- 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 - Nikon Corporation v. Carl Zeiss AG And ASML Netherlands B.V.Rehearing deniedPTAB · Feb 1, 2019 · IPR2018-00686 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Nikon’s rehearing request, leaving institution denied for claims 1–5, 7–10, 16, 24, and 30–33 based on § 325(d) and the priority-date analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically 1 The Petition, in an apparent typographic error, omits claim 5 from its listing of challenged claims on page 1. identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In the Institution Decision, we denied institution of Ground 1 based on our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we determined that the Kaifu reference relied on by Petitioner was considered during prosecution. Id. Petitioner asserts that we misapprehended or overlooked its arguments regarding why its contentions as to Kaifu were not considered by the Examiner.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written description. To satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must reasonably convey to those skilled in the art that the inventor possessed, at the time of filing, the subject matter that he or she has claimed. Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. Whether a specification complies with the written description requirement is a question of fact. Id. at 1351, 1355. Entitlement to a filing date extends only to subject matter that is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We determine that because the open ended term “comprising” was used in the original claim reciting “a” signal, the recitation of “a” signal and “one or more” signals would have the same scope. An indefinite article, such as “a,” in patent parlance encompasses “one or more” when used, as here, in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as amended, which removes the open ended preface “comprising” and changes the modifier of “select signals” from “a” to “one or more,” does not change the scope of the claim in that respect. It merely is a different phrasing. Thus, as we stated in the Institution Decision, any description of a system with one signal would necessarily support a claim to one or more signals. Inst. Dec. 28. Additionally, the claim, as amended, does not suggest there is choice between alternatives that would meet this claim. For example, the claim does not require a choice between a first type of signal and a second type of signal. The claim recites “one” signal, which can be optionally accompanied (“or”) by “more” signals.” slip op. at 8
Claim construction§ 112 disclosureDiscretionary denialPatents in suitUS 9,728,574 - 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 - United Microelectronics Corp. / Umc Group (USA) et al. v. Lone Star Silicon Innovations LLCRehearing deniedPTAB · May 22, 2018 · IPR2017-01513 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the rehearing request and left in place its denial of institution because the petition’s challenges relied on an incorrect construction of “adjacent.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In response to a request for rehearing, we review a decision whether to institute trial for an abuse of discretion. 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). Further, “[t]he 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. We deny the request because Petitioner does not establish an abuse of discretion.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In addition, Rule 42.108(c) does not undercut the statutory mandate that precludes trial institution where, as here, the information presented in a petition and preliminary response fails to make out the threshold showing for review. See 35 U.S.C. § 314 (a) (authorizing review only upon a showing of “a reasonable likelihood that the petitioner would prevail with respect to at least 1” challenged claim). Taken to its natural end, Petitioner’s view of the rule would compel the Board to institute trial whenever a preliminary record includes declarations that reflect differing opinions—which is, of course, an untenable result. Petitioner’s argument is inconsistent with Section 314(a), which specifies a condition under which review may be instituted, but does not specify conditions under which review must be instituted. Id.; see Dec. 8–18 (articulating reasons why Petitioner, in this case, is not reasonably likely to prevail at trial with respect to at least one patent claim).” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“something is formed at one point in the process that does not need to remain in the same relative position throughout the fabrication process.” Pet. 20–21 (citing Ex. 1002 ¶¶ 42–45) (emphasis added). On that basis, Petitioner advanced challenges that depended on a construction of claim 1 that is broad enough to embrace an integrated circuit “in which a claimed feature is present during an intermediate step of the fabrication process but not necessarily in subsequent process steps or the final product.” Dec. 11; see Pet. 20, 23–39 (advancing that proposed construction). The Board rejected that view, observing that, as properly construed, claim 1 is not broad enough to encompass a device, such as the integrated circuit disclosed in Saito,2 in which “a claimed feature is present during an intermediate step of the fabrication process” but “is removed by selective etching in a subsequent process step and, thus, is absent in the integrated circuit ultimately produced by the process.” Dec. 11–12; cf. Pet. 3, 17, 20–21. We declined to adopt Petitioner’s expansive view of claim 1, which would enlarge the scope of the apparatus claim to capture structure present only during an intermediate step of fabrication. Instead, we determined that “the plain terms of claim 1 require that the metal silicide layer and the epitaxial silicon layer simultaneously are located ‘adjacent the shallow junction’ in the specified integrated circuit.” Dec. 12 (emphasis added). On this record, we are not persuaded that Petitioner proposed a claim construction that is “narrower” or “a subset” of the construction advanced by Patent Owner in the Preliminary Response. Req. Reh’g 7.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“removed” (Req. Reh’g 10) and that a genuine dispute arises regarding “whether the 100-200nm disclosure in Saito renders obvious” the challenged claims when evaluated under the correct construction of “adjacent”; that is, “close to; laying near” (id. at 11–12) (bridging sentence); but see Dec. 16 (correct construction is “close to; lying near”). Petitioner does not identify where, if at all, those arguments were presented in the Petition. Req. Reh’g 10, 11–12. Petitioner also attempts to recast other arguments in view of the correct claim construction. For example, Petitioner argues that a metal “silicide film remains throughout the process illustrated in” Saito’s Figure 1 and that “a functioning transistor was created as of FIG. 1(c) and processing could stop after this step.” Id. at 10. Those arguments were not presented in the Petition in the context of the correct claim construction. Petitioner identifies no abuse of discretion in the Board’s determination that the Petition did not explain adequately how or why the asserted prior art references disclose or suggest the properly-construed adjacency requirement of claim 1. See Dec. 16–17 (bridging paragraph, articulating reasons for that determination). In that regard, the Petition argued “that the term ‘adjacent’ in claim 1 must be read to ‘mean “directly adjacent” or “in physical contact with” during the formation of each layer,’ and not necessarily in the final structure.” Id. at 11 (quoting Pet. 17, 20– 21) (emphasis added). The request for rehearing represents a post hoc attempt to back away from that construction, recast the arguments and prior art asserted in the Petition, and present a new version of the patentability challenges under the correct claim construction. Compare Req. Reh’g 8–14, with Pet. 23–68. A request for rehearing is not an opportunity to present new arguments, therefore, we reject that endeavor. It would be manifestly unfair to Patent Owner for us to entertain those new arguments at this late juncture. See Req. Reh’g 8–14 (asserting new arguments keyed to the correct claim construction as identified in the institution decision).” slip op. at 11
Claim constructionPatents in suitUS 5,973,372 - Snap-On Inc. v. Milwaukee Electric Tool CorporationRehearing deniedPTAB · Jan 25, 2016 · IPR2015-01244 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place institution on claims 1–6 and 8–19 for obviousness over Fohr, Sato, and Hallaj.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS We review our decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Petitioner bears the burden of showing that the decision should be modified, by specifically identifying all matters Petitioner “believes the Board misapprehended or overlooked.” Id. at § 42.71(d). The central argument presented in the rehearing request is that the Board misapprehended or overlooked the broadest reasonable interpretation of the average discharge current limitation, which appears in each of the independent claims of the ’510 patent. Ex. 1005, claims 1, 9, 10, 12, 14–16,” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the entire disclosure of the patent. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Each argument presented in the request for rehearing depends upon a contention that the broadest reasonable interpretation of the average discharge current limitation includes “currents approaching infinity.” Rehearing Req. 10. We did not overlook or misapprehend that contention. Dec. 13 (treating Petitioner’s view that claim 1 recites “an open-ended average battery pack discharge current range from 20 amps up to infinity”) (quoting Pet. 20). We considered and rejected it based on the information presented. Id. at 13–16.” slip op. at 3
Claim constructionPatents in suitUS 7,999,510 - Snap-On Inc. v. Milwaukee Electric Tool CorporationRehearing deniedPTAB · Jan 25, 2016 · IPR2015-01242 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied Snap-On’s rehearing request, leaving review instituted on claims 1–8 and 10–11 over Fohr, Sato, and Hallaj; it found no error in declining the Johnson anticipation ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS We review our decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Petitioner bears the burden of showing that the decision should be modified, by specifically identifying all matters Petitioner “believes the Board misapprehended or overlooked.” Id. at § 42.71(d). The central argument presented in the rehearing request is that the Board misapprehended or overlooked the broadest reasonable interpretation of the average discharge current limitation of claim 1, highlighted below:” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the entire disclosure of the patent. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Each argument presented in the request for rehearing depends upon a contention that the broadest reasonable interpretation of the average discharge current limitation includes “currents approaching infinity.” Rehearing Req. 10. We did not overlook or misapprehend that contention. Dec. 13 (treating Petitioner’s view that claim 1 recites “an open-ended average battery pack discharge current range from 20 amps up to infinity”) (quoting Pet. 20). We considered and rejected it based on the information presented. Id. at 13–14.” slip op. at 3
Claim constructionPatents in suitUS 7,554,290 - Ardagh Glass Inc. v. Culchrome, LLCRehearing deniedPTAB · Jan 5, 2016 · IPR2015-00943 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing of the denial of IPR on claims 1, 2, 5–10, 17, and 26–31, finding no abuse of discretion on the Nix anticipation or Nix–Faber obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On this record, Petitioner does not demonstrate an abuse of discretion in the Decision to deny inter partes review of claims 1, 2, 5–10, 17, and 26– 31 of the ’521 patent based on anticipation by Nix.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The Decision construes “desired glass coloring oxide agent levels” as “concentrations of coloring oxides necessary to produce recycled glass products of a particular color.” Dec. 10. Contrary to Petitioner’s argument, the construction does not require that “oxide agent” be “only ‘oxide’” or “pure oxides.” Rehearing Req. 5. Nor does the Decision apply an unduly narrow claim construction in analyzing Nix. The Decision does not rest on a finding that Calumite slag is not an “oxide agent,” as argued by Petitioner. Id. at 6. Instead, the Decision finds that Dr. Risbud’s “concrete example,” Ex. 1010 ¶ 71, is not supported by Nix (Ex. 1004), because the “coloring oxide agent” identified by Dr. Risbud—“SO3 oxide coloring agent”—is not disclosed by Nix as having a redox factor of 0.092, as set forth in Dr. Risbud’s “concrete example.” Dec. 16; Ex. 1010 ¶ 71 (table). On this record, Petitioner does not demonstrate that the Decision is based on an incorrect claim construction.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Rehearing Req. 7, but identifies no error in our determinations that the “concrete example” set forth in that table is not disclosed in Nix and that Dr. Risbud’s opinions are “based on a modified version of Nix’s disclosure, without a sufficient evidentiary basis for the modification.” Dec. 15. Although Petitioner argues that “an implicit property of equations [is] that variables can be rearranged to solve for different variables,” Petitioner does not identify any equation in Nix having desired glass coloring oxide agent levels as a variable. Petitioner does not persuade us that the Decision misapprehends or overlooks any disclosure in Nix that teaches or suggests step [f] of the claims.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable
“stated basis for combining the teachings of Faber and Nix, including Faber’s citation to Nix. Rehearing Req. 11–12. We are not persuaded by Petitioner’s argument. The Decision expressly acknowledges Faber’s reference to Nix (Dec. 18) and acknowledges that the Petition and Risbud Declaration discuss a reason to combine the teachings of Nix and Faber, id. at 20. The Decision assumes that a person of ordinary skill in the art would have combined the teachings of Nix and Faber, but determines that the Petition and Risbud Declaration do not explain sufficiently how the combination of Faber and Nix would have led to the claimed method. Dec. 20. Petitioner does not persuade us that wemisapprehended or overlooked any portion of the Petition or Risbud Declaration, or otherwise abused our discretion, in making this determination.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,230,521 - Lenroc Company v. Enviro Tech Chemical Services, Inc.Rehearing deniedPTAB · Sep 10, 2014 · IPR2014-00382 · APJ Linda M Gaudette · IPR · Rehearing
The Board denied Lenroc’s rehearing request, leaving in place the denial of inter partes review of claims 1–12 because the Board did not err in construing “wetcake” to exclude free-flowing powder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Challenged independent claims 7, 11, and 12 recite “method[s] for preparing a dry, solid monoalkali metal cyanurate.” Ex. 1001, claims 7, 11, 12 (emphasis added). Method claims 7, 11, and 12 recite a first step of forming a monoalkali metal cyanurate wetcake by “blending cyanuric acid” (id., claims 11, 12) or “cyanuric acid wetcake” (id., claims 7, 11, 12) “with a monoalkali metal base” (id.). The ’132 patent specifies the cyanuric acid starting material may be either a “dry, virgin material or . . . by-product material . . . available as a water-washed wetcake” (Ex. 1001, 4:40-48, 6:53-62, 8:66-9:8 (emphasis added), quoted in Dec. 8). Dooney confirms that prior to the effective date of the ’132 patent, cyanuric acid was commercially available in powder and granular forms, or in cake/wetcake form. Ex. 1004, 1:17-20, 28-29, cited in Dec. 9. Given the evidence that cyanuric acid starting materials were available in either wetcake or powder/dry forms, it is not clear whether Dr. Howarth viewed the terms “wetcake” and “powder” as synonymous, or was unconsciously using terms which describe two different forms of cyanuric acid starting materials encompassed by the claimed method. On this record, even if we consider the new evidence that was not raised in the Petition, we are not persuaded that Petitioner shows sufficiently that Dr. Howarth’s declaration testimony controls the proper construction of claims 7, 11, and 12 in this proceeding. Each of claims 7, 11, and 12 also recites a second step of drying the monoalkali metal cyanurate wetcake. Ex. 1001, claims. With respect to the drying step, claim 12 recites: “(b) Drying the formed wetcake of monoalkali metal cyanurate by allowing heat of neutralization caused by a reaction of the blended cyanuric acid or cyanuric acid wetcake and the monoalkali metal base to remove water from the monoalkali metal cyanurate wetcake as steam and by allowing the steam to escape.” The process described in the Howarth Declaration includes the drying step recited in claim 12. Compare Ex. 1001, claim 12(b) with Ex. 1009, ¶ 10. A process which meets the limitation of claim 12 produces a “dry, solid monoalkali metal cyanurate” (Ex. 1001, claim 12). Dr. Howarth stated that “Picture 8 shows the sodium cyanurate wetcake product being conveyed from an opening at the bottom of the ribbon blender.” Ex. 1009, ¶ 13 (emphasis added). Dr. Howarth then described the product exiting the ribbon blender in picture 8 as a “sodium cyanurate wetcake [that] is a free-flowing powder” (Ex. 1009, ¶ 13). However, we are not convinced Dr. Howarth’s statement was based on an understanding that the term “wetcake” encompasses a free-flowing powder, as opposed to an assumption that the reader appreciated that the sodium cyanurate material in the described process transitioned from a wetcake to a dry solid product (a free-flowing powder) during the drying step in the ribbon blender. With respect to the Amendment, Petitioner has not explained clearly how arguments distinguishing a wetcake from a slurry based on relative dryness support their contention that we erred in interpreting the term “wetcake” as not encompassing a free-flowing powder. See Dec. 8, 1st para. (indicating the term “wetcake,” as used in the ’132 patent, describes a material that is not a slurry and noting the dry-blending process described in the ’132 patent forms a semi-dry solid cake). In sum, Petitioner has not convinced us that the intrinsic evidence of record as a whole, taking into account the Howarth Declaration and Amendment, supports an interpretation of the claim term “wetcake” as encompassing a free-flowing powder. Therefore, we are not persuaded that we erred in interpreting the claims as excluding Stephen’s free flowing powder of monosodium cyanurate monohydrate containing 89.35% monoalkali metal cyanurate and 10.65% water by weight. Petitioner has not met its burden to show that the decision should be modified.” slip op. at 5
Claim constructionPatents in suitUS 7,728,132
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.