- Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached
“Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedOther
“Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelOther
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Sony Corp. v. Fujifilm Corp.Rehearing deniedPTAB · Oct 20, 2017 · IPR2017-00625 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Sony’s rehearing request, leaving institution denied for claims 1, 4–9, 11, and 14 because the petition did not show the claimed cluster size was inherent in Yamazaki.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“As Petitioner points out, we did consider Petitioner’s performance data rationale in the Decision. Req. Reh’g 10; Dec. 14. Petitioner is correct, however, that we did not consider it separate and apart from Petitioner’s identical powder rationale. Rather, based on certain statements in the Petition and the Declaration of Mr. Saliba (Ex. 1006), we considered these rationales to be integrated components of Petitioner’s inherency argument. For example, Petitioner stated that “[t]he example media in Yamazaki discussed below, produced using the identical materials and processing steps used in the ‘891 Patent other than milling time, could not have their disclosed good noise characteristics if their average magnetic cluster sizes were not within the range claimed in the ‘891 Patent.” Pet. 14–15 (emphasis added); Ex. 1006 ¶ 52 (“The noise characteristics of Yamazaki’s media confirm that their average cluster sizes necessarily fall within the claimed range.”) (emphasis added); see also Pet. 3 (indicating that Yamazaki inherently discloses the average magnetic cluster size limitation in view of “Yamazaki’s use of the identical materials and identical processing steps . . . and the fact that Yamazaki meets the noise characteristics the ‘891 Patent states are indicative of a ‘good’ recording medium”). In view of this language, we are not persuaded by Petitioner’s argument that it presented the identical powder rationale and the performance data rationale as separate and independent rationales in the Petition. Therefore, we disagree that we overlooked or misapprehended Petitioner’s independent performance data rationale. In any case, we have considered Petitioner’s performance data rationale anew, as an independent rationale, and determine that Petitioner fails to demonstrate inherency.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“considered Petitioner’s performance data rationale anew, as an independent rationale, and determine that Petitioner fails to demonstrate inherency. Petitioner cites to McCann2 to support its assertion that C/N and S/N values are “indicative” of cluster size. Pet. 39–40, 45–47. However, as we noted in our Decision, “although McCann explains that stacking introduces noise, McCann does not mention the size of these stacks, or disclose or suggest any correlation between the average size of these stacks and noise characteristics of magnetic recording media.” Dec. 24. Furthermore, McCann presents information regarding a correlation between milling time and noise power, but is silent regarding S/N and C/N ratios, which involve signal power and carrier power, in addition to noise power. PO Resp. 47; Dec. 22. We also note that the data in the ’891 patent itself undermines Petitioner’s contentions that T1, T2, D1, and D2 could not have their respective C/N and S/N ratios if their average cluster sizes did not fall within the range recited in claim 1. See Pet. 39 (“T1 could not have a C/N ratio of 0.0 dB if its average cluster size did not fall within claim 1’s range.”), 40 (“T2 could not have a C/N ratio of 1.3 dB if its average cluster size did not fall within claim 1’s range[ ].”), 45 (“D1 could not have a S/N ratio of 24.0 dB if its average cluster size did not fall within claim 1’s range.”), 46–47 (“D2 could not have a S/N ratio of 25.0 dB if its average cluster size did not fall within claim 1’s range.”). Tables 2 and 3 of the ’891 patent both demonstrate that a magnetic disk or tape can have “good” sound 2 S.M. McCann et al., Noise characterisation of barium ferrite dispersions, J. MAGNETISM & MAGNETIC MATERIALS 193, 366–369 (1999) (Ex. 1003, “McCann”). characteristics without having an average cluster size within the range recited in claim 1. In particular, Embodiment 13 in Table 2 has a C/N ratio of 0.0 and meets all limitations of claim 1 (magnetic layer size, coercivity, particle size) except for average cluster size. Ex. 1001, col. 28, Tables 2 and 3. Embodiment 13 has an average magnetic cluster size equal to 5.5×104 nm2 – which falls outside of claim 1’s range of “equal to or higher than 0.5×104 nm2 and less than 5.5×104 nm2.” Id. at 31:47–49 (emphasis added). The same is true for Embodiment 6, which also has an average magnetic cluster size equal to 5.5×104 nm2, but otherwise meets all limitations of claim 1, and has an S/N ratio of 20.5. Id. at col. 28, Tables 2 and 3. These data demonstrate that a magnetic disk or tape can have an average cluster size that falls outside of the claimed range and still provide “good” noise characteristics.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Decision (Paper 8, “Dec.”) denying institution of an inter partes review of claims 1, 4–9, 11, and 14 of U.S. Patent No. 6,641,891 B2 (Ex. 1001, “the ’891 patent”). Paper 9 (“Req. Reh’g”). In our Decision, we determined that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of the challenged claims of the ’891 patent. See 35 U.S.C. § 314(a).” slip op. at 2
§ 102 anticipationPatents in suitUS 6,641,891 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00762 · APJ Christopher M Kaiser · IPR · Rehearing
Denied Petitioner’s rehearing request; claims 1–5 remain instituted only on the Mukherjee anticipation ground, with institution denied on the Briffod and Takano anticipation grounds.
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). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner 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)Not shown unpatentableNot shown unpatentable
“sufficiently that Briffod discloses the “crack structure” of the recited claims on the surface of its film 2. Dec. 14–15. This was based on the failure of Petitioner and Briffod to explain whether the voids that Petitioner contends constitute cracks are present on “the surface” of the layer in question. Id. In its Request for Rehearing, Petitioner now argues that conclusion was an abuse of discretion. Request 6–9. Petitioner argues that Briffod discloses voids contained within film 2 and that these voids “qualify as cracks.” Id. at 6. As stated in our Decision, we agree that Briffod discloses voids within film 2, and, for the purposes of deciding whether to institute inter partes review, we accepted Petitioner’s contention that the voids in question constitute “cracks.” Dec. 13–14. The challenged claims, however, require that the “alloy layer has a crack structure on its surface,” and the Petition failed to explain why the presence of cracks within a layer demonstrates the presence of cracks on the surface of that layer.” slip op. at 5
- BurdenDecided for patent owner
“Finally, Petitioner argues that the roughness of the surface of film 2 and the roughness of overlying thin film 3 demonstrate the presence of voids on the surface of film 2. Request 8–9. Once again, Petitioner fails to explain adequately where this argument was made previously. Petitioner intermittently points to portions of the Petition where it contends that this argument was made previously, but Petitioner also intersperses arguments that do not cite to the Petition. Id. (citing Pet. 13–14, 23). To the extent that the citations are missing, we cannot consider this argument. 37 C.F.R. § 42.71(d). Even if we could consider this argument, we would not be persuaded that it showed an abuse of discretion in our conclusion that Petitioner failed to show sufficiently that Briffod discloses the presence of a crack structure on the surface of thin film 2. Briffod shows voids within thin film 2, and Briffod shows that thin film 2 has a rough surface. Ex. 1003, Fig. 1b. Briffod also states that the voids caused by the Kirkendall effect “may be the reason for the observed porosity of [thin film 3].” Id. at 4:21– 29. It is not clear that this establishes a causal relationship of any kind between the presence of voids and the rough surface, because it only posits a possible connection. Even if the voids do cause the surface to be rough, they could do so through several conceivable mechanisms, only one of which is the accumulation of voids at the surface. Petitioner did not explain in the Petition why we should assume any causal relationship, much less the single type of causal relationship that would satisfy the language of the challenged claims.” slip op. at 6
§ 102 anticipationPatents in suitUS 6,482,535 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00764 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no abuse of discretion in denying institution on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“evidence presented, that Petitioner established sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Dec. 19–20. Specifically, we stated that Briffod describes the surface of thin film 3 as shown in Figure 1b (the claimed “coating layer,” according to Petitioner) as “very rough,” with “many holes of 1 to 2µ which confirms the sponge-like structure suggested by the appearance of the surface.” [Ex. 1003, 4:8–15.] Briffod does not, however, describe the characteristics of film 2, which Petitioner contends is the “alloy layer” required by the claims. See Pet. 29 (quoting Ex. 1003, 2:55–56); id. at 30 (same). Petitioner does not provide any other evidence that shows sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Id. Therefore, we considered Petitioner’s arguments and evidence that cracks or voids are formed in Briffod film 2, and deemed it insufficiently persuasive. Moreover, with respect to Petitioner’s argument that Briffod Figure 1b “illustrates the Kirkendall voids as small circles in the film 2,” we note that Briffod describes Figure 1b as illustrating the Briffod invention “in a schematic manner” (Ex. 1003, 2:51–55), and does not explain what, if anything, the “small circles” drawn in film 2 signify. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. As a result, we did not abuse our discretion in denying institution of inter partes review of claims 2, 5, 7, 8, and 10 on the asserted ground of unpatentability based on Briffod.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“to show anticipation because Comparative Example 2, alone, shows all of the features of claims 1 and 6 of the ’036 patent.” Req. Reh’g 13. Petitioner does not point us to where this argument was made in the Petition; instead, Petitioner directs us to page 19 of the Petition, which is an overview of Takano. Id. at 12. In contrast, in the claim charts, which “show features of Takano that correspond to the claims of the ‘036 patent,” Petitioner identifies Example 1 as disclosing some limitations of the claims, and Comparative Example 2 as disclosing others. See, e.g., Pet. 33–34 (claim chart for claim 1). Per 37 C.F.R. § 42.71(d), Petitioner must point out where the matter was previously addressed in its Petition. We could not have overlooked argument or evidence that was not presented in the Petition. A request for rehearing is not an opportunity to supplement a petition.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,492,036 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the refusal to institute on Takano anticipation of claims 1–4, 6, and 14–18.
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). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,306,523 - Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCRehearing deniedPTAB · Jan 12, 2016 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Petitioner’s request for rehearing, finding no overlooked or misapprehended matter or abuse of discretion in determining claim 10 was not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents and unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In our Final Decision, we credited Dr. Pickens’s testimony that designing a thick plate composition having the claimed properties would be costly and unpredictable, and that “one should have a specific service requirement in mind when attempting to design an alloy, given the sheer number of different applications in the aerospace industry.” Final Dec. 14– 15 (citing Ex. 2043 ¶ 18). We considered Petitioner’s evidence that there was a commercial need in the aerospace industry for the claimed thick plate aluminum alloys, and determined “that Mr. Balmuth and Dr. Starke fail[ed] to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art.” Id. at 15.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. Final Dec. 12. Inherency requires that the claim limitation in question is necessarily present in the reference. In re Montgomery, 677 F.3d 1375, 1379–1380 (Fed. Cir. 2012). “Inherency, however, 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 Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotation omitted). Here, Petitioner offers Mr. Balmuth’s and Dr. Starke’s unsupported statements that the claimed properties would be inherent in a thick plate having the same chemistry of a thin plate. In the Request, Petitioner does not identify sufficiently evidence regarding the underlying facts and data on which Mr. Balmuth’s and Dr. Starke’s opinions are based that we overlooked or misapprehended. We are not persuaded that we abused our discretion in finding that the opinions of Mr. Balmuth and Dr. Starke are not persuasive because they are not supported by objective evidence. See Final Dec. 12.” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. Final Dec. 12. Inherency requires that the claim limitation in question is necessarily present in the reference. In re Montgomery, 677 F.3d 1375, 1379–1380 (Fed. Cir. 2012). “Inherency, however, 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 Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotation omitted). Here, Petitioner offers Mr. Balmuth’s and Dr. Starke’s unsupported statements that the claimed properties would be inherent in a thick plate having the same chemistry of a thin plate. In the Request, Petitioner does not identify sufficiently evidence regarding the underlying facts and data on which Mr. Balmuth’s and Dr. Starke’s opinions are based that we overlooked or misapprehended. We are not persuaded that we abused our discretion in finding that the opinions of Mr. Balmuth and Dr. Starke are not persuasive because they are not supported by objective evidence. See Final Dec. 12. With respect to Petitioner’s contention that we overlooked Mr. Balmuth’s and Dr. Starke’s testimony regarding routine experimentation, we note that we specifically addressed these opinions in the Final Decision. See Final Dec. 14–16. We credited Dr. Pickens’s testimony regarding the difficulties a person having ordinary skill in the art would encounter in attempting to design a thick plate alloy with the claimed properties. Id. at 14–15. We did not overlook Mr. Balmuth’s or Dr. Starke’s testimony regarding routine testing. Rather, we found it unpersuasive. It is within the Board’s discretion to assign the appropriate weight to testimony offered by the witnesses. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that Board has discretion to give weight to one item of evidence over another “unless no reasonable trier of fact could have done so.”). We decline to reweigh the evidence in considering a motion for rehearing. Ex parte NTP, Inc., Appeal No. 2008-004594, 2010 WL 429233 at *1 (BPAI Feb. 4, 2010).” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,229,509 - Servicenow, Inc. v. Hewlett-Packard Co.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00716 · APJ James B Arpin · IPR · Rehearing
The Board denied ServiceNow’s rehearing request, leaving institution denied for all challenged claims because the evidence did not show a reasonable likelihood that the Collaborate References were publicly accessible printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(emphasis added). In addition, “[e]vidence not already of record at the time of the decision will not be admitted [with a request for rehearing] absent a showing of good cause.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (emphasis added). When reconsidering a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner fails to make the critical link between the alleged identification of the Collaborate References on the “download page” and the exhibits relied upon in support of its asserted grounds. Despite Petitioner’s arguments and assertion that this “page” was publicly accessible “by no later than August 29, 2001,” Petitioner fails to demonstrate Exhibits 1004–1006, which Petitioner relies upon in support of each of the asserted grounds, were publicly accessible through the webpages included in Exhibit A to the Butler Affidavit more than one year prior to May 14, 2003. See Pet. 21; Ex. 1002 ¶ 205.” slip op. at 4
- ExcludeDecided for petitioner
“of the copyright notices on Exhibits 1004–1006 in our Decision on Institution. We did not “sustain” Patent Owner’s evidentiary objection; Petitioner’s evidence was neither excluded from the record nor denied consideration. Cf. 37 C.F.R. § 42.64. In fact, as our Decision on Institution makes clear, the evidence of the copyright notices was considered fully, along with the other evidence presented by the parties, in reaching our determination on the public accessibility of Exhibits 1004– 1006. See Dec. 15–17. Specifically, on this record, we were not persuaded that the copyright notices are entitled to any greater weight than that afforded to hearsay in determining public accessibility. Id. at 17.” slip op. at 9
§ 102 anticipationPatents in suitUS 7,945,860 - PTAB · Feb 9, 2015 · IPR2014-00941 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioners did not show error in the finding that the petition failed to establish a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“information contained in pages 6–16, 19–31, 36–42, and 47–54 of the Petition. Instead, we considered the evidence and arguments presented in the Petition and deemed them insufficient to establish a reasonable likelihood that at least one of the challenged claims of the ’631 patent is unpatentable. Dec. 6–16. For example, with respect to the anticipation challenge based on Miele, Petitioners allege that we overlooked arguments and evidence that establish that the Miele granulated fertilizer is comprised of the same components, and uses the same granulation method, as the ’631 patent and, therefore, must have the water dispersibility properties claimed in the ’631 patent. Req. Reh’g 12–13. However, we considered Petitioners’ evidence and were not persuaded that Miele inherently describes pellets or granules that disperse into more than 100 pieces when contacted with water, as is required by every challenged claim. See Dec. 12–13 (discussing Petitioners’ arguments supported by evidence presented in pages 42–44 and 47–54 of the Petition). Disagreement with the Board’s analysis and conclusions is not a sufficient basis on which to request rehearing. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“information contained in pages 6–16, 19–31, 36–42, and 47–54 of the Petition. Instead, we considered the evidence and arguments presented in the Petition and deemed them insufficient to establish a reasonable likelihood that at least one of the challenged claims of the ’631 patent is unpatentable. Dec. 6–16. For example, with respect to the anticipation challenge based on Miele, Petitioners allege that we overlooked arguments and evidence that establish that the Miele granulated fertilizer is comprised of the same components, and uses the same granulation method, as the ’631 patent and, therefore, must have the water dispersibility properties claimed in the ’631 patent. Req. Reh’g 12–13. However, we considered Petitioners’ evidence and were not persuaded that Miele inherently describes pellets or granules that disperse into more than 100 pieces when contacted with water, as is required by every challenged claim. See Dec. 12–13 (discussing Petitioners’ arguments supported by evidence presented in pages 42–44 and 47–54 of the Petition). Disagreement with the Board’s analysis and conclusions is not a sufficient basis on which to request rehearing. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Moreover, with respect to Petitioners’ obviousness challenges, while pages 6–16, 19–31, 36–42, and 47–54 of the Petition may have included information relevant to the inquiries, Petitioners did not provide sufficient analysis that would constitute articulated reasoning with rational underpinnings as to why one of ordinary skill in the art would combine and modify the prior art as Petitioners allege. Although Petitioners may have intended the Board to comb through the information presented throughout the aforementioned pages, and pick out the pieces that support an “obvious to try” rationale for each asserted prior art combination, we were unable to discern such an intent from the wording and structure of the challenges as presented on pages 16–20, 31–36, and 44–46 of the Petition. We could not have overlooked a detailed analysis or explanation that is not presented. A request for rehearing is not an opportunity to supplement a petition.” slip op. at 3
- BurdenDecided for patent owner
“industry relative to each Challenge.” Id. Instead of including a detailed explanation of the challenged claims under each asserted ground in their Petition as is required by our rules (37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)), however, Petitioners referred to paragraphs in the Sensibaugh Declaration that spanned approximately 9 pages of claim charts and other arguments to support the unpatentability challenges based on Sensibaugh. See Dec. 14– 15. Our rules state that arguments must not be incorporated by reference from one document into another. 37 C.F.R. § 42.6(a)(3). Because the Petition did not include a detailed explanation of the significance of the cited paragraphs of the Sensibaugh Declaration, and because arguments must not be incorporated by reference from the Sensibaugh Declaration into the Petition, we did not abuse our discretion in denying institution of inter partes review on the asserted grounds of unpatentability based on Sensibaugh.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,574,631
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.