- Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing grantedPTAB · Oct 19, 2022 · IPR2022-00862 · APJ Sheila F Mcshane · IPR · Rehearing
On Director remand, the Board instituted inter partes review of claims 1, 2, 6–11, 13, and 15–24 on all petitioned grounds and granted joinder with IPR2021-01493.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Commerce for Intellectual Property and Director of the United States Patent and Trademark Office vacating our previous decision denying institution, remanding for further proceedings, and ordering us to reconsider joinder after reconsidering the decision denying institution. Paper 18 (“Remand Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1493 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1493 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,484,510 - PTAB · Apr 7, 2022 · PGR2021-00042 · APJ Sheridan K Snedden · PGR · Rehearing
The Board granted rehearing, reversed its discretionary denial, and instituted PGR on claims 6–8 based on the threshold showing of likely lack of enablement and anticipation.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree with Petitioner that a rehearing of our prior decision to deny institution is appropriate due to the changed circumstances of claims 6–8 of” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution is appropriate due to the changed circumstances of claims 6–8 of” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 324(a) provides that a post-grant review may not be instituted “unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and the Preliminary Response, and the evidence cited therein, we determine that Petitioner has shown that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Therefore, we grant institution of a post-grant review.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we accept Petitioner’s proposed definition, which is supported by Dr. Lambert’s testimony (Ex. 1002 ¶ 20) and is consistent with the scope and content of the ’039 patent and the asserted prior art.” slip op. at 17
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,808,039 - PTAB · Apr 7, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Granted Petitioner’s rehearing request and instituted PGR on claims 1–5, 9, and 10 based on the more-likely-than-not enablement showing and efficiency considerations.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Analysis “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366. Having considered the parties’ positions and evidence of record, summarized above, we determine that Petitioner has established that it is more likely than not that claims 1–5, 9, and 10 of the ’039 patent lack enablement. In particular, we are persuaded based on the record at this stage of the proceeding that the Specification does not enable the full scope of the claims. The Specification focuses on dolastatin/auristatin derivatives and does not describe novel ADCs having non-dolastatin/auristatin derivative drug moieties. Ex. 1001, Abstract. For example, the Specification states that “there is a clear need in the art for dolastatin/auristatin derivatives having significantly lower toxicity, yet useful therapeutic efficiency [sic]” and purports that “[t]hese and other limitations and problems of the past are addressed by the present invention.” Id. at 4:25–29 (emphasis added). Moreover, each embodiment, example, figure, and assay disclosed in the Specification appears to use a drug moiety that is a dolastatin/auristatin derivative. See, e.g., Ex. 1001, Abstract, 4:22–29, 50:56–52:30, 71:19–22, 131:23–48, Figs. 1–19, Examples 2–16. Claim 1, however, recites ADCs” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Instituted
“skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,808,039 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Neumodx Molecular, Inc. v. Handylab, Inc.Rehearing grantedPTAB · Aug 6, 2021 · IPR2020-01133 · APJ Jo-Anne M Kokoski · IPR · Rehearing
Granted Petitioner’s rehearing request and instituted review of claims 1–15 on all asserted grounds because the Petition showed a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Rehearing Request and conclude that we misapprehended the law of incorporation by reference when evaluating the grounds based on Ganesan- Publ’424, and that the Petition sets forth sufficient grounds and evidence to justify institution of trial.8 We, therefore, grant Petitioner’s Rehearing 8 Because our determination that we misapprehended the law of incorporation by reference is dispositive, we need not address Petitioner’s other arguments in the Rehearing Request. Request and institute an inter partes review of claims 1–15 of the ’103 patent on all the grounds asserted in the Petition.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“‘generally incorporates’ Ganesan-Prov’264, and did not ‘identif[y] with particularity’ any specific subject matter from Ganesan-Prov’264 . . . misapprehended the law of incorporation by reference in a way that is contrary to both Federal Circuit precedent and other Board decisions.” Req. Reh’g 10 (citing Dec. 18; Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). In particular, Petitioner argues that Advanced Display’s statement that “[t]o incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents” (212 F.3d at 1282) does not mean that the host document must identify some specific subject matter or subpart of the incorporated document (such as by page/line). Rather, the quoted statement simply means that the host document must clearly identify what is being incorporated and where it can be found—even when the incorporation applies to the entire document.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“with sufficient particularity such that the entirety of Ganesan-Prov’264 is incorporated therein, and Ganesan-Prov’264 forms a part of Ganesan- Publ’424 for purposes of anticipation. Ganesan-Prov’264 “relates generally to techniques for thermal control of microfluidic devices.” Ex. 1208, 2:29– 30. Ganesan-Prov’264 teaches that “heater/sensors in accordance with the invention may be integral with a microfluidic device or separate from a microfluidic device,” and “may be formed separately from the microfluidic device.” Id. at 12:16–21 (emphases added). Ganesan-Prov’264 further teaches that “one or more heater/sensors may be formed as part of a device configured to operatively receive a microfluidic device,” and “[t]he device may include one or more heater sensors positioned to be in thermal contact with portions of the operatively received microfluidic device.” Id. at 12:21– 26. Based on these teachings, Petitioner’s declarant, Dr. Mark Burns, testifies that “the heater array of Ganesan-Publ’424 may be formed integrally with the network-containing microfluidic substrate, or may be formed separately in a testing device into which the microfluidic substrate is placed or another part of the system.” Ex. 1101 ¶ 345 (citing Ex. 1109 ¶ 79; Ex. 1208, 12:20–25).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to begin on April 11, 2022. Prelim. Resp. 45. We note, however, that the parties recently filed a Stipulation and Proposed Order to Extend Case Schedule, pushing the trial to December 2022, which the district court granted. Ex. 3001. Given the statutory deadlines, our latest possible date for issuance of a final written decision in this proceeding is in July, 2022, one year after we issue this decision instituting an inter partes review. 35 U.S.C. §§ 314(c), 316(a)(11); see also 37 C.F.R. § 42.100(c). Thus, our final written decision would issue at least four months before trial. “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.” Fintiv Order 9. We find that this factor weighs strongly against exercising discretion to deny institution.” slip op. at 12
§ 102 anticipationDiscretionary denialPatents in suitUS 8,415,103 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Foursquare Labs, Inc. v. Mimzi, LLCRehearing deniedPTAB · May 19, 2020 · IPR2019-01287 · APJ J John Lee · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–19 in place because the challenged prior-art and priority arguments did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. The Board applies an abuse of discretion standard when reviewing a decision on a petition for rehearing. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportOther
“governing statute was 35 U.S.C. § 102(a)(2) (2013), as amended by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Inst. Dec. 13–19. On the record available at the time, we agreed with Petitioner that the ’981 Patent included claims with an effective filing date on or after March 16, 2013, the effective date of the AIA amendment to § 102. See id.; Reply 1–2; AIA § 3(n)(1). Specifically, we determined (preliminarily) that the challenged claims are not adequately supported by the written description of U.S. Patent Application No. 12/181,956 (“the ’956 Application”), and, thus, could not claim priority to the ’956 Application, the only application in the priority chain that was filed before the AIA’s relevant effective date. Inst. Dec. 17–19. Under post-AIA § 102(a)(2), a published patent application of another inventor (like Yoo) is prior art if it “was effectively filed before the effective filing date of the claimed invention.” Yoo was filed on May 6, 2008. Ex. 1003, code (22). Consequently, under post-AIA § 102(a)(2), Yoo would qualify as prior art because its filing date is before the effective filing date of the claimed invention.2 Ex. 1001, code (60). 2 We note that Yoo’s effective filing date precedes all of the possible effective filing dates listed on the face of the ’981 Patent, including the July 29, 2008 filing date of the ’956 Application. See Ex. 1001, code (60). As noted above and discussed further below, however, whether the claims are supported by the ’956 Application relates to the threshold issue of whether post-AIA § 102(a)(2) applies to Yoo.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,128,981 - Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - Donner Technology, LLC v. Pro Stage Gear, LLCRehearing grantedPTAB · Nov 9, 2018 · IPR2018-00708 · APJ John A Hudalla · IPR · Rehearing
The Board granted rehearing and instituted review of claims 9–13 and 22–30 on all petition grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). The party requesting rehearing has the burden of showing the decision should be modified, which” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“SCC-700 and Mullen teaches all the limitations of claim 9. Pet. 35–54. Petitioner has also provided a reason with a rational underpinning for combining Mullen with SCC-700. Id. at 43–44. Thus, Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 9 would have been obvious over the combination of SCC-700 and Mullen.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Institution, our determination that Mullen is nonanalogous art was based on defining the relevant problem as “guitar effects pedal mounting.” Dec. 20. Notwithstanding, Petitioner does present some evidence that a problem addressed by Mullen—namely, providing wiring channel space under shelf parts—is reasonably pertinent to a problem recognized in the ’023 patent— namely, providing an area for cable routing and placement in a pedal effects mounting board.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“For purposes of this Decision, we determine that SCC-700 qualifies as prior art under § 102(b) based on Petitioner’s evidence of public dissemination of SCC-700 during the 1980s. See Pet. 20–23. The public dissemination of SCC-700 occurred more than one year before the earliest possible effective filing date of the challenged claims, which is September 7, 1999. Ex. 1001, [60].” slip op. at 7
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,459,023 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00130 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review of claims 1, 11–15, and 19–30 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Based on the foregoing discussion, Patent Owner fails to show an overlooked or misapprehended material matter amounting to an abuse of discretion in determining Petitioner shows sufficiently that RFC 1692, RFC 1459, and RFC 791 qualify as prior art printed publications. III. CONCLUSION Patent Owner has not carried its burden of demonstrating that we misapprehended or overlooked any material matters in the Decision, and has not shown an abuse of discretion in the Decision to institute an inter partes review of the challenged claims of the ’523 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Crocker’s testimony that the RFCs were available generally prior to the critical date, wherein a skilled artisan could have determined how to access particular RFCs based on mailing lists and newsletters discussing the RFCs. See Dec. 30–32. In particular, Mr. Crocker’s testimony included the (numbered accordingly), the “situation” regarding RFCs and the IETF, as summarized by the court employing, in part, evidence including a 1997 SEC (Securities Exchange Commission”) filing, would not have changed materially prior to the critical date (February, 1996) involved here. following: 1) “an official summary of published RFCs appeared in each issue of the Internet Society’s newsletter” which “was well-known to members of the Internet technical community as a source for an official summary of published RFCs” (id. at 31 (citing Ex. 1026 ¶ 24)); 2) a well-known mailing list announced RFCs to which anyone could subscribe since the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication “summarize[d] the status of all Internet protocol and service specifications” wherein “[t]hese RFCs are made publicly available pursuant to the standard RFC publication process” (id. (citing Ex. 1026 ¶ 23)). Mr. Crocker further testifies as follows: “Since the early 1990s, the RFC Editor repository has been freely accessible to the general public with no login, password, or membership requirement, and was similarly available to the Internet technical community since the 1970s.” Id. (citing Ex. 1026 ¶ 26).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of our Decision (Paper 11, “Dec.”) to institute inter partes review of claims 1, 11–15, and 19–30 of (the “challenged claims”) of U.S. Patent No. 5,822,523 and 5,822,523 C1 (Ex. 1001, the “’523 patent”). In the Decision, we instituted a trial on the following grounds asserted by Petitioner: 1) claims 1, 15, and 19–27 of the ’523 patent for obviousness over Aldred and RFC 1692; and 2) claims 11–15, 23, and 27–30 of the ’523 patent for obviousness over Aldred, RFC 1692, and Ulrich. Dec. 49. For the reasons stated below, Patent Owner’s Request for Rehearing is denied.” slip op. at 2
§ 102 anticipationPatents in suitUS 5,822,523
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.