- 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing deniedPTAB · Dec 30, 2019 · IPR2019-00152 · APJ Neil T Powell · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and maintained institution of review of claims 1–20, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The applicable standard for a request for rehearing of the Institution Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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 in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denialDecided for petitioner
“Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a significantly larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00151, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00151, Paper 10, 3, 28 (noting a reasonable likelihood of prevailing on challenge of four claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’901 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Petitioner failed to explain why a person of ordinary skill in the art would have placed certain components in certain relative positions, as well as how those components would have worked in those positions. The Institution Decision addressed those arguments. Inst. Dec. 25–27. The Rehearing Request does not reiterate or further explain the arguments from the Preliminary Response that Petitioner failed to explain why a person of ordinary skill in the art would have arranged the components in a certain way, or how such an arrangement would have worked. Instead, the Rehearing Request argues that the arrangement of Picard’s and Ishihara’s components proposed by Petitioner does not meet the claims. Pages 32–36 of the Preliminary Response simply did not make such an argument. For that reason alone, we find unpersuasive the Rehearing Request’s assertion that we overlooked or misapprehended arguments regarding the “illogical arrangement” of certain components. Reh’g Req. 9–13. Additionally, even if the Preliminary Response had made the arguments presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 20–23. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 22, 25. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,615,901 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing deniedPTAB · Dec 30, 2019 · IPR2019-00151 · APJ Neil T Powell · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and maintained institution of inter partes review of claims 15–30, finding no error in its institution decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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 in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denialDecided for petitioner
“Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00152, Paper 3, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28 (noting reasonable likelihood of prevailing on challenge of four claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00152, Paper 11, 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner does not persuade us that we misapprehended the law. Having considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. . Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’448 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 18–21. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 20–21, 23–24. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them. For these reasons, we are not persuaded that it was an abuse of discretion to institute review of claim 15 based on the arrangement of components proposed by 1 Although Patent Owner’s annotated version of Picard’s Figure 8 does not identify Picard’s lens 15 as part of the alleged optical system, the Petition asserts that it forms part of the optical system and serves to focus the plurality of incident light beams. Pet. 23–24. Petitioner. Patent Owner’s argument rests on a claim interpretation that requires that the claimed “optical system” be positioned, in its entirety, downstream of the claimed “illumination unit.” At this stage, neither party has fully addressed the correctness of Patent Owner’s claim interpretation. We, therefore, do not decide at this stage whether Patent Owner’s claim interpretation is correct and make no final determination as to whether Petitioner’s proposed arrangement of components falls within the scope of the claim.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,638,448 - Foundation Medicine, Inc. v. Guardant Health, Inc.Rehearing deniedPTAB · Dec 20, 2019 · IPR2019-00637 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show it had adequately supported the claimed ligation efficiency or a specific motivation to modify Schmitt.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, 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. When rehearing a decision on a petition, 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 an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“ligation efficiency. Indeed, we expressly acknowledged it. See Dec. 14 (noting Petitioner’s argument that “tagging ‘at least 20% of the cfDNA molecules’ would have been obvious because ligation efficiency ‘could be improved using a variety of techniques’”). After reviewing Petitioner’s evidence and argument, however, we were not persuaded that it was sufficient. Id. Even if the relevance of ligation efficiency was well known to a person of ordinary skill in the art for the reasons stated by Petitioner, the Petition still fails to provide a specific motivation to modify Schmitt. As explained in the Decision, “even if techniques were known that could have improved ligation efficiency, Petitioner has not shown sufficiently why a person of ordinary skill in the art would have modified Schmitt to tag ‘at least 20%’ of the DNA molecules.” Dec. 15; see also Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). That is, Petitioner’s motivation is “generic and bears no relation to any specific combination of prior art elements.” (Fed. Cir. 2012). As the Federal Circuit has explained, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,902,992 - Foundation Medicine, Inc. v. Guardant Health, Inc.Rehearing deniedPTAB · Dec 20, 2019 · IPR2019-00636 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show that Schmitt and the asserted obviousness rationale taught or motivated the claimed ligation efficiency.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, 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. When rehearing a decision on a petition, 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 an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“ligation efficiency. Indeed, we expressly acknowledged it. See Dec. 14 (noting Petitioner’s argument that “tagging ‘at least 20% of the cfDNA molecules’ would have been obvious because ligation efficiency ‘could be improved using a variety of techniques’”). After reviewing Petitioner’s evidence and argument, however, we were not persuaded that it was sufficient. Id. Even if the relevance of ligation efficiency was well known to a person of ordinary skill in the art for the reasons stated by Petitioner, the Petition still fails to provide a specific motivation to modify Schmitt. As explained in the Decision, “even if techniques were known that could have improved ligation efficiency, Petitioner has not shown sufficiently why a person of ordinary skill in the art would have modified Schmitt to tag ‘at least 20%’ of the DNA molecules.” Dec. 15; see also Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). That is, Petitioner’s motivation is “generic and bears no relation to any specific combination of prior art elements.” (Fed. Cir. 2012). As the Federal Circuit has explained, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,902,992 - Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentablePTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7
- ExcludeOther
“As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43
- Strike new argumentNew argument disregardedDecided for patent owner
“commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30
- Expert testimonyPetitioner expert discountedDecided for patent owner
“one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27
Patent outcomesUS 6,547,394 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,547,394 - Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentablePTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
- 101 substituteMixed
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
Patent outcomesUS 7,134,087 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 7,134,087 - Anheuser-Busch Inbev S.A. And Anheuser-Busch, LLC v. Heineken Supply Chain B.V. (F.K.A. Heineken Technical Services B.V.)Institution deniedPTAB · Dec 12, 2019 · IPR2019-01151 · APJ John E Schneider · IPR · Institution
The Board denied institution for claims 1, 3, 7, and 10 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review for that reason.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have at least a Master’s degree in mechanical engineering or product design and/or four years of relevant experience designing fluid dispensing systems. Pet. 14. Patent Owner disputes this definition of the level or ordinary skill in the art but does not offer its own definition. Prelim Resp. 22 n.4. For purposes of this decision, we adopt Petitioner’s description of the level of ordinary skill in the art.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Though Dr. Slocum contends that the shoulders of the valves depicted in Figures 17–20 and 21–24 are rigid because they are strong enough to resist fluid flow (see Ex. 1002 ¶¶ 134 and 132, respectively), Dr. Slocum does not provide adequate reasoning or evidence to support this opinion that one of ordinary skill in the art would consider shoulders that deform in the same manner as a flexible tube, and that are depicted as being integral with and made of the same material as the flexible tube, to nevertheless be rigid. For example, Dr. Slocum does not cite any extrinsic or intrinsic evidence that one of skill in the art would equate the ability to resist fluid flow with rigidity. Nor does Dr. Slocum or Petitioner propose any construction of the claim term “rigid” that would adequately distinguish the admittedly flexible pinch valves of Jeans.2 On the current record, and for the reasons discussed above, we find that Dr. Slocum’s testimony that the valve depicted in Jeans’s Figures 17–24 is made of a rigid material is not adequately supported. Accordingly, and based on the entire record presently before us, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge based on the combination of Timmermans and Figures 17–24 of Jeans.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the ball valve and slit valve configurations shown in Figures 17– 24 of Jeans operate by pinching the valve to open it. Ex. 1005, 18–20; Ex. 1002 ¶¶ 132–135; Ex. 2020, 1180. As discussed above, Patent Owner argues that the ability to be opened by a pinching indicates that the valves disclosed in Figures 17–24 of Jeans are made of a flexible material and do not meet the limitation of being composed on a rigid material. Prelim. Resp. 34–35. We note that this assertion is consistent with the position of Petitioner and its declarant, Dr. Slocum, that pinch valves like those shown in Timmermans and Van Der Meer are not rigid. See Pet. 26–27, 33; Ex. 1002 ¶¶ 99, 120. Jeans explicitly states that Figures 17–20 and 21–24 depict two different embodiments in which “the flexible tube of the container” is “designed to act as a valve which is open and closed between pinched and unpinched conditions, or vice versa.” Ex. 1005, 18 (emphasis added).” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,188,751 - Flywheel Sports, Inc. v. Peloton Interactive, Inc.Rehearing deniedPTAB · Dec 10, 2019 · IPR2019-00564 · APJ Alyssa A Finamore · IPR · Rehearing
The Board denied Patent Owner’s request for rehearing, leaving in place the order striking its late, unauthorized additional objections to evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Rehearing by the Board A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed. Id.” slip op. at 2
- Strike new argumentNew argument disregardedDenied
“Owner has not persuaded us that we should modify the decision in the Order granting Petitioner’s Motion to Strike the Additional Objections. We begin with the procedural posture of the Order. On July 30, 2019, Petitioner contacted the Board via e-mail seeking authorization to file its Motion to Strike, and, on August 2, 2019, Judges Daniels, Marschall, and Finamore held a conference call with the parties to discuss Petitioner’s request for authorization. As revealed during the conference call, there is no dispute Patent Owner’s Additional Objections are late, as Patent Owner filed them over a month and a half after the Decision to Institute. 37 C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of trial.”). There also is no dispute that Patent Owner’s Additional Objections are an unauthorized filing, as Patent Owner filed its Additional Objections without any request to excuse the late submission. 37 C.F.R. § 42.5(c)(3) (“A late action will be excused on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.”). We, therefore, authorized Petitioner’s Motion to Strike and also authorized Patent Owner to file an opposition thereto, which may seek to excuse the late the filing of the Additional Objections. Order 2. Consequently, the Order decides both Petitioner’s Motion to Strike, as well as Patent Owner’s request to excuse the lateness of its Additional Objections, whereby Patent Owner has the burden of showing that good cause exists for the tardiness or that consideration of the Additional Objections would be in the interests of justice.” slip op. at 3
NonePatents in suitUS 9,861,855 - General Electric Company v. United Technologies CorporationInstitution deniedPTAB · Dec 10, 2019 · IPR2019-01489 · APJ George R Hoskins · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims, claims 1–20, before institution.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDecided for patent owner
“requested authorization to file a motion for adverse judgment pursuant to 37 C.F.R. § 42.73(b). We deny that request. Our rules provide: “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Furthermore, the precedential decision in GE v. UT, supra, denied institution, and did not enter adverse judgment against the patent owner, where all challenged claims were disclaimed prior to institution of trial. Based on these authorities, we determine that a denial of institution, and not an adverse judgment against Patent Owner, is the appropriate vehicle for disposing of this case.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS Pursuant to the precedential Board decision in GE v. UT, when a Patent Owner properly records a disclaimer of all claims challenged in a Petition, no inter partes review is instituted. See also 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 9,920,653
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.