- PTAB · Apr 21, 2017 · IPR2016-01566 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied Mylan’s rehearing request, finding no abuse of discretion in denying institution because the petition did not show a reasonable likelihood that the cited combination rendered claims 1–22 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In sum, in the Petition, Petitioner did not establish a reasonable likelihood that it would prevail in showing the combination of the ’510 publication and Ahrén, Hughes, and/or Brazg would have rendered the subject matter of the challenged claims obvious. On rehearing, we see no error in our findings of fact or conclusions of law. Thus, we conclude that Petitioner has not demonstrated that we abused our discretion in denying institution of the challenged claims. IV. ORDER Accordingly, it is ORDERED that Petitioner’s request for rehearing is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, in the Petition, Petitioner did not establish a reasonable likelihood that it would prevail in showing the combination of the ’510 publication and Ahrén, Hughes, and/or Brazg would have rendered the subject matter of the challenged claims obvious. On rehearing, we see no error in our findings of fact or conclusions of law. Thus, we conclude that Petitioner has not demonstrated that we abused our discretion in denying institution of the challenged claims. IV.” slip op. at 6
- BurdenDecided for patent owner
“as it argues now in its request for rehearing, that we should apply a legal presumption of obviousness. In fact, the Petition did not cite Galderma, or numerous other opinions of the Federal Circuit, district courts, and the Board, which Petitioner now relies on in its request for rehearing. The Board could not have misapprehended or overlooked an argument that was not made and case law that was not cited in the Petition. In addition, we reiterate, as we stated in our Decision denying institution, in an inter parte review, Petitioner has the ultimate burden of persuasion to prove unpatentability. Dec. 8 (citing 35 U.S.C. § 316(e); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015)). According to Petitioner, Galderma holds “Patent Owner has burden of overcoming obviousness presumption ‘where there is a range disclosed in the prior art, and the claimed invention falls within that range.’” Req. Reh’g 1 (quoting Galderma, 737 F.3d at 737–38). To the extent Petitioner argues for a presumption of obviousness that shifts the burden of persuasion to Patent Owner, such an argument is misplaced. See In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (stating that the “burden-shifting framework does not apply in the adjudicatory context of an IPR”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In contrast, here, Petitioner relies solely on the teachings of the ’510 publication—a preferred dose of 1 to 100 mg administered “1 to 4 times a day”— to arrive at the claimed dosage of 2.5 mg or 5 mg. The Petition simply does not provide the same type of evidence and context as those in Galderma, sufficient for us to apply the requested presumption.1” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,173,859 - Google, Inc. v. Personal Audio LLCRehearing deniedPTAB · Mar 28, 2017 · IPR2015-00846 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Google's rehearing request and left in place its ruling that claims 1–4, 9, and 13 are unpatentable and claims 5–8, 14–17, 28, and 29 are not unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD FOR RECONSIDERATION The party filing a request for rehearing of a final written decision has the burden of showing that the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place at which each matter was previously addressed in its papers during the trial. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner’s argument is unpersuasive. The agreed upon interpretation of the skip back algorithm to which Petitioner refers states: Specifically, this algorithm includes the following steps: (1) if the currently playing audio program file has played for a predetermined amount of time, resetting the playback position to the beginning of the audio program file; and (2) playing the audio program file from its beginning.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“properly before us now, Petitioner’s argument is unpersuasive on its merits. Petitioner’s argument presupposes that it is irrelevant that Inazawa only sets a reference point in time for tracking durations t2 and t3 when the user first presses the back button after playback has started. Inazawa’s system does not react to a first back button press as required by claim 5 because before Inazawa’s first button press, Inazawa does not measure any duration at all. Stated another way, Inazawa’s system always reacts to the initial press of its back button by restarting playback at the beginning of the currently playing track regardless of when that initial button press occurs. Ex. 1009, 6:17–60. Petitioner’s expert, Dr. Walker agrees as he explains in the following testimony: When the program selecting key 11 is initially manipulated (producing the signal Ts illustrated in Fig. 2A), a reverse program selection mode is entered where: 1) a timer is started (duration of t1 in Fig. 2B); and 2) a skip to the beginning of the current audio program (identified at address N) is performed that includes moving the optical head to the area according to address N (the beginning of the current audio program) and playing the audio program therefrom. * * * Using the program selecting key 11 once again while the program is playing and within the duration t3, would cause a skip backward to the beginning of the preceding program identified at address N-1, the previous track. But manipulating the program selecting key 11 when the duration t3 has expired would cause a skip to the beginning of the current audio program identified at address N, the current track. Ex. 1002 ¶¶ 112–13 (citing Ex. 1009, 6:17–7:56) (internal citations omitted) (emphasis added). Essentially, Dr. Walker explains that Inazawa does not measure any durations of time until after a skip back button is pressed and that the first press of a back button always restarts playback from the beginning of the currently selected audio program. 1. Claim 5 Claim 5 requires monitoring the duration of playback from the beginning of playback and comparing that duration to a predetermined amount of time to evaluate how to respond to every issuance of a “skip backward program selection command.” Inazawa fails to meet this requirement for its first press of a back button, and meeting the requirement in connection with the second of two consecutive presses of a back button is insufficient to meet the claimed skip back algorithm.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 7,509,178 - PTAB · Mar 17, 2017 · IPR2016-01563 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Mylan’s rehearing request, leaving trial instituted only for claims 1 and 10; it found the Petition lacked reasoned obviousness analysis for claims 2–9 and 11–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if the requesting party “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Petitioner’s Rehearing Request, our Decision, and the evidence currently of record, Petitioner’s Rehearing Request is denied.” slip op. at 2
- BurdenNot shown unpatentable
“See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3), requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim.”). In Harmonic, the Federal Circuit held that “it was Harmonic’s burden to explain to the Board how Haskell combined with Rossmere rendered the challenged claims unpatentable. With respect to claim 11 of the ’291 patent, Harmonic did not do so.” Id. Petitioner here also did not meet its burden with respect to claims 2–9 and 11–26 of the ’927 patent.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In Galderma, for example, the claim recited a “topically applicable pharmaceutical composition comprising 0.3% by weight of [adapalene] . . . Shroot patents disclosed topical adapalene compositions for treating acne “in a preferred range of 0.01%–1%,” including exemplary formulations containing 0.001%, 0.1%, and 1%. Id. at 735–36. The court noted the Shroot patents were listed in the FDA’s Orange Book for “prior art Differin® 0.1% Gel as well as Differin® Gel, 0.3%.” Id. at 735. The court further noted that other prior art references disclosed the use of 0.3% adapalene lotion in an animal model for acne treatment and taught the use of 0.3% adapalene for other skin conditions “without intolerable irritability.” Id. It was in the foregoing context that the court framed the issue as “whether there was motivation to select the claimed 0.3% adapalene composition in the disclosed range.” Id. at 737–38. The Petition here simply does not provide the same type of context and analysis with regard to the claimed linagliptin dosages, sufficient for us to apply the requested presumption.3” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,673,927 - Mylan Laboratories Limited v. Aventis Pharma S.A.Rehearing deniedPTAB · Jan 26, 2017 · IPR2016-00627 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Mylan’s rehearing request, leaving in place the denial of institution on claims 1 and 2 because its arguments did not show the Board misapprehended or overlooked matters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc. et al., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). Petitioner’s Rehearing Request amounts to a re-argument of the contentions raised in the Petition and rejected by the Board. We briefly address Petitioner’s rehearing contentions below.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“Kant alone provide motivation to modify Compound 20 in order to select it as a lead compound.” Req. Reh’g 4–5. Our Decision cited and applied the law that governs Petitioner’s lead compound theory. Dec. 11 (citing Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1291–92 (Fed. Cir. 2012); Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d 1346, 1354 (Fed. Cir. 2010) (“[T]he attribution of a compound as a lead compound after the fact must avoid hindsight bias; it must look at the state of the art at the time the invention was made to find a motivation to select and then modify a lead compound to arrive at the claimed invention.”) (emphases added); Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007)). In particular, Daiichi Sankyo provides that a patent challenger must first establish a motivation for a person of ordinary skill in the art (“POSA”) “to select” a lead compound without hindsight bias, an issue addressed at length in our Decision. Dec. 12–14. The motivation to select a lead compound for further modification must be supported with persuasive evidence, whether it be the teachings of the Kant reference, the Klein reference, the knowledge of a POSA reflected in other prior art references, expert testimony, or some combination thereof. We did not “require” a motivation be found in Kant alone. Id. Petitioner misconstrues our Decision” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner
“Graham factor 3 analysis as improper hindsight,” is based on the curious argument that “nowhere does the Petition argue that Compound 20 should be selected as a lead because of its structural similarity to cabazitaxel.” Req. Reh’g 8–9. Yet, the Petition begins, ends, and overflows with characterizations of cabazitaxel as 7,10-dimethoxy docetaxel, and repeatedly points to the structural similarities between docetaxel, Kant Compound 20, and 7,10-dimethoxy docetaxel (cabazitaxel) as the basis for selecting Kant Compound 20 as a lead compound for further modification in view of Klein. See Pet. 1–2 (“the only difference between the two [Kant Cpd 20 and cabazitaxel] is the methyl group on the C-7 hydroxyl”), 6–7 (“Kant discloses 10-methoxy docetaxel (compound 20), which contains the same methoxy group at the C-10 position as 7,10-dimethoxy docetaxel. . . . Compound 20, which is methylated at the C-10 hydroxyl is shown below on the left, adjacent to 7,10-dimethoxy docetaxel for comparison [of the chemical structures]”), 30–31 (“The structure disclosed in Kant [Compound 20] is shown below, adjacent to the compound of claim 1 of the ’170 patent and adjacent to docetaxel. For ease of comparison, the identical portions of the molecules have been depicted in grey.”). We reiterate our determination that Petitioner “errs by starting with a hindsight-biased structural comparison of docetaxel, Kant Compound 20, and cabazitaxel in side-by-side fashion.” Dec. 12.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“paragraphs 54–55 and 93–94 of Dr. Jacobsen’s Declaration in our Decision (Req. Reh’g 10), that testimony establishes only that known taxanes could be formulated for intravenous administration by using Cremophor EL. Ex. 1002 ¶¶ 54–55, 93–94. Having further considered the cited Declaration testimony of Dr. Jacobsen, we re-state that it “does not address why a POSA would have simultaneously modified the C-7 and C-10 positions in Kant Compound 20 to optimize lipophilicity [of an unknown taxane], thereby minimizing aqueous solubility, when a POSA would have known docetaxel and paclitaxel were highly lipophilic and insoluble in water, which made their commercial formulation challenging.” Dec. 13 (citing Prelim. Resp. 21–24; Ex. 1006; Ex. 1011, 495; Ex. 1015; Ex. 1019, 1:64–67; Ex. 1020, 206; Ex. 2004, 2:42–44; Ex. 2015, 648; Ex. 2024, 45; Ex. 2025, 91; Ex. 2026, 996). The cited testimony is not inconsistent with the knowledge that docetaxel and paclitaxel were highly lipophilic and challenging to formulate, based on the extensive documentary evidence cited by Patent Owner, which we credited. In short, there was no error in crediting Patent Owner’s cited documentary evidence. See Virnetx Inc. v. Apple Inc., 2016 WL 7174130, at *3 (Fed. Cir. Dec. 9, 2016) (“[T]he PTAB must weigh [expert] testimony against other record evidence in reaching its conclusion, and it may give that testimony less weight, so long as it supports its decision with substantial evidence.”). We also do not agree that we overlooked Dr. Jacobsen’s cited Declaration testimony or that it is inconsistent with Patent Owner’s documentary evidence.” slip op. at 6
§ 103 obviousnessPatents in suitUS 5,847,170 - PTAB · Dec 22, 2016 · IPR2015-00551 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving claims 1–15 unpatentable for obviousness over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“PO Resp. 60. We did not find such testimony persuasive, or particularly credible, in view of Korfhage’s express disclosures, Dr. Valuck’s testimony, and Dr. Bergeron’s deposition testimony. Dec. 57–59 (citing Ex. 1007 ¶ 157; Ex. 1037, 276–77; Ex. 1054, 317:13–320:12; Ex. 2047 ¶ 57–59). Patent Owner’s argument is not persuasive given that the ACA drug distribution system was designed to allow a pharmacist to identify and resolve duplicate prescriptions before deciding whether to distribute the drug to a patient (or delete a duplicate caused by data redundancy). Ex. 1003, 184:24–185:7; Ex. 1005, 314 ¶ 6. We also were persuaded by Dr. Valuck’s testimony that it would have been obvious for one of ordinary skill to modify the ACA system “such that the data stored in the central data repository was distributed across multiple databases, as disclosed by Korfhage in order to accommodate cost, efficiency, and the number of prescription requests and associated data.” Ex. 1007 ¶ 157 (cited at Dec. 57–581).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also agree with Petitioner that Korfhage does not teach away from the use of distributed databases systems, particularly given the acknowledgement of Dr. Bergeron that Korfhage offered solutions to the problems identified. Id. at 59 (citing Ex. 1037, 276–77; Ex. 1054, 317:13–320:12). We did not overlook or misapprehend Patent Owner’s argument and evidence, rather, we declined to credit them in view of the text of Korfhage, Dr. Valuck’s testimony, and Dr. Bergeron’s deposition testimony. Dec. 56– 59. The pages of Korfhage cited and quoted in our Decision disclose multiple factors “driving information systems to the use of distributed document sets and distributed processing,” and set up “[t]hree major problems” only to discuss “simple solution[s],” a position supported by Dr. Valuck. Dec. 57–59 (citing Ex. 1007 ¶ 157; Ex. 1037 at 276–77). Under cross-examination by Petitioner’s counsel, Dr. Bergeron readily acknowledged that Korfhage’s discussion of data redundancy and matching document evaluation “problems” were paired with disclosed solutions, which undercut his declaration testimony (Ex. 2047 ¶¶ 56–65) relied upon by Patent Owner. Ex. 1054, 317:13–320:12. Our Decision credits Dr. Bergeron’s deposition testimony, which acknowledges the distributed database system solutions disclosed in Korfhage, rather than the speculative new problems hypothesized in his declaration and Patent Owner’s Response.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state, and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims. Dec. 19 (emphasis added). We made clear that the controlling description of the specification outweighed Patent Owner’s argument and supporting evidence that specific types of information are required to be read into the “identifying” element of the claims. Id. (“Thus, we construe ‘prescription requests [for GHB] containing information identifying patients’ to refer to information identifying a patient, which may include [Patent Owner’s specifically listed information], but is not limited to that information nor requires all of that information.”) (emphasis added). We also cited to all of the expert testimony on which Patent Owner relied for its claim construction, as an indication that we considered the testimony. Id. at 18 (citing Ex. 2044, 97:11–98:5, 99:18–100:10; Ex. 2046 ¶¶ 39–44). We did the same for the “information identifying . . . any and all medical doctors” language, concluding that: The specification does not suggest that failing to include on the prescription one or more pieces of information from the list of a “medical doctor’s name, license number, DEA number, and physician specialty,” as proposed by Patent Owner, means that a prescription fails to contain information regarding “various credentials,” as recited in the claims. Id. at 20–21 (citing PO Resp. 33–36; Ex. 1001, 2:22–24, 2:41–42, 4:7–8, 4:8–14, 4:18–20, 4:20–22, 4:7–5:67, 8:4–7, 8:40–44, 10:20–23, Figs. 2A–C, 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45–49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”).” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,457,988 - Dukane Corporation v. Herrmann Ultraschalltechnik GmbH & Co., KGRehearing deniedPTAB · May 26, 2016 · IPR2016-00066 · APJ Michelle N Ankenbrand · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 4, 5, and 7–9 because Petitioner did not show the Board misapprehended or overlooked its arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, the Board reviews its 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)Institution denied meritsInstitution denied
“Regarding the asserted grounds that Klinstein ’158 anticipates claim 8 and the DPC Manual anticipates claims 6–9, we determined that Petitioner “fail[ed] to address the limitations reciting different target variables for the machining intervals,” which was “fatal to [those] unpatentability assertions.” Dec. 9–10. Likewise, we determined that Petitioner’s failure to address the additional “target variable[s] differ” limitation of claim 8 was fatal to the asserted ground that the subject matter of claim 9 (which depends from claim 8) would have been obvious over the combination of Klinstein ’158 and the iQManual. Id. at 10. Regarding Petitioner’s assertion that Klinstein ’158 anticipates claim 6, we determined that, although Petitioner addressed the “target variable[s] differ” limitation, Petitioner failed to explain adequately how the reference discloses that limitation. Id. at 12–13. With respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816, we determined that Petitioner did not provide “adequate reasoning based on rational underpinnings to persuade us, in the absence of hindsight, that one of ordinary skill would have modified the welding method of Klinstein ’816 to achieve the claimed subject matter [i.e., the specific features that claims 4 and 5 add to the subject matter of claim 1].” Id. at 16.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 5 (citing Pet. 43–53). Petitioner does not direct us to the particular page of the Petition on which it advanced that argument, but, rather, cites ten pages of analysis. After reviewing the cited pages, it appears that Petitioner made the argument in a claim chart to show how the DPC Manual discloses welding variables and target variables, not how the DPC Manual discloses the “target variable[s] differ” limitation. See Pet. 45– 46. Indeed, Petitioner’s claim chart does not address the “target variable[s] differ” limitation. Like the Petition, the claim chart focuses on whether the target values of the target variable differ. Id. at 46. In any event, Petitioner fails to explain how the identification of exemplary target variables set forth in the DPC Manual is an anticipating disclosure of different target variables for each machining interval. In fact, the analysis in the Petition contradicts Petitioner’s argument in this regard because, as explained previously, Petitioner identifies the same variable as corresponding to the first, second, and fifth target variables disclosed in the DPC Manual. Dec. 9 (citing Pet. 57). Petitioner further admits that the DPC Manual discloses “the ‘[c]ontrol parameters [i.e., target variables] for P2 are the same as those used for P1, however the limits set for the parameters are specific to each pressure.’ Thus, the user-specified target values for the first and second control parameters may differ.” Pet. 52 (citing Ex. 1005, 81) (emphasis added). Consistent with that description, Figure 7-16 of the DPC Manual illustrates how to set the dual pressure control and depicts the same control parameter (i.e., target variable) for P2 and P1 (i.e., weld time). Ex. 1005, 82. Accordingly, we are not persuaded that we overlooked or misapprehended Petitioner’s arguments as to what each of Klinstein ’158, Klinstein ’816, and the DPC Manual discloses.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“detecting a third target variable during the first machining interval and selecting the second target variable depending on the result of the detection. Ex. 1001, 4:52–55. Claim 5 depends from claim 4 and narrows the third target variable to welding time. Id. at 4:56–57. As to these claims, we determined that Petitioner’s argument, which was devoid of discussion and citations to Klinstein ’816, “fails to link the hypothetical detection and selection criteria [that a skilled artisan ‘could have’ used] to any particular teaching, preference, suggestion, or other reasoning derived from Klinstein ’816 and the level of skill in the art.” Dec. 16. We also determined that the Klinstein Declaration “adds no further detail; it merely mirrors the Petition.” Id. Petitioner contends that the entire discussion on pages 31–41 of the Petition relates to the obviousness of claims 4 and 5 from the disclosure of Klinstein ’816. Reh’g Req. 6. As Petitioner concedes in the Rehearing Request, however, “[t]hose pages make it clear, in graphic detail including reproduction of drawings from the [Klinstein] ’816 patent, how claim 1 is anticipated by the [Klinstein] ’816 patent.” Id. (emphasis added). In other words, the analysis on pages 31–41 does not set forth how the additional features of claims 4 and 5 would have been obvious from the disclosure of Klinstein ’816 and the level of skill in the art. Petitioner also repeats in the Rehearing Request essentially the same argument that was raised in the Petition, purporting to establish the link between Petitioner’s hypothetical detection criteria and the disclosure of Klinstein ’816 we found missing from its argument and the Klinstein Declaration. Compare Reh’g Req. 6–7, with Pet. 42 and Ex. 1007 ¶ 55. Petitioner’s argument is no more persuasive on the second telling. That is, Petitioner reargues a case it attempted to make out in the Petition, but fails to point out how we misunderstood its arguments or Mr. Klinstein’s testimony. Accordingly, we are not persuaded we misapprehended or overlooked Petitioner’s arguments with respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,702,883
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.