- PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR2016-00063 and its joinder with IPR2015-01047 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Patent Owner’s arguments in the Request but find them unpersuasive to demonstrate that we misapprehended or overlooked any points.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner argues that we incorrectly granted institution of IPR2016-00062 under 35 U.S.C. § 315(b). See, e.g., Req. Reh’g 6–10. Contrary to Patent Owner’s contention, our granting of institution of IPR2016-00063 is in accordance with 35 U.S.C. § 315(b) for at least the reasons previously discussed. Decision 4. Patent Owner reiterates that an alternative interpretation of 35 U.S.C. § 315(b) should be adopted to permit denial of institution of IPR2016-00063. See, e.g., Req. Reh’g 6–10. In support of this contention, Patent Owner continues to cite the dissent in Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, dissent slip op. at 18 (PTAB Feb. 12, 2015) (Fitzpatrick, Bisk, & Weatherly, A.P.JJ., dissenting) (Paper 28) but does not explain why a dissent in this cited matter should compel us to adopt an alternate interpretation of 35 U.S.C. § 315(b). We therefore continue not to do so.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner argues that “Apple’s past conduct and the numerous challenges to the ’151 patent nonetheless compel that the Petition be denied under § 325(d).” Req. Reh’g 10. According to 35 U.S.C. § 325(d), “the Director may take into account whether, and reject the petition or request, because the same or substantially the same prior art or arguments previously were presented to the Office.” Having carefully considered Patent Owner’s arguments (Req. Reh’g 10–12), we decline to exercise our discretion to reject the petition or request because the same or substantially the same prior art or arguments previously were presented (allegedly) to the Office, even assuming that the same or substantially the same prior art or arguments were, in fact, previously presented to the Office.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner
“DISCUSSION In the Decision dated January 25, 2016, Paper 29 (“Decision”), we granted institution of IPR2016-00063 (filed by Apple Inc.) and joined IPR2016-00063 with the instant matter (i.e., IPR2015-01047). Decision 7.” slip op. at 2
Discretionary denialPatents in suitUS 7,490,151 - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board granted Patent Owner limited additional discovery about Ward Dietrich’s involvement in preparing or controlling the Petition and denied discovery of other requested materials.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We have considered Patent Owner’s arguments in the Request but, with the exception noted below, find them unpersuasive to demonstrate that we misapprehended or overlooked any points. For example, we disagree with Patent Owner that “[t]he Motion certainly met this standard [of showing beyond speculation that something useful would be uncovered as to RPI issues]” for at least the reasons previously detailed in the Decision. See Decision 1–5. However, Patent Owner argues that “Ward Dietrich is Chief Operating Officer of the Mangrove Partners Master Fund” and “has no public role in petitioner” (Motion 3 (citing Ex. 2002 at 2)) and that “Ward Dietrich held himself out as an ‘authorized person’ to sign the Power of Attorney on behalf of Petitioner” (Req. Reh’g 6 (quoting Motion 3)). Petitioner does not appear to refute this contention. Patent Owner further requests “[c]ommunications and documents or things . . . including assistance with identification of prior art, filing, funding, compensation, and/or preparation of any papers related to the Mangrove IPRs” and the identification of “persons and entities . . . involved in the preparation and filing of the petitions” and “persons and entities . . . who controlled or had the ability to control the preparation and filing of the petitions in the Mangrove IPRs.” Ex. 2034, 3; Ex. 2035, 3. In view of Ward Dietrich’s alleged role as an officer of Mangrove Partners and the named Petitioner, we grant Patent Owner’s motion for additional discovery for the limited purpose of providing communications and/or agreements pertaining to Ward Dietrich’s involvement in the preparation and filing of the Petition and/or control or ability to control the preparation and filing of the Petition.” slip op. at 2
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedGranted in part
“However, Patent Owner argues that “Ward Dietrich is Chief Operating Officer of the Mangrove Partners Master Fund” and “has no public role in petitioner” (Motion 3 (citing Ex. 2002 at 2)) and that “Ward Dietrich held himself out as an ‘authorized person’ to sign the Power of Attorney on behalf of Petitioner” (Req. Reh’g 6 (quoting Motion 3)). Petitioner does not appear to refute this contention. Patent Owner further requests “[c]ommunications and documents or things . . . including assistance with identification of prior art, filing, funding, compensation, and/or preparation of any papers related to the Mangrove IPRs” and the identification of “persons and entities . . . involved in the preparation and filing of the petitions” and “persons and entities . . . who controlled or had the ability to control the preparation and filing of the petitions in the Mangrove IPRs.” Ex. 2034, 3; Ex. 2035, 3. In view of Ward Dietrich’s alleged role as an officer of Mangrove Partners and the named Petitioner, we grant Patent Owner’s motion for additional discovery for the limited purpose of providing communications and/or agreements pertaining to Ward Dietrich’s involvement in the preparation and filing of the Petition and/or control or ability to control the preparation and filing of the Petition.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Patent Owner requests an “expanded panel that includes the Chief Judge” because, according to Patent Owner, an expanded panel “is necessary to secure and maintain uniformity” and to “clarify the standard for additional discovery.” Req. Reh’g 1–2, 8–9. Discretion to expand a panel rests with the Chief Judge, who, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. AOL Inc. v. Coho Sicensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015)(Paper 12)(informative). Patent Owner’s suggestion was considered by the Acting Chief Administrative Patent Judge, who declined to expand the panel.” slip op. at 3
NonePatents in suitUS 7,490,151 - 10x Genomics, Inc. v. Raindance Technologies, Inc.Rehearing deniedPTAB · Feb 24, 2016 · IPR2015-01558 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving instituted review of claims 1–17 in place, including the implicitly raised obviousness ground for claims 1–7 and 12–17.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” slip op. at 2
- BurdenDecided for petitioner
“respond to Petitioner’s implicitly raised obviousness challenge. The obviousness ground that is instituted as to claims 1–7 and 12–17 is based upon the same arguments and evidence that Petitioner presents with respect to anticipation of these claims and obviousness of claims 10 and 11. Dec. 17. Patent Owner addressed these arguments in its Preliminary Response, Prelim. Resp. 4, 16, 17, 21–27, 30–33, and the Board considered Patent Owner’s arguments before instituting inter partes review, Dec. 8–18. Patent Owner will have another full and fair opportunity to respond to these challenges in its Patent Owner Response. 35 U.S.C. § 316(a)(8). By instituting review based on Petitioner’s implicitly raised obviousness ground, the Decision does not shift the burden of proof to Patent Owner. The burden remains with Petitioner to prove by a preponderance of the evidence that the challenged claims are unpatentable. 35 U.S.C. § 316(e).” slip op. at 4
NonePatents in suitUS 8,658,430 - Alliance Of Rare-Earth Permanent Magnet Industry v. Hitachi Metals, Ltd.All claims unpatentablePTAB · Feb 8, 2016 · IPR2014-01265 · APJ Michelle R Osinski · IPR · Final written decision
Claims 1, 5, and 6 are unpatentable: obvious over Hasegawa and Yamamoto, obvious over Ohashi and Yamamoto, and claim 1 also anticipated by He.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“relevant to our analysis for the Final Written Decision. Patent Owner urges that “one of ordinary skill in the art would understand the ordinary and customary meaning of ‘rapid cooling method’ to refer to a cooling mechanism different and faster than ingot casting, but not cooled so fast that it exceeds rapid cooling and enters the domain of super-rapid cooling.” PO Resp. 8 (citing Ex. 2002 ¶¶ 81–82). Patent Owner contends that this proposed interpretation is consistent with the Specification of the ’385 patent, including dependent claims 5 and 6, as well as the ordinary and customary usage of the term. Id. Patent Owner’s expert points to the language of the Specification stating that “a rapidly cooled method” is “typified by a strip casting method and a centrifugal casting method.” Ex. 2002 ¶ 81 (quoting Ex. 1001, 1:35–40). We conclude that such language indicates only that strip casting and centrifugal casting are typical examples of rapid cooling methods or exemplify rapid cooling methods, not that rapid cooling methods necessarily exclude super-rapid cooling methods.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the predictable result says that, for example, in the case of the Hasegawa/Yamamoto combination, you are going to throw out 50 percent of your powder.” Tr. 77:23–78:2. Patent Owner argues that one with ordinary skill in the art, for various considerations, such as diminished yield, would not have implemented a rapid cooling method in connection with Hasegawa’s pulverization and particle classification techniques. PO Resp. 10–20. Whether implementation of Yamamoto’s rapid cooling method makes commercial sense does not control the obviousness determination. The challenged claims are not limited to an industrial scale economically viable process. Specifically, the claims do not recite a minimum required yield that would distinguish the prior art teachings. Patent Owner has not provided persuasive reasoning or evidence to support its contention that one of skill believed there to be some technological incompatibility that prevented the combination of Yamamoto’s rapid cooling method with Hasegawa’s pulverization and particle classification techniques; that the combination was unpredictable in some way; or that one with ordinary skill in the art would not have known how to use Yamamoto’s rapid cooling method with Hasegawa’s pulverization and particle classification techniques. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“[T]he fact that the two [prior art disclosures] would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter fact is telling on the issue of nonobviousness.”). We appreciate Patent Owner’s argument that “an invention ‘composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” PO Resp. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Petitioner, however, has set forth a sufficient rationale to arrive at what is claimed. Specifically, Petitioner has demonstrated that the claims represent the combination of prior art elements according to known methods to yield a predictable result. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). This is itself a sufficient reason with rational underpinning to support a conclusion of obviousness. This is especially true where the evidence supports that consideration of design incentives, such as the provision of a “lower cost, more productive [process] better suited for higher volume manufacturing” would have led one of” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“rapid cooling method” as that claim term as been construed for purposes of this proceeding.7 Patent Owner’s first argument that strip casting in particular was not commercially available as of He’s publication date is not persuasive evidence that He’s quick quenching cannot be rapid cooling, because rapid cooling is not limited to strip casting in accordance with our construction of that term. slip op. at 22
Patent outcomesUS 6,537,385 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,537,385 - Alliance Of Rare-Earth Permanent Magnet Industry v. Hitachi Metals, Ltd.All claims unpatentablePTAB · Feb 8, 2016 · IPR2014-01266 · APJ Michelle R Osinski · IPR · Final written decision
Claims 1–4, 11, 12, and 14–16 are unpatentable under § 103: claims 1–4, 14, and 16 over Ohashi and Hasegawa; claims 11–12 with Yamamoto; and claim 15 with Kishimoto.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“To determine the level of ordinary skill in the art in this case, we consider the type of problems encountered in the art, the prior art solutions to those problems, and the sophistication of the technology. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). We are also guided by the level of ordinary skill in the art as reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The ’765 patent indicates that the material alloy can be produced by ingot casting or rapid cooling methods typified by strip casting and centrifugal casting (Ex. 1001, 1:36–41, 12:24–29), and refers to a “known strip casting method” (Id. at 5:37–38). The prior art of record also describes differences between the resulting alloy obtained by ingot casting methods and the resulting alloy obtained by strip casting methods. See, e.g., Ex. 1007, 1:15–2:3. Thus, a skilled artisan would have some knowledge of strip casting methods and how such methods would affect the resulting alloy as compared to an alloy produced by ingot casting methods. The prior art of record also describes various mechanical pulverization techniques, as well as a hydrogen pulverization process. See, e.g., Ex. 1005 ¶ 2. The prior art of record also compares the resulting fine powder of the hydrogen pulverization process to that produced by mechanical pulverization. Id. A skilled artisan, therefore, would also need some knowledge of hydrogen pulverization methods and how they differ from mechanical pulverization. We acknowledge the sophistication of the rare earth magnet technology, but consider that one of ordinary skill in the art would be aware of all the pertinent prior art. Based on all of the evidence, we conclude that a person of ordinary skill in the art at the time of the ’765 patent, through education or experience, would have knowledge of various methods to produce the material alloy (e.g., ingot casting and strip casting) and various pulverization techniques (e.g., mechanical pulverization and hydrogen pulverization), and would have knowledge of the differences between the methods and techniques, as the resulting material alloys.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In the Decision to Institute, we interpreted “particle quantity” as “amount of particles,” without considering whether any particular common metrics should be excluded. Dec. Inst. 7. The parties do not dispute this interpretation in the Patent Owner Response or in the Petitioner Reply. We adopt the above claim construction based on our previous analysis, and see no reason to deviate from that construction for purposes of this Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“between a crushing apparatus and the alloy to be crushed, resulting in random pulverization of the alloy.” Id. at 8. Although there can be no doubt that mechanical pulverization is different than chemical pulverization, simply because there are differences between two references is insufficient to establish that such references teach away from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992). Petitioner’s reasoning to utilize hydrogen pulverization in place of mechanical pulverization to more easily crush the material alloy, and that the combination of known prior art elements achieves a predictable result, is not negated by the differences between mechanical and chemical pulverization. To the extent Patent Owner is arguing that the utilization of hydrogen pulverization in place of mechanical pulverization is not predictable (See Tr. 40:20–41:2 (citing Ex. 2002 ¶ 90)), Patent Owner has merely pointed out that one of ordinary skill in the art would have to account for differences between the two pulverization mechanisms. Patent Owner, however, has not explained persuasively that such an accounting for differences between the two pulverization mechanisms would have been beyond the capability of one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Although Patent Owner argues that “if you make a change in any part of this total process, then you are going to have to look and investigate to see do you need to make compensations in other parts of the process as well . . .[a]nd that simply is going to be beyond what one of ordinary skill in the art would be able to do here” (Tr. 62:20–25), Patent Owner again only points to expert testimony that explains that one would need to change the composition of the alloy to compensate for differences between the pulverization mechanisms (Id. at 63:1–6 (citing Ex. 2002 ¶ 90)), not that such changes would have been beyond the level of ordinary skill in the art. Moreover, as described above, we have concluded that a person of ordinary skill in the art at the time of the ’765 patent would have knowledge of the differences between mechanical and hydrogen pulverization techniques, and the resulting material alloys.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“The word “oxidize” means “[1] To combine with oxygen; make into an oxide. [2] To increase the positive charge or valence of (an element) by removing electrons.” American Heritage Dictionary, Houghton Mifflin Company (2000, 2003), available at http://literature.proquestlearning.com/home.do (last visited Feb. 3, 2016) (Ex. 3001). We determine that, considering the context of the patent, it is more likely than not than Ohashi’s reference to a “non-oxidizing gas” refers to a gas that does not cause an element to combine with oxygen or be made into an oxide (in accordance with the first definition cited above), rather than a gas that does not increase the positive charge or valence of an element by removing electrons (in accordance with the second cited definition). Our determination is based on Ohashi’s statements that “a magnetic alloy powder containing extremely fine particles are highly susceptible to the oxidation by the atmospheric oxygen” (Ex. 1004, 3:41–43 (emphasis added)), “the adverse influences due to the increased oxygen content in the alloy powder can be overcome when the alloy powder does not contain extremely fine particles” (id. at 3:45–48 (emphasis added)), “fine particles in a powder of neodymimum-iron-boron magnet alloys are rapidly oxidized by the atmospheric oxygen already in the course of pulverization in a non-oxidizing atmosphere and there-after to greatly increase the oxygen content in the alloy powder” (id. at 3:51–56 (emphasis added)), “a great improvement could be obtained in the magnetic properties of the permanent magnets as a result of the decrease in the oxygen content of the alloy powder” (id. at 3:61–64 (emphasis added)), “it is essential that the alloy under pulverization is strictly prevented against oxidation by the atmospheric oxygen” (id. at 4:45–47 (emphasis added)), and “Table 1 . . . shows the oxygen contents and the magnetic properties of the thus obtained sintered permanent magnets” (id. at 7:19–21 (emphasis added)). These statements demonstrate that Ohashi is concerned with the oxygen content of the alloy, rather than whether the alloy has undergone a removal of electrons. Petitioner has shown sufficiently that the hydrogen gas of the hydrogen pulverization method is a non-oxidizing gas in that it does not cause an element of the magnet alloy to combine with oxygen or be made into an oxide. Pet. Reply 4–5 (citing Ex. 1012, 77:9–13). The hydrogen pulverization method of Hawegawa, therefore, is in accordance with Ohashi’s teachings of conducting the pulverization in an atmosphere of a non-oxidizing or inert gas.6 Accordingly, we are not persuaded that 6 We agree with Patent Owner that the hydrogen gas of Hasegawa’s hydrogen pulverization method “is certainly a non-inert gas.” PO Resp. 9. We determine, however, that Ohashi requires the pulverization be conducted in the atmosphere of a non-oxidizing gas or inert gas, but not necessarily both. Because we have found the hydrogen gas of Hasegawa’s hydrogen pulverization method to be a non-oxidizing gas, it is immaterial whether or not it is inert. modification of Ohashi to utilize a hydrogen pulverization method as taught by Hasegawa is contrary to the teachings of Ohashi.” slip op. at 14
Patent outcomesUS 6,491,765 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,491,765 - Dynamic Drinkware, LLC v. National Graphics, Inc.All claims unpatentablePTAB · Jan 27, 2016 · IPR2014-01162 · APJ Michael P Tierney · IPR · Final written decision
Claims 1–46 are unpatentable: claims 1, 2, 23, 24, and 27–29 as anticipated by Quadracci ’995; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“in the lenticular art “is one who has several years of work experience in the lenticular industry.” Ex. 1013 ¶ 11. Patent Owner’s declarant, Dr. Garcia, testifies that a person of ordinary skill in the art would have five or more years of experience in the lenticular lens industry or have an understanding of optical engineering including first and higher order geometric and physical optics principles. Ex. 2001 ¶ 13. The parties’ definitions of one of ordinary skill in the art are substantially the same and neither party states how any difference in the parties’ articulated levels of skill impacts the proceeding. For purpose of this decision, we hold that the level of ordinary skill in the art is reflected by the prior art of record, such that one of skill in the art would have had years of experience in the lenticular lens industry or had an understanding of optical engineering, including higher order geometric and physical optics principles. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Patent Owner does not dispute the proposed constructions, except to state that, consistent with Petitioner’s definition of focal length, one of ordinary skill in the art would have understood that focal length in the ’467 refers to the “effective focal length” of the lens. PO Resp. 3–4. We adopt Petitioner’s proposed claim constructions as they are consistent with the Patent Owner’s use of the terms in the ’467 patent Specification. For example, the term gauge thickness is defined in the ’467 patent with reference to g2 of Fig. 1A and states that the thickness is measured from the outermost edge of the curved surface of the lens to the flat back surface of the lens. Ex. 1001, 2:27–33.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“describe . . . each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).” slip op. at 8
- Expert testimonyPetitioner expert discountedPetitioner expert creditedDecided for patent owner
“Based on the evidence of record, we credit the ray tracing testimony of Mr. Raymond and are persuaded that the lenticular lens disclosure of Quadracci ’995 is enabling. Specifically, Dr. Garcia acknowledges that focal length formulas other than those recited in the ’467 patent were known in the art and Mr. Raymond demonstrates that, consistent with the teachings of Quadracci ’995, one of ordinary skill in the art could make the described lenses. c. Mr. Raymond’s Gauge Thickness and Focal Length Calculations Patent Owner states that Mr. Raymond’s thickness calculation in his first declaration is either wrong, or it uses an unacceptable index of refraction. Mr. Raymond, in his first declaration, testifies that using the general lens formulas described in the ’467 patent, he arrived at a gauge thickness of 3.4 mils. Ex. 1013 ¶¶ 26–28. Mr. Raymond, however, does not disclose the index of refraction that he used to determine the gauge thickness. Expert testimony that does not disclose the underlying data on which the opinion is based is entitled to little or no weight. 37 C.F.R. 42.65(a). As Mr. Raymond failed to disclose the index of refraction used in his calculations and provide support for his selected refraction index, we do not credit Mr. Raymond’s gauge thickness calculation in his first declaration with respect to Quadracci ’995. As discussed below, however, Mr.” slip op. at 14
Patent outcomesUS 6,424,467 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,424,467 - Intermix Media, LLC v. Bally Gaming, Inc.Institution deniedPTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution
The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptNot shown unpatentable
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 5,816,918 - Avx Corporation v. Greatbatch Ltd.Rehearing grantedPTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing
The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12
- BurdenMixed
“of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,327,553 - Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCRehearing deniedPTAB · Jan 12, 2016 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Petitioner’s request for rehearing, finding no overlooked or misapprehended matter or abuse of discretion in determining claim 10 was not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents and unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In our Final Decision, we credited Dr. Pickens’s testimony that designing a thick plate composition having the claimed properties would be costly and unpredictable, and that “one should have a specific service requirement in mind when attempting to design an alloy, given the sheer number of different applications in the aerospace industry.” Final Dec. 14– 15 (citing Ex. 2043 ¶ 18). We considered Petitioner’s evidence that there was a commercial need in the aerospace industry for the claimed thick plate aluminum alloys, and determined “that Mr. Balmuth and Dr. Starke fail[ed] to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art.” Id. at 15.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. Final Dec. 12. Inherency requires that the claim limitation in question is necessarily present in the reference. In re Montgomery, 677 F.3d 1375, 1379–1380 (Fed. Cir. 2012). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotation omitted). Here, Petitioner offers Mr. Balmuth’s and Dr. Starke’s unsupported statements that the claimed properties would be inherent in a thick plate having the same chemistry of a thin plate. In the Request, Petitioner does not identify sufficiently evidence regarding the underlying facts and data on which Mr. Balmuth’s and Dr. Starke’s opinions are based that we overlooked or misapprehended. We are not persuaded that we abused our discretion in finding that the opinions of Mr. Balmuth and Dr. Starke are not persuasive because they are not supported by objective evidence. See Final Dec. 12.” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. Final Dec. 12. Inherency requires that the claim limitation in question is necessarily present in the reference. In re Montgomery, 677 F.3d 1375, 1379–1380 (Fed. Cir. 2012). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotation omitted). Here, Petitioner offers Mr. Balmuth’s and Dr. Starke’s unsupported statements that the claimed properties would be inherent in a thick plate having the same chemistry of a thin plate. In the Request, Petitioner does not identify sufficiently evidence regarding the underlying facts and data on which Mr. Balmuth’s and Dr. Starke’s opinions are based that we overlooked or misapprehended. We are not persuaded that we abused our discretion in finding that the opinions of Mr. Balmuth and Dr. Starke are not persuasive because they are not supported by objective evidence. See Final Dec. 12. With respect to Petitioner’s contention that we overlooked Mr. Balmuth’s and Dr. Starke’s testimony regarding routine experimentation, we note that we specifically addressed these opinions in the Final Decision. See Final Dec. 14–16. We credited Dr. Pickens’s testimony regarding the difficulties a person having ordinary skill in the art would encounter in attempting to design a thick plate alloy with the claimed properties. Id. at 14–15. We did not overlook Mr. Balmuth’s or Dr. Starke’s testimony regarding routine testing. Rather, we found it unpersuasive. It is within the Board’s discretion to assign the appropriate weight to testimony offered by the witnesses. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that Board has discretion to give weight to one item of evidence over another “unless no reasonable trier of fact could have done so.”). We decline to reweigh the evidence in considering a motion for rehearing. Ex parte NTP, Inc., Appeal No. 2008-004594, 2010 WL 429233 at *1 (BPAI Feb. 4, 2010).” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,229,509 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · CBM2015-00153 · APJ Michael P Tierney · CBM · Institution
The Board denied institution for claims 1–16 because those originally issued claims had been cancelled or amended during reexamination; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that the particular facts of this proceeding counsel against institution. Our decision whether to institute a covered business method patent review must be based on the claims of the ’402 patent as it exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims 1–16, which Patent Owner has either cancelled or amended during ex parte reexamination. See Ex. 3001. Original claims 1–16, as challenged by Petitioner, no longer exist, and any decision as to the patentability of original claims 1–16 we might reach in this proceeding would be moot and purely advisory. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting a covered business method patent review in this proceeding. 37 C.F.R. § 42.1(b). In denying institution, we do not reach the merits of the unpatentability arguments in the Petition, and express no opinion on those arguments at this time. Furthermore, based on the current record, we agree with Patent Owner that Petitioner is not prejudiced as they may elect to file a new Petition directed to the amended claims.3” slip op. at 8
Discretionary denialPatents in suitUS 8,423,402
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.