- CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentablePTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand
Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38
Patent outcomesUS 10,647,861 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,647,861 - Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.No claims unpatentablePTAB · Apr 10, 2019 · IPR2018-00012 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–5 were not shown unpatentable as obvious over WD4-v2, Lin, and Zhou II because Petitioner failed to establish that Zhou II was a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The determination of whether a document is a printed publication involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. See Medtronic, 891 F.3d at 1380; In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A document is considered a printed publication if it has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence [could] locate it.” Acceleration Bay, LLC v. Activation Blizzard Inc., 908 F.3d 765, 774 (Fed. Cir. 2018); SRI Int’l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Indexing a reference is not “a necessary condition for a reference to be publicly accessible,” but it is one among various factors that may bear on public accessibility. In re Lister F.3d 1307, 1311 (Fed. Cir. 2009); see also Acceleration Bay, 908 F.3d at 774 (stating “where indexing is concerned, . . . the ultimate question is whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it”).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For the foregoing reasons, we conclude that Petitioner has not persuasively shown that a person interested and ordinarily skilled in the subject matter, exercising reasonable diligence, could have located Zhou II on the JCT-VC website, and thus, has not shown that Zhou II was publicly accessible by virtue of its uploading onto the JCT-VC website.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a B.S. degree in electrical engineering, or equivalent thereof, and at least three to four years of experience in the relevant field, which includes video coding technology, or an M.S. degree in electrical engineering and at least two to three years of experience with video coding technology. More education can supplement practical experience. Pet. 8 (citing Ex. 1002 ¶¶ 21–22). Patent Owner contends that a person of ordinary skill in the art would have had credentials that “reflect a practical understanding of the design considerations and challenges associated with the video coding technology at issue in the ’855 patent,” such as “an engineering degree and three or more years of actual industry experience.” PO Resp. 20. The parties’ proposals do not differ in any significant way. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported explicitly by the testimony of Mr. Bross and is commensurate with the level of ordinary skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner, in its Reply, presents evidence and argument for the first time that Zhou II was disseminated at the sixth JCT-VC meeting in Torino in July, 2011 because it was “presented and discussed” during the meeting. Reply 16–17 (citing Ex. 1057, 23, 97) (emphasis added). This argument is an entirely new theory of public accessibility and exceeds the proper scope of a reply. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition or patent owner’s response.”).” slip op. at 20
Patent outcomesUS 8,654,855 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,654,855 - Fujifilm Corporation v. Sony CorporationNo claims unpatentablePTAB · Dec 3, 2018 · IPR2017-01390 · APJ Jeffrey W Abraham · IPR · Final written decision
The Board held that claims 1–18 were not shown unpatentable because the prior art did not establish the claimed volume concentration in the formed magnetic layer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“define the term “volume concentration.” In the context of the ’331 patent, “volume concentration” refers to the volume concentration of the magnetic particles in the formed magnetic layer.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording, or (2) a Master’s degree or higher in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 12; Ex. 1017 ¶ 60. Although Patent Owner does not expressly define the appropriate level of skill in the art in the Patent Owner Response or its Supplemental Response, Patent Owner’s declarant, Dr. Bain, presents a definition of a person of ordinary skill in the art in his declaration that is nearly identical to Petitioner’s definition. Ex. 2001 ¶ 44. In view of this, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“information, is not sufficient evidence to establish that Mori discloses the “volume concentration” recited in claim 1. Patent Owner does not dispute that there is some magnetic alloy present “in the magnetic layer” of Mori. The relevant question, however, is how much and how Mori’s disclosed values were determined. Unlike the term “volume concentration,” for which the parties offered undisputed evidence regarding accepted meanings of the term in the art (i.e., packing fraction and pigment volume concentration), we have not been directed to similar evidence regarding the phrase “fill rate”/“filling rate” in Mori. Thus, although Mori states “[t]he filling rate by volume of the strongly magnetic alloy powder in the magnetic layer can be equal to or higher than 30%” (Ex. 1003 ¶ 11 (emphasis added)), Petitioner has not offered sufficient evidence demonstrating that the term “filling rate” in Mori refers to a final product-based value. As a result, we find that this language in Mori does not establish, by a preponderance of evidence, that Mori discloses the “volume concentration” recited in claim 1.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For all of the foregoing reasons, we find that Petitioner has failed to demonstrate, by a preponderance of evidence, that the combined teachings of Aonuma and Mori disclose or suggest “[a] dual layer magnetic recording medium comprising . . . a magnetic upper recording layer formed over [a] lower support layer, the magnetic upper recording layer comprising a volume concentration of at least about 35% of a primary magnetic particulate pigment,” as recited in independent claims 1 and 16. Ex. 1001, 11:14–20, 12:25–31. Claims 2–15, 17, and 18 depend from claim 1 or claim 16, and, therefore, include the “volume concentration” limitation of claims 1 and 16. As a result, we find that Petitioner has failed to demonstrate that Aonuma and Mori disclose or suggest each limitation of claims 1–18, and, therefore, has not demonstrated by a preponderance of evidence that claims 1–18 are unpatentable as obvious over Aonuma and Mori.” slip op. at 26
Patent outcomesUS 7,115,331 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,115,331 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentablePTAB · Mar 29, 2017 · IPR2016-00963 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–18 were not shown unpatentable because Lin was not established as a publicly accessible printed publication.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Dr. Karger’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Our analysis does not end there, however, because “public accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 25–26. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 27–28; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 73–74; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 17; Ex. 1004; Ex. 2030. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 5 with claim 25, claim 8 with claim 26, and claim 10 with claim 27, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 22
Patent outcomesUS 6,829,634 not shown unpatentable§ 102 anticipationcites KSR · GrahamPatents in suitUS 6,829,634 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentablePTAB · Mar 29, 2017 · IPR2015-01964 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–18 were not shown unpatentable because Lin was not established as a publicly accessible printed publication; the contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 25–26. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“of record through the prism of the Federal Circuit’s case law regarding public accessibility of references, we conclude that Petitioner has not met its burden of showing Lin was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art could have located it exercising reasonable diligence. Therefore, we conclude Lin is not a printed publication under 35 U.S.C. § 102(a) that can be used to challenge the patentability of the claims in the ’634 patent in this proceeding. 3. Analysis of the Asserted Unpatentability Grounds Both of the asserted grounds at issue in this trial rely on Lin for teaching limitations of the challenged claims. See Pet. 14–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 10, 15, and 18 are anticipated by Lin or that claims 1–18 are unpatentable as obvious over Lin.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“of record through the prism of the Federal Circuit’s case law regarding public accessibility of references, we conclude that Petitioner has not met its burden of showing Lin was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art could have located it exercising reasonable diligence. Therefore, we conclude Lin is not a printed publication under 35 U.S.C. § 102(a) that can be used to challenge the patentability of the claims in the ’634 patent in this proceeding. 3. Analysis of the Asserted Unpatentability Grounds Both of the asserted grounds at issue in this trial rely on Lin for teaching limitations of the challenged claims. See Pet. 14–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 10, 15, and 18 are anticipated by Lin or that claims 1–18 are unpatentable as obvious over Lin.” slip op. at 22
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 5 with claim 25, claim 8 with claim 26, and claim 10 with claim 27, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 22
Patent outcomesUS 6,829,634 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,829,634 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentablePTAB · Mar 23, 2017 · IPR2016-00935 · APJ William M Fink · IPR · Final written decision
Claims 1–12 and 16–17 were not shown unpatentable because Lin was not established as a publicly accessible printed publication, and each asserted ground relied on Lin.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A reference will be considered publicly accessible if it 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.’” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).” slip op. at 10
- Strike new argumentNew argument disregardedGranted
“We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 82–83; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2022. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 60. Patent Owner filed such a paper (Paper 64), and Petitioner filed a responsive paper (Paper 66). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 1 with claim 18, claim 7 with claim 19, and claim 8 with claim 20, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 23
- ExcludeNot reached
“E. Motions to Exclude Petitioner seeks to exclude certain paragraphs of Exhibits 2026 and Exhibit 2027. Pet. Mot. Exc. 4–6. Because we do not rely on the cited evidence in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude as moot. Patent Owner seeks to exclude the following exhibits on evidentiary grounds: Karger Declarations (Exs. 1019, 1024, and 1025), Little Declaration (Ex. 1004), Butler Affidavit (Ex. 1042), Bennett Declaration (Ex. 1026), and Lin (Ex. 1004, Ex. B). PO Mot. Exc. 4–12. Even considering this evidence, we have determined Petitioner has not met its burden of showing Lin was a printed publication. Patent Owner also seeks to exclude Exhibits 1002, 1005, 1008–1015, 1017, 1023, 1025–1029, 1030– 1033, 1042–1043, and 1048–1051 on evidentiary grounds. Id. at 12–15. We have not relied on any of these exhibits in this Final Written Decision. For these reasons, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 23
Patent outcomesUS 6,714,966 not shown unpatentable§ 102 anticipationcites KSR · GrahamPatents in suitUS 6,714,966 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentablePTAB · Mar 23, 2017 · IPR2015-01951 · APJ William M Fink · IPR · Final written decision
Claims 1–12 and 16–17 were not shown unpatentable because Lin was not established as a prior art printed publication.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern substantial differences in the parties’ proposed descriptions of the level of ordinary skill in the art. Both require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 29–30. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 82–83; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2022. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 60. Patent Owner filed such a paper (Paper 64), and Petitioner filed a responsive paper (Paper 66). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Finally, we accord little weight to the opinions of Dr. Karger and Dr. Bennett that, based on the evidence cited by Petitioner, Lin was publicly accessible. See Ex. 1024 ¶ 80; Ex. 1026 ¶ 33. Whether a reference qualifies as a printed publication is a legal conclusion, based on underlying factual determinations, Blue Calypso, 815 F.3d at 1348, and the opinions rendered by Dr. Karger and Dr. Bennett are not based on sufficient facts or the relevant case law regarding public accessibility of references.” slip op. at 22
Patent outcomesUS 6,714,966 not shown unpatentable§ 102 anticipationcites KSR · GrahamPatents in suitUS 6,714,966 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentablePTAB · Mar 23, 2017 · IPR2016-00933 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–12 and 16–19 were not shown unpatentable because Lin was not established as a prior art printed publication, defeating both obviousness grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A reference will be considered publicly accessible if it 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.’” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 78–79; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2030. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 58. Patent Owner filed such a paper (Paper 62), and Petitioner filed a responsive paper (Paper 64). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 21
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 1 with claim 20, claim 7 with claim 21, and claim 8 with claim 22, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 24
- ExcludeOther
“E. Motions to Exclude Petitioner seeks to exclude certain paragraphs of Exhibits 2026 and Exhibit 2027. Pet. Mot. Exc. 4–6. Because we do not rely on the cited evidence in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude as moot. Patent Owner seeks to exclude the following exhibits on evidentiary grounds: Karger Declarations (Exs. 1019 and 1024), Little Declaration (Ex. 1004), Butler Affidavit (Ex. 1042), Bennett Declaration (Ex. 1026), and Lin (Ex. 1004, Ex. B). PO Mot. Exc. 4–12. Even considering this evidence, we have determined Petitioner has not met its burden of showing Lin was a printed publication. Patent Owner also seeks to exclude Exhibits 1002, 1005, 1007–18, 1021, 1023, 1025, 1030–33, 1035, and 1049–51 on evidentiary grounds. Id. at 4–7, 12–15. We have not relied on any of these exhibits in this Final Written Decision. For these reasons, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 24
Patent outcomesUS 6,701,344 not shown unpatentable§ 102 anticipationcites KSR · GrahamPatents in suitUS 6,701,344 - Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentablePTAB · Mar 23, 2017 · IPR2015-01970 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–12 and 16–19 were not shown unpatentable because Lin was not established as a prior art printed publication.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Dr. Karger’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“not a “necessary condition for a reference to be publicly accessible”; rather, it is one of a variety of factors that may be useful in determining whether a reference was publicly accessible. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). Furthermore, “indexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media.” Voter Verified, 698 F.3d at 1380. Nevertheless, the Federal Circuit has confirmed recently that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing . . . is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” Blue Calypso, 815 F.3d at 1349. Moreover, “[i]ndexing by subject matter offers meaningful assurance that an ordinarily skilled artisan, exercising reasonable diligence, will be able to locate a particular reference . . . .” Id.; see also Cronyn, 890 F.2d at 1161 (theses indexed by author not “indexed in a meaningful way”).” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“4. Analysis of the Asserted Unpatentability Grounds Both of Petitioner’s asserted grounds rely on Lin for teaching limitations of the challenged claims. See Pet. 26–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 1– 11 and 16–19 are unpatentable as obvious over Lin or that claims 1–12 and 16–19 are unpatentable as obvious over DirectPlay and Lin.” slip op. at 23
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 1 with claim 20, claim 7 with claim 21, and claim 8 with claim 22, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 24
Patent outcomesUS 6,701,344 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,701,344 - Daicel Corporation v. Celanese International CorporationNo claims unpatentablePTAB · Jun 23, 2016 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Final written decision
Claims 42–44, 47–51, 53, and 55–57 were not shown unpatentable: the ’095 patent did not establish the required amount of DME, and JP ’712 did not cure that deficiency.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 4– 5; Tr. 41:8–16. We, therefore, construe the recitation “distilling [a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC] to separate the mixture into a plurality of streams, at least one of said streams being a PRC enriched overhead stream comprising dimethyl ether” in step (a) of claim 42 as requiring the presence of dimethyl ether in the PRC enriched overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the PRC enriched overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the PRC enriched overhead stream (claim 42, step (b)) and (2) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 52; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 99; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial).” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“In sum, we determine Petitioner has failed to meet its burden to show, by a preponderance of the evidence, that the ’095 patent describes a process that inherently results in dimethyl ether in a PRC enriched overhead stream (produced by distilling a mixture comprising water, acetic acid, methyl iodide, methyl acetate, methanol, and at least one PRC) in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the PRC enriched overhead stream and (b) an increase in the amount of methyl iodide recoverable during a subsequent extraction of the raffinate stream, as required by the broadest reasonable interpretation of claim 42. Absent from the record is any evidence that DME is present in the second overhead in the ’095 patent Example in the amount required by independent claim 42 and its dependent claims 43, 44, 47–51, 53, and 55–57. Petitioner’s challenge with respect to claim 57 is based on obviousness over the combination of the ’095 patent and JP ’712. Petitioner relies on JP ’712 for a teaching that “methyl iodide concentration can be controlled by extraction temperature, . . . and that the concentration[] recited in [claim 57 is] well known in the art.” Pet. 55. Petitioner has not explained how JP ’712 cures the deficiency in the ’095 patent’s failure to describe step (a) of claim 42. Accordingly, we likewise determine Petitioner has failed to meet its burden to show unpatentability of claim 57 by a preponderance of the evidence. We conclude Petitioner has failed to meet its burden to show unpatentability of claims 42–44, 47–51, 53, and 55–57 of the ’507 patent.” slip op. at 59
Patent outcomesUS 8,076,507 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,076,507
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.