- SNF S.A. v. Solenis Technologies, L.P.Rehearing deniedPTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing
The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › KSR rationalesNot reached
“Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Mixed
“art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,644,320 - Bluecatbio Ma Inc. v. Yantai Ausbio Laboratories Co., Ltd.Rehearing deniedPTAB · Feb 11, 2021 · PGR2020-00051 · APJ Elizabeth M Roesel · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked evidence or improper burden shifting in its decision to institute review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“persuaded that we misapprehended or overlooked either a deficiency in Petitioner’s evidence or Patent Owner’s rebuttal arguments. Nor are we persuaded that we abused our discretion in determining that the Petition meets the threshold for institution of inter partes review. B. The Board did not Improperly Shift the Burden of Proof to Patent Owner” slip op. at 5
- BurdenDecided for petitioner
“as improper burden-shifting. Our statements identify arguments that were not made by Patent Owner in the Preliminary Response or by Dr. Katz in his declaration. After reviewing the record again, we determine that the statements are accurate. We did not shift the burden of persuasion or the burden of production to Patent Owner. Immediately following the first sentence quoted above, the Decision states: “[o]n this record, Petitioner’s video (Ex. 1012) is sufficient to show that at least the main part of the liquid expelled from the reaction vessel unit is driven into the drain of the Gyro Washer.” Dec. 26. Following the second sentence quoted above, the Decision states: We are mindful that the burden of proof is on Petitioner, not Patent Owner. We have considered Patent Owner’s criticisms of Petitioner’s evidence, and although they cast some doubt on Petitioner’s contentions, we determine that, on this preliminary record, Petitioner’s experimental and testimonial evidence is sufficient to meet the threshold for institution of post-grant review. Dec. 27. The Decision correctly placed the burden on Petitioner to show that the claim limitations are met by the Gyro Washer.” slip op. at 5
NonePatents in suitUS 10,338,063 - Shieldmark, Inc. v. Clifford A. LoweRehearing deniedPTAB · Sep 4, 2020 · PGR2019-00058 · APJ Sheldon M Mcgee · PGR · Rehearing
The Board accepted the late rehearing request but denied rehearing, leaving in place denial of PGR because Petitioner failed to establish the patent's PGR eligibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Before considering the merits of a post grant review challenge, we must first determine whether the subject patent is eligible for post grant review. It is Petitioner’s burden to establish such eligibility, a threshold that Petitioner recognizes by devoting an entire section of its Petition arguing why it believes the ʼ664 patent is eligible for post-grant review (Pet. 28–43) prior to detailing its specific challenges (id. at 43–62). Petitioner’s argument in the Request suggests that, to appreciate the full scope of its eligibility arguments presented at pages 33–36 of its Petition, we were to mine other portions of the Petition (i.e., pages 53–55) for additional lack of enablement and written description arguments for a “width of the lateral edge portion” limitation. We, however, are not required to undertake such efforts on Petitioner’s behalf. See DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); Dec. 23 (“Because Petitioner has failed to demonstrate that the ʼ664 patent is eligible for post-grant review, we need not address Petitioner’s specific unpatentability challenges to claims 1–6, 10–16, 20–22 thereof. Pet. 43–62.”).” slip op. at 6
NonePatents in suitUS 10,214,664 - BASF Corporation v. Ingevity South Carolina, LLCRehearing deniedPTAB · Oct 17, 2019 · IPR2019-00202 · APJ Christopher L Crumbley · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because BASF did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“when rehearing a decision on a petition to institute trial the Board “will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006) (quoting Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we reviewed BASF’s arguments and submitted evidence, and concluded that the record lacked sufficient support for these three links in BASF’s logical chain. First, we found that BASF had not provided evidence “why a person of skill in the art would have been led by Park’s strength requirement for an air intake system to select Formulation D” for the evaporative emissions systems that are the focus of the ’844 patent. Dec. 17–18. Second, we found no reason to conclude that, even if a person of ordinary skill in the art would have selected Park’s Formulation D to use in an evaporative emissions system, the resulting honeycomb would have the 73.8% voidages that Park considers desirable. Id. at 18–19. Finally, we found unsupported Mr. Lyons’ testimony that BAX 1500 carbon was the highest-capacity carbon known in the art at the time of the invention. Id. at 19–20. Each of these independent findings was sufficient to lead us to conclude that BASF had not shown that a system resulting from the use of Park’s honeycomb filter in an evaporative emissions system would necessarily have an IAC below 35 g/L, as required by the claims. Id. at 20–21. As such, we found that BASF had not established a reasonable likelihood that any claim of the ’844 patent was unpatentable.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“insufficient to support a reasonable likelihood of inherency on this record. To justify a conclusion of inherency in an obviousness inquiry, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). In other words, even were we to accept BASF’s contentions that a person of ordinary skill would have formed a filter using Park’s Formulation D and having 73.8% voidages, we would also have to conclude that the artisan would have had reason to select a carbon that necessarily would result in an IAC below 35 g/L. And, as we stated in our Decision, the reason for selecting a particular carbon cannot be based on the very IAC property that is allegedly inherent. Dec. 14 (“properties that are inherent—and, therefore, possibly unknown—cannot be used as the basis for this motivation unless they were expected.”) (citing Honeywell Int’l v. Mexichem Amanco Holding, 865 F.3d 1348 (Fed. Cir. 2017)). BASF’s Petition discussed two available carbons, BAX 1100 and BAX 1500, because they were referenced in the specification of the ’844 patent. Pet. 23. But there is insufficient evidence in the record why these were the two carbons that a person of ordinary skill in the art would have found it obvious to select from among the carbons that were available at the time of the invention, and the record is silent as to whether other carbons, if selected, would have necessarily resulted in the same IAC or lower. As we observed in our Decision, all that BASF presented on this point was the unsupported testimony of its expert that BAX 1500 had “the highest possible IAC known at the time of the ’844 patent.” Dec. 19–20 (citing Ex. 1003 ¶ 111). Again, BASF cites our rules, contending that we erred by not viewing a disputed issue of material fact in the light most favorable to it. Req. Reh’g 14. In particular, BASF notes our statement in the Decision acknowledging that “BAX 1500 certainly has the highest IAC of any carbon disclosed in the ’844 patent,” and argues that this alone is “evidence in the record that BAX-1500 was the highest-capacity carbon available at the time.” Id. (citing Dec. 20). But the disclosure of two particular carbons in the record says nothing about the existence—or lack thereof—of other carbons. In other words, as we stated in the Decision, “on this record we cannot extrapolate beyond [the] disclosure to all activated carbons known at the time of the invention.” Dec. 20. The issue is not one of viewing a disputed issue of fact in the light most favorable in BASF; rather, it is an issue of BASF asking us to conclude from the disclosure of two carbons in the ’844 patent that these are the carbons that a person of ordinary skill in the art, upon reading Park, would have selected. The record is insufficient to reach such a conclusion, and we did not err in deciding so.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“would have selected Park’s Formulation D when creating a filter for use as a subsequent adsorption volume, BASF contends that we misapprehended its evidence supporting such a selection. Id. at 9–12. BASF notes its argument was that a person of ordinary skill in the art would have selected Formulation D “because it is the only formulation that meets Park’s explicit requirements for the air intake application: a carbon content of 25–35% by weight and an axial crushing strength from 1200–1600 psi.” Id. at 10 (citing Pet. 33–34). But BASF’s argument misses the point of our conclusion in the Decision, which was that the record contained no evidence that the requirements of an air intake application, as discussed by Park, were the same as the requirements of the evaporative emissions application that is the focus of the ’844 patent and the primary prior art references in each combination. In other words, while a person of ordinary skill in the art might have been led to Formulation D if trying to create a filter for an air intake system, the record contains no persuasive evidence that the same is true of the artisan creating an evaporative emissions system. Indeed, as we noted in the Decision, the only evidence on this point is to the contrary, and comes from Ingevity’s expert witness Dr. Ritter. As we noted, “Dr. Ritter testifies that evaporative emission systems and air intake systems are designed for use with different vapor concentrations and, more importantly, different flow rates.” Dec. 17 (citing Ex. 2001 ¶¶ 43–44).” slip op. at 5
§ 102 anticipation§ 103 obviousness - PTAB · Oct 7, 2019 · IPR2018-00139 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Final Written Decision misapprehended or overlooked any matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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. A request for rehearing, therefore, 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
NonePatents in suitUS 8,146,798 - Commvault Systems, Inc. v. Realtime Data LLCRehearing deniedPTAB · Jul 18, 2018 · IPR2017-02178 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution because Medina ’93 did not teach or suggest the required page-by-page binary choice between compression methods.
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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“persuasive of an abuse of discretion in failing to institute inter partes review. Under this argument, Petitioner adopts our construction of claim 1 and maintains its definition of the page of Medina ’93 as the data block of claim 1. Req. 14. Under the construction we applied in our Institution Decision, claim 1 requires a binary choice between compressing a given data block using the single data compression encoder and compressing that data block using the one or more content-dependent data compression encoders. Dec. 11–13. Thus, Petitioner must show that Medina ’93 teaches or suggests a binary choice between two types of compression to be applied on a page-by-page basis. Even if Petitioner is correct that it is possible, under the right circumstances, for the system of Medina ’93 to operate in a way that results in compressing an entire page of text or in compressing an entire page of non-text data, Medina ’93 does not teach or suggest the required binary choice between those two outcomes, because its system is capable of compressing portions of a page using one method and other portions of the same page using a different method. Ex. 1004, 5:16–60, Fig. 4. Thus, we are not persuaded that Petitioner has shown that we abused our discretion by denying institution of inter partes review on the ground of obviousness over Medina ’93.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,054,728 - PTAB · Jan 11, 2018 · IPR2016-01102 · APJ Christopher L Crumbley · IPR · Rehearing
Petitioners’ rehearing requests concerning joinder of claim 7 were dismissed as moot because claim 1 was not proven unpatentable and claim 7’s grounds depended on claim 1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision of the Board may file a request for rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[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.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“7 of the ’772 patent, which depends from claim 1 that is at issue in the instituted inter partes review IPR2016-00084. In our Decision denying joinder of claim 7, we determined that the joinder Petitions had established a reasonable likelihood of prevailing as to claim 7, based on Petitioners’ unpatentability arguments as to claim 1 made in IPR2016-00084. IPR2016- 01059, Paper 19, 10–12. Nevertheless, we declined to exercise our discretion to grant joinder. Id. at 15–18. It is of this latter determination that Petitioners request rehearing.” slip op. at 2
NonePatents in suitUS 5,665,772 - PTAB · Jan 11, 2018 · IPR2016-01059 · APJ Christopher L Crumbley · IPR · Rehearing
The Board dismissed Petitioners’ rehearing requests as moot because claim 1 was not proven unpatentable and no separate unpatentability ground was advanced for claim 7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision of the Board may file a request for rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[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.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“7 of the ’772 patent, which depends from claim 1 that is at issue in the instituted inter partes review IPR2016-00084. In our Decision denying joinder of claim 7, we determined that the joinder Petitions had established a reasonable likelihood of prevailing as to claim 7, based on Petitioners’ unpatentability arguments as to claim 1 made in IPR2016-00084. IPR2016- 01059, Paper 19, 10–12. Nevertheless, we declined to exercise our discretion to grant joinder. Id. at 15–18. It is of this latter determination that Petitioners request rehearing.” slip op. at 2
NonePatents in suitUS 5,665,772 - PTAB · Jan 11, 2018 · IPR2016-01103 · APJ Christopher L Crumbley · IPR · Rehearing
The Board dismissed Petitioners’ rehearing requests as moot because claim 1 was not proven unpatentable, leaving no basis to find dependent claim 7 separately unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedOther
“A party dissatisfied with a decision of the Board may file a request for rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[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.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“7 of the ’772 patent, which depends from claim 1 that is at issue in the instituted inter partes review IPR2016-00084. In our Decision denying joinder of claim 7, we determined that the joinder Petitions had established a reasonable likelihood of prevailing as to claim 7, based on Petitioners’ unpatentability arguments as to claim 1 made in IPR2016-00084. IPR2016- 01059, Paper 19, 10–12. Nevertheless, we declined to exercise our discretion to grant joinder. Id. at 15–18. It is of this latter determination that Petitioners request rehearing.” slip op. at 2
NonePatents in suitUS 5,665,772 - PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner has not demonstrated an abuse of discretion. Accordingly, we deny the request for rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,969,539
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.