- Republic Tobacco, L.P. v. Fan BaoAll claims unpatentablePTAB · Apr 27, 2016 · IPR2015-00072 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 2–24 are unpatentable under § 103 over Chen alone or Chen and Kastner; adverse judgment is entered and claims 1 and 25 are canceled.
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“1 Patent Owner expressly requested cancelation of claims 1 and 25 of the ’752 patent. PO Resp. 9; see also Tr. 19:7–19 (Patent Owner’s counsel conceding the unpatentability of claims 1 and 25). Although Patent Owner did not file a Motion to Amend or statutory disclaimer, we construe Patent Owner’s statements regarding claims 1 and 25 as an abandonment of the contest as to these claims and, thus, as a request for entry of adverse judgment with respect to claims 1 and 25. See 37 C.F.R. § 42.73(b). Accordingly, claims 1 and 25 will be canceled. 2 CN 201138314Y, published Oct. 22, 2008 (Ex. 1006). Ex. 1006 includes both a certified English translation, and the original publication in Chinese. All citations to Ex. 1006 are to the English translation portion of the document, and refer to the page numbers added by Petitioner at the bottom right-hand corner of each page.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“the art would have a Bachelor’s degree in mechanical engineering or equivalent engineering design experience, as well as “familiarity with machines to achieve consolidation through compression of loose materials like tobacco to fill hollow tubes and other receptacles and experience in designing machines to achieve consolidation through compression.” Pet. 27–28 (citing Ex. 1009 ¶ 10). While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in the design of consumer products, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require experience in designing cigarette making devices. Patent Owner presents no evidence beyond the uncorroborated testimony of its declarant (who also happens to be the inventor of the ’752 patent) that the design of cigarette making devices is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific experience or specialized knowledge of cigarette making devices into the definition of one of ordinary skill in the art of the ’752 patent.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“weight.8 PO Resp. 1–2, 11–18. Patent Owner’s argument is based, in part, on its definition of a person of ordinary skill—namely, a person with “at least 4 years’ experience in the design of consumer products, including at least 2 years in the design and operation of cigarette making devices.” Id. at 13 (citing Ex. 2001 ¶ 16). Patent Owner asserts that “merely being a skilled engineer is not enough to qualify as one of ordinary skill in the art of the ’752 patent, unless that person has sufficient experience in cigarette making devices specifically.” Id. at 14 (citing Ex. 2001 ¶ 17).” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“argues that the 1896 date printed on Brown is hearsay and cannot be used to establish dissemination or public availability. Id. at 24. As noted by Petitioner, however, “Brown, including the printed date of 1896, falls within the exception to the rule against hearsay under Federal Rule of Evidence 803(16).”9 Reply 7. Further, Petitioner provides evidence regarding the” slip op. at 16
Patent outcomesUS 8,261,752 unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,261,752 - Eli Lilly And Company v. Los Angeles Biomedical Research Institute At Harbor-Ucla Medical CenterNo claims unpatentablePTAB · Oct 22, 2015 · IPR2014-00693 · APJ Lora M Green · IPR · Final written decision
Claims 1–5 were not shown unpatentable because Whitaker did not anticipate the required continuous administration for at least 45 days.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Whitaker anticipates claim 1 by a preponderance of the evidence. To anticipate, a prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 8
- ExcludeOther
“1115–1116, 1118–1121, 1124, 1127, 1128–1130, 1131, 1135–1137, 1139– 1140, 1142, 1144, and portions of Dr. Bivalacqua’s deposition testimony (Ex. 1122). As we did not rely on any of those exhibits in this Decision, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“E. Objections to Demonstratives Each of Petitioner (Paper 42) and Patent Owner (Paper 43) objected to the other’s demonstratives. In view of those objections, we expunge the demonstratives from the record. Thus, Petitioner’s demonstratives (Paper 41) and Patent Owner’s demonstratives (Paper 40), are expunged.” slip op. at 10
Patent outcomesUS 8,133,903 not shown unpatentable§ 102 anticipationPatents in suitUS 8,133,903 - PTAB · May 20, 2014 · IPR2013-00124 · APJ Lora M Green · IPR · Final written decision
The Board granted cancellation of claims 1-26 and allowed substitute claims 27-44, but denied substitute claim 45 as unpatentable over Behan.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundMixed
“In order to establish a prima facie case of obviousness based on structural similarity, the prior art must provide a reason to make the claimed compound, and there must also be “„adequate support in the prior art‟ for the 7 P.E.A. Teal et al., (Z)-11-Hexadecen-1-ol: A Behavioral Modifying Chemical Present in the Pheromone Gland of Female Heliothis Zea (Lepidoptera:Noctuidae), 116 CAN. ENTOMOLOGY 777-79 (1984). Ex. 2003. 8 Yih-Shen Hwang et al., Structure-Activity Relationship of Unsaturated Fatty Acids as Mosquito Ovipositional Repellents, 10 J. OF CHEM. ECOLOGY 145-51 (1984). Ex. 2004. change in structure.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (quoting In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). The United States Court of Appeals for the Federal Circuit noted that the test for obviousness of a compound based on structural similarity is in accordance with the legal principles enunciated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), specifically, that it is important to identify “„a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does‟ in an obviousness determination.” Takeda, 492 F.3d at 1356-57 (quoting KSR, 550 U.S. at 418). Thus, “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda, 492 F.3d at 1357.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“We acknowledge that McMahon and the Zhang Declaration are evidence that the ordinary artisan would not have had a reasonable expectation that, because a compound is known to repel mosquitoes, such as Aedes aegypti, the compound would also repel ticks, such as Amblyomma variegatum. Claim 45, however, encompasses the use of isolongifolanone when R1 is a hydrogen atom and R2 is an oxygen atom, which is the same compound specifically taught by Behan. See Pet. 7-8 (showing the structure of isolongifolanone, and discussing how it is encompassed by the chemical formula set forth in claim 1). As discussed above, Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites. “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) (noting that the realization of a new benefit of an old process does not render that process patentable); Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was drawn to the same use comprising the same steps of the prior art, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”). We, therefore, conclude that the preponderance of the evidence does not support the patentability of proposed claim 45.” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,579,016
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.