- Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). 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. 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. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00776 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Corning’s rehearing request and left institution denied for claims 1–4 because the petition did not show a reasonable likelihood of proving obviousness on any asserted ground.
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, 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,488,115 B2 (Ex. 1001, “the ’115 patent”). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the choosing limitation of the claims would have been obvious over cited references in view of the knowledge of one of ordinary skill in the art. Dec. 20, 26, 29. We, thus, found that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’115 patent are unpatentable as obvious on any asserted ground. Id. at 22, 23, 27–30.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’115 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 42 (citing Ex. 1005 ¶ 252).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The second part of Petitioner’s first argument is that we “committed legal error by construing claim 1” of the ’115 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction, either expressly or implicitly. In fact, we determined that no claim term required express construction. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing (Reh’g Req. 6–9), but Petitioner identifies nothing in our Decision that indicates we construed the “choosing” limitation of claim 1 to require that the DMD slope always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,488,115 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Rehearing
Denied Corning’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood that claims 1–4 were obvious on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2018). 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,351,027 B2 (“the ’027 patent,” Ex. 1001). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the combined teachings of the prior art would have rendered obvious the limitation of claim 1 that requires “choosing for use in a communications network those optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number” (“the choosing step”). Dec. 23–25, 29–30, 32. We, thus, determined that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’027 patent would have been obvious based on any asserted ground. Id. at 25–26, 30–33.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot reached
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’027 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))); see also Dec. 25 (concluding that Petitioner’s argument appears to be the product of hindsight). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 44 (citing Ex. 1005 ¶ 164).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“legal error by construing claim 1” of the ’027 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction. In fact, we determined that no claim term required express construction, expressly or implicitly. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing, see Reh’g Req. 6– 9, but does not identify anything in our Decision that indicates we construed the choosing step of claim 1 as requiring that the DMD slope should always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027
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.