- C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing
The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 9,365,292 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 8, 2018 · IPR2017-01273 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show an abuse of discretion in finding claims 1–6 indefinite in scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 9,434,476 - Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Rehearing deniedPTAB · Feb 21, 2018 · IPR2016-01264 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1–3, 5–7, and 9 unpatentable as obvious over Zhang, Ding, and Sun.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD “A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id. “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“PO Resp. 55. In this argument, Patent Owner is either (A) implying that Zhang teaches upper surfaces only of pure tantalum, which is erroneous (see Ex. 1004, 3:50–62)) or (B) talking past (and not rebutting) Petitioner’s asserted combination of prior art teachings, which relies on Zhang’s explicit teaching of nitrogen in the upper surface. In our Decision, we reasonably interpreted Patent Owner to be arguing the former (i.e., that Zhang exclusively teaches or requires pure tantalum in the upper surface), because the latter would be non-responsive to the obviousness challenge as raised by Petitioner.” slip op. at 5
§ 103 obviousnessPatents in suitUS 6,538,324 - Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Rehearing deniedPTAB · Feb 21, 2018 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–3, 5–7, and 9 and proposed substitute claims 11 and 12 unpatentable as obvious over Ding in view of Zhang.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD “A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id. “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree, as Patent Owner argues, that Zhang teaches a “desirability” of, and not a requirement for, an upper surface of pure tantalum. But, it cannot reasonably be disputed that Zhang also teaches a desirability for nitrogen in the upper surface. Ex. 1004, 3:57–62; see also id. at Abstract (“The nitrogen percentage for the second portion (32) is lower than the nitrogen atomic percentage for the first portion (22).”). It is this latter teaching, and not that of pure tantalum, on which Petitioner’s obviousness challenge was premised. See, e.g., Pet. 14–15 (arguing that Zhang’s upper surface includes nitrogen and a person of ordinary skill in the art “would have found it obvious to modify the top tantalum film in Ding to purposely add a small content of nitrogen therein, as taught in Zhang”).” slip op. at 5
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Our Decision states: As discussed above, all of the challenged claims are unpatentable as obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)— that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57–62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1– 6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. Final Dec. 33–34. Thus, we considered every limitation of proposed claims 11 and 12, including the limitations they would introduce relative to claim 5, and determined that proposed claims 11 and 12 claim subject matter that would have been obvious over Ding and Zhang.” slip op. at 8
§ 103 obviousnessPatents in suitUS 6,538,324 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00264 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution because the petitions relied on the same or substantially the same prior art previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD OF REVIEW 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 if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [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. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office. b. The Same or Substantially the Same Prior Art and Arguments Petitioner’s identification of “primary” and “secondary” references and its application of the teachings of these references to the challenged claims are arguments. In particular, Petitioner argues that “by beginning with Reed as the primary reference instead of Nishida, the [person of ordinary skill in the art’s (POSA’s)] motivation to combine the references is presented differently.” ’263 Req. 11 (emphasis added); ’264 Req. 10. As noted above, it was not necessary for us to determine whether those arguments also were the same or substantially the same as arguments previously presented to the Office. Nevertheless, to the extent that Petitioner contends that these arguments are not the same or substantially the same as its previous arguments because Petitioner relied on a different primary reference, the Board previously has held that the order in which art is applied in a utility application is not necessarily material. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“[we] may not authorize an inter partes review to be instituted unless [we] determine[] that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a). Thus, we evaluate Petitioner’s reasonable likelihood of prevailing in showing the unpatentability of challenged claims on a claim– by-claim basis, upon consideration of the arguments and evidence presented in the Petitions. A petitioner’s arguments and evidence presented in other petitions with respect to other challenged claims of other patents is largely irrelevant to the institution decision in a different petition presenting different arguments and evidence for similar limitations in different challenged claims of a different patent.” slip op. at 8
Discretionary denialPatents in suitUS 8,042,288 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00263 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution under § 325(d) because the petitions presented the same or substantially the same prior art and arguments previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [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. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office.” slip op. at 4
Discretionary denialPatents in suitUS 8,042,288 - PTAB · Mar 30, 2017 · IPR2016-01331 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied rehearing of the institution denial because Petitioner had not shown that the prior art disclosed an interlayer insulating film as required by the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). And, because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition, in relevant part, merely states: Ting[1] discloses the semiconductor device 52 in FIG. 5 comprises an interlayer insulating film (dielectric layer 25) including upper and lower regions 26 and 27 “formed to insulate the underlying layers from the subsequent conducting layer.” Ex. 1006, 7:4–12, FIG. 5. Pet. 25–26. Although the Petition explains, and offers evidence to show, the insulating aspect of Ting’s dielectric layer 25, it does not explain how or why Ting’s dielectric layer might constitute an interlayer insulating film within the meaning of the challenged claims. At best, the Petition implies that an “interlayer insulating film” is any structure that provides any insulation between conducting layers. The problem with such a construction is that it would be incomplete because it does not specify whether such a film may also be located or buried within one of the conducting layers.2 This was fatal because such is the structure of the very art that Petitioner asserted. More specifically, Ting’s dielectric layer 25 is both between conducting layers 21 and 36 and within the same” slip op. at 4
- BurdenDecided for patent owner
“It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition, in relevant part, merely states: Ting[1] discloses the semiconductor device 52 in FIG. 5 comprises an interlayer insulating film (dielectric layer 25) including upper and lower regions 26 and 27 “formed to insulate the underlying layers from the subsequent conducting layer.” Ex. 1006, 7:4–12, FIG. 5. Pet. 25–26. Although the Petition explains, and offers evidence to show, the insulating aspect of Ting’s dielectric layer 25, it does not explain how or why Ting’s dielectric layer might constitute an interlayer insulating film within the meaning of the challenged claims. At best, the Petition implies that an “interlayer insulating film” is any structure that provides any insulation between conducting layers. The problem with such a construction is that it would be incomplete because it does not specify whether such a film may also be located or buried within one of the conducting layers.2 This was fatal because such is the structure of the very art that Petitioner asserted. More specifically, Ting’s dielectric layer 25 is both between conducting layers 21 and 36 and within the same” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“On rehearing, Petitioner now argues: “At least th[e] portion of [Ting’s] dielectric [layer] 25 that is not buried provides electrical insulation between layers in a vertical direction under the plain meaning of ‘interlayer insulating film.’” Reh’g Req. 13. This is a new argument. In the Decision denying institution, we noted that such an argument had not been made. We noted the following: [I]n Figure 5—the embodiment asserted by Petitioner— dielectric layer 25 “has a lower region 27 comprised of silicon dioxide (SiO2) and an upper region 26 comprised of silicon nitride (Si2N4).” Ex. 1006, 7:9–12. Petitioner does not assert that upper region 26 alone constitutes an “interlayer insulating film” within the meaning of claims 18 and 35. See Pet. 25–27. Dec. 11 n.5. We did not overlook the argument that upper region 26 alone constitutes an interlayer insulating film. Rather, the argument was not made.” slip op. at 5
Nonecites Phillips - PTAB · Mar 13, 2017 · IPR2016-01367 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied rehearing because the Petitioner did not show that the prior art disclosed an interlayer insulating film located between but not within other layers, as claims 18, 19, 30–32, 34–36, 47–49, and 51 …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). And, because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“interlayer insulating film.” We denied the Petition because Petitioner had not shown how the asserted prior art disclosed or taught this limitation. Dec. 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner proposed an express construction for “an interlayer insulating film.” Specifically, Patent Owner argued that it means “an insulating film located between but not within layers.” Prelim. Resp. 9. We largely agreed with Patent Owner, but we added the word “other,” yielding a construction as follows: an insulating film located between but not within other layers. Dec. 9. We determined that our construction was supported fully by intrinsic evidence and additionally by extrinsic evidence. See id. at 7–10. Based on our construction, we determined that Petitioner had not shown how the prior art discloses or teaches “an interlayer insulating film,” as required by all the challenged claims. Id. at 12–13.” slip op. at 3
- BurdenDecided for patent owner
“It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition states: Wollesen discloses an interlayer insulating film (e.g., dielectric layer 9) formed on the semiconductor substrate (1).3 Ex. 1006, FIG. 1. The dielectric layer 9 is an “interlayer” insulating film, as it is an electrically insulating film positioned between the conducting layers 8 and 10 in the semiconductor device. Ex. 1005, ¶ 65.” slip op. at 4
Claim constructioncites Phillips - Hologic, Inc. v. Enzo Life Sciences, Inc.Rehearing deniedPTAB · Mar 13, 2017 · IPR2016-00822 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place because it found sufficient evidence that the non-patent references were prior art for institution purposes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner has made a sufficient showing that each of these references qualify as prior art printed publications. For example, Fish appears to be an article from the journal Arthritis and Rheumatism and bears a “March 1981” publication date on the cover of the volume as well as the cover page of the article. Ex. 1006, cover page and 534. Sato appears to be an article from the journal Radiation Research and bears a publication date of 1981. Ex. 1034, 646. Gilham appears to be an article published in a book titled Immobilized Biochemicals and Affinity Chromatography, which includes a copyright date of 1974 and an indication that it contains most of the papers presented in a “Symposium on Affinity Chromatography and Immobilized Biochemicals” held November 7–9, 1973. Ex. 1019, second page after cover (“Library of Congress Cataloging in Publication Data”). VPK appears to be an article from the journal Experimental Cell Research and is dated October 1982. Ex. 1008, cover page. Noyes appears to be an article from the journal Cell and is dated July 1975. Ex. 1007, 301. Finally, Ramachandran appears to be an article from the journal Biotechnology and Bioengineering and is dated 1975. Thus, each of these references bears a date prior to the earliest possible effective filing date for the challenged claims (i.e., Jan. 27, 1983). See Ex. 1001, 1:19; 35 U.S.C. § 120. Moreover, the references are either journal articles or excerpts from a book, and thus appear to have been publicly disseminated. Petitioner has made sufficient showing that these documents qualify as prior art printed publications. After institution, Patent Owner may, if it chooses to do so, continue to challenge the sufficiency or admissibility of the evidence. See 35 U.S.C. § 311(b); 37 C.F.R. § 42.64(b).” slip op. at 4
- ExcludeNot reached
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5
§ 102 anticipationPatents in suitUS 7,064,197 - Hologic, Inc. v. Enzo Life Sciences, Inc.Rehearing deniedPTAB · Mar 10, 2017 · IPR2016-00820 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied Enzo’s rehearing request, leaving institution on all petition grounds in place because it found no abuse of discretion in its treatment of the references as prior art for institution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6 (emphasis added). Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,6 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a post-institution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter partes review are not due until April 24, 2017 (Paper 19), with any evidentiary ruling occurring thereafter. Typically, panels rule on motions to exclude in their final written decisions.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner has made a sufficient showing that each of these references qualify as prior art printed publications. For example, Fish appears to be an article from the journal Arthritis and 1 Falk Fish, et al., “A Sensitive Solid Phase Microradioimmunoassay For Anti-Double Stranded DNA Antibodies,” Arthritis and Rheumatism, Vol. 24, No. 3, 534–43 (March 1981). 2 P. T. Gilham, “Immobilized Polynucleotides and Nucleic Acids,” Immobilized Biochemicals and Affinity Chromatography, 173–85 (1974). 3 A. C. Van Prooijen-Knegt, et al. “In Situ Hybridization of DNA Sequences in Human Metaphase Chromosomes Visualized by an Indirect Fluorescent Immunocytochemical Procedure,” Experimental Cell Research, Vol. 141, 397–407 (Oct. 1982). 4 Barbara E. Noyes, et al., “Nucleic Acid Hybridization Using DNA Covalently Coupled to Cellulose,” Cell, Vol. 5, 301–10 (July 1975). 5 K. B. Ramachandran, et al., “Effects of Immobilization of the Kinetics of Enzyme-Catalyzed Reactions. I. Glucose Oxidase in a Recirculation Reactor System,” Biotechnology and Bioengineering, Vol. XVIII, 669–84 (1976). Rheumatism and bears a “March 1981” publication date on the cover of the volume as well as the cover page of the article. Ex. 1006, cover page and 534. Gilham appears to be an article published in a book titled Immobilized Biochemicals and Affinity Chromatography, which includes a copyright date of 1974 and an indication that it contains most of the papers presented in a “Symposium on Affinity Chromatography and Immobilized Biochemicals” held November 7–9, 1973. Ex. 1019, second page after cover (“Library of Congress Cataloging in Publication Data”). VPK appears to be an article from the journal Experimental Cell Research and is dated October 1982. Ex. 1008, cover page. Noyes appears to be an article from the journal Cell and is dated July 1975. Ex. 1007, 301. Finally, Ramachandran appears to be an article from the journal Biotechnology and Bioengineering and is dated 1975. Thus, each of these references bears a date prior to the earliest possible effective filing date for the challenged claims (i.e., Jan. 27, 1983). See Ex. 1001, 1:19; 35 U.S.C. § 120. Moreover, the references are either journal articles or excerpts from a book, and thus appear to have been publicly disseminated. Petitioner has made sufficient showing that these documents qualify as prior art printed publications. After institution, Patent Owner may, if it chooses to do so, continue to challenge the sufficiency or admissibility of the evidence. See 35 U.S.C. § 311(b); 37 C.F.R. § 42.64(b).” slip op. at 3
§ 102 anticipationPatents in suitUS 7,064,197
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.