• Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing denied
  PTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing

  The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable

    “These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7

  Claim construction§ 112 disclosure
  Patents in suitUS 10,155,039
• Coherus Biosciences, Inc. v. Hoffmann-Laroche Inc.Rehearing denied
  PTAB · Jul 13, 2018 · IPR2017-02066 · APJ Wesley B Derrick · IPR · Rehearing

  The Board denied rehearing and left in place the denial of institution because Petitioner did not consistently define the claimed hinge or show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 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 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. See also 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 3

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

    “matters in construing the claims does not address our reasoning set forth in the decision. Contrary to Petitioner’s contentions, we did not construe the claims to be limited to fusion proteins comprising a hinge having the full amino acid sequence encoded by the corresponding hinge exon, including three cysteine residues. Although we did construe the claims to exclude “any protein with less than all of the amino acid sequence of the hinge domain of human IgG (or IgG1) immunoglobulin heavy chain, even if functional,” see Dec. 7, we could not discern from Petitioner’s discussion of the claims and the art any consistent demarcation in the amino acid sequence of human IgG (or IgG1) concerning where the first domain ends and the hinge domain begins. As we explained, the phrase “all of the domains of the constant region . . . other than the first domain of said constant region” leaves unsettled “where in the constant region the divide lies between the first domain of the constant region and the hinge domain.” Dec. 7–8. What is settled, however, is that the ordinary and customary meaning of the terms in the phrase requires that all constant region amino acid sequence that is not part of the first domain must be included in the fusion protein. Id. at 7. As made explicit in the Decision, Petitioner failed to define in a consistent manner where the divide lies between the first domain of the constant region and the hinge domain. It was in light of this deficiency that we determined that Petitioner had not met the requisite burden for instituting inter partes review. Id. at 8. As we further explained:” slip op. at 4

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

    “As made explicit in the Decision, Petitioner failed to define in a consistent manner where the divide lies between the first domain of the constant region and the hinge domain. It was in light of this deficiency that we determined that Petitioner had not met the requisite burden for instituting inter partes review. Id. at 8. As we further explained: [W]ith respect to Zettlmeissl, Petitioner appears to assert that “all of the hinge domain” requires the hinge segment encoded by the hinge exon, including three cysteine residues. But with respect to Watson, Petitioner appears to assert that “all of the hinge domain” simply requires a portion of sequence that includes the two cysteine residues involved in joining the heavy chains. Id. at 14. Notwithstanding the apparent differences in amino acid sequence, unacknowledged in the Petition, “Petitioner relies on Zettlmeissl and Watson as teaching the use of the same, identical portion of the IgG heavy chain, and relies on that portion for use in the fusion protein.” Id. at 10 (citing Pet. 5); see also id. at 6, 12–14, Pet. 5 (stating “both [Watson and Zettlmeissl] reported optimal results by employing the identical portion of the IgG heavy chain as claimed in the ’182 patent”).” slip op. at 5

  Claim construction
  Patents in suitUS 8,063,182
• Guardant Health, Inc. v. Foundation Medicine, Inc.Rehearing denied
  PTAB · Nov 8, 2017 · IPR2017-01170 · APJ Richard J Smith · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving instituted review of claims 65, 66, 72, 73, 75–77, and 80–85 based on its reasonable-likelihood determination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION When rehearing a decision on petition, the Board reviews 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). A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “According to the ’830 patent, the term “bait” is defined as including “a nucleic acid molecule . . . which can hybridize to (e.g., be complementary to), and thereby allow capture of a target nucleic acid.” Ex. 1001, 28:47–50. Patent Owner acknowledges that “both primers and baits hybridize to a complementary portion of the target nucleic acid.” Req. Reh’g. 3 (citing Prelim. Resp. 30). However, Patent Owner does not explain or otherwise persuasively address why the subject nucleic acids in Shah are not included within that definition of “bait.” We did not overlook Patent Owner’s explanation of why, in its view, “primers” are not “baits.” Rather, at this stage of the proceeding, we found such explanation unpersuasive as we stated in the Decision. Dec. 13. (stating “we are not persuaded that the definition of the term ‘bait,’ as set forth in the ’830 patent, does not include primers”). Moreover, because we did not overlook Patent Owner’s explanation, we find no basis to reconsider the disclosures of Shah.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner

    “We did not overlook and/or misapprehend Patent Owner’s argument. We expressly addressed that argument with respect to bait sets (i) and (ii) by stating that “we find that choosing bait sets that select somatic mutations that appear at a frequency of about 5% or less and at a frequency of about 10% or higher is taught or suggested by the combined teachings of Levin and Shah.” Dec. 17 (emphasis added); see also Dec. 20 (“Having considered the arguments and evidence, we are persuaded at this stage of the proceeding that Petitioner has sufficiently shown that the limitations of claim 65 are taught or suggested by, or would have been obvious in view of, the combined teachings of Levin and Shah.”). Moreover, contrary to Patent Owner’s argument, the fact that the Decision may not recite the words “used together” does not indicate that we overlooked and/or misapprehended Patent Owner’s argument. See Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017) (stating “this court has said on multiple occasions that failure to explicitly discuss every issue or every piece of evidence does not alone establish that the tribunal did not consider it”) (citing cases).” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Decided for petitioner

    “We did not overlook and/or misapprehend Patent Owner’s argument; rather, we considered it and found it unpersuasive. See Dec. 13 (stating “on this record, we find that Levin’s disclosure of multiple baits would include multiple bait sets”). In particular, we found that Levin teaches the use of multiple bait sets, not one bait set as argued by Patent Owner. See id. Furthermore, Patent Owner’s argument that all of the baits in Levin were “designed in precisely the same way” was based on Levin’s statement that “[b]aits were designed in a tiling fashion with minimal overlap to span the entire protein-coding region of each transcript.” See Prelim. Resp. 28 (citing Ex. 1010, 2). However, that statement suggests the design of multiple different baits that would include multiple different bait sets.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 9,340,830
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Nov 12, 2015 · IPR2014-00304 · APJ James B Arpin · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its final decision that claims 24 and 25 are unpatentable as obvious over Gass.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “selected sequence of fastening” from claim 24 during prosecution necessarily alters the construction of additional terms in the claims. Reh’g Req. 3–6 (discussing “fastening location,” “predetermined sequence,” “fastening monitor,” and “sequence output”). With respect to these claim interpretation arguments, however, Patent Owner again fails to identify where each of these arguments was raised previously.1 Moreover, with respect to the effect of any such disavowal on the interpretation of other claim terms, we could not have misapprehended or overlooked arguments that Patent Owner did not raise previously. Even if we addressed this new argument, as Patent Owner urges we must under Microsoft Corp. v. Proxyconn, Inc., it fails. Patent Owner asserts that its clear disavowal may be drawn from a comparison of claim 1 with claims 7 and 11 and the addition of claim 46, which became challenged claim 24, “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of the claim as 1 New arguments may not be raised at an oral hearing. Patent Owner’s challenge during the oral hearing to Petitioner’s allegedly late submission of a dictionary definition of “location” does not make these arguments part of the record. Reh’g Req. 3–4 (citing Tr. 43:6–18). Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013). Patent Owner also argues that governing case law requires that we consider the prosecution history. Patent Owner notes that, in Microsoft Corp. v. Proxyconn, Inc., the Federal Circuit observed that the Board “should also consult the patent's prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Nos. 2014-1542, 2014-1543, 2015 WL3747257 at *3 (Fed. Cir. Jun. 16, 2015). In this regard, Patent Owner argues that we are bound by the Examiner’s claim construction resulting from Applicants’ disavowal of scope during prosecution. Reh’g Req. 7–8 (citing Tr. 55:17–18); see Tr. 55:13–24. As the prosecution history makes clear, Patent Owner proffered a new claim 46 during prosecution “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening,” but not in response to any Examiner request (Ex. 1006, 17) unlike the situation in Tempo Lighting, Inc. v. Tivoli, LLC. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Thus, we are not persuaded that Patent Owner has identified a claim construction resulting from the prosecution history that constitutes a “deal” between Applicants and the Examiner, binding on this panel. See Reh’g Req. 3 (“A deal was made to secure allowance of the claims by specifically amending them to only read on the ‘predetermined sequence program’ embodiment of the specification that requires a predetermined sequence of fastening among locations 52a–52c.”; emphasis added). Even if we were to accept Patent Owner’s arguments that a clear disavowal of claim scope exists in the prosecution history of the ’573 patent, as the Federal Circuit observed, in such a situation, “the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, 742 F.3d at 978. Therefore, we are not persuaded that our consideration of the prosecution history was contrary to governing precedent, as argued by Patent Owner, such that it amounted to an abuse of discretion.” slip op. at 5

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2032, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 38, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point.  Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 7

  Claim construction
  Patents in suitUS 6,763,573
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Nov 12, 2015 · IPR2014-00305 · APJ James B Arpin · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left in place its final decision that claims 22–28 were unpatentable under § 103(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “claims 7 and 11 and the addition of claim 46, which became challenged claim 24 of the parent patent to the ’831 patent, Patent No. US 6,763,573 B2 (Ex. 1001, “the ’573 patent”), “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of claim 22 of the ’831 patent, as Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013).” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2033, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 39, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point. Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 8

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

    “We agree with Petitioner that the broadest reasonable interpretation of “fastening location” is not limited to a single opening, but may encompass a position or site where fastening occurs when assigned its ordinary meaning. See Ex. 1041, 3. Having to make such a distinction between a single opening and a fastening site with more than one opening is negated, however, by the open transitional phrase, [“comprising,”] in claim 22. Because claim 22 uses the open transitional phrase “comprising,” additional fastening operations between the first and second fastening operations are not excluded, as long as the predetermined sequence between the first and second locations is maintained. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the patent claim context, the term ‘comprising’ is well understood to mean ‘including but not limited to.’”); Ex. 1001, 12:13–16 (contemplating a “plurality” of fastening locations, but [“at least”] first and second fastening locations). Final Dec. 8 (emphasis added). This interpretation does not change the order of the recited operations, but acknowledges that other operations may be encompassed within the scope of the challenged claims. Thus, we have not abused our discretion by misapplying governing precedent. In addition, Patent Owner fails to identify where it made these arguments previously in its Patent Owner Response. Because Patent Owner has not raised these arguments in its Patent Owner Response, we could not have misapprehended or overlooked an argument that Patent Owner did not raise previously.” slip op. at 9

  Claim construction
  Patents in suitUS 7,062,831
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Aug 29, 2014 · IPR2014-00304 · APJ Susan L C Mitchell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 24 and 25 based on Petitioner’s reasonable-likelihood showing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION When rehearing a decision on petition, the Board reviews 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) . A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “In any event, we are not persuaded that the prosecution history of the ’573 patent shows that Patent Owner affirmatively relinquished claim scope that would encompass a “fasten it wrong and fix it later” system. We did consider the Examiner’s statement for allowance (see Ex. 1007, 3–4; Prelim. Resp. 12–13, 33–34, 36) and the general statement in the Specification of the ’573 patent concerning the goal of providing “a more reliable and more foolproof way to conduct fastening operations” (see Ex. 1001, col. 2, ll. 39-40, Abstract; Prelim. Resp. 6, 26–27), along with Figure 4 and its description, the meaning of the claim term “indicating,” and the predetermined sequence program embodiment. Dec. 25. We are unpersuaded on this record, however, that Patent Owner affirmatively surrendered claim scope that would encompass a “fasten it wrong and fix it later” system.” slip op. at 4

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

    “Id. at 4 (citation omitted). In our decision to institute inter partes review, we addressed these arguments, but found them unpersuasive. See Dec. 10–16 (addressing claim construction). We stated that, as Patent Owner admitted, Figure 4 of the ’573 patent and its description “is an express teaching that it is possible to incorrectly insert fasteners in the fastening locations 52a-52c.” Id. at 11. We also stated that the originally-filed claims and the ordinary meaning of the claim term “indicating” “does not limit or negate the admittedly express teaching of a ‘fasten it wrong and fix it later’ system, as depicted in Figure 4 and described in the ’573 patent.” Id. at 12. Finally, as we noted in the decision on institution and as Patent Owner expressly acknowledges, the Specification of the ’573 patent uses the permissive “may” when referring to the electronic controller as including the predetermined sequence program embodiment. Req. Reh’g. 4; Dec. 5.” slip op. at 3

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

    “2 Because we did not institute inter partes review on any ground based on the Wilhelm reference, we need not address Patent Owner’s argument as to this reference. See Req. Reh’g 13.” slip op. at 5

  Claim construction§ 102 anticipation
  Patents in suitUS 6,763,573
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Aug 29, 2014 · IPR2014-00305 · APJ Susan L C Mitchell · IPR · Rehearing

  The Board denied Wildcat’s rehearing request, finding no abuse of discretion in instituting review of claims 22–28 based on Gass.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION When rehearing a decision on petition, the Board reviews 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). A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “In any event, we are not persuaded that the prosecution history of the ’831 patent shows that Patent Owner affirmatively relinquished claim scope that would encompass a “fasten it wrong and fix it later” system. We did consider the Examiner’s statement for allowance (see Ex. 1007, 3–4; Prelim. Resp. 12–14) and the general statement in the Specification of the ’831 patent concerning the goal of providing “a more reliable and more fool-proof way to conduct fastening operations” (see Ex. 1001, col 2., ll. 44-45, Abstract; Prelim. Resp. 6, 23), along with Figure 4 and its description, the meaning of the claim term “providing,” and the predetermined sequence program embodiment. Dec. 22. We are unpersuaded on this record, however, that Patent Owner affirmatively surrendered claim scope that would encompass a “fasten it wrong and fix it later” system or method.” slip op. at 4

  • Strike new argumentNew argument disregardedDecided for petitioner

    “To the extent that Patent Owner argues that it “affirmatively gave up” the ability to have a claim with the scope to cover a “fasten it wrong and fix it later” system (see Req. Reh’g 1, 4), that argument does not appear to have been made in Patent Owner’s Preliminary Response.1 A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented and developed in the petition. See 37 C.F.R. § 41.104(b)(4) (stating “[t]he petition must specify where each element of a challenged claim is found in the prior art patents or printed publications relied upon”). We could not have overlooked or misapprehended arguments or evidence not presented and developed by Patent Owner in the first instance.” slip op. at 3

  Claim construction
  Patents in suitUS 7,062,831

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.