- Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCRehearing deniedPTAB · Jan 30, 2019 · IPR2014-01558 · APJ James T Moore · IPR · Rehearing
The Board denied Volkswagen’s rehearing request, leaving claims 3, 16, and 20 not shown unpatentable because Saito, read in context, did not establish the claimed regeneration limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We find Petitioner’s position to be lacking in substance. The quotation provided by Petitioner is only a partial quotation. The complete quotation from Saito, with appropriate following context italicized, is as follows: The method of reducing NOx using a reducing agent such as hydrogen is widely known as a nonselective catalytic reduction method, but in this method, if large amounts of oxygen are present in the exhaust gas [amounts of] reducing agent sufficient to react with the oxygen will be added and the NOx will be reduced, which is not economical in so much as large amounts of reducing agent are consumed, and thus the use of nonselective catalytic reduction methods was limited to situations in which oxygen was not present, or situations in which the oxygen concentration had been greatly lowered. In the method of the present invention, the amount of reducing agent consumed is the amount necessary to reduce and remove the NOx that has been absorbed by the catalyst, which is a very small amount, and therefore this is very economically advantageous. Ex. 1008A, 3 column 1, lines 38–54 (emphasis added). The italicized language, to us, indicates that this discussion in Saito is not that simply of one nonpreferred specific embodiment of catalyst renewal taught, but rather a discussion of the reasons why nonselective catalytic reduction methods of exhaust gas directly were not generally used due to their prohibitive costs. Moreover, it is a stretch to say that catalytic reduction methods are the same as renewing a devitalized catalyst as alleged in Petitioner’s request for rehearing. In this we agree with the Patent Owner that this disclosure of a prior art “non-selective catalytic reduction method does not render claims 3, 16, and 20 obvious.” Paper 75, 10. To the extent that Petitioner asserts we did not consider this argument, we have again considered it and again find it to be unpersuasive based upon Saito itself, when taken in complete context. As noted before, Saito’s example is explicit that Saito uses two catalyst beds and regenerates each catalyst bed independently of each other. PO Resp. 21, 24. By the use of valving, the reducing agent is introduced into the catalyst bed through which exhaust gas is not flowing. Id. at 21 (citing Ex. 1008B, 3). As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d). The request for rehearing is therefore DENIED.” slip op. at 12
- Strike new argumentNew argument disregardedOther
“As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d).” slip op. at 13
- Expert testimonyNot reached
NonePatents in suitUS 5,599,758 - K/S Himpp v. III Holdings 4, LLCNo claims unpatentablePTAB · Jun 28, 2018 · IPR2017-00496 · APJ James T Moore · IPR · Final written decision
Claims 1–17 were not shown unpatentable under § 103 over Topholm and Michael because the cited art did not teach adjusting a hearing aid profile.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The problem we find with this position is that the Petitioner is reading claim elements into the description of these references. Patent Owner points out that the profiles are not being adjusted, but rather being selected from twenty-four previously stored profiles. Resp. 30–31. While the ear module operational profile changes, we observe that this is because it is using a different profile, which was just uploaded from the control unit. The act of moving the finger around on the screen to us perhaps appears to change the profile, when it is in fact moving through a set of preexisting profiles and uploading them to the hearing aid instead, changing operation of the hearing aid itself but not adjusting the profile itself. Michael states: This permits the user to select a hearing profile by simply moving visual indicator 924 over main region 922 while listening to a sound stream broadcast by ear 35 module 10; the sound stream being heard by the user reflects the hearing profile corresponding to the current position of the visual indicator 924 in real-time. Ex. 1005, 8:32–37.” slip op. at 21
- Expert testimonyPetitioner expert creditedOther
“4 Petitioner also relies upon the declaration testimony of Dr. Robert E. Morley, Jr. (Ex. 1002). Both references appear to be prior art under 35 U.S.C. § 102(b). We find Dr. Morley, by virtue of his education and experience, qualified to testify to the subject matter of this proceeding. Ex. 1002 ¶¶ 2–14 and Exhibit A thereto. We are cognizant of Patent Owner’s suggestion that we give his testimony “little, if any, weight” because of the similarity of the testimony with Petitioner’s arguments and discrepancies between it and his deposition testimony. PO Resp. 34–36. We give Dr. Morley’s testimony appropriate contextual weight herein based upon the content of the testimony itself, and any contrary testimony in Exhibit 2006. We decline to assign generally no weight to his testimony, however.” slip op. at 3
- Skill levelSkill level petitioner adoptedOther
“These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,”5 (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long felt but unsolved needs, failure of others, etc.”6 KSR, 550 U.S. at 406 (quoting Graham, 383 U.S. at 17–18). 5 Petitioner defines the level of ordinary skill in the art as someone with a B.S. degree in electrical or computer engineering, or the equivalent, and at least two years of experience in the design of audiological products. Pet. 7-8 (citing Ex. 1002, ¶ 32). Patent Owner does not challenge this level. PO Resp., passim. The references in the record tend to support a finding that this is the appropriate level.” slip op. at 12
Patent outcomesUS 8,761,421 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,761,421 - Argentum Pharmaceuticals LLC v. Cipla Ltd.Rehearing deniedPTAB · Oct 31, 2017 · IPR2017-00807 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in declining to construe the terms or in reserving disputed motivation and reasonable-expectation issues for trial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 4
- Expert testimonyOther
“osmolality, poor spray quality, and unacceptable settling and caking” resulting from the attempted formulation of Cramer’s Example III. Id. at 8– 10; see also Prelim. Resp. 25. The Board, however, addressed those issues in the Institution Decision and determined that “Patent Owner’s arguments and expert testimony highlight disputed issues of fact about whether the skilled artisan would have been motivated to combine the teachings of Hettche, Phillipps, and Segal to arrive at the claimed subject matter, and would have had a reasonable expectation of success.” Instit. Dec. at 20 (citing Ex. 1002, 268–87; Ex. 2007 ¶¶ 40–47; Ex. 2111, 1; Ex. 2044, 1–2). The Board concluded that those “issues are best resolved following trial with the benefit of a full record.” Id. We are still of that view. Accordingly, we are not persuaded that the Board misapprehended or overlooked the issue of reasonable expectation of success.” slip op. at 5
- BurdenOther
“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 the party 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 1 Helmut Hettche, U.S. Patent No. 5,164,194 (Nov. 17, 1992) (“Hettche”). Ex. 1007. 2 Gordon H. Phillipps, et al., U.S. Patent No. 4,335,121 (Jun. 15, 1982) (“Phillipps”). Ex. 1009. 3 Catherine A. Segal, Int’l Publication No. WO 98/48839 (Nov. 5, 1998) (“Segal”). Ex. 1012. 4 FLONASE® (fluticasone propionate) Nasal Spray, 50 mcg Product Information (Dec. 1998) (“Flonase Label”). Ex. 1010. 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“In the Institution Decision, the Board determined that “no claim term requires express interpretation for purposes of this Decision.” Instit. Dec. 7. In its Rehearing Request, Patent Owner argues that the Board “misapprehended or overlooked the importance of construing the terms ‘nasal spray’ and ‘suitable for nasal administration’” found in all the challenged claims. Reh’g Req. 2. In particular, Patent Owner asserts that those terms mean “pharmaceutical formulations that are tolerable to patients, homogeneous, and can be suitably deposited onto the nasal mucosa.” Id. (citing Paper 7, Preliminary Response (“Prelim. Resp.”), 9). Patent Owner alleges that, had the Board construed “nasal spray” and “suitable for nasal administration,” then the Board would have denied the obviousness grounds because “none of the combinations of cited art teach a person of ordinary skill in the art how to make the claimed fixed-dose combination ‘nasal spray’ or formulation ‘suitable for nasal administration’ with a reasonable expectation of success.” Id. at 2–3 (citing Prelim. Resp. 9). We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,168,620 - Tietex International, Ltd. v. Precision Fabrics Group, Inc.No claims unpatentablePTAB · Jan 27, 2016 · IPR2014-01248 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–22 were not shown unpatentable under § 103 over Radwanski, Rowan, and Murch because the petitioner did not establish the claimed thermal protective performance value.
RulingsFinal written decision- BurdenNot shown unpatentable
“Thus, in order to prevail, Petitioner must provide evidence establishing that the claimed TPP values are inherent in the prior art. Petitioner cannot, as an examiner can, establish unpatentability of the challenged claims based on the presumption that the structure of fabric that results from the combination of Radwanski, Rowan, and Murch would necessarily possess the claimed properties. Allowing Petitioner to rely solely on a presumption of inherency would improperly shift the burden to Patent Owner to establish that the claimed properties are not necessarily present in the prior art. Therefore, we are not persuaded that the Appeal Decision establishes “that one of ordinary skill in the art would have found it obvious to construct a flame retardant, intumescent fabric in accordance with the teachings of the prior art” with the claimed TPP value of at least 4.5 as Petitioner contends. Pet. 16.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“After considering Petitioner’s and Patent Owner’s positions, as well as their supporting evidence, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 1 of the ’639 patent, and claims 2– 10, 13–16, and 19–22 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Radwanski, Rowan, and Murch. Independent claims 11, 12, and 17 also require a TPP value of at least 4.5. Ex. 1001, 12:47–13:20, 14:1–18. Therefore, for the reasons set forth above, we also determine that Petitioner has not shown, by a preponderance of the evidence, that claims 11, 12, and 17, and dependent claim 18, would have been obvious over the combination of Radwanski, Rowan, and Murch. D. Secondary Considerations of Non-obviousness Patent Owner contends that secondary considerations of non- obviousness, including unexpected results, long-felt but unsolved need, and commercial success of the patented product “compel a determination of nonobviousness.” PO Resp. 49; see id. at 49–59. As discussed above, we find that Petitioner has not established that claims 1–22 of the ’639 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Thus, we need not address Patent Owner’s evidence regarding secondary considerations of non-obviousness.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In our judgment, Petitioner’s arguments and evidence in the Reply are outside the scope of a proper reply because they do more than merely address Patent Owner’s argument that Petitioner did not establish that fabrics made by the combination inherently would have the claimed TPP value; rather, they attempt to provide new evidence that was not set forth clearly in the Petition as to why the fabric resulting from the combination of Radwanski, Rowan, and Murch necessarily would have the claimed TPP values. Because Petitioner waited until the Reply to serve this evidence on Patent Owner, Patent Owner was denied the opportunity to file responsive evidence. Consideration by the Board of the arguments in the Reply and evidence presented in the Horrocks Declaration in support thereof would be unfair to Patent Owner. Petitioner could have presented this argument and evidence with the Petition, and has not contended or offered any evidence to show otherwise. Because Petitioner belatedly presented these new arguments and evidence to make its case that the TPP value is dictated by the structure of the fabric, we decline to consider the portions of the Reply and the Horrocks Declaration on this issue. See Office Trial Practice Guide, 77 Fed. Reg. at 48,767. Patent Owner had a chance to, and in fact did, cross-examine Dr. Horrocks, but had no further briefing opportunity to challenge Petitioner’s evidence. Although Patent Owner did file observations regarding the cross-examination of Dr. Horrocks, such observations are not designed for submitting substantive arguments. See id. at 48,768 (“An observation (or response) is not an opportunity to raise new issues, re-argue issues, or pursue objections.”). Considering the new arguments and evidence at this late stage would not serve the interests of justice. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that the claimed TPP values are inherent in the prior art.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“Secondary Considerations of Non-obviousness Patent Owner contends that secondary considerations of non- obviousness, including unexpected results, long-felt but unsolved need, and commercial success of the patented product “compel a determination of nonobviousness.” PO Resp. 49; see id. at 49–59. As discussed above, we find that Petitioner has not established that claims 1–22 of the ’639 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Thus, we need not address Patent Owner’s evidence regarding secondary considerations of non-obviousness.” slip op. at 18
Patent outcomesUS 8,501,639 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,501,639 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentablePTAB · Jan 22, 2016 · IPR2014-01558 · APJ Fred E Mckelvey · IPR · Final written decision
Claims 1–14 and 16–20 are unpatentable as obvious over Campbell, Saito, and Stiles; the Board found the Hirota, Takeshima, and Saito anticipation grounds insufficient.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We see no need to repeat that discussion here, and adopt it as written therein. Petitioner has failed to establish that Hirota describes a regeneration gas falling within the scope of the regeneration gas of claim 1 of the ʼ758 patent. Accordingly, Petitioner has failed to satisfy its burden of proving by a preponderance of the evidence that the subject matter of claim 1 of the ʼ758 patent is anticipated by Hirota.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner
“Whenever a ground based on obviousness is involved, the preferred manner of setting out differences is to state “the subject matter of claim x differs from the reference in that (1) …, (2) …., and (n) ….” Vague statements or hints of differences not only burdens the Board, but puts a patent owner at somewhat of a disadvantage with having to guess what any differences a petitioner believes may exit. Reluctance on the part of counsel to “admit” to and identify a difference is hard to understand, given the fact that a difference does not mean the subject matter claimed is non-obvious. Dann v. Johnston, 425 U.S. 219, 230 (1976) (mere existence of differences between the prior art and an invention does not establish the invention’s non-obviousness).4 Campbell appears to differ from the subject matter of claim 1 of the ʼ758 patent in that Campbell does not describe an in situ regeneration.” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Discussion While Campbell does not describe in situ regeneration, and assuming arguendo that claim 1 of the ʼ758 patent requires in situ regeneration, in situ regeneration is a well-known technique described by Saito and Stiles. An in situ regeneration in Campbell makes sense because it eliminates a need to discard spent catalyst and permits one skilled in the art to reuse catalytic material. The reuse of catalytic material would have been recognized as significant due to the expense of platinum. Ex. 1056, page 13:20–23. Patent Owner maintains that the catalytic material of Saito and Stiles “is very different from that of the ʼ758 patent.” Paper 29, 4 Petitioner’s failure to clearly identify differences is not consistent with 37 C.F.R. § 42.104(b)(4) and 42.104(b)(5), as well as 35 U.S.C. § 312(a)(3), which require identifying the grounds “with particularity.” The Petition must specify where each element of a challenged claim is found in the prior art patents or printed publications. 37 C.F.R. § 42.104(b)(2). page 29. “There is nothing in either Saito or Stiles to suggest . . . that the regeneration methods of these two references might be succesfully used for regenerating the catalyst/absorber of Campbell.” Id. at page 30.” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“balance in favor of non-obviousness, both in the courts and the PTO. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1902); The Barbed Wire Patent, 143 U.S. 275 (1892); Webster Loom v. Higgins, 105 U.S. 580 (1881); Ex parte Artsana USA, Inc., Appeal 2014-004116, 2014 WL 4090808 (PTAB Aug. 18, 2014); Murata Mfg. Co. v. Synqor, Inc., Appeal 2014-001167, 2014 WL 1397381 (PTAB Apr. 10, 2014); Ex parte Whirlpool Corp., Appeal 2013-008232, 2013 WL 5866602 (PTAB Oct. 30, 2013). However, in this case, we are unable to credit much, if any, weight, to Patent Owner’s evidence of long-felt need and commercial success. For long-felt need and commercial success to be convincing, there must be a “nexus” between (1) the long-felt need/commercial success and (2) the claimed subject matter. In re Fielder, 471 F.2d 640, 646 (CCPA 1973). Patent Owner’s evidence is bottomed on Patent Owner’s experience with what is referred to as a “SCONOx catalytic absorption system.” Ex. 2006A ¶ 4 (direct Declaration testimony of Thomas Girdlestone). Patent Owner characterizes the claimed method as embodying a SCONOx system. Paper 29, page 37:3–4. According to Mr. Girdlestone, the effectiveness of reducing NOx in a SCONOx system was tested at a turbine facility run at EmeraChem’s then-affiliate Sunlaw Energy in California. Ex. 2006A, ¶ 5. Further according to Mr. Girdlestone, both the EPA and the Cal EPA” slip op. at 46
Patent outcomesUS 5,599,758 unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 5,599,758 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Jan 4, 2016 · IPR2015-01673 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds, finding the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1. Our analysis applies with equal force to the remaining claims forming the basis of the Ground 1 challenge.” slip op. at 12
- BurdenDecided for patent owner
“Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“found sulfuric acid described as an alternative for ammonium sulfate. But, then one has to ask: “Where has Petitioner set out to prove that a Gogek Example 3 composition with sulfuric acid used in place of ammonium sulfate meets the limitations of claim 32 as it depends from claim 1?” The relevant testimony is that of Dr. Frederick J. Hirsekorn. Ex. 1005, ¶ 84: Gogek renders the . . . [sulfuric acid] limitation of . . . Claim 32 . . . obvious at least because it discloses that the chemical adjunct may comprise sulfuric acid. Ex. 1003, 1:72–2:4. At the time of the . . . invention of the ’827 Patent, it would have been obvious to a person of ordinary skill in the art to add a small amount of the sulfuric acid as taught in Gogek to the specific formulation of Example 3 of Gogek in order to acid catalyze the inversion of the sucrose in the molasses to produce additional reducing sugars (e.g., dextrose) available for consumption during curing. Producing additional reducing sugar reactants in situ would help ensure that all of the ammonium cations react with the carbonyl group of a reducing sugar, and allow the reaction to run to completion through the consumption of all reactants. Completing the reaction would also improve the quality of the binder. Therefore, one of ordinary skill in the art would have been motivated to use the sulfuric acid expressly disclosed in Gogek with the ammonium sulfate used in the formulation from Example 3 of Gogek in order to achieve these well-known benefits. Agreeing arguendo with Dr. Hirsekorn’s observations, those observations at best prove that one would have found it obvious to use sulfuric acid along with, or possibly in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of ammonium sulfate with a small amount of sulfuric acid would produce a block having the characteristics of the material of claim 32 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1003, col. 1:72. As is often the case in patent specifications, Gogek does not say why ammonium sulfate is preferred. It is not unreasonable to assume that Gogek had some reason for making the statement. Once Example 3 is replicated with a change that would not be the preferred embodiment, it is not unreasonable to assume that a non-preferred embodiment may have properties differing from those of a block made in accordance with Example 3 without sulfuric acid. Petitioner bears the burden of proof. We have not been given” slip op. at 10
§ 103 obviousnessPatents in suitUS 9,039,827 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9
- BurdenNot shown unpatentable
“those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,940,089 - PTAB · Mar 10, 2015 · IPR2014-00903 · APJ James T Moore · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution in place on all challenged claims and five grounds while three grounds remained denied.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Other 314aDecided for patent owner
“discretion in the conduct of its proceedings. We, however, direct Petitioner’s attention to 35 U.S.C. § 316(b), which provides our rules are to take into account the “regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all eight, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. That our decision referenced a related portion of our enabling statute as well as the precise Board rule on point, is not error or an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › §315(e) estoppelNot reached
“The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“We disagree with the conclusion that Petitioner is being deprived of due process rights. Placing reasonable limits upon the trial in order to have the proceedings move forward less expensively and more efficiently does not equate to a denial of a due process right. Indeed, in its current posture, Petitioner could obtain the complete relief it seeks.” slip op. at 5
Discretionary denialPatents in suitUS 5,986,701 - PTAB · Mar 10, 2015 · IPR2014-00902 · APJ James T Moore · IPR · Rehearing
The Board denied HTC’s rehearing request, leaving institution on all challenged claims on five grounds and denial of eight other grounds in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Other 314aDecided for patent owner
“Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all thirteen, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. That our decision referenced a related portion of our enabling statute as well as the precise Board rule on point, is not error or an abuse of discretion.” slip op. at 4
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyNot reached
“The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“We disagree with the conclusion that Petitioner is being deprived of due process rights. Placing reasonable limits upon the trial in order to have the proceedings move forward less expensively and more efficiently does not equate to a denial of a due process right. Indeed, in its current posture, Petitioner could obtain the complete relief it seeks.” slip op. at 6
Discretionary denialPatents in suitUS 5,943,093 - PTAB · Mar 10, 2015 · IPR2014-01249 · APJ James T Moore · IPR · Rehearing
The Board denied rehearing, leaving institution in place on the previously instituted claims and grounds; it rejected the challenges to denying claims 8–14 on Grounds 1 and 3 and other proposed grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“We disagree with Petitioner’s assertion, and reading of the rules and statute. The appropriate rule, 37 C.F.R. § 42.104(b)(3), is not to be read in isolation, but also in conjunction with other Board rules, including 37 C.F.R. § 42.1(b), which requires the rules to be interpreted for securing the just, speedy, and inexpensive resolution of every proceeding. Requiring identification of the means, and sufficient means, avoids institution of a trial where the scope of the means-plus-function claims cannot be determined with precision. The trial potentially would be delayed and ultimately potentially incapable of decision on the merits of the grounds. Consequently, the panel has the discretion to determine if the trial might stray into grounds outside of the statutory authority provided for inter partes review proceedings.” slip op. at 3
- Other 314aInstitution denied discretionary otherDecided for patent owner
“First, it is a long-standing part of jurisprudence that the tribunal has discretion in the conduct of its proceedings. The language of § 314 provides us with discretion in that it expressly states that review “may not” be authorized in certain situations, but it does not require that a review “shall” be instituted in any situation. 35 U.S.C. § 314(a). In addition, we direct Petitioner’s attention to 35 U.S.C. § 316(b), which provides our rules are to take into account the “regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all eleven, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. Thus, we are not persuaded of error or an abuse of discretion in our decision not to institute those additional grounds.” slip op. at 5
- PTAB / AIA Trials › §315(e) estoppelNot reached
“The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 6,362,850
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.