quoting Ex. 1005). Patent Owner advanced no” slip op. at 4
- Strike new argumentNew argument consideredDecided for petitioner
“We are not persuaded by Patent Owner’s contentions and note that we addressed these same arguments in our Order denying Patent Owner’s motion to strike. Paper 24; see also Paper 13, 1 (Patent Owner contending that “Exhibit 1044 and related argument are new evidence and argument regarding the alleged accessibility of Varenna 2012 (Ex. 1005) that Petitioner could have submitted with the Petition, but chose not to.”). Rather than pointing out any matters that the panel misapprehended or overlooked, Patent Owner expresses disagreement with that decision, and attempts to offer additional reasoning and argument not advanced during trial. Req. Reh’g, 12–15. That effort is ineffective to establish reversible error. Furthermore, in our Final Written Decision, we noted that Even if we set aside Dr. Robinson’s Declaration, . . . we are persuaded that the indicia of publication on the face of Varenna 2012 are sufficient to establish that Varenna 2012 was “sufficiently accessible to the public interested in the art” and “disseminated or otherwise made available” to the interested public before the critical date, and consequently, a printed publication. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). Dec. 19 n.4. For that reason also, Patent Owner shows no reversible error in our Final Written Decision holding that Dr. Robinson’s testimony bolsters” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
§ 102 anticipationPatents in suitUS 9,820,999 - PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “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.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2
Claim constructionPatents in suitUS 7,072,849 - PTAB · Mar 4, 2019 · IPR2016-01905 · APJ Kristina M Kalan · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Final Written Decision finding claims 1–9 unpatentable stands because Patent Owner showed no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 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, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for patent owner
“Ex. 2050 ¶ 1245). More specifically, Patent Owner asserts that Strausz contains no disclosures related to drag reduction or drag reducing polymers, and that the Holtmyer references and Inaoka do not mention or suggest that one should solve drag reduction problems based on an asphaltene precipitation study. Req. 4 (citing PO Resp. 28–29; Ex. 1009; Ex. 2050 ¶124). Patent Owner additionally argues that we overlooked that the Petition contained no evidence that a person of ordinary skill in the art would have attempted to use solubility parameters to predict drag reduction success in a complex mixture, such as crude oil, prior to the priority date of the ’250 patent, and that Petitioner’s witness testified that he could not identify anyone who had ever previously done this. Req. 6 (citing PO Resp. 30; Ex. 2050 ¶¶23, 126; Ex. 2045, 140:23–141:13). In sum, Patent Owner states that there was no evidence that it would have been obvious to a person of ordinary skill in the art to have combined such disparate references without the benefit of hindsight and the disclosure of the ’250 patent itself. Req. 4 (citing PO Resp. 28–29; Ex. 2050 ¶ 125). We considered this evidence and argument in our Final Written Decision, in which we addressed the alleged use of impermissible hindsight to combine the prior art references’ teachings. Dec. 29–30. We found that Petitioner articulated a reason having rational underpinnings for making a proposed combination of the prior art teachings of the Holtmyer Publication, the Holtmyer Patent, and Strausz, as well as Inaoka and Strausz. Id. We also addressed the drag reduction limitation, taking into account testimony of Petitioner’s witness, Dr. Epps, and concluded that the weight of the 5 Declaration of Patent Owner’s witness, Dr. Brian Dunn. evidence presented in this case indicated that there are correlations between solubility parameters and drag reduction that one of ordinary skill in the art would have used to determine whether a particular drag reducing agent (“DRA”) would be effective in a particular liquid hydrocarbon. Id. at 30–33. Thus, we found Petitioner’s articulated reasoning was effective to support its contentions of obviousness. Id. at 29–33. Patent Owner’s mere disagreement with our analysis is not a proper basis for a rehearing request, and does not persuade us that we overlooked or misapprehended the above evidence and argument that Patent Owner provided.” slip op. at 4
- Obviousness (§103) › Analogous artAnalogous artDecided for patent owner
“In the Final Written Decision, we considered this evidence and argument, and found that Strausz was reasonably pertinent to one of the problems confronting the inventors of the ’250 patent, namely, solubility. Dec. 34. We explained that it was known prior to the ’250 patent that solubility of the drag reducing polymer in the liquid hydrocarbon was necessary to achieve drag reduction, and was an important requirement in preparing a more effective drag reducing polymer. Id. Thus, the inventors of the ’250 patent would have been concerned about whether the drag reducing polymer was soluble in the liquid hydrocarbon the polymer was treating. Id. We found Strausz, which is the source of the solubility parameter ranges recited in the ’250 patent, to be reasonably pertinent to this problem. Id. Patent Owner’s argument to the contrary does not persuade us that we overlooked or misapprehended that Strausz is reasonably pertinent to a problem with which the inventors of the ’250 patent were concerned.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for petitioner
“reinforces the patentability of Claims 1–9 and shows that there is no disclosure in the Holtmyer references that suggests anything about the claimed asphaltenes, and there was no motivation to make the combination with Strausz.” Req. 2–3. Patent Owner does not direct us to any evidence or argument it previously made describing how a specific claim construction of the term asphaltene reinforces the patentability of claims 1–9, or how it shows that there would have been no reason to combine the teachings in the Holtmyer references with the teachings in Strausz. Thus, Patent Owner presents a new argument, and a request for rehearing is not an opportunity to present new arguments or evidence. Patent Owner also has not directed us to a claim construction that we misapprehended or overlooked. Patent Owner provided no claim construction analysis in its Response. See PO Resp., passim. Patent Owner directs us to a footnote in a section of the Patent Owner Response regarding Dr. Epps’s testimony, and argues we should have interpreted that footnote as a proposed claim construction. Req. 2–3, 11–12; see PO Resp. 12 n.5. Although Patent Owner could have developed an argument about claim construction of the term “asphaltene” in its Patent Owner Response, Patent Owner chose not to do so. Patent Owner’s choice to not include a proposed construction analysis of the term “asphaltene” prejudices Petitioner, because Petitioner has not been provided adequate notice and opportunity to address whether or how the term “asphaltene” should be construed, and hinders the Board’s ability to discern the argument and provide proper relief. We do not find Patent Owner’s request to sua sponte engage in claim construction of the term “asphaltene” recited in this footnote as a proxy for a proper claim construction analysis. Id.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,450,250 - L’Oréal USA, Inc. v. Liqwd, Inc.Rehearing deniedPTAB · Oct 18, 2018 · PGR2018-00024 · APJ Christopher M Kaiser · PGR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show an abuse of discretion in construing “bleach powder” or assessing written-description support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). In addition, we may not consider an argument made in a request for rehearing unless the request “specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing. slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“reconsider the issue of our construction of “bleach powder.” The parties agree that the specification of the ’954 patent does not contain an express definition of “bleach powder,” so we are required to give the term its “ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure.” Translogic, 504 F.3d at 1257; see Pet. 27–28 (arguing that, “[a]bsent any . . . clear intent, the BRI must be consistent with the interpretation that those skilled in the art would reach,” then offering no particular construction of “bleach powder”); Prelim. Resp. 29–30 (“A person of ordinary skill in the art would have understood that bleach powder combines persulfates with alkalinizing compounds . . . in a fine dry particulate form.” (citing only sources outside the ’954 patent)). In arguments that we may consider, the parties draw our attention to six sources of evidence about the ordinary understanding in the art of “bleach powder.” Req. 2–5 (citing Ex. 1039, 48:9–49:9); Prelim. Resp. 29– 30 (citing Ex. 1002, 15:45–65; Ex. 1011, 17; Ex. 2005, 6; Ex. 2007, 3; Ex. 2012 ¶¶ 34–36). There is evidence that supports Patent Owner’s view that the ordinary meaning of “bleach powder” is a powder that contains an alkalizing agent in addition to persulfates, as opposed to merely a persulfate powder. A textbook called “Hair Preparations” by Thomas Clausen and others states that, at least in paste bleaches, “a bleach powder” is used that “consists of a peroxodisulfate, an alkalinizing agent,” and other ingredients. Ex. 1011, 17. In the context of cream and gel bleaches, this reference teaches that “[p]eroxosulfate . . . can be added as a bleaching powder” but is silent about whether the “bleaching powder” contains any additional ingredients. Id. In a book chapter on “Hair Coloring” by Keith C. Brown, a “bleach booster” powder is discussed that “is usually a mixture of ammonium and potassium persulfates” and that has “metasilicates mixed in with the persulfates” to provide “[a]lkaline pH.” Ex. 2005, 6. Against this evidence is the testimony of Dr. Borish that “powder lighteners” or “bleach powders” include “persulfate salts.” Ex. 1039, 48:9–49:9. But Dr. Borish does not state affirmatively that the persulfate salt is all that is required for a powder to be a bleach powder, only that a persulfate salt is a necessary component of a bleach powder. Id. Accordingly, his testimony does not outweigh the evidence that, to a person of ordinary skill in the art, a bleach powder contains both a persulfate salt and an alkalizing agent. We are not persuaded, therefore, that we abused our discretion by construing “bleach powder” to require both of those components.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing.” slip op. at 2
Claim constructionPatents in suitUS 9,668,954 - PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner has not demonstrated an abuse of discretion. Accordingly, we deny the request for rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,969,539 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00762 · APJ Christopher M Kaiser · IPR · Rehearing
Denied Petitioner’s rehearing request; claims 1–5 remain instituted only on the Mukherjee anticipation ground, with institution denied on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“sufficiently that Briffod discloses the “crack structure” of the recited claims on the surface of its film 2. Dec. 14–15. This was based on the failure of Petitioner and Briffod to explain whether the voids that Petitioner contends constitute cracks are present on “the surface” of the layer in question. Id. In its Request for Rehearing, Petitioner now argues that conclusion was an abuse of discretion. Request 6–9. Petitioner argues that Briffod discloses voids contained within film 2 and that these voids “qualify as cracks.” Id. at 6. As stated in our Decision, we agree that Briffod discloses voids within film 2, and, for the purposes of deciding whether to institute inter partes review, we accepted Petitioner’s contention that the voids in question constitute “cracks.” Dec. 13–14. The challenged claims, however, require that the “alloy layer has a crack structure on its surface,” and the Petition failed to explain why the presence of cracks within a layer demonstrates the presence of cracks on the surface of that layer.” slip op. at 5
- BurdenDecided for patent owner
“Finally, Petitioner argues that the roughness of the surface of film 2 and the roughness of overlying thin film 3 demonstrate the presence of voids on the surface of film 2. Request 8–9. Once again, Petitioner fails to explain adequately where this argument was made previously. Petitioner intermittently points to portions of the Petition where it contends that this argument was made previously, but Petitioner also intersperses arguments that do not cite to the Petition. Id. (citing Pet. 13–14, 23). To the extent that the citations are missing, we cannot consider this argument. 37 C.F.R. § 42.71(d). Even if we could consider this argument, we would not be persuaded that it showed an abuse of discretion in our conclusion that Petitioner failed to show sufficiently that Briffod discloses the presence of a crack structure on the surface of thin film 2. Briffod shows voids within thin film 2, and Briffod shows that thin film 2 has a rough surface. Ex. 1003, Fig. 1b. Briffod also states that the voids caused by the Kirkendall effect “may be the reason for the observed porosity of [thin film 3].” Id. at 4:21– 29. It is not clear that this establishes a causal relationship of any kind between the presence of voids and the rough surface, because it only posits a possible connection. Even if the voids do cause the surface to be rough, they could do so through several conceivable mechanisms, only one of which is the accumulation of voids at the surface. Petitioner did not explain in the Petition why we should assume any causal relationship, much less the single type of causal relationship that would satisfy the language of the challenged claims.” slip op. at 6
§ 102 anticipationPatents in suitUS 6,482,535 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00764 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no abuse of discretion in denying institution on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“evidence presented, that Petitioner established sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Dec. 19–20. Specifically, we stated that Briffod describes the surface of thin film 3 as shown in Figure 1b (the claimed “coating layer,” according to Petitioner) as “very rough,” with “many holes of 1 to 2µ which confirms the sponge-like structure suggested by the appearance of the surface.” [Ex. 1003, 4:8–15.] Briffod does not, however, describe the characteristics of film 2, which Petitioner contends is the “alloy layer” required by the claims. See Pet. 29 (quoting Ex. 1003, 2:55–56); id. at 30 (same). Petitioner does not provide any other evidence that shows sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Id. Therefore, we considered Petitioner’s arguments and evidence that cracks or voids are formed in Briffod film 2, and deemed it insufficiently persuasive. Moreover, with respect to Petitioner’s argument that Briffod Figure 1b “illustrates the Kirkendall voids as small circles in the film 2,” we note that Briffod describes Figure 1b as illustrating the Briffod invention “in a schematic manner” (Ex. 1003, 2:51–55), and does not explain what, if anything, the “small circles” drawn in film 2 signify. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. As a result, we did not abuse our discretion in denying institution of inter partes review of claims 2, 5, 7, 8, and 10 on the asserted ground of unpatentability based on Briffod.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“to show anticipation because Comparative Example 2, alone, shows all of the features of claims 1 and 6 of the ’036 patent.” Req. Reh’g 13. Petitioner does not point us to where this argument was made in the Petition; instead, Petitioner directs us to page 19 of the Petition, which is an overview of Takano. Id. at 12. In contrast, in the claim charts, which “show features of Takano that correspond to the claims of the ‘036 patent,” Petitioner identifies Example 1 as disclosing some limitations of the claims, and Comparative Example 2 as disclosing others. See, e.g., Pet. 33–34 (claim chart for claim 1). Per 37 C.F.R. § 42.71(d), Petitioner must point out where the matter was previously addressed in its Petition. We could not have overlooked argument or evidence that was not presented in the Petition. A request for rehearing is not an opportunity to supplement a petition.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,492,036 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the refusal to institute on Takano anticipation of claims 1–4, 6, and 14–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,306,523
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.