• Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing denied
  PTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing

  The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). 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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2

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

    “As discussed in the Decision, “obviousness 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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,645,473
• Energysource Minerals, LLC v. Terralithium LLCRehearing denied
  PTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing

  The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3

  • BurdenNot shown unpatentable

    “In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14

  • Expert testimonyOther

    “Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11

  § 103 obviousnesscites Graham
  Patents in suitUS 9,644,126
• Scentair Technologies, LLC v. Prolitec, Inc.Rehearing denied
  PTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3

  § 103 obviousness
  Patents in suitUS 9,480,767
• Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGRehearing denied
  PTAB · Feb 3, 2021 · IPR2020-00911 · APJ Amber L Hagy · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution on claims 1–20 because the petition did not sufficiently show the asserted combinations taught or suggested the claimed limitations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). 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.” Id. Upon a request for rehearing, the 1 Huber et al., U.S. Patent No. 7,414,779 B2, issued August 19, 2008 (Ex. 1008, “Huber”). 2 Everett et al., U.S. Patent No. 7,365,856 B2, issued April 29, 2008 (Ex. 1009, “Everett”). 3 F. Lexer, C.K. Hitzenberger, A.F. Fercher, M. Kulhavy, “Wavelength-tuning interferometry of intraocular distances,” Appl. Optics, vol. 36, pp. 6548–6553 (Sept. 1, 1997) (Ex. 1006, “Lexer”). 4 W. Drexler and J. Fujimoto, eds., Optical Coherence Tomography – Technology and Applications, ISBN 978-3-540-77549-2, Springer Verlag Berlin Heidelberg (2008) (Ex. 1010, “Drexler”). decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

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

    “added). The Decision did not, however, fault Petitioner in this manner. Rather, in the Decision, we appropriately focused on the crux of Petitioner’s argument; namely that, although Huber does not disclose an output power (which Petitioner converts to the claimed photon flux) within the claimed range, one of ordinary skill would have been motivated by Everett to use Huber’s laser on eyes, and that such use would have motivated the ordinarily skilled artisan to (in Petitioner’s words) “reduce the photon flux of the Huber laser” to achieve the claimed range “or any other ranges needed to prevent tissue damage and optimize signal strength.” Decision 20 (quoting Pet. 42). As we also noted in the Decision, the only support provided in the Petition for these assertions is a blanket citation to nearly a dozen paragraphs (spanning six pages) primarily consisting of background technical discussion from Dr. Brennan’s Declaration. Decision 20; see Pet. 41–42 (citing Ex. 1012 ¶¶ 76–85, 185). In that technical background, Dr. Brennan purportedly explains how and why “optimal optical power” may be set and selected generally in systems employing lasers. See Ex. 1012 ¶¶ 76–85. But, as we pointed out in the Decision, neither Petitioner nor Dr. Brennan tied any of this analysis to the prior art of record or otherwise explained the conclusory assertion made in the Petition (and echoed by Dr. Brennan) that the ordinarily skilled artisan would have combined the teachings of Huber, Everett, and Lexer to apply photon flux within the claimed range for measurement of eyes. Decision 20; see Pet. 41–42; Ex. 1012 ¶ 185.” slip op. at 6

  • BurdenDecided for patent owner

    “‘output-power is greater than 10 mW,” which Petitioner converted to a photon flux of “a photon flux of 6.6 * 1016 photons per second.”). Both the Petition and the Request are based on a theory of overlapping ranges, but fail to show the factual basis for the application of that theory. The Decision correctly determined that the Petition fails to show that Huber discloses a range of photon flux that overlaps the claimed range.” slip op. at 5

  • Expert testimonyDecided for patent owner

    “added). The Decision did not, however, fault Petitioner in this manner. Rather, in the Decision, we appropriately focused on the crux of Petitioner’s argument; namely that, although Huber does not disclose an output power (which Petitioner converts to the claimed photon flux) within the claimed range, one of ordinary skill would have been motivated by Everett to use Huber’s laser on eyes, and that such use would have motivated the ordinarily skilled artisan to (in Petitioner’s words) “reduce the photon flux of the Huber laser” to achieve the claimed range “or any other ranges needed to prevent tissue damage and optimize signal strength.” Decision 20 (quoting Pet. 42). As we also noted in the Decision, the only support provided in the Petition for these assertions is a blanket citation to nearly a dozen paragraphs (spanning six pages) primarily consisting of background technical discussion from Dr. Brennan’s Declaration. Decision 20; see Pet. 41–42 (citing Ex. 1012 ¶¶ 76–85, 185). In that technical background, Dr. Brennan purportedly explains how and why “optimal optical power” may be set and selected generally in systems employing lasers. See Ex. 1012 ¶¶ 76–85. But, as we pointed out in the Decision, neither Petitioner nor Dr. Brennan tied any of this analysis to the prior art of record or otherwise explained the conclusory assertion made in the Petition (and echoed by Dr. Brennan) that the ordinarily skilled artisan would have combined the teachings of Huber, Everett, and Lexer to apply photon flux within the claimed range for measurement of eyes. Decision 20; see Pet. 41–42; Ex. 1012 ¶ 185.” slip op. at 6

  § 103 obviousnesscites KSR
  Patents in suitUS 9,044,164
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing denied
  PTAB · Nov 10, 2020 · PGR2019-00003 · APJ Sheridan K Snedden · PGR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–14 are unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3

  § 102 anticipation
  Patents in suitUS 9,867,839
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing denied
  PTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving unpatentable claims 1-4, 9, 10, 12, 14, 16-18, 23-25, and 27-29 based on Varenna 2012 anticipation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “acknowledged Acceleration Bay and addressed with particularity the evidence of record tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 15. Specifically, in our Decision, we credited indicia on the face of Verrena 2012, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including “the statement ‘Advance Access publication 30 November 2012,’” and a conventional edition identifier from the journal Rheumatology. Dec. 17 (quoting Ex. 1005). Patent Owner advanced no” slip op. at 4

  • Strike new argumentNew argument consideredDecided for petitioner

    “We are not persuaded by Patent Owner’s contentions and note that we addressed these same arguments in our Order denying Patent Owner’s motion to strike. Paper 24; see also Paper 13, 1 (Patent Owner contending that “Exhibit 1044 and related argument are new evidence and argument regarding the alleged accessibility of Varenna 2012 (Ex. 1005) that Petitioner could have submitted with the Petition, but chose not to.”). Rather than pointing out any matters that the panel misapprehended or overlooked, Patent Owner expresses disagreement with that decision, and attempts to offer additional reasoning and argument not advanced during trial. Req. Reh’g, 12–15. That effort is ineffective to establish reversible error. Furthermore, in our Final Written Decision, we noted that Even if we set aside Dr. Robinson’s Declaration, . . . we are persuaded that the indicia of publication on the face of Varenna 2012 are sufficient to establish that Varenna 2012 was “sufficiently accessible to the public interested in the art” and “disseminated or otherwise made available” to the interested public before the critical date, and consequently, a printed publication. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). Dec. 19 n.4. For that reason also, Patent Owner shows no reversible error in our Final Written Decision holding that Dr. Robinson’s testimony bolsters” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  § 102 anticipation
  Patents in suitUS 9,820,999
• Energysource Minerals, LLC v. Terralithium LLCRehearing denied
  PTAB · Nov 6, 2020 · IPR2019-01601 · APJ Hubert C Lorin · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution for claims 9–16, finding the petition insufficient on anticipation by Maimoni and Jost and related obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3

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

    “the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 6

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

    “[u]nder these circumstances, where Jost raises the possibility of forming iron (III) hydroxide, while raising a doubt that iron (III) hydroxide even exists – we find that Jost does not describe, expressly or inherently, oxidizing to iron (III) hydroxide as claimed. At best, Jost is ambiguous about oxidizing to iron (III) hydroxide. But ambiguous references do not, as a matter of law, anticipate a claim See Wasica Finance GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (emphasis added) (“Anticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’ Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (emphasis added). For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim. See, e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (refusing to find claims anticipated when the prior art references were ‘unacceptably vague’); see also In re Hughes, 52 CCPA 1355, 345 F.2d 184, 188 (1965); In re Turlay, 49 CCPA 1288, 304 F.2d 893, 899 (1962) (‘It is well established that an anticipation rejection cannot be predicated on an ambiguous reference.’)”). Because Jost discloses only the possibility of iron (III) hydroxide and no other evidence has been provided to show that Jost nevertheless necessarily oxidizes to iron (III) hydroxide as claimed, based on the information, Petitioner has not shown sufficiently that the Jost reference anticipates, expressly or inherently, the claim step of “oxidizing the iron (II) salt to iron (III) hydroxide.” “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “an explanation as to how “the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5, as required by Claim 9” (Pet. 44). But “[t]here is no explanation” (Dec. 24). We reproduced ¶ 162 of the Gallup Declaration in the Decision (see Dec. 23–24), which states in full that The step in the Hazen process of sparging the brine with air (Stream 6) in the iron reactor will reduce the pH. The reduction of the pH is offset by the introduction of calcium hydroxide (Stream 5) to the iron reactor. In my opinion, the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5. Given the pH of the feed brine, these pH values occur as a result of the air oxidation and introduction of calcium hydroxide. We did not and still do not see Dr. Gallup providing any meaningful explanation as to why the steps of sparging and the addition of calcium hydroxide per the Hazen process set forth in Maimoni necessarily maintains the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,051,827
• Apotex Inc. / Apotex Corp. v. Celgene CorporationRehearing denied
  PTAB · Apr 30, 2020 · IPR2018-00685 · APJ Toni R Scheiner · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution on all challenged claims under § 325(d) for grounds I and II and for failure to establish printed-publication status for ground III.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.”” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “presented in the petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 at 10 (Feb. 13, 4 2020) (precedential). Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. If the same or substantially the same art or arguments were previously presented to the Office, we then consider whether petitioner has demonstrated the Office erred. Id. In evaluating the Petition and accompanying evidence in light of the Becton, Dickinson factors, we determined that grounds I and II were “based on substantially the same prior art and arguments previously presented to the office,” and that Petitioner had “neither sufficiently pointed out how the Examiner erred, nor provided additional evidence or facts that warrant reconsideration of the Examiner’s decision.” Inst. Dec. 26. Accordingly, we exercised our discretion under 35 U.S.C. §325(d) and denied institution of grounds I and II on that basis.” slip op. at 4

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

    “we determined that the Petition failed to establish a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one claim challenged in the Petition, and declined to institute an inter partes review on any of the three grounds asserted. Specifically, with respect to grounds I and II, we declined to institute pursuant to our discretion under 35 U.S.C. § 325(d). Inst. Dec. 22–26. With respect to ground III, we determined that Petitioner had not met its burden of establishing that the Celgene Press Release was available as a printed publication. Id. at 27–31.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “we determined that the Petition failed to establish a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one claim challenged in the Petition, and declined to institute an inter partes review on any of the three grounds asserted. Specifically, with respect to grounds I and II, we declined to institute pursuant to our discretion under 35 U.S.C. § 325(d). Inst. Dec. 22–26. With respect to ground III, we determined that Petitioner had not met its burden of establishing that the Celgene Press Release was available as a printed publication. Id. at 27–31.” slip op. at 3

  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,741,929
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing denied
  PTAB · Apr 17, 2020 · PGR2018-00062 · APJ Grace Karaffa Obermann · PGR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact the Final Written Decision holding claims 1–30 unpatentable based on Varenna and other references.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Upon a request for rehearing, we review our 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.” 37 C.F.R. § 42.71(d). “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. We deny the Request for Rehearing based on application of those principles.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “persons of skill in the art could have located it.” Req. Reh’g 1 (emphasis in original). On the contrary, we addressed with particularity the substantial evidence tending to show that Varenna “was ‘sufficiently accessible to the public interested in the art’ and ‘disseminated or otherwise made available’ to the interested public before the critical date.” Dec. 9 (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)). In our Decision, we properly credited “indicia on the face of [the] reference, such as printed dates and stamps,” which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, Paper 29 at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Those indicia included not only details of the copyright notice, indicating publication of Varenna “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” but also additional legends, including “the statement ‘Advance Access publication 30 November 2012,’” and a conventional edition identifier from the journal Rheumatology. Id. at 9–10 (quoting Ex. 1005). Patent Owner advanced no evidence tending to cast doubt on that publication date. Although the burden of proof never shifted to Patent Owner on the issue of Varenna’s public availability, where Patent Owner declined to advance counter evidence on point, the Board did not err by crediting the indicia, which appear on the face of Varenna, as part of the totality of evidence bearing on the issue.” slip op. at 6

  • Strike new argumentNew argument consideredDecided for petitioner

    “The precedential decision in Hulu is instructive here, and specifically recognizes “limited opportunities” that “exist for the petitioner to present new evidence” pertaining to the question of public availability. Hulu, Paper 29 at 14. One opportunity expressly identified in Hulu is “in a reply to the patent owner response” where “the patent owner challenges a reference’s status as a printed publication.” Id., Paper 29, 14–15. That is precisely the circumstance here. Patent Owner shows no reversible error in our finding that Dr. Robinson’s Declaration, submitted with Petitioner’s Reply, responds to arguments raised for the first time in Patent Owner’s Response. Dec. 13 (comparing Reply 3–7 and Ex. 1031, with Resp. 12–15). In any event, in our alternative holding, we explain why substantial evidence supports our finding of public availability, “[e]ven if we set aside Dr. Robinson’s Declaration.” Dec. 9. This is not a situation where Petitioner submitted Reply evidence that changed the theory of the patent challenge or, as Patent Owner suggests, represents a circumstance comparable to raising “a new obviousness argument” not advanced in the Petition. Req. Reh’g 11 (quotation omitted); see Pet. vii (identification of Varenna and its alleged publication date of “Nov. 2012”), 3–4 (bridging paragraph, asserting that Varenna was “published in 2012”), 33 (asserting that “Varenna 2012 is one of dozens of references” presented during patent prosecution). Moreover, no prejudice attended allowance of the Reply evidence, where we also allowed Patent Owner a Sur-Reply to address that evidence. Dec. 13. Patent Owner takes issue with the Board’s observation that “Patent Owner was afforded an opportunity (fully taken) to file a Sur-Reply on issues raised in Dr. Robinson’s Declaration.” Id. (citing Sur-Reply 2–11). Patent Owner points out that the Sur-Reply included “only a short paragraph” countering that Declaration, but acknowledges that this circumstance was the result of Patent Owner’s own assessment of the relative importance of the evidence. Req. Reh’g 2–3 n.2. Patent Owner’s strategic calculation, regarding how much space or effort to devote to countering Dr. Robinson’s testimony, does not denigrate the opportunity afforded in the Sur-Reply, or reveal reversible error in the Decision.” slip op. at 8

  • BurdenDecided for petitioner

    “The Board did not, as Patent Owner argues, “shift[] the burden of proof to Patent Owner to prove that Varenna was not disseminated or otherwise made available to the public.” Id. at 1 (emphasis in original). On the contrary, the Board reasonably weighed the objective proof of public availability against Patent Owner’s bare attorney arguments on point. See Dec. 8–15 (reasoning that the indicia of public accessibility appearing on the face of Varenna, combined with Patent Owner’s conduct during patent prosecution and information submitted under oath in Dr. Robinson’s Declaration, outweigh Patent Owner’s conclusory attorney arguments, which are supported by no objective proof). The objective evidence points in one direction; namely, that Varenna is what it appears to be, a copy of a journal article published in Rheumatology by the Oxford University Press in November of 2012. Id. Patent Owner shows no reversible error in the Decision relating to the Board’s assignment of Petitioner’s burden of proof, any inferences drawn from the evidence of record, or the alternative holding that Dr. Robinson’s testimony bolsters the substantial evidence of record showing that Varenna was publicly available at the time of the invention.” slip op. at 10

  § 102 anticipation
  Patents in suitUS 9,707,245
• Ceramtec GmbH v. Ceramedic LLCRehearing denied
  PTAB · Feb 10, 2017 · IPR2015-00398 · APJ Kristina M Kalan · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its prior decision holding claims 1–5, 7, 11–13, 15–17, 19–21, 23, 30–38, 52, and 53 unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

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

    “argument was previously presented. Accordingly, we are not persuaded that the argument is timely. Nevertheless, Petitioner presented evidence in its Petition that Yeh’s green density would have been 70% as part of its argument that one of ordinary skill in the art would have combined Lin with Yeh. Pet. 24; see also Ex. 1004, 316, 427. Petitioner also presented evidence in its Petition that Lin’s green density would have been 61–63%. Pet. 17 (citing Ex. 1013 ¶ 38). In its Reply, Petitioner elaborated that Yeh’s 70% green density was higher than the 61% green density of compacts produced using Lin’s powder. Reply 19; Ex. 1020 ¶¶ 40, 43–45. Based on this argument and evidence, we determined that one of ordinary skill in the art, appreciating Yeh’s higher green density, would have been motivated to combine Yeh with Lin in this regard. Patent Owner’s disagreement with our conclusion does not persuade us otherwise. Although Patent Owner refers to the arguments in its Response regarding measurements of green density in Yeh (Req. 12–13 (citing Resp. 13–16)), these arguments were presented in the context of a discussion of Yeh alone, and do not address the issue of whether a person of ordinary skill in the art would have been motivated to combine Lin and Yeh. Regarding Patent Owner’s second argument, we noted in our Final” slip op. at 8

  • Expert testimonyDecided for petitioner

    “claim 32 was challenged on obviousness grounds, whereas claim 1 was challenged on anticipation grounds, and that combining different embodiments is improper for anticipation. Id. Patent Owner, however, does not point out where this matter was previously raised. Patent Owner also states that “Patent Owner did not have notice of Petitioner’s late-breaking position” regarding the stirring issue. Id. As we noted in our Final Written Decision, however, the argument was raised in the Petition, albeit regarding a different claim; balancing the requirements of our statutes and rules regarding replies with the requirements of APA compliance and due process, we determined that the issue was fairly raised in the Petition, and that Patent Owner was given a fair opportunity to address its import in this proceeding. Dec. 11–12. Moreover, even taking into account Patent Owner’s arguments, Lin lists stirring immediately after listing “preparing a dilute dispersed aqueous solution” and “followed by ultrasonication.” Ex. 1002, 37. In discussing slip casting on page 40, Lin specifies that aqueous suspensions “were prepared by the same procedure as in the previous section” on page 37. Id. at 40. Petitioner’s expert opined that one of ordinary skill in the art would understand that initial dispersion, ultrasonication, and stirring were applied in both processes. Ex. 1020 ¶ 10; Tr. 72:21–74:4.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 6,066,584

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.