- Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · 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 anticipationPatents in suitUS 9,867,839 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · 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 anticipationPatents in suitUS 9,820,999 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · 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 anticipationPatents in suitUS 9,051,827 - Apotex Inc. / Apotex Corp. v. Celgene CorporationRehearing deniedPTAB · 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 denialPatents in suitUS 8,741,929 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · 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 anticipationPatents in suitUS 9,707,245 - Dukane Corporation v. Herrmann Ultraschalltechnik GmbH & Co., KGRehearing deniedPTAB · May 26, 2016 · IPR2016-00066 · APJ Michelle N Ankenbrand · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 4, 5, and 7–9 because Petitioner did not show the Board misapprehended or overlooked its arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears 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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regarding the asserted grounds that Klinstein ’158 anticipates claim 8 and the DPC Manual anticipates claims 6–9, we determined that Petitioner “fail[ed] to address the limitations reciting different target variables for the machining intervals,” which was “fatal to [those] unpatentability assertions.” Dec. 9–10. Likewise, we determined that Petitioner’s failure to address the additional “target variable[s] differ” limitation of claim 8 was fatal to the asserted ground that the subject matter of claim 9 (which depends from claim 8) would have been obvious over the combination of Klinstein ’158 and the iQManual. Id. at 10. Regarding Petitioner’s assertion that Klinstein ’158 anticipates claim 6, we determined that, although Petitioner addressed the “target variable[s] differ” limitation, Petitioner failed to explain adequately how the reference discloses that limitation. Id. at 12–13. With respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816, we determined that Petitioner did not provide “adequate reasoning based on rational underpinnings to persuade us, in the absence of hindsight, that one of ordinary skill would have modified the welding method of Klinstein ’816 to achieve the claimed subject matter [i.e., the specific features that claims 4 and 5 add to the subject matter of claim 1].” Id. at 16.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 5 (citing Pet. 43–53). Petitioner does not direct us to the particular page of the Petition on which it advanced that argument, but, rather, cites ten pages of analysis. After reviewing the cited pages, it appears that Petitioner made the argument in a claim chart to show how the DPC Manual discloses welding variables and target variables, not how the DPC Manual discloses the “target variable[s] differ” limitation. See Pet. 45– 46. Indeed, Petitioner’s claim chart does not address the “target variable[s] differ” limitation. Like the Petition, the claim chart focuses on whether the target values of the target variable differ. Id. at 46. In any event, Petitioner fails to explain how the identification of exemplary target variables set forth in the DPC Manual is an anticipating disclosure of different target variables for each machining interval. In fact, the analysis in the Petition contradicts Petitioner’s argument in this regard because, as explained previously, Petitioner identifies the same variable as corresponding to the first, second, and fifth target variables disclosed in the DPC Manual. Dec. 9 (citing Pet. 57). Petitioner further admits that the DPC Manual discloses “the ‘[c]ontrol parameters [i.e., target variables] for P2 are the same as those used for P1, however the limits set for the parameters are specific to each pressure.’ Thus, the user-specified target values for the first and second control parameters may differ.” Pet. 52 (citing Ex. 1005, 81) (emphasis added). Consistent with that description, Figure 7-16 of the DPC Manual illustrates how to set the dual pressure control and depicts the same control parameter (i.e., target variable) for P2 and P1 (i.e., weld time). Ex. 1005, 82. Accordingly, we are not persuaded that we overlooked or misapprehended Petitioner’s arguments as to what each of Klinstein ’158, Klinstein ’816, and the DPC Manual discloses.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“detecting a third target variable during the first machining interval and selecting the second target variable depending on the result of the detection. Ex. 1001, 4:52–55. Claim 5 depends from claim 4 and narrows the third target variable to welding time. Id. at 4:56–57. As to these claims, we determined that Petitioner’s argument, which was devoid of discussion and citations to Klinstein ’816, “fails to link the hypothetical detection and selection criteria [that a skilled artisan ‘could have’ used] to any particular teaching, preference, suggestion, or other reasoning derived from Klinstein ’816 and the level of skill in the art.” Dec. 16. We also determined that the Klinstein Declaration “adds no further detail; it merely mirrors the Petition.” Id. Petitioner contends that the entire discussion on pages 31–41 of the Petition relates to the obviousness of claims 4 and 5 from the disclosure of Klinstein ’816. Reh’g Req. 6. As Petitioner concedes in the Rehearing Request, however, “[t]hose pages make it clear, in graphic detail including reproduction of drawings from the [Klinstein] ’816 patent, how claim 1 is anticipated by the [Klinstein] ’816 patent.” Id. (emphasis added). In other words, the analysis on pages 31–41 does not set forth how the additional features of claims 4 and 5 would have been obvious from the disclosure of Klinstein ’816 and the level of skill in the art. Petitioner also repeats in the Rehearing Request essentially the same argument that was raised in the Petition, purporting to establish the link between Petitioner’s hypothetical detection criteria and the disclosure of Klinstein ’816 we found missing from its argument and the Klinstein Declaration. Compare Reh’g Req. 6–7, with Pet. 42 and Ex. 1007 ¶ 55. Petitioner’s argument is no more persuasive on the second telling. That is, Petitioner reargues a case it attempted to make out in the Petition, but fails to point out how we misunderstood its arguments or Mr. Klinstein’s testimony. Accordingly, we are not persuaded we misapprehended or overlooked Petitioner’s arguments with respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,702,883 - Ardagh Glass Inc. v. Culchrome, LLCRehearing deniedPTAB · Jan 5, 2016 · IPR2015-00943 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing of the denial of IPR on claims 1, 2, 5–10, 17, and 26–31, finding no abuse of discretion on the Nix anticipation or Nix–Faber obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On this record, Petitioner does not demonstrate an abuse of discretion in the Decision to deny inter partes review of claims 1, 2, 5–10, 17, and 26– 31 of the ’521 patent based on anticipation by Nix.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The Decision construes “desired glass coloring oxide agent levels” as “concentrations of coloring oxides necessary to produce recycled glass products of a particular color.” Dec. 10. Contrary to Petitioner’s argument, the construction does not require that “oxide agent” be “only ‘oxide’” or “pure oxides.” Rehearing Req. 5. Nor does the Decision apply an unduly narrow claim construction in analyzing Nix. The Decision does not rest on a finding that Calumite slag is not an “oxide agent,” as argued by Petitioner. Id. at 6. Instead, the Decision finds that Dr. Risbud’s “concrete example,” Ex. 1010 ¶ 71, is not supported by Nix (Ex. 1004), because the “coloring oxide agent” identified by Dr. Risbud—“SO3 oxide coloring agent”—is not disclosed by Nix as having a redox factor of 0.092, as set forth in Dr. Risbud’s “concrete example.” Dec. 16; Ex. 1010 ¶ 71 (table). On this record, Petitioner does not demonstrate that the Decision is based on an incorrect claim construction.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Rehearing Req. 7, but identifies no error in our determinations that the “concrete example” set forth in that table is not disclosed in Nix and that Dr. Risbud’s opinions are “based on a modified version of Nix’s disclosure, without a sufficient evidentiary basis for the modification.” Dec. 15. Although Petitioner argues that “an implicit property of equations [is] that variables can be rearranged to solve for different variables,” Petitioner does not identify any equation in Nix having desired glass coloring oxide agent levels as a variable. Petitioner does not persuade us that the Decision misapprehends or overlooks any disclosure in Nix that teaches or suggests step [f] of the claims.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable
“stated basis for combining the teachings of Faber and Nix, including Faber’s citation to Nix. Rehearing Req. 11–12. We are not persuaded by Petitioner’s argument. The Decision expressly acknowledges Faber’s reference to Nix (Dec. 18) and acknowledges that the Petition and Risbud Declaration discuss a reason to combine the teachings of Nix and Faber, id. at 20. The Decision assumes that a person of ordinary skill in the art would have combined the teachings of Nix and Faber, but determines that the Petition and Risbud Declaration do not explain sufficiently how the combination of Faber and Nix would have led to the claimed method. Dec. 20. Petitioner does not persuade us that wemisapprehended or overlooked any portion of the Petition or Risbud Declaration, or otherwise abused our discretion, in making this determination.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,230,521
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.