- The Boeing Company v. Seymour LevineInstitution deniedPTAB · Apr 15, 2016 · IPR2016-00023 · APJ Trenton A Ward · IPR · Institution
The Board denied institution on all challenged claims under § 325(d) because the petition presented substantially the same prior art and arguments as the pending IPR2015-01341, and dismissed the joinder motion.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Because the Petition presents substantially the same prior art, and substantially the same arguments, as the Petition in the 1341 IPR, we exercise our discretion to deny institution of review under 35 U.S.C. § 325(d).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“whether to join a party to an inter partes review under 35 U.S.C. § 315(c): JOINDER.–If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Thus, joinder in an inter partes review may be warranted in certain circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec. Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013) (Paper 16) (“[t]he Board will determine whether to grant joinder on a caseby-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations”). The statute does, however, set forth at least one circumstance in which we do not have the discretion to join a party: if the Board determines that the second petition does not warrant institution. 35 U.S.C. § 315(c) (“the Director . . . may join as a party . . . any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review under section 314”).” slip op. at 8
Discretionary denial - C.R. Bard, Inc. v. Medical Components, Inc.Institution deniedPTAB · Feb 9, 2016 · IPR2015-01660 · APJ Kerry Begley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5–13, 15–19, 21, and 22 were obvious over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “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.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing that any of the challenged claims of the ’325 patent are unpatentable. Therefore, we deny institution of inter partes review.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityNot reached
“E. REAL PARTY-IN-INTEREST Patent Owner argues in its Preliminary Response that the Petition should have named Bard Access Systems, Inc. as a real party-in-interest in addition to C.R. Bard, Inc. Prelim. Resp. 54–59. In view of our determination that Petitioner has not made a sufficient showing that it would prevail in establishing that any of the challenged claims are unpatentable, we do not reach this issue.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“First, we agree with Patent Owner that the Petition does not provide adequate reasoning with rational underpinning for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege is indicated for power injection— to be rated for power injection. See id. at 8–11; Pet. 24–25, 31. Although claim 1 does not require the recited port assembly to be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 31. Specifically, as noted above, Petitioner contends that a person of ordinary skill in the art would have known that the Titanium Implanted Port “could be constructed to handle power injection” by modifying it “in view of Powers to handle the higher pressures and flow rates associated with power injection.” Id. (citing Ex. 1009 ¶¶ 147–48). This assertion, however, is conclusory, and relies exclusively on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See id.; Ex. 1009 ¶ 148. Accordingly, his testimony has little, if any, probative value. 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.”); see Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). The Petition and Mr. Tallarida’s cited testimony do not explain how the Titanium Implanted Port of PORTS would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 31; Ex. 1009 ¶ 148.” slip op. at 11
- Obviousness (§103) › Analogous artNon analogous art
“asserted ground based on PORTS, Powers, PowerPort, and Hickman, Petitioner has not provided adequate reasoning with rational underpinning for combining PORTS, Powers, Meyer, and Hickman to arrive at the invention recited in the challenged claims. We agree with Patent Owner that Petitioner has not shown that Meyer cures the deficiencies of PORTS and Powers. See Prelim. Resp. 35–37. Petitioner alleges that the alphanumeric cutouts in the plastic collar of Meyer would be visible under X-ray examination, yet neither Meyer nor the cited paragraphs from Mr. Tallarida’s declaration testimony sufficiently support this assertion, particularly in light of contradictory evidence in the record. See Pet. 55 (citing Ex. 1006; Ex. 1009 ¶¶ 278–84); see also Ex. 1009 ¶ 193 (opining that silicone is radiotransparent); Ex. 1001, [57], 2:13–17, 4:61–5:3 (explaining that radiopaque agent can be applied to plastic material, such as silicone elastomer, to allow indicia to appear under X-ray examination). Moreover, even if the collar in Meyer can be considered a flange,4 it is not a flange of anything resembling a venous access port. Petitioner also has not shown adequately that Meyer, which discloses collars for containers, is “from the same field of endeavor” or “reasonably pertinent to the particular problem” 4 We note that Meyer’s collar does not meet Petitioner’s proffered construction of the term “flange,” “a rim extending outwardly from the base for attachment of the port to a patient.” Pet. 5; see Prelim. Resp. 36. addressed by the inventors of the ’325 patent in developing the venous access ports recited in the challenged claims, as required to be prior art under 35 U.S.C. § 103. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see Ex. 1006, 3 (Summary); Prelim. Resp. 35. Therefore, we are not persuaded by Petitioner’s argument that Meyer “emphasize[s]” the obviousness of including X-ray discernable indicia in the form of cutouts or voids in the flange of the Titanium Implanted Port of PORTS. See Pet. 57.” slip op. at 18
§ 103 obviousnesscites KSRPatents in suitUS 8,257,325 - C.R. Bard, Inc. v. Medical Components, Inc.Institution deniedPTAB · Feb 4, 2016 · IPR2015-01654 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–22 obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the Petition fails to provide adequate reasoning for combining the references in the manner asserted to arrive at the claimed subject matter. Prelim. Resp. 7–38. Having reviewed both parties’ arguments and evidence, we agree with Patent Owner that Petitioner has not articulated sufficient rationale with support in the record for modifying the Titanium Implanted Port of PORTS as suggested in the Petition. In particular, we are persuaded by the following arguments presented by Patent Owner. First, we agree with Patent Owner that the Petition does not provide adequate reasoning based on rational underpinnings for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege can handle power injection—to be rated for power injection. See id. at 8–11. Although claim 1 does not require the recited port assembly actually be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 29. Specifically, as noted above, Petitioner states that a person of ordinary skill in the art would have known the Titanium Implanted Port could be constructed to handle power injection by modifying it in view of Powers to handle higher pressures and flow rates associated with power injection. Id. Petitioner’s assertion, however, is conclusory, and relies only on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See Ex. 1009 ¶ 139. Accordingly, his testimony has little, if any, probative value. 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.”). Moreover, neither the Petition nor Mr. Tallarida’s testimony explains how the Titanium Implanted Port would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 29; Ex. 1009 ¶ 139.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“First, we agree with Patent Owner that the Petition does not provide adequate reasoning based on rational underpinnings for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege can handle power injection—to be rated for power injection. See id. at 8–11. Although claim 1 does not require the recited port assembly actually be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 29. Specifically, as noted above, Petitioner states that a person of ordinary skill in the art would have known the Titanium Implanted Port could be constructed to handle power injection by modifying it in view of Powers to handle higher pressures and flow rates associated with power injection. Id. Petitioner’s assertion, however, is conclusory, and relies only on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See Ex. 1009 ¶ 139. Accordingly, his testimony has little, if any, probative value. 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.”). Moreover, neither the Petition nor Mr. Tallarida’s testimony explains how the Titanium Implanted Port would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 29; Ex. 1009 ¶ 139.” slip op. at 11
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“For substantially the same reasons discussed above with respect to the asserted obviousness ground based on PORTS, Powers, PowerPort, and Hickman, Petitioner has not provided adequate reasoning based on rational underpinnings for combining the references to arrive at the claimed invention. With regard to Meyer, we agree with Patent Owner that Petitioner has not shown Meyer cures the deficiencies of PORTS and Powers. See Prelim. Resp. 35–38. Petitioner alleges the alphanumeric cutouts in Meyer would be visible under X-ray examination, yet neither Meyer nor the cited paragraphs from Mr. Tallarida’s declaration testimony sufficiently support such a statement. See Pet. 50–51 (citing Ex. 1006; Ex. 1009 ¶¶ 227–31). Moreover, even if the collar in Meyer can be considered a flange, it is not a flange of anything resembling a venous access port. Petitioner has not shown adequately that Meyer, which discloses collars for containers, is “from the same field of endeavor” or “reasonably pertinent to the particular problem” addressed by the inventors of the ’160 patent in developing the recited venous access port, as required to be prior art under 35 U.S.C. § 103. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see Ex. 1006, 3 (summary). Therefore, we are not persuaded by Petitioner’s argument that Meyer “emphasize[s]” the obviousness of including X-ray discernable indicia in the form of voids in the flange of the Titanium Implanted Port of PORTS. See Pet. 53.” slip op. at 17
- PTAB / AIA Trials › Real party in interest / privityNot reached
“E. Real Party-in-Interest Patent Owner alleges in its Preliminary Response that the Petition should have named Bard Access Systems, Inc. as a real party-in-interest in addition to C.R. Bard, Inc. Prelim. Resp. 54–59. In view of our determination that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, we do not reach this issue.” slip op. at 18
§ 103 obviousnessPatents in suitUS 8,852,160
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.