• Merial Limited v. VirbacRehearing granted
  PTAB · Apr 15, 2015 · IPR2014-01279 · APJ Fred E Mckelvey · IPR · Rehearing

  Rehearing was granted and review instituted on claims 1–15 under § 103 over Huet ’333 combined with Saito and over Huet ’333 combined with Sirinyan.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “We agree with Petitioner that we overlooked the significance of that portion of Huet ʼ333 indicating that use of a cosolvent is optional. Upon consideration of the Petition for Rehearing1 and the Response, we grant the Petition for Rehearing and order institution of an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “solvent must include any C1-C4 alcohol. The cosolvent, which can be absolute ethanol, isopropanol, or methanol (Ex. 1005, 6:19–20), is optional (Ex. 1005, 10:45).” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “We recognize in circumstances similar to those present in this case that it often is questioned why one skilled in the art would “pick and choose” particular ingredients (solvents and crystallization inhibitors in this case) where a reference describes several alternatives. There is an answer. First, the entire disclosure of Huet ʼ333 is in the public domain. One skilled in the art should be free to use any combination described by Huet ʼ333 in proportions that Huet ʼ333 characterizes as being within the skill of the art. Claim 1 of the ’799 patent presumptively removes from that public domain a portion of what is described by Huet ʼ333. Absent some unexpected result obtained by the subgenus of claim 1 of the ʼ799 patent vis-à-vis the broader genus described by Huet ʼ333, it is likely that the subject matter of claim 1 of the ʼ799 patent would have been obvious within the meaning of 35 U.S.C. § 103(a). Patent Owner, in responding on the merits, is free to present evidence of unexpected results.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,501,799
• Netflix, Inc. v. Opentv, IncRehearing denied
  PTAB · Aug 14, 2014 · IPR2014-00274 · APJ James T Moore · IPR · Rehearing

  The Board denied Netflix’s rehearing request, leaving in place its denial of inter partes review of claims 1–20 because the petition did not show it was more likely than not to prevail.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a request for rehearing. The burden of showing a decision should be modified lies with the party challenging the decision. 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… We grant the request to reconsider the decision insofar as we have reconsidered the decision, but decline to modify our previous decision.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “III. CONCLUSION Accordingly, we conclude that the Petitioner has not met its burden to show it is more likely than not to prevail. We, therefore, deny the request for reconsideration.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “This argument does not persuade us to alter our earlier decision. The newly proposed interpretation is inconsistent with the plain language of claim 1 reciting that the “browser retrieves the requested Internet information segments under the direction and control of the controller means.” Ex. 1001, col. 13:60-63. An embodiment allowing a user the flexibility to go back to access a list of URLs at the user’s leisure after the presentation does not alter the requirement that the controller means drives the presentation during the audio or video program.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  Claim construction§ 103 obviousness
  Patents in suitUS 6,018,768

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.