- BASF Corporation v. Ingevity South Carolina, LLCRehearing deniedPTAB · Oct 17, 2019 · IPR2019-00202 · APJ Christopher L Crumbley · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because BASF did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“when rehearing a decision on a petition to institute trial the Board “will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006) (quoting Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we reviewed BASF’s arguments and submitted evidence, and concluded that the record lacked sufficient support for these three links in BASF’s logical chain. First, we found that BASF had not provided evidence “why a person of skill in the art would have been led by Park’s strength requirement for an air intake system to select Formulation D” for the evaporative emissions systems that are the focus of the ’844 patent. Dec. 17–18. Second, we found no reason to conclude that, even if a person of ordinary skill in the art would have selected Park’s Formulation D to use in an evaporative emissions system, the resulting honeycomb would have the 73.8% voidages that Park considers desirable. Id. at 18–19. Finally, we found unsupported Mr. Lyons’ testimony that BAX 1500 carbon was the highest-capacity carbon known in the art at the time of the invention. Id. at 19–20. Each of these independent findings was sufficient to lead us to conclude that BASF had not shown that a system resulting from the use of Park’s honeycomb filter in an evaporative emissions system would necessarily have an IAC below 35 g/L, as required by the claims. Id. at 20–21. As such, we found that BASF had not established a reasonable likelihood that any claim of the ’844 patent was unpatentable.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“insufficient to support a reasonable likelihood of inherency on this record. To justify a conclusion of inherency in an obviousness inquiry, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). In other words, even were we to accept BASF’s contentions that a person of ordinary skill would have formed a filter using Park’s Formulation D and having 73.8% voidages, we would also have to conclude that the artisan would have had reason to select a carbon that necessarily would result in an IAC below 35 g/L. And, as we stated in our Decision, the reason for selecting a particular carbon cannot be based on the very IAC property that is allegedly inherent. Dec. 14 (“properties that are inherent—and, therefore, possibly unknown—cannot be used as the basis for this motivation unless they were expected.”) (citing Honeywell Int’l v. Mexichem Amanco Holding, 865 F.3d 1348 (Fed. Cir. 2017)). BASF’s Petition discussed two available carbons, BAX 1100 and BAX 1500, because they were referenced in the specification of the ’844 patent. Pet. 23. But there is insufficient evidence in the record why these were the two carbons that a person of ordinary skill in the art would have found it obvious to select from among the carbons that were available at the time of the invention, and the record is silent as to whether other carbons, if selected, would have necessarily resulted in the same IAC or lower. As we observed in our Decision, all that BASF presented on this point was the unsupported testimony of its expert that BAX 1500 had “the highest possible IAC known at the time of the ’844 patent.” Dec. 19–20 (citing Ex. 1003 ¶ 111). Again, BASF cites our rules, contending that we erred by not viewing a disputed issue of material fact in the light most favorable to it. Req. Reh’g 14. In particular, BASF notes our statement in the Decision acknowledging that “BAX 1500 certainly has the highest IAC of any carbon disclosed in the ’844 patent,” and argues that this alone is “evidence in the record that BAX-1500 was the highest-capacity carbon available at the time.” Id. (citing Dec. 20). But the disclosure of two particular carbons in the record says nothing about the existence—or lack thereof—of other carbons. In other words, as we stated in the Decision, “on this record we cannot extrapolate beyond [the] disclosure to all activated carbons known at the time of the invention.” Dec. 20. The issue is not one of viewing a disputed issue of fact in the light most favorable in BASF; rather, it is an issue of BASF asking us to conclude from the disclosure of two carbons in the ’844 patent that these are the carbons that a person of ordinary skill in the art, upon reading Park, would have selected. The record is insufficient to reach such a conclusion, and we did not err in deciding so.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“would have selected Park’s Formulation D when creating a filter for use as a subsequent adsorption volume, BASF contends that we misapprehended its evidence supporting such a selection. Id. at 9–12. BASF notes its argument was that a person of ordinary skill in the art would have selected Formulation D “because it is the only formulation that meets Park’s explicit requirements for the air intake application: a carbon content of 25–35% by weight and an axial crushing strength from 1200–1600 psi.” Id. at 10 (citing Pet. 33–34). But BASF’s argument misses the point of our conclusion in the Decision, which was that the record contained no evidence that the requirements of an air intake application, as discussed by Park, were the same as the requirements of the evaporative emissions application that is the focus of the ’844 patent and the primary prior art references in each combination. In other words, while a person of ordinary skill in the art might have been led to Formulation D if trying to create a filter for an air intake system, the record contains no persuasive evidence that the same is true of the artisan creating an evaporative emissions system. Indeed, as we noted in the Decision, the only evidence on this point is to the contrary, and comes from Ingevity’s expert witness Dr. Ritter. As we noted, “Dr. Ritter testifies that evaporative emission systems and air intake systems are designed for use with different vapor concentrations and, more importantly, different flow rates.” Dec. 17 (citing Ex. 2001 ¶¶ 43–44).” slip op. at 5
§ 102 anticipation§ 103 obviousness - Nitro Fluids, L.L.C. v. Cameron International CorporationRehearing deniedPTAB · Oct 15, 2019 · IPR2019-00804 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied the rehearing request and maintained denial of institution for claims 1–15 under § 325(d) based on Kajaria and Guidry.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential in relevant part) and determined that the balance of these factors favored denial of the Petition under 35 U.S.C. § 325(d). Dec. 11–23. As part of this analysis, we determined that: Kajaria was previously presented to the office during prosecution and was the basis for a rejection by the Examiner; Petitioner and the Examiner relied on the same disclosures of Kajaria to support their arguments; Petitioner did not sufficiently point out how the Examiner erred in his evaluation of Kajaria; and the declaration testimony of Mr. Ely did not warrant reconsideration of the prior art previously analyzed by the Examiner. Id. at 12–22.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“fracturing tree, wherein the single outlet is coupled to the fracturing tree by a single fluid conduit that is the only fluid conduit connecting the skid apparatus in fluid communication with the well at which the one fracturing tree is positioned. Ex. 1001, 7:6–30.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“obviousness ground relies solely on modification of distribution modules 42. Req. Reh’g 14. According to Petitioner, the Petition specifically alleges that “it would have been obvious to modify any module, including specifically module 40, to use a single manifold, to support only a single valve group, for delivery of fluid to a single well, via a single fluid conduit.” Id. (citing Pet. 35–42, 49–52, 56–57; Ex. 1002 ¶¶ 92, 96, 99, 102, 103, 122, 124–126, 128, 138). We did not misunderstand or misapprehend this argument; indeed, we noted its logical appeal. Dec. 21 n.10. We instead declined to credit the inference underpinning this argument, i.e., that a single-manifold embodiment would use a single fluid conduit, because the only reference of record having a single distribution module coupled to a single manifold had two fluid conduits extending from the distribution module to the well. Id. Accordingly, we are not persuaded that we misunderstood or overlooked Petitioner’s obviousness arguments.” slip op. at 11
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,903,190 - Aquestive Therapeutics, Inc. v. Neurelis, Inc.Rehearing deniedPTAB · Sep 27, 2019 · IPR2019-00451 · APJ Jamie T Wisz · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–36 because Patent Owner did not show entitlement to the provisional priority date.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“burden of going forward to show that there is invalidating prior art. Dynamic Drinkware, 800 F.3d at 1379. As discussed in our Decision, Petitioner satisfied its initial burden of production on the issue of whether Gwozdz is prior art by establishing that Gwozdz is entitled to the effective filing date of the Gwozdz provisional. Decision 7. Therefore, Gwozdz is prior art to the ’876 patent under 35 U.S.C. § 102(e)(1) unless Patent Owner can show that the ’876 patent is entitled to the effective filing date of its provisional application (“the ’558 provisional”). Id. Thus, the burden of production shifts to Patent Owner, who must show not only the existence of earlier applications, but also how the written description in the earlier applications supports the challenged claims. Dynamic Drinkware, 800 F.3d at 1379–80. “[T]o gain the benefit of the filing date of an earlier application 4 under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of copending applications each of which satisfies the requirements of § 112 with respect to the subject matter presently claimed.” (alteration in original) (quoting In re Schneider, 481 F.2d 1350, 1356 (CCPA 1973))). Thus, as discussed in our Decision, Patent Owner must show that each application in the priority chain1 makes the requisite disclosure of subject matter; otherwise, the ’876 patent is not entitled to the benefit of the filing date of the ’558 provisional. Decision 7 n.6. On this record, Patent Owner fails to satisfy its burden of production to show entitlement to an earlier filing date. All of Patent Owner’s arguments are focused on the alleged deficiencies with Petitioner’s contentions regarding the disclosure of alkyl glycosides in the ’558 provisional. Prelim. Resp. 24–27. Patent Owner offers no analysis demonstrating that every patent application along the priority chain conveys with reasonable clarity to those skilled in the art that the inventors were in possession of each limitation of each of the challenged claims, as well as the 1 In this case, the priority chain for the ’876 patent includes a provisional application and a continuation-in-part application. Decision 6. 5 claimed invention as a whole. See Lockwood, 107 F.3d at 1572. Therefore, on this record, Patent Owner has not demonstrated that the claims of the ’876 patent are entitled to the priority date of the ’558 provisional.” slip op. at 4
§ 102 anticipationPatents in suitUS 9,763,876 - PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner has not demonstrated an abuse of discretion. Accordingly, we deny the request for rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,969,539 - Innovative Environmental Technologies, Inc. v. Peroxychem LLCRehearing deniedPTAB · Jul 25, 2016 · IPR2016-00198 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claims 1, 2, 4, 5, 10, 11, and 13 based on Chowdhury anticipation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision to Institute. Notably, we did not agree with Patent Owner’s argument that Petitioner failed to show anticipation by Chowdhury; instead, we found that, given the information before us and the standards for institution of inter partes review, “Petitioner has demonstrated that Chowdhury is reasonably likely to anticipate the challenged claims.” Dec. 15. Patent Owner’s attempt to read into our Decision to Institute its own conclusion on express anticipation is unwarranted. In rendering a Decision to Institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability; rather, we determine whether the record, at the time, establishes a reasonable likelihood of success. The standard for institution of an inter partes review requires nothing more. In reaching our determination in the Decision to Institute, we acknowledged Patent Owner’s arguments regarding both express anticipation and inherent anticipation and found that the anticipation ground based on Chowdhury, as presented in the Petition, met the standard required for institution of an inter partes review. Dec. 13– 15. We did not overlook these arguments, and Patent Owner has not shown that the Board misapprehended or overlooked any matter in instituting trial in this proceeding.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner did not propose an express construction of the phrase “composition comprising a water soluble persulfate compound and zero valent iron” in its Preliminary Response. See Dec. 6. In our Decision to Institute, we determined that this phrase required no express construction. Id. Although Patent Owner avers that there is no material dispute regarding claim construction, it urges in its Request for Rehearing a construction that Patent Owner has not previously raised. Req. 4–5. A Request for Rehearing is not an opportunity to present a new argument about claim construction, notwithstanding its framing as a matter that is not in dispute.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Decision to Institute. Notably, we did not agree with Patent Owner’s argument that Petitioner failed to show anticipation by Chowdhury; instead, we found that, given the information before us and the standards for institution of inter partes review, “Petitioner has demonstrated that Chowdhury is reasonably likely to anticipate the challenged claims.” Dec. 15. Patent Owner’s attempt to read into our Decision to Institute its own conclusion on express anticipation is unwarranted. In rendering a Decision to Institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability; rather, we determine whether the record, at the time, establishes a reasonable likelihood of success. The standard for institution of an inter partes review requires nothing more. In reaching our determination in the Decision to Institute, we acknowledged Patent Owner’s arguments regarding both express anticipation and inherent anticipation and found that the anticipation ground based on Chowdhury, as presented in the Petition, met the standard required for institution of an inter partes review. Dec. 13– 15. We did not overlook these arguments, and Patent Owner has not shown that the Board misapprehended or overlooked any matter in instituting trial in this proceeding.” slip op. at 4
Claim construction§ 102 anticipationPatents in suitUS 7,785,038 - United States Department Of Homeland Security v. Larry GoldenRehearing deniedPTAB · Nov 17, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place denial of substitute claims 154–156 because they were broader, lacked written description support, and were not shown patentable over the prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” Id. The 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.” Id.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“three independent reasons: (1) substitute claims 154–156 are impermissibly broader than the claims they replaced; (2) Patent Owner failed to show written description support for substitute claims 154–156 as a whole; and (3) Patent Owner failed to show that claims 154–156 were patentable over the prior art of record. Final Dec. 15–21 (improper broadening), 21–22, (written description), 22–31 (prior art of record). Therefore, to succeed on this Rehearing Request, Patent Owner must show that we misapprehended or overlooked matters in reaching each of these determinations. Patent Owner has not done so. We address Patent Owner’s arguments in detail below.” slip op. at 3
- ScopeDenied
“In any event, this priority date argument does not contain any reason why our determination that substitute claims 154–156 are broader in scope than cancelled claims 11, 74, and 81 that they seek to replace was in error. Reh’g Req. 4–5. To the extent that Patent Owner does contest our finding that the claims are broader in scope, we do not find it persuasive because Patent Owner does not show amending a claim to replace a particular species with an entire genus would not be broadening. Thus, this argument regarding priority date does not persuade us that we erred in denying Patent Owner’s motion to amend.” slip op. at 4
- 112 supportDenied
“B. Lack of Written Description Support Patent Owner argues that we should also excuse Patent Owner’s failure to identify written description support for the entire claim because of the “special circumstances” discussed above. Reh’g Req. 2–3. Without determining whether such an exception exists for the requirement of providing written description support for the entire claim, Patent Owner fails to identify anywhere in the Patent Owner Response or Motion to Amend where this argument was raised. Because the argument was not raised, we could not have misapprehended or overlooked it. Thus, we determine that Patent Owner has failed to show that we erred in our determination that the Motion to Amend failed to show written description support for the claim as a whole.” slip op. at 5
§ 102 anticipation - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing
Denied Patent Owner’s rehearing request; review remains instituted for claims 42–44, 47–51, 53, 55, and 56 as anticipated by the ’095 patent and claim 57 as obvious over the ’095 patent and JP ’712.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“granting-in-part Daicel Corporation’s (“Petitioner”) Request for Rehearing (Paper 12) and instituting inter partes review of claims 42–44, 47–51, 53, and 55–57 of U.S. Patent No. 8,076,507 B2 (Ex. 1002, “the ’507 patent”). In Petitioner’s Request for Rehearing, Petitioner persuaded us that, in our initial decision denying institution of inter partes review (Paper 11, “Init. Dec.”), we overlooked testimony in the declaration of its expert, Mr. Cooper (Ex. 1003, “Cooper Declaration”). See Reh’g Dec. 9. Upon reconsideration of the Petition (Paper 2, Petition for Inter Partes Review (“Pet.”)) in light of Petitioner’s Request for Rehearing, we determined the information presented in the Petition was sufficient to support a reasonable likelihood that Petitioner would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by U.S. Patent No. 5,625,095 (Ex. 1010, “the ’095 patent”), and in showing claim 57 would have been obvious over the ’095 patent and Japanese Patent Application No. 2000-72712 (Ex. 1020 (English Translation), “JP ’712”). See Reh’g Dec. 3–5, 9–10. Accordingly, we instituted an inter partes review based on these grounds of unpatentability. Id. at 10. We were not persuaded, however, that we abused our discretion in declining to institute an inter partes review of claims 42–44, 47–51, 53, 55, and 56 based on obviousness over Singh1 (Ex. 1011) in view of the ’095 patent and Akinori2 (Ex. 1013), and claims 42–44, 47–51, 53, and 55–57” slip op. at 2
- BurdenDecided for petitioner
“Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to support its patentability challenge based on anticipation by the ’095 patent. See 37 C.F.R. § 42.22(a)(2) (requiring that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); id. at § 42.104 (requiring that the full statement in the Petition identify the specific portions of the supporting evidence relied upon to support the challenge, and state the relevance of the evidence to the challenge raised). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left instituted claims 58–60, 67, 69, and 71–72 on anticipation grounds and claim 73 on anticipation and obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Therefore, we are not persuaded that we erred in determining Petitioner’s arguments and evidence are sufficiently persuasive, at this stage of the proceeding, to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 59 and 67 as anticipated by the ’095 Patent. III. CONCLUSION Patent Owner has not convinced us that we abused our discretion in our decision to institute an inter partes review of claims 58–60, 67, 69, 71, and 72 based on anticipation by the ’095 patent and claim 73 based on obviousness over the ’095 patent and JP ’712.” slip op. at 13
- BurdenDecided for petitioner
“support of the presence of DME are limited to the following sentence: “It is well known that such a mixture will produce at least some amount of DME through equilibrium processes,” PO Req. Reh’g 2 (quoting Pet. 22–23). On page 4 of our Rehearing Decision, we quote Petitioner’s arguments explaining why DME necessarily would be present in the reactor and distillation overheads in the ’095 patent process. Reh’g Dec. 4 (quoting Pet. 22–23). Patent Owner has not explained why these arguments from the Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to support its patentability challenge based on anticipation by the ’095 patent. See 37 C.F.R. § 42.22(a)(2) (requiring that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); id. at § 42.104 (requiring that the full statement in the Petition identify the specific portions of the supporting evidence relied upon to support the challenge, and state the relevance of the evidence to the challenge raised). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,076,507
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.