• Sports Nutrition Research, Ltd. v. Chemi NutraRehearing denied
  PTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing

  The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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 a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner

    “The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9

  Claim construction
  Patents in suitUS 10,869,843
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-00440 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4, 6–7, 10–16, 18, and 20 are unpatentable; claims 5 and 8 are not shown unpatentable. Substitute claims 21, 30, and 38 are unpatentable as obvious over Sackier and Kirsch.

  RulingsFinal written decision

  • Expert testimonyOther

    “3. Dr. Nicosia’s Declaration in support of its Opposition to Patent” slip op. at 7

  • Skill levelOther

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “B. “clip” The Parties now agree that “clip,” as the term is generally understood,” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that Petitioner has not met its burden of showing this element to be present in Sackier because Petitioner combines features from distinct embodiments in Sackier without establishing persuasively that those embodiments are so directly related to each other such that one of ordinary skill in the art, looking at the reference as a whole, would recognize a disclosure of the invention as claimed. Accordingly, although a very close call, we conclude that Petitioner has failed to demonstrate anticipation of claims 1, 12, and 20 by Sackier for this reason.” slip op. at 21

  Patent outcomesUS 9,271,731 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-00435 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4, 6–18, and 20 were not shown unpatentable over Malecki; the contingent motion to amend was denied as moot.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “construction more persuasive because it is grounded in, and most consistent with, the specification of the ’731 patent. Contrastingly, Petitioner does not offer a specific interpretation of “inner walls” and its arguments are generally based on extrinsic evidence, including claim charts from the related district court litigation (Pet. 15), arguments from related proceedings (Pet. Reply 3), and the prior art reference (Malecki) relied on to challenge the claims (id. at 3–4). Petitioner criticizes the Patent Owner’s position but provides no express interpretation of “inner walls of the first and second clip arms;” instead, Petitioner argues why Patent Owner’s proposed construction is wrong. Pet. Reply 4–5. Dr. Nicosia does not expressly define or otherwise persuasively explain the definition of “inner walls” in his declarations either. See generally Exs. 1037, 1095, and 1109.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’731 patent would have possessed the knowledge and skill of an engineer or similar professional 5 The parties have not introduced evidence of secondary considerations in this proceeding. with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 10 (citing Ex. 1037 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it based on the final record before us. It is also consistent with the level of skill evidenced by the references.” slip op. at 15

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id. Finally, Petitioner seems to recognize that a modification would be” slip op. at 25

  Patent outcomesUS 9,271,731 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Nov 15, 2018 · IPR2017-00135 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1, 3–5, and 10 are unpatentable as obvious over Kimura (claims 1, 3–5) and Kimura with Sackier (claim 10); claims 7, 11–15, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’371 patent would have possessed the knowledge and skill of an engineer or similar professional with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 8 (citing Ex. 1029 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it for purposes of this Decision.” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “The issue we have with Patent Owner’s contentions, as pointed out by Petitioner, is that Patent Owner does not establish persuasively how its claims require the “reversible open/close” feature and the “tactile feel features.” See Pet. Reply 27–29. Even presuming that these features did indeed drive tremendous commercial success and industry praise for the commercial products, Patent Owner does not adequately explain in its analysis how the claims of the challenged patent require these particular features that drive commercial success. Patent Owner seems to suggest that a break section in the control wire will fracture and that this feature in the commercial product relates to the tactile feel. PO Resp. 57 (citing Ex. 2029 ¶¶ 91–93) (“After the yoke has disengaged, if the handle spool is moved further proximally, a break section in the control wire will fracture, leaving the ball within the yoke and uncoupling the control wire from the distal components of the device.”). This “break section in the control wire” is not, however, claimed or covered in claim 1, the claim that purportedly embodies the commercial product. The claims alleged to cover the product do not specifically require any “tactile feel feature.”3 Likewise, while the claims may allow for an opening and closing of the clip assembly, there is no requirement in these claims that the clip assembly, as “demanded” by physicians, repeatedly open and close. Thus, both of the drivers of commercial success and industry praise are not commensurate in scope with the claims of the patented invention. See Ex. 1046 ¶¶ 23–29 (explaining how features are not claimed).” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “district court proceeding, Petitioner contends that “coupled to the sheath” means “slideable inside the sheath” and “the sheath confines the bushing.” Pet. 9. Petitioner provides no additional support. The district court tentatively rejected this broad interpretation. See Ex. 2003, 27–28 (“[T]he Court recommends that ‘coupled to the sheath’ be construed as ‘linked together, connected, or joined, but not slidable inside the sheath.’”). Patent Owner contends that Petitioner’s proposed construction of “coupled to the sheath” is “unreasonably broad,” but provides little citation to the intrinsic record before us. Prelim. Resp. 13–14. Instead, Patent Owner notes that the plain and ordinary meaning of coupled is “linked together, connected, or joined,” citing to an unrelated Federal Circuit decision as well as the related district court determination. Id. at 14; Ex. 2003, 28. In our proceeding, Petitioner has not provided persuasive evidence or argument to support its claim interpretation by merely pointing to what Patent Owner purportedly argued in district court. Based on the final record before us, “coupled to the sheath” means “linked together, connected, or joined” to the sheath. Our construction is consistent with the district court’s analysis and reflects the common understanding of the term “coupled” in the mechanical arts to require more than simply abutting or contacting. See generally Ex Parte Paul Robert Homrich, Appeal 2014-005786, 2016 WL 3541285, at *3 (PTAB, June 27, 2016) (“When used in mechanical systems, the plain and ordinary meaning of ‘coupled’ means to link together or connect,” and coupled requires more than contact or abut.).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We are not persuaded that Petitioner has demonstrated sufficiently that Adams discloses “a bushing extending between a proximal end coupled to the sheath,” (Ex. 1027, 17:4–5) as required by claim 1 of the ’371 patent. Based on the final record, Petitioner’s contention that retainer 110 [bushing] is slidable inside the sheath, or confined by the sheath, does not establish persuasively that the proximal end of the bushing is coupled to the sheath as required by claim 1. The claimed coupling must be “proximal coupling” and Petitioner can only point to distal coupling via distal tabs 118, 119 (Pet. Supp. Reply 6) – this is not “proximal” coupling. Further, for the bushing and the sheath to be coupled requires them to be “linked together, connected, or joined” in some manner and Petitioner has not established any such connection for proximal coupling. Petitioner also has failed to establish a persuasive reason for linking or connecting retainer 110 and sheath 112 – indeed, doing so would negatively impact the ability of retainer 110 to freely slide out of sheath 112. See Prelim. Resp. 27. Adams suggest that when control wire 108 is actuated and the clip is locked into the lock sleeve, retainer release 109 pulls retainer 110 back, disengaging retainer tabs 118, 119 from the two retainer holes as depicted in Figure 4.” Ex. 1023, 7:26–44 Finally, we note that our decision would not change if we adopted the district court’s claim interpretation. The district court adopted a claim construction of “a bushing extending between a proximal end coupled to the sheath” as “linked together, connected, or joined, but not slidable inside the sheath.” Ex. 2003, 28 (emphasis added). Should the district court’s interpretation be the correct one, Patent Owner’s position is much stronger whereas Petitioner’s theory is based on slidable movement. See Pet. 9 (arguing for “slideable inside the sheath” and “the sheath confines the bushing”); Pet. Supp. Reply 6. Having now considered the evidence in the complete record established during trial, we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 1 would have been anticipated by Adams. Petitioner has not established persuasively that Adams discloses “a bushing extending between a proximal end coupled to the sheath.” For this reason, Petitioner has failed to prove by a preponderance of the evidence that Adams anticipates claim 1.” slip op. at 22

  Patent outcomesUS 8,974,371 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,974,371
• Argentum Pharmaceuticals LLC v. Cipla Ltd.Rehearing denied
  PTAB · Oct 31, 2017 · IPR2017-00807 · APJ Kristi L R Sawert · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in declining to construe the terms or in reserving disputed motivation and reasonable-expectation issues for trial.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 4

  • Expert testimonyOther

    “osmolality, poor spray quality, and unacceptable settling and caking” resulting from the attempted formulation of Cramer’s Example III. Id. at 8– 10; see also Prelim. Resp. 25. The Board, however, addressed those issues in the Institution Decision and determined that “Patent Owner’s arguments and expert testimony highlight disputed issues of fact about whether the skilled artisan would have been motivated to combine the teachings of Hettche, Phillipps, and Segal to arrive at the claimed subject matter, and would have had a reasonable expectation of success.” Instit. Dec. at 20 (citing Ex. 1002, 268–87; Ex. 2007 ¶¶ 40–47; Ex. 2111, 1; Ex. 2044, 1–2). The Board concluded that those “issues are best resolved following trial with the benefit of a full record.” Id. We are still of that view. Accordingly, we are not persuaded that the Board misapprehended or overlooked the issue of reasonable expectation of success.” slip op. at 5

  • BurdenOther

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review 1 Helmut Hettche, U.S. Patent No. 5,164,194 (Nov. 17, 1992) (“Hettche”). Ex. 1007. 2 Gordon H. Phillipps, et al., U.S. Patent No. 4,335,121 (Jun. 15, 1982) (“Phillipps”). Ex. 1009. 3 Catherine A. Segal, Int’l Publication No. WO 98/48839 (Nov. 5, 1998) (“Segal”). Ex. 1012. 4 FLONASE® (fluticasone propionate) Nasal Spray, 50 mcg Product Information (Dec. 1998) (“Flonase Label”). Ex. 1010. the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “In the Institution Decision, the Board determined that “no claim term requires express interpretation for purposes of this Decision.” Instit. Dec. 7. In its Rehearing Request, Patent Owner argues that the Board “misapprehended or overlooked the importance of construing the terms ‘nasal spray’ and ‘suitable for nasal administration’” found in all the challenged claims. Reh’g Req. 2. In particular, Patent Owner asserts that those terms mean “pharmaceutical formulations that are tolerable to patients, homogeneous, and can be suitably deposited onto the nasal mucosa.” Id. (citing Paper 7, Preliminary Response (“Prelim. Resp.”), 9). Patent Owner alleges that, had the Board construed “nasal spray” and “suitable for nasal administration,” then the Board would have denied the obviousness grounds because “none of the combinations of cited art teach a person of ordinary skill in the art how to make the claimed fixed-dose combination ‘nasal spray’ or formulation ‘suitable for nasal administration’ with a reasonable expectation of success.” Id. at 2–3 (citing Prelim. Resp. 9). We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 3

  Claim construction§ 103 obviousness
  Patents in suitUS 8,168,620
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting, Inc.All claims unpatentable
  PTAB · Aug 17, 2016 · IPR2015-00708 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious under § 103 over the three instituted combinations of Hauwiller, the patent Background, and, for specified claims, Dickson or Shibusawa.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The differences between Dr. Johannsen’s and Dr. Heiniger’s articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Dr. Heiniger’s definition of the level of ordinary skill in the art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningOther

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute, we construed the phrase “calculating a map”4 in claims 1–3, 12, 14, 20–22, and 28 to mean “performing calculations to produce a map.” Dec. to Inst. 6–7. With respect to the phrase “maximum possible crop yield” in claims 1, 14, and 20, we declined to adopt Petitioner’s proposed meaning of that term as “yield goal” and instead applied the ordinary and customary meaning of the claim language. Id. at 7–8. We further determined that no other claim term required express construction. Id. at 8. Following institution, neither party challenged those constructions or proposed other terms for construction. On the record now before us, we do not discern reason to deviate from the constructions set forth in the Decision to Institute.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “a “conventional method” that is used for calculating nitrogen needs for a field. Ex. 1001, 1:39–40. Hauwiller’s system is open to a variety of recommendation equations, as Patent Owner’s declarant agrees. See Ex. 1005, 8:36–48, 9:18–21, 9:34–38, 13:30–35, 13:39–45; Ex. 1020, 8:11–16. This openness supports the obviousness of employing within Hauwiller’s system a conventional equation (or certain aspects of a conventional equation) such as the one set forth in the Background of the ’620 patent. Furthermore, while the conventional equation includes several variables, a basic teaching of the equation is that in calculating the fertilizer recommendation, the amount of nitrogen already present should be subtracted from the nitrogen needed to realize the yield goal. See Ex. 1001, 1:39–50. Dr. Johannsen’s testimony that “subtraction of existing nutrients from the nutrient amount was a conventional thing to do particularly because it helps reduce leaching due to over fertilization” is consistent with this understanding of the conventional equation. See Ex. 1008 ¶ 71. We also recognize that the ’620 patent describes the equation as being a conventional approach for calculating nitrogen needs “for a field” rather than for a specific site within the field. Ex. 1001, 1:39–40. But Hauwiller recognizes that “[d]esired yield potential varies depending upon the soil characteristics by location” and, for that reason, describes the desirability of constructing “a yield goal map for creating an application map based upon site specific yield goals.” Ex. 1005, 9:32–41 (emphasis added). Thus, Hauwiller teaches the advantages and desirability of a site-specific approach. We agree with Petitioner that the “subtracting” step would have been accomplished by applying the teachings of the equation in the Background of the ’620 patent to the site-specific approach of Hauwiller. The evidence supports Petitioner’s contentions summarized above, and we agree with Petitioner that all of the features of claims 1 and 20 are disclosed in Hauwiller and the prior art described in the Background of the ’620 patent, and that there is adequate reason to combine the teachings of the prior art. We have considered Patent Owner’s arguments to the contrary, but we do not find them persuasive for the reasons discussed below.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We have considered Patent Owner’s and Dr. Heiniger’s opposing views. We observe that Dr. Heiniger does not explain adequately the basis of his opinion that, despite the teachings of the prior art, a person of ordinary skill in the art would have “thought that yield data from previous years would not work for that purpose” because a skilled artisan would have viewed yield data as “fundamentally different” from a measure of biomass. See Ex. 2033 ¶ 167. We also do not discern that either Patent Owner or Dr. Heiniger adequately considers that, in view of the teachings of the prior art, one of ordinary skill in the art would have known that “leaf area index” is a known measure of biomass. See Ex. 1001, 1:63–65. In that regard, they do not explain why a skilled artisan would not understand readily that leaf area index constitutes the type of field history data and previous crop information that Hauwiller contemplates as useful in developing a map for a given field. Accordingly, on the record before us, we conclude that Petition has shown where all the features of claims 2 and 21 are found in the prior art, and that there is articulated reasoning why a person of ordinary skill in the art would have combined the teachings of Hauwiller and the Background of the ’620 patent. Patent Owner’s and Dr. Heiniger’s general views to the contrary, in our view, do not account appropriately for how a skilled artisan would have understood the teachings of the prior art.” slip op. at 23

  Patent outcomesUS 6,889,620 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,889,620
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCRehearing denied
  PTAB · Jul 13, 2016 · IPR2014-01555 · APJ James T Moore · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving claims 1, 2, 7–12, 14–17, 19, 21–24, 31–42, and 44 unpatentable, and corrected the judgment to include claim 44.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A. Rehearing Requests A rehearing request for a final decision is governed by 37 CFR § 42.71 (d), which provides that a party dissatisfied with a decision must specifically identify all matters believed to have been misapprehended or overlooked, and the place where each matter was previously addressed.5 We therefore consider Patent Owner’s request for rehearing to determine whether we misapprehended or overlooked a matter, and whether it makes a difference to our determination in the Final Written Decision.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In our final written decision we observed that “‘intimately and entirely coated’ mean[s] exactly what it says. In other words, it means the embodiment shown in Figs. 1a through 1c of the ʼ558 patent drawings and associated discussion in the written description portion of the specification.” Paper 50, 23. In doing so, we relied principally on the intrinsic evidence of record in the specification. On rehearing, Patent Owner asserts that the claim interpretation used by the Board is not part of the record and was not presented by Petitioner. Reh’g Req. 3. We are not persuaded by this argument. First, the Patent Owner itself advocated in the Patent Owner’s response that Kinoshita did not contain oxidation catalyst species “intimately and entirely coated with an absorber.” Paper 29, 19–20. Second, the Board is not bound by the Petitioner and Patent Owner’s interpretation of the claim language, which may have inherent favoring of a particular interpretation for strategic reasons, as discussed in the final written decision. See Paper 50, 23. Patent Owner states that it has had no opportunity to address the claim construction and that it is fundamentally unfair and unreasonable that Patent Owner has not had a chance to address this claim construction. Reh’g Req. 2–3. We take such a statement seriously. However, we are unable to discern how the Board overlooked or misapprehended any fact or argument, let alone how the claim interpretation adversely affected the outcome of this proceeding for the Patent Owner.” slip op. at 8

  • BurdenDecided for petitioner

    “loading, Hoekstra has insufficient catalyst to form a continuous layer, and there is no evidence the method of Hoekstra results in all platinum being entirely covered. Id. at 11–12. As we have not interpreted claim 1 as requiring a continuous catalyst layer, we are unpersuaded by the first assertion. As to the second, we relied upon evidence from Hoekstra example 1, Dr. Crocker, and Dr. Farrauto. For example, Dr. Farrauto testified that barium oxide completely coated the platinum group metal. Ex. 1003A. More specifically, Dr. Farrauto testified: 39. Hoekstra also discloses that prior to calcining the platinum group metal-impregnated carrier material, the composite is further impregnated with a compound of an alkaline earth metal in solution with a reducing agent. Ex. 1005 at col. 3, ln. 51-55. The reducing agent prevents the leaching of the platinum group metal component from the carrier into the alkaline earth metal solution. See Ex. 1005 at col. 1, ln. 37-59; col. 3, ln. 55-59; col. 5, ln. 4-8. 40. Because the platinum group metal component does not leach from the carrier, the alkaline earth metal compound will be coated over the platinum group metal component. Ex. 1003, 11–12. We also specifically noted that Hoekstra describes this prevention of leaching. Hoekstra explicitly states in describing the result of process steps described in Example 1 that “[t]his example demonstrates that the inclusion of a reducing agent, e.g., hydrazine hydrate, obviates leaching of the platinum group metal component from the carrier material during the second impregnation step [i.e., adding a barium oxide layer].” Ex. 1005, col. 5:4–8 (italics added).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “evidence that claims 1, 7, 8, 12, 14, 21, 22, 32–35, and 38–42 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b) and claims 9–11 and 23 of the ʼ558 patent are unpatentable under 35 U.S.C. § 103(a). (Ground 2, Hoekstra). Paper 50, 78. We also determined that Petitioner established by a preponderance of the evidence that claims 33–40, 42, and 44 of the ʼ558 patent are anticipated by Kinoshita. (Ground 3, Kinoshita). Id. at 79. We additionally determined that Petitioner established by a preponderance of the evidence that claims 1, 2, 7–10, 14, 15, 17, 19, 24, 31, 33–37, 39, and 40 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b). (Ground 4, Inui). Id. We finally determined that Petitioner established that claims 1, 7, 8, 14–17, 19, and 31 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b) and that claims 21–23 of the ʼ558 patent are unpatentable under 35 U.S.C. § 103(a). (Ground 5, Stiles). Id.” slip op. at 4

  Claim construction§ 102 anticipation
  Patents in suitUS 5,451,558
• Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentable
  PTAB · Jan 22, 2016 · IPR2014-01556 · APJ Fred E Mckelvey · IPR · Final written decision

  Claims 1–4, 6–7, and 9–16 are unpatentable under § 103(a) over the combined prior art; the anticipation grounds do not establish unpatentability.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedDecided for patent owner

    “(a) A party may request oral argument on an issue raised in a paper at a time set by the Board. The Trial Practice Guidelines advise as follows: A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (col. 2) (Aug. 14, 2012) (italics added). The rationale in support of the Rule and Guideline is fundamental fairness to an opponent. 37 C.F.R. § 42.1(b) (Part 42 “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”) It is not just to an opponent for a party to raise an argument not based on the Petition, Opposition, or Reply, or to discuss evidence not in the record. Why? There is no meaningful opportunity for the opponent to rebut the argument or address the evidence. Likewise, the Board is at a disadvantage because judges do not prepare for oral argument based on arguments and evidence not present in the record. To the extent that arguments and discussions took place at oral argument in this case contrary to the principles set out above, those arguments and discussions have not been considered in rendering a decision on the merits.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We disagree with Petitioner’s “comprising” position. While the regeneration gas can “comprise” elements not set out in parts [A1] and [A2] of claim 1, as reproduced above, part [A2] is restricted to an inert carrier gas. According to the ʼ911 patent, the regeneration gas is substantially oxygen free, albeit the regeneration gas can contain up to one percent oxygen. Ex. 1001A, col. 3:27–29. A regeneration gas containing more than one percent oxygen would cease to be a regeneration gas within the meaning of claim 1. Any reasonable interpretation of “regeneration gas,” consistent with the Specification, would require that the regeneration gas have no more than up to one percent oxygen. In reaching our conclusion, we have not added a limitation from the Specification into claim 1 of the ʼ911 patent; rather, we interpret the meanings of “regeneration gas” and “inert carrier gas” as set out in the claim.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “to doubt that the NOx released by the [Hirota] absorbent . . . [would] be reduced . . . by . . . [the Hirota] process” “provid[ed] there is sufficient reductant present.” Ex. 1056, page 89:18–21. However, Dr. Crocker’s cross-examination testimony does not establish that the Hirota process anticipates the process of claim 1 of the ʼ911 patent. The issue here is not whether Hirota is operative; rather, it is whether Hirota operates with “an inert carrier gas” within the meaning of claim 1 of the ʼ911 patent. During oral argument, Petitioner called attention to the wording of Hirota, with emphasis on the fact Hirota does not use the word “shall” or “must” but rather uses the word “is.” Transcript of Oral Argument, Paper 56, page 4:7 through page 5:15. According to Petitioner, under a broadest reasonable interpretation standard, the regeneration gas of claim 1 should be interpreted broadly. Id. at page 5:12–15. But, Petitioner previously had agreed that it makes no “difference what the claim construction is here,” (id. at page 3:20–23). We view the “shall,” “must,” and “is” discussion as a formalistic wordsmithing side-show given that the meaning of the regeneration gas is clear from its description in the Specification. We find that Hirota does not describe the subject matter of claim 1 of the ʼ911 patent. Accordingly, Petitioner has failed to prove that Hirota anticipates claim 1 of the ʼ911 patent.” slip op. at 22

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Likewise, Land justifies a holding that joint inventors Guth and Campbell (Ex. 1004A) are separate entities vis-à-vis joint inventors of the Guth, Campbell, and Wagner ʼ911 patent (Ex. 1001A). Patent Owner maintains that Guth ʼ758 and Campbell’s “work may not be used against [them] unless there is a time bar under 35 U.S.C. 102(b).” Paper 28, page 19 (quoting MPEP § 2136.05 (7th ed. July 1998)). However, Guth and Campbell’s work is not being used against them; it is being used against the inventive entity of the ʼ911 patent: Guth, Campbell, and Wagner. At oral argument, counsel for Patent Owner stated “[s]o what I’m saying is I agree that Land probably applies.” Transcript of Oral Argument, Paper 56, page 14:19–20. On the record before us, there is insufficient evidence that Wagner contributed to, or is a joint inventor of, the subject matter described and/or claimed in the ʼ911 patent.” slip op. at 39

  Patent outcomesUS 5,953,911 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,953,911
• Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentable
  PTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision

  Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17

  • Skill levelSkill level board ownDecided for petitioner

    “Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23

  Patent outcomesUS 8,606,658 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,606,658
• HTC Corporation / HTC America, Inc. v. Flashpoint Technology, Inc.Rehearing denied
  PTAB · Mar 10, 2015 · IPR2014-01249 · APJ James T Moore · IPR · Rehearing

  The Board denied rehearing, leaving institution in place on the previously instituted claims and grounds; it rejected the challenges to denying claims 8–14 on Grounds 1 and 3 and other proposed grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “We disagree with Petitioner’s assertion, and reading of the rules and statute. The appropriate rule, 37 C.F.R. § 42.104(b)(3), is not to be read in isolation, but also in conjunction with other Board rules, including 37 C.F.R. § 42.1(b), which requires the rules to be interpreted for securing the just, speedy, and inexpensive resolution of every proceeding. Requiring identification of the means, and sufficient means, avoids institution of a trial where the scope of the means-plus-function claims cannot be determined with precision. The trial potentially would be delayed and ultimately potentially incapable of decision on the merits of the grounds. Consequently, the panel has the discretion to determine if the trial might stray into grounds outside of the statutory authority provided for inter partes review proceedings.” slip op. at 3

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “First, it is a long-standing part of jurisprudence that the tribunal has discretion in the conduct of its proceedings. The language of § 314 provides us with discretion in that it expressly states that review “may not” be authorized in certain situations, but it does not require that a review “shall” be instituted in any situation. 35 U.S.C. § 314(a). In addition, we direct Petitioner’s attention to 35 U.S.C. § 316(b), which provides our rules are to take into account the “regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all eleven, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. Thus, we are not persuaded of error or an abuse of discretion in our decision not to institute those additional grounds.” slip op. at 5

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 6

  Claim constructionDiscretionary denial
  Patents in suitUS 6,362,850

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.