- Envirologix Inc. v. Ionian Technologies, Inc.Rehearing deniedPTAB · Oct 11, 2018 · IPR2018-00406 · APJ Ulrike W Jenks · IPR · Rehearing
The Board denied EnviroLogix’s rehearing request, leaving institution denied because Ehses did not show a reasonable likelihood of proving any challenged claim anticipated.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable
“anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 6
§ 102 anticipationPatents in suitUS 9,562,264 - Envirologix Inc. v. Ionian Technologies, Inc.Rehearing deniedPTAB · Oct 11, 2018 · IPR2018-00405 · APJ Christopher G Paulraj · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution, finding no reasonable likelihood that Ehses anticipated any challenged claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“We remain unpersuaded by this argument. As discussed in our Decision, anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 19 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 82). In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“2 Although not established as prior art, the Ehses Dissertation indicates that TO- PRO-1 fluoresces in the presence of double stranded DNA, whereas SYBR Gold detects both double and single-stranded products. See Ex. 1004, 37. zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 5
§ 102 anticipationPatents in suitUS 9,562,263
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.