- Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Dec 21, 2020 · IPR2017-01753 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied Gilead’s rehearing request, leaving institution denied because Petitioner did not show the Board abused its discretion or misapprehended the obviousness record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. Instead, an abuse of discretion occurs 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 an unreasonable judgment in weighing relevant factors. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5
- BurdenDecided for patent owner
“Under Rule 42.108(c), The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Thus, under the Rule, it is only genuine issues of material fact created by testimonial evidence provided by a patent owner with its preliminary response that we view “in the light most favorable to the petitioner.” 37 C.F.R. § 42.108(c) (2017).2 Because Patent Owner did not provide testimonial evidence in this proceeding, there is no “genuine issue of material fact created by such testimonial evidence.” Accepting Petitioner’s argument that we must always resolve any genuine dispute of material fact in the light most favorable to the petitioner would compel institution in every case where a petitioner presents unrebutted expert testimony. But a patent owner has no obligation to rebut the petitioner’s contentions or to submit an expert declaration rebutting the petitioner’s expert testimony. See 37 C.F.R. §§ 42.107(a) (“The patent owner may file a preliminary response to the petition.” (emphasis added)); 42.108(c) (“The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” (emphasis added)). And the Board is not required to accept every statement made by a petitioner’s expert as established fact simply because the patent owner does not submit contradictory expert testimony. Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020). Instead, “it is the Board’s duty to independently assess the strength of a petitioner’s argument and evidence.” Id., see also id. (“[I]n every case, it remains the Board’s essential function to make factual findings based on its view of the record.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“In the Decision denying institution, we concluded that the evidence before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,815,830 - PTAB · Dec 21, 2020 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Rehearing
Denied Patent Owner’s request to reverse institution of review of claims 1–3, 7, 16, and 18; Patent Owner did not show an erroneous construction or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We nevertheless preliminarily construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Inst. Dec. 29. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “for instance, the running of an application on a server as requested by a client,” “where some conversational flows involve more than one connection,” and “some even involve more than one exchange of packets between a client and a server.” Id. (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–3, 7, 16, and 18 of the ’646 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
Claim constructionPatents in suitUS 6,771,646 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . 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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentablePTAB · Dec 15, 2020 · IPR2019-01055 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–8, 10, 12–17, 19, and 20 were not shown unpatentable over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner
“would have had either: (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 45 (citing Ex. 1002 ¶¶ 19–20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors as well as my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Obviousness (§103) › Analogous artNot reached
“Patent Owner counters that Koning does not qualify as analogous art and, relatedly, that judicial estoppel bars Petitioner from contending otherwise. PO Resp. 7–17. Patent Owner further argues that an ordinarily skilled artisan would not have been motivated to combine Koning’s belt with Hedderwick and Benac, and would not have expected that combination to succeed. Id. at 18–33; Sur-Reply 13–19. Patent Owner also challenges the motivation and reasonable expectation of success for the incorporation of Owner argues that incorporating Benac’s paddle wheel would not yield a “nip” as claimed. PO Resp. 49–61; Sur-Reply 29. Patent Owner also submits evidence of objective indicia of nonobviousness. PO Resp. 61–98; Sur-Reply 2–10. 2. Motivation to Combine and Reasonable Expectation of Success Of the disputed issues summarized in the preceding section, our analysis focuses on whether an ordinarily skilled artisan would have been motivated to combine the references in the manner Petitioner proposes and would have reasonably expected success in doing so. Because those issues are dispositive of Petitioner’s challenge, it is unnecessary for us to resolve the other disputed issues. See, e.g., Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (affirming Board’s determination that claims were not shown to be obvious because the petitioner had not demonstrated that an ordinarily skilled artisan would have been motivated to combine the references); Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1383 (Fed. Cir. 2019) (determining that it is unnecessary to reach other issues when reasonable expectation of success is dispositive).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 78 (“[A] person of ordinary skill in the art would have determined through no more than routine experimentation how to orient Benac’s paddle wheel so that it could operate with Koning’s brush belt bristles to pinch seeds from the seed meter.”). It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the references in the proposed manner and would have reasonably expected success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28
Patent outcomesUS 9,699,955 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,699,955 - Victoria’S Secret Stores LLC v. Andra Group, LPRehearing deniedPTAB · Dec 11, 2020 · IPR2020-00853 · APJ Eric C Jeschke · IPR · Rehearing
The Board denied rehearing, leaving institution denied because the Petition did not show a reasonable likelihood of prevailing on any asserted ground for claims 1, 2, 5–8, and 11.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. See 37 C.F.R. § 42.71(d) (2019). A request on rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the briefing. Id. When reconsidering a decision on institution, we review for an abuse of discretion. See 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an inter partes review of claims 1, 2, 5–8, and 11 (the “challenged claims”) of U.S. Patent No. 8,078,498 B2 (Ex. 1001, “the ’498 patent”). Paper 1 (“Pet.”). Andra Group, LP filed a Patent Owner’s Preliminary Response. Paper 10. We denied institution, determining that the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims in any of the three asserted grounds of unpatentability. See Paper 12 (“Decision on Institution” or “Dec.”). Petitioner timely filed a Request on Rehearing, requesting “partial reconsideration” as to one of the three asserted grounds, in which Petitioner asserted that the challenged claims would have been obvious based on VS Webpages (Ex. 1031). Paper 13 (“Request on Rehearing” or “Req. Reh’g.”), at 1; see also Pet. 40, 51–67 (discussing this ground). For the reasons below, Petitioner’s Request on Rehearing is denied.” slip op. at 2
- Obviousness (§103) › Analogous artNon analogous artNot reached
“The fact that the Decision on Institution did not discuss whether VS Webpages is analogous art to the ’498 patent does not show that we “misapprehended or overlooked” an argument or evidence. See 37 C.F.R. § 42.71(d). An assessment of whether relied-upon art is analogous is a threshold inquiry in an obviousness analysis. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Analogous art is merely a threshold inquiry as to whether a reference can be considered in an obviousness analysis. Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Here, we did not address analogousness because we determined that other issues were dispositive as to the asserted ground at issue. Specifically, as discussed below, Petitioner had not shown a reasonable likelihood in prevailing with its position that human beings fall within the scope of the term “article” (or “articles”) in the challenged claims. See Dec. 13–18.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented in the Petition. In the Decision on Institution, we expressly stated that, even in the context of Petitioner’s alternative position—involving modifying certain images displayed by VS Webpages—“Petitioner continues to rely on human beings as the ‘article[s].’” Dec. 15 n.9 (citing Pet. 58–59 (discussing the alternative reliance on Vertex as to clause D), 60 (discussing clause E)). The aspects of the Petition cited in Petitioner’s Request on Rehearing continue to support this statement.” slip op. at 5
§ 103 obviousnesscites GrahamPatents in suitUS 8,078,498 - Illumina, Inc. v. Natera, Inc.No claims unpatentablePTAB · Dec 11, 2020 · IPR2019-01201 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–27 were not shown unpatentable: the single-cell Dhallan theories lacked a reasonable expectation of success, and Rabinowitz was not established as prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableReasonable expectation not foundNot shown unpatentable
“In sum, Petitioner’s evidence in the Petition establishes that single cells were used for genetic analysis, amplification techniques were known, and SNP arrays could be used to analyze chromosome imbalances. Petitioner’s evidence, however, does not persuasively address the interplay between the amount of DNA in a single cell and the amount of DNA or amplified DNA needed to carry out the claimed method using a SNP 22 genotyping array and Dhallan’s aneuploidy analysis. This is important because Patent Owner cites evidence demonstrating that at the relevant time, “various researchers had determined that very low amounts of DNA could not be reliably used for SNP genotyping arrays (even with intervening amplification).” PO Resp. 47.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“On this record, we agree with Patent Owner and Dr. Quackenbush that the ’406 application and ’741 provisional together demonstrate to persons of 23 The ’741 provisional is incorporated by reference into the ’406 application. Ex. 1026, 1:5–13. 48 ordinary skill that the inventors understood pyrosequencing could be used for high-throughput sequencing, if expensive machines were purchased. In other words, the ’741 provisional gives context to the statement in the ’406 application, and we agree with Dr. Quackenbush that “‘[s]uitability’, as the provisional makes clear to a person of ordinary skill in the art, is a cost issue, rather than a technical one.” Ex. 2012 (Quackenbush Decl.) ¶ 277; see also id. ¶¶ 276–80 (opining on disclosures in the ’741 provisional).” slip op. at 48
- ExcludeMotion to exclude, deniedDenied
“As to Dr. Quackenbush’s qualifications, although Petitioner characterizes his expertise as relating to statistics, the record reflects that he also has adequate experience in the fields of genetics and biotechnology. For example, he is Professor of Computational Biology and Bioinformatics, the Chair of the Department of Biostatistics, and the Director of the Health Data Science Center at the Harvard TH Chan School of Public Health. Ex. 2013, 1. He has almost three decades of experience in research and teaching in the fields of genetics and biotechnology (id. at 1–8, 12), has published hundreds of articles in these fields (id. at 13–52), was the Editor-in-Chief of the journal Genomics for over a decade (id. at 8), and has served as a peer reviewer, or on the editorial board, of a dozen other publications relating to genetics and biotechnology (id. at 7–8). Paper 49, 2. Given that experience in genetics and biotechnology, we find that Dr. Quackenbush has sufficient 54 specialized knowledge, experience, and education in the techniques of the ’592 Patent and prior art, such as DNA amplification, genotyping, and analysis of genetic data, for his testimony to be helpful to us. Moreover, even if Dr. Quackenbush did not personally work in fetal diagnostics at the relevant time, there is no requirement that a declarant must actually be a person of ordinary skill in the art to present testimony as to what such a person would have understood at the time of the invention. See, e.g., SEB S.A., 594 F.3d at 1373 (stating there is no requirement of a perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The remaining arguments raised in Petitioner’s motion relate to the sufficiency, rather than admissibility, of evidence. Such arguments are improperly advanced in a motion to exclude. See TPG 79 (stating that a motion to exclude may not be used to challenge the sufficiency of the evidence to prove a particular fact); see also Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (“[T]he Board, sitting as a non-jury tribunal, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial.”). Moreover, “there is a strong public policy for making all information filed in an administrative proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). Rather than excluding evidence that is allegedly 55 confusing, misleading, or incorrect, we simply give it the appropriate weight in our analysis.” slip op. at 54
- Strike new argumentNew argument disregardedDecided for patent owner
“success arguments focus solely on Dhallan’s single cell disclosure, while “ignor[ing] Dhallan’s disclosure that its methodology can be performed using 2–32 cells, which also falls within the claims.” Reply 18 (citing, e.g., Pet. 13–14). Patent Owner responds that this is an improper attempt to change the thrust of the obviousness theory presented in the Petition. Sur-reply 16–17. We agree with Patent Owner. Although the Petition references portions of Dhallan that address using sources of DNA other than a single cell (see, e.g., Pet. 13–14, citing Ex. 1002 ¶¶ 44, 74), this is by way of background only, falling within a section titled “Introduction to Dhallan.” See Pet. 11. Petitioner’s detailed obviousness arguments for claim 1 are limited to use of DNA from a single cell, and do not extend to DNA from multiple cells.15 See, e.g., id. at 19–20 (arguing that, because Dhallan’s preferred embodiment is one embryo cell, Dhallan teaches the claimed limitation reciting “wherein the small amount of genetic material from the individual is from fifty or fewer of the individual’s 15 As noted above, claim 1 recites several possible sources for the claimed “small amount of genetic data.” See supra n.9. Here we focus on Petitioner’s unpatentability arguments based on option [i], but note that Petitioner’s unpatentability arguments under options [ii] and [iii] also did not extend to use of DNA from multiple cells. See, e.g., Pet. 20 (cross-referencing arguments for claims 4, 5, and 17); id. at 34 (for claim 4, arguing option [ii] based on “a single human cell”); id. at 35 (for claim 5, arguing option [iii] based on “extracellular fetal DNA from maternal blood”); id. at 42 (for claim 17, arguing option [iii] based on a “single fetal cell”). 30 cells”); id. at 29 (“A POSA would have been motivated to use a single cell as the source of genetic material . . . .”); id. at 31 (“A POSA would have reasonably expected success in using Dhallan’s methodology, for example as described in Example 14, on one embryonic cell.”). Accordingly, we agree with Patent Owner that Petitioner is impermissibly attempting to change the thrust of its obviousness theory on reply. Sur-reply 16–17. We will not consider Petitioner’s belated attempt to argue a reasonable expectation of success in using more than a single cell in the claimed method. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the . . . patent owner response.”).” slip op. at 30
Patent outcomesUS 8,682,592 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,682,592 - Unified Patents, LLC v. Velos Media, LLCRehearing deniedPTAB · Dec 9, 2020 · IPR2019-00710 · APJ Jason W Melvin · IPR · Rehearing
The Board denied rehearing, leaving claims 1, 2, 11, 12, and 22 not shown unpatentable over Chen or Chen and Bao under §103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision, however, did not overlook and rather accepted that the DC block group flag was “not necessary (and often redundant).” Dec. 12–13 (quoting Pet. 53). Notwithstanding that proposition, we declined to extend it to compel omitting the DC block group flag and withholding the DC block from the (0,0) inference. Id. at 13. Petitioner faults the Decision’s conclusion because the (0,0) inference cannot be applied if the DC block does not have a group flag (the inference depends on the group flag’s value). See Req. Reh’g 7–8. The Request fails to persuade us that we misapprehended or overlooked Petitioner’s argument. Asserting that the DC block group flag was “unnecessary (and often redundant)” does not compel a conclusion that the DC block group flag would be omitted from the bitstream. The Decision determined that the Petition does not sufficiently justify such a conclusion and we do not agree with the Request’s post hoc view equating “not necessary” with “would be omitted.” See Req. Reh’g 8–9.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“The Request argues the Petition establishes “it would have been obvious not to include (i.e., omit) a group flag in the bitstream for the DC block” as “one of three ways to reduce the size of coded video.” Req. Reh’g 6 (emphasis omitted) (citing Pet. 54). As an independent basis for modifying Chen, the Petition identifies three potential solutions for reducing coded-video size—“not encoding the significant-coefficient-group flag for the block containing the last significant coefficient, the DC block, and the block whose right neighboring block and lower neighboring block both have non-zero significant-coefficient-group flags.” Pet. 54–55. As support, the Petition cites the challenged patent. Id. at 54 (citing Ex. 1001, 12:6–54). Although the Petition also cites declaration testimony (id. at 55 (citing Ex. 1002 ¶ 94)), that testimony offers no support beyond that in the Petition. Thus, other than through the challenged patent itself, the Petition does not support the factual underpinning required for an obvious-to-try conclusion. That hindsight approach does not establish a persuasive position.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,964,849 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationInstitution deniedPTAB · Dec 8, 2020 · IPR2020-00663 · APJ Kimberly Mcgraw · IPR · Institution
Institution was denied for claims 1 and 2 because Petitioner did not show a reasonable likelihood that either claim would have been obvious over Griswold or England.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the submitted evidence and argument, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time the ’603 patent was filed (a “POSITA”) would have had a minimum of a bachelor’s degree in computer science, electrical engineering, mathematics, or a related field, and approximately two years of relevant experience or equivalent study in electronic data protection, electronic content protection, or digital rights management. Pet. 16. Petitioner further states that additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. (citing Ex. 1002 ¶¶ 47–48). Patent Owner sets forth a similar definition, stating that a POSITA would have a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields. Prelim. Resp. 19. Patent Owner states that the positions set forth in its Preliminary Response would be the same under either parties’ proposal. Id. The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the prior art and the ’603 patent. We note, however, that our analysis would be the same under either parties’ definition of a POSITA.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“should be construed to mean “conditions or characteristics determined in advance against which to check the structure and/or behavior of one or more software modules.” Pet. 16–18 (citing Ex. 1002 ¶¶ 67–72). To support this proposed construction, Petitioner states that the ’603 patent describes “inspector modules that ‘are operable to check the structure and/or behavior of drivers, software, and/or hardware against predefined criteria.’” Id. at 17 (emphasis omitted) (quoting Ex. 1001, 15:36–62); see also id. (citing Ex. 1001, 16:25–34, 23:63–24:4). Patent Owner contends that the term “predetermined criteria” does not require construction and should be given its plain and ordinary meaning. Prelim. Resp. 21. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute. Id. We agree that no explicit construction of this phrase is necessary for our decision on whether to institute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“With respect to Petitioner’s first argument, Petitioner contends that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software in order for the software to be used together with the content . . . .” Id. at 33 (citing Ex. 1002 ¶ 93), id. at 25 (citing Ex. 1002 ¶ 81). Petitioner, however, does not provide sufficient evidence to support its contention. Although Petitioner cites to the declaration testimony of Dr. Madisetti to support its argument, Dr. Madisetti’s testimony merely repeats verbatim what is stated in the Petition and provides no additional persuasive facts or objective evidence to support his conclusion. See Ex. 1002 ¶ 93; see also id. at ¶¶ 77–82. To satisfy its burden of proving obviousness a petitioner cannot employ mere conclusory statements. In re Magnum Oil Tools Int’l, 829 F.3d at 1380; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). We are also not persuaded by Petitioner’s second argument that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software . . . so that information identifying the software can be transmitted in the license datagram for evaluation at the licensor’s site.” Pet. 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Petitioner does not provide sufficient evidence or argument either that the license datagram provides information about the software (as opposed to the licensed product itself) or a reason why a POSITA would have understood information about the software would be provided in the datagram for evaluation at the licensor’s site. To support this second argument, Petitioner states Griswold’s license check system involves sending a “request datagram” or a “license datagram” to the licensor’s site in order to obtain approval to use the licensed product. Pet. 24–25 (citing Ex. 1006, 3:62–4:5, 5:44–52). Petitioner contends Griswold’s “license datagram 3 describes information related to the use of licensed product 1, including an identification of product 1 (i.e., the software).” Id. at 25 (citing Ex. 1006, 5:44–45, 6:37–51); see also id. at 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Griswold, however, does not state that license datagram 3 identifies the software separately from the product. Rather, Griswold sates that datagram 3 contains a number of fields, including product model number 24 that identifies product 1. Ex. 1006, 6:45–48. Thus, we disagree with Petitioner’s assertion that license datagram 3 identifies the software separately from the product. Petitioner’s contention that a POSITA would have understood that, in the embodiment where the software is separate from the content, the monitor must first identify the software so that information identifying the software can be transmitted in the license datagram for evaluation at the licensors site, is conclusory and unsupported. See Pet. 33 (citing Ex. 1002 ¶ 93). Thus, Petitioner has not sufficiently shown that Griswold teaches the” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,406,603 - Satco Products, Inc. v. Seoul Semiconductor Co., LtdRehearing deniedPTAB · Dec 8, 2020 · IPR2020-00248 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Sanga disclosed the claimed spacer-layer bandgap requirement.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- BurdenDecided for patent owner
“We further note that for purposes of the bandgap requirement of the spacer layer limitation, Petitioner relies on the specific barrier layer, spacer layer, and quantum well layer described for Example 1. Pet. 35–36 (comparing the bandgap of the In0.03Ga0.97N layer of Example 1 with the GaN barrier layer of Example 1 and the In0.3Ga0.7N quantum well layer of Example 1). Example 1 does not expressly include an n-side multilayer structure with an InxGa1-xN/InyGa1-yN configuration, wherein each layer contains indium and x<y≤ 0.1. Therefore, Petitioner’s analysis of the bandgap requirement for claim 9, which expressly relies on Sanga Example 1, requires replacing the actual spacer layer in Example 1 with a different layer, while keeping the barrier layer and quantum well layer the same for purposes of bandgap comparison. Petitioner, however, has not provided adequate justification for doing so. Petitioner’s citation to Sanga’s general disclosure of “a multilayer having a periodic structure repeating InxGa1-xN/InyGa1-yN (0≦x<y<1)” in support of its InGaN/InGaN stack argument is unhelpful. Reh’g Req. 3. We acknowledge that this statement discloses the use of stacked InGaN layers of varying indium composition in general. But Petitioner does not direct us to bandgap values for this generic periodic structure, and to arrive at the bandgap requirement of the spacer layer limitation of claim 9, Petitioner refers back to Example 1, and its analysis of the bandgap values of the specific barrier layer, spacer layer, and quantum well layer disclosed therein. As such, we are not persuaded this general disclosure of Sanga cures the deficiencies discussed above.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“In its Rehearing Request, Petitioner presents new arguments in support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“bandgap requirement to the spacer layer as a whole, but Patent Owner argued that this requirement should be construed such that it requires all the layers comprising the spacer layer to meet the bandgap requirement. Reh’g Req. 6. Petitioner, however, never identifies any particular matter that we misapprehended or overlooked in connection with this argument. Furthermore, Petitioner did not propose a construction of the bandgap requirement in the Petition (Pet. 7–20), and Patent Owner argued that Petitioner’s arguments fail regardless of how the bandgap limitation is construed (Prelim. Resp. 36). In this regard, we note that in our Decision we determined that we did not need to construe the bandgap requirement. Dec. 6.” slip op. at 7
Claim constructionPatents in suitUS 9,716,210 - PTAB · Dec 8, 2020 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place for claims 1, 2, 13–17, 19, 20, 31, 33, 34, 42, 44, 48, and 49.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting 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 it believes the Board 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). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We nevertheless preliminary construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Id. at 30. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “for instance, the running of an application on a server as requested by a client,” “where some conversational flows involve more than one connection,” and “some even involve more than one exchange of packets between a client and a server.” Id. at 30 (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Id. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
Claim constructionPatents in suitUS 6,954,789
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.