- ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence that could have been presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “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.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,015,446 - Medtronic Corevalve LLC v. Colibri Heart Valve LLCRehearing deniedPTAB · May 5, 2021 · IPR2020-01453 · APJ Eric C Jeschke · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–4 because Petitioner did not show the Board misapprehended or overlooked its arguments on the attachment limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” Id. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence of record, we determined that Petitioner failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Dec. 2. In the Rehearing Request, Petitioner seeks a reconsideration of that determination. See Reh’g Req. 1.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Upon considering that asserted basis for the proposed modification of DiMatteo, we explained that such alleged motivation was inadequately explained. Dec. 25. Our statement that Petitioner and Dr. Drasler “have not explained why attaching the valve to the proximal portion of the stent, as opposed to a central portion, would uniquely allow implantation of the valve in the direction of desired fluid flow or provide the advantage of an easy recovery of the device,” was not an application of some heightened standard for obviousness motivation. Id. at 25–26. Rather, it was a finding focused on the rationale relied upon by Petitioner and Dr. Drasler for modifying DiMatteo, i.e., to obtain an advantage or benefit from doing so. Thus, it is misleading for Petitioner to allege that the Board erred in requiring Petitioner to demonstrate the benefits of attaching the valve to the proximal portion of the stent, as our analysis focused on the rationale that Petitioner relied on for its proposed obviousness modification.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the disclosure in Garrison that Petitioner relies upon describes only that the base of the valve is secured to the support structure/stent with sutures.” Id. (citing Ex. 1005, 5:42–50) (“The valve portion 38 has a base 41 which is secured to the support structure 26 with sutures . . . .”). Garrison describes the posts by merely stating, “[p]osts 32 support a valve portion 38.” Id. at 5:42 (emphasis added). Critically missing in the Petition is any showing by Petitioner that Garrison’s use of the term “support” means “attach.” Petitioner does not even allege as much. Instead, Petitioner mistakenly relies on Garrison as disclosing that the valve is sutured to the posts of the support structure. But, as may be plainly seen in the disclosure relied upon by Petitioner that is not the case. Dec. 17–18. Garrison is attached to the posts. Id. at 17 (citing Ex. 1002 ¶ 92). The rationale that Dr. Drasler provides for his opinion that the valve is attached to, and not merely supported by, the posts is his assertion that, “[a]s illustrated in Figures 10-11 and 14, the valve portion (annotated in blue) is supported by the posts via sutures (not shown) described as used to secure the valve to the support structure (Garrison 5:42–47) at the proximal portion of the supporting structure (annotated in red).” Ex. 1002 ¶ 92. Thus, Dr. Drasler relies not on what is shown in Garrison’s figures, but in his mistaken belief that the quoted language from Garrison set forth above describes that the valve is secured to the posts via sutures. Id. (citing Ex. 1005, 5:42–47). As we discuss above, and in the Decision, Garrison does not describe the valve being secured to the posts via sutures, or by any other means. Dec. 17–18.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,900,294 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING 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 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. 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): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . 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). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801 - Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01298 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its decision that all challenged claims were unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“As discussed further below, after considering all the evidence, we provided in the Final Written Decision a detailed analysis of Patent Owner’s arguments, and rejected Patent Owner’s proposed limitations for “mobile unit,” determining that the ordinary meaning should apply and no further construction was necessary. Final Dec. 14–26. D. The Final Written Decision Our analysis of “mobile unit” in the Final Written Decision was guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Final Dec. 11. In summary, for the reasons that follow, we are not persuaded that our analysis of “mobile unit” under Phillips was incorrect, or that we overlooked or misapprehended Patent Owner’s arguments or evidence in that analysis.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,221,904 - Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,979,023 - Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing deniedPTAB · Mar 1, 2021 · IPR2020-00768 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR on claims 1–17 in place because it found no abuse of discretion under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the 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.” 37 C.F.R. § 42.71(d). When rehearing a 1 Patent Owner originally filed a Preliminary Response (Paper 7) that violated the word count limit in our rules. After conferring with Petitioner and the Board, Patent Owner filed a truncated version of Paper 7 that deletes the text that exceeded the word count limit at the end of the document to comply with 37 C.F.R. § 42.24(b)(1). Paper 9. For purposes of this Decision, any references or citations to the Preliminary Response refer to the truncated document filed as Paper 9. decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Owner does not clearly identify what matters we misapprehended or overlooked, and where those matters were previously addressed. Instead, it simply repeats arguments and information we have already considered and which we used to form the basis for our determination in the Institution Decision. To the extent Patent Owner believes we did not assign the appropriate weight to events that occurred during prosecution of the parent application of the ’231 patent, we note that Patent Owner’s own arguments derived from that information are based on speculation about what is a “more probable” explanation for the Examiner’s conduct. Rather than rely on speculation about the Examiner’s conduct during prosecution of the parent application, we based our determination on facts derived from the prosecution history of the ’231 patent itself. In that regard, we maintain that “[t]he record does not reflect any substantive consideration of CN400 during prosecution of the ’231 patent, including any consideration of CN400 in combination with Iannotta or Kolc, as presented in the Petition.” Dec. 9 (emphasis added). Nothing in Patent Owner’s recitation of undisputed facts persuasively contradicts this determination. Req. Reh’g 8.” slip op. at 6
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Nevertheless, even if we were to give weight to Patent Owner’s argument that “it is more probable that the Examiner believed CN400 could not be properly combined” with Kolc and Iannotta, the outcome here would not change. As set forth in our Institution Decision, we disagree with Patent Owner’s assertions that CN400 is non-analogous art that would not be combinable with Kolc and Iannotta. Dec. 19, 24–25. Thus, to the extent Patent Owner contends the Examiner believed CN400 could not be combined with Kolc and Iannotta for the same reasons Patent Owner presented in its Preliminary Response, we would consider such hypothetical reasoning by the Examiner to involve a misapprehension of the specific teachings of the relevant prior art, which would constitute material error. See Advanced Bionics, 8.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“Iannotta is prior art. Reh’g Req. 10. In presenting its arguments, however, Patent Owner acknowledges “[t]his issue was not argued in the Patent Owner’s Preliminary Response,” and is based on new information Patent Owner became aware of since the filing date of its Sur-reply. Req. Reh’g 9. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Moreover, Patent Owner has not directed us to any matters that we overlooked or misapprehended, and the place where those matters were previously addressed. 37 C.F.R. § 42.71(d).” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,301,231 - PTAB · Feb 9, 2021 · IPR2020-00892 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Wildcat Licensing WI LLC’s rehearing request, finding no abuse of discretion or overlooked matter in granting institution of the challenges.
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 substantial evidence does not support a factual finding, 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). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we determined in the Decision, Petitioner showed a reasonable likelihood of prevailing with respect to at least one of the challenged claims in its challenges based on IBM. Petitioner argued that “IBM’s ‘[H]all effect sensor’ indicates tool ‘TORQUE’ to IBM’s controller 6 so that IBM’s controller requires IBM’s tool to achieve the ‘set torque’ at each fastening location in the ‘correct process sequence.’” Pet. 35 (citing Ex. 1003, 81– 82). Petitioner also argued that IBM teaches that an operator “must also wait for the set torque to be achieved on each screw before moving onto the next screw.” Id. at 38 (citing Ex. 1003, 82) (emphases added). Petitioner’s declarant opined that “IBM’s microcontroller 6 measures the applied torque with ‘a [H]all effect sensor.’” Ex. 1002 ¶ 111 (citing Ex. 1003, 81–82). Petitioner’s arguments and declarant testimony found support in the preliminary record. As quoted in the Decision, IBM itself states that “controller circuit 6 . . . sense[s] when correct torque is achieved by linking As discussed in the Decision, IBM also states that that “[t]he problem is to ensure that four screws 5 fixing two product parts 3 & 4 together are tightened to a specific torque in a specific sequence.” Dec. 19–20 (quoting from Ex. 1003, 82) (emphasis added); see also Ex. 1002 ¶¶ 52–53 (asserting what IBM teaches). Also, the only figure of IBM shows “TORQUE” being sent to controller circuit 6. Ex. 1003, 81; see also Ex. 1002 ¶ 108 (“IBM diagrammatically illustrates the tool’s sensed ‘TORQUE’ as a signal input being received by IBM’s microcontroller 6 from the torque-sensing ‘[H]all effect sensor in the driver 11’ ([Ex. 1003] p. 82).”). Thus, Petitioner’s arguments, Petitioner’s declarant testimony, and IBM itself sufficiently showed at the preliminary stage that IBM senses or measures correct torque by linking into a Hall effect sensor in driver 11. Pet. 35–36; Ex. 1002 ¶¶ 52–53, 108; Ex. 1003, 82. Further, Patent Owner’s arguments for IBM raised a factual question regarding what IBM teaches or suggests to one of ordinary skill in the art, and such issues are best decided on a full record. See Prelim. Resp. 26–49. We agree that Patent Owner does not have a burden to show IBM does not measure torque; however, for purposes of institution, Petitioner sufficiently showed that IBM senses or measures torque.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 7–11 (PTAB. Feb. 13, 2020) (Decision Denying Institution) (precedential). Req. Reh’g 13–15 (citing Prelim. Resp. 54–64; Dec. 27). Specifically, Petitioner contends that the Decision “conflates or overlooks the two separate requirements in the first part of Advanced Bionics’ framework (art or arguments)” because we concluded “only that ‘Petitioner’s arguments were not previously presented to the Office.’” Id. at 14. However, even assuming arguendo, that substantially the same art was previously presented to the Office, the record and Petitioner sufficiently show that the Examiner materially erred for the reasons discussed in the Board decision reversing the rejection based on Gass alone. The record also shows that the Examiner did not address that error subsequently before allowing the claims. Specifically, the Examiner failed to identify the Office. Additionally, as discussed in the Decision, Petitioner’s demonstration of a reasonable likelihood of prevailing on its challenges based on IBM, as well as the Federal Circuit’s determination in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) were considered in our analysis of determining whether to institute review. Dec. 28–29. We determined that our discretion to deny institution under 35 U.S.C. § 325(d) was not sufficiently implicated so that § 325(d)’s statutory purpose would be undermined by instituting on all of Petitioner’s challenges. Id. at 28–29. Further, even if exercise of our discretion under § 325(d) to deny the challenges based on Gass was warranted, the record provided no reason for extending our discretion under § 325(d) to the IBM-based challenges to deny the entire Petition under the circumstances presented in this proceeding. Id. at 29.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“The Decision also considered the prior Board decision regarding a rejection based on Gass. Dec. 30 (discussing Ex. 1018). As discussed above and in the Decision, the preliminary record did not indicate that Gass teaches away from the challenged claims. Thus, we do not agree that the Decision overlooked or misapprehended the prior Board decision regarding the rejection based on Gass and overlooked or misapprehended that Petitioner did not establish a reasonable likelihood of prevailing on its challenges based on Gass.” slip op. at 9
§ 103 obviousnessDiscretionary denial - Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGRehearing deniedPTAB · Feb 3, 2021 · IPR2020-00911 · APJ Amber L Hagy · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution on claims 1–20 because the petition did not sufficiently show the asserted combinations taught or suggested the claimed limitations.
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. Upon a request for rehearing, the 1 Huber et al., U.S. Patent No. 7,414,779 B2, issued August 19, 2008 (Ex. 1008, “Huber”). 2 Everett et al., U.S. Patent No. 7,365,856 B2, issued April 29, 2008 (Ex. 1009, “Everett”). 3 F. Lexer, C.K. Hitzenberger, A.F. Fercher, M. Kulhavy, “Wavelength-tuning interferometry of intraocular distances,” Appl. Optics, vol. 36, pp. 6548–6553 (Sept. 1, 1997) (Ex. 1006, “Lexer”). 4 W. Drexler and J. Fujimoto, eds., Optical Coherence Tomography – Technology and Applications, ISBN 978-3-540-77549-2, Springer Verlag Berlin Heidelberg (2008) (Ex. 1010, “Drexler”). decision on a petition will be reviewed 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“added). The Decision did not, however, fault Petitioner in this manner. Rather, in the Decision, we appropriately focused on the crux of Petitioner’s argument; namely that, although Huber does not disclose an output power (which Petitioner converts to the claimed photon flux) within the claimed range, one of ordinary skill would have been motivated by Everett to use Huber’s laser on eyes, and that such use would have motivated the ordinarily skilled artisan to (in Petitioner’s words) “reduce the photon flux of the Huber laser” to achieve the claimed range “or any other ranges needed to prevent tissue damage and optimize signal strength.” Decision 20 (quoting Pet. 42). As we also noted in the Decision, the only support provided in the Petition for these assertions is a blanket citation to nearly a dozen paragraphs (spanning six pages) primarily consisting of background technical discussion from Dr. Brennan’s Declaration. Decision 20; see Pet. 41–42 (citing Ex. 1012 ¶¶ 76–85, 185). In that technical background, Dr. Brennan purportedly explains how and why “optimal optical power” may be set and selected generally in systems employing lasers. See Ex. 1012 ¶¶ 76–85. But, as we pointed out in the Decision, neither Petitioner nor Dr. Brennan tied any of this analysis to the prior art of record or otherwise explained the conclusory assertion made in the Petition (and echoed by Dr. Brennan) that the ordinarily skilled artisan would have combined the teachings of Huber, Everett, and Lexer to apply photon flux within the claimed range for measurement of eyes. Decision 20; see Pet. 41–42; Ex. 1012 ¶ 185.” slip op. at 6
- BurdenDecided for patent owner
“‘output-power is greater than 10 mW,” which Petitioner converted to a photon flux of “a photon flux of 6.6 * 1016 photons per second.”). Both the Petition and the Request are based on a theory of overlapping ranges, but fail to show the factual basis for the application of that theory. The Decision correctly determined that the Petition fails to show that Huber discloses a range of photon flux that overlaps the claimed range.” slip op. at 5
- Expert testimonyDecided for patent owner
“added). The Decision did not, however, fault Petitioner in this manner. Rather, in the Decision, we appropriately focused on the crux of Petitioner’s argument; namely that, although Huber does not disclose an output power (which Petitioner converts to the claimed photon flux) within the claimed range, one of ordinary skill would have been motivated by Everett to use Huber’s laser on eyes, and that such use would have motivated the ordinarily skilled artisan to (in Petitioner’s words) “reduce the photon flux of the Huber laser” to achieve the claimed range “or any other ranges needed to prevent tissue damage and optimize signal strength.” Decision 20 (quoting Pet. 42). As we also noted in the Decision, the only support provided in the Petition for these assertions is a blanket citation to nearly a dozen paragraphs (spanning six pages) primarily consisting of background technical discussion from Dr. Brennan’s Declaration. Decision 20; see Pet. 41–42 (citing Ex. 1012 ¶¶ 76–85, 185). In that technical background, Dr. Brennan purportedly explains how and why “optimal optical power” may be set and selected generally in systems employing lasers. See Ex. 1012 ¶¶ 76–85. But, as we pointed out in the Decision, neither Petitioner nor Dr. Brennan tied any of this analysis to the prior art of record or otherwise explained the conclusory assertion made in the Petition (and echoed by Dr. Brennan) that the ordinarily skilled artisan would have combined the teachings of Huber, Everett, and Lexer to apply photon flux within the claimed range for measurement of eyes. Decision 20; see Pet. 41–42; Ex. 1012 ¶ 185.” slip op. at 6
§ 103 obviousnesscites KSRPatents in suitUS 9,044,164 - Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing deniedPTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. Star Fruits S.N.C. v. United States, 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7
Claim construction§ 112 disclosurePatents in suitUS 10,155,039 - FMC Technologies, Inc. v. Onesubsea IP UK LimitedRehearing deniedPTAB · Jan 13, 2021 · IPR2019-00935 · APJ James A Tartal · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its determination that claims 1–15 are unpatentable under the listed § 103 grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes we misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“weighed the testimony of Mr. Voss. In our Decision, we considered the testimony of Mr. Voss, but we were not persuaded that the testimony outweighs Petitioner’s evidence supporting the proposed modification. In particular, we weighed the evidence of both parties to determine whether Petitioner had shown by a preponderance of the evidence that a skilled artisan would have known and had reason to place seals above the transition point as proposed by Petitioner. We determined that Petitioner established by a preponderance of the evidence that it was known to place seals above a transition point in order to provide an isolated flow path. Dec. 50. We also credited the testimony of Mr. Parks over the testimony of Mr. Voss and found that implementation of the modifications proposed by Petitioner would have been within the basic level of skill of a person of ordinary skill in the art. Id. at 60. We considered and rejected Mr. Voss’s assertion that Petitioner’s proposed modification would place seals on uneven surfaces and on shoulder surfaces that are an improper location for a seal, and would locate seals at different diameters. Dec. 60 (citing Ex. 2004 ¶¶ 148–150).” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner
“that the pipes and valves taught by Reimert that correspond, without alteration, to the recited “isolated path” does not actually teach an “isolated path” unless Reimert expressly states which valves are open or closed to make an “isolated path” through the subsea tree. Id. According to Patent Owner “‘where an apparatus need[s] to be altered in order to be “configured” as claimed and there was no evidence of such alteration,’ it does not anticipate or render obvious those claims.” Reh’g Req. 8 (quoting ParkerVision, 903 F.3d at 1361–62). Patent Owner’s assertion that whether a valve is opened or closed is an “alteration” of the apparatus is not persuasive. See, e.g., Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002) (stating that “although a user must activate the [valves] by selecting [particular valves], the user is only activating [valves] that are already present”). Patent Owner further argues that “as explained by Mr. Voss, Reimert specifically articulates how the completion system is intended to operate and provides specific instructions for opening and closing the valves of the system.” Id. at 10. Claims 1 and 9, the only independent claims challenged, are directed to “a system,” not a method. Ex. 1001, 6:40–65, 7:27–49. As explained in the Decision, “Patent Owner’s arguments are improperly premised on how Patent Owner contends Reimert was intended to be operated, depending on the circumstances, based on how Reimert teaches ‘specific instructions for opening/closing valves.’” Dec. 74–75. Further, we explained in the Decision as follows: Patent Owner then concedes that there are “alternative flow paths,” but argues, based on closing certain valves and opening others, that “even when annulus fluid is permitted to flow into the tubing hanger, the annulus fluid is not permitted to flow into the tree.” Id. at 64–65 (citing Ex. 1006, 5:47–49). Patent Owner proceeds to explain how Reimert would be operated during “typical operation” and how valves would be operated “during workover mode,” “not when a tree is attached.” Whether Reimert teaches, as an apparatus, a system configured to allow annulus fluid to flow through the tree simply does not turn on whether a valve taught by Reimert is opened or closed by an operator. Petitioner persuasively shows that “Reimert’s configuration shown in FIG. 4 provides a fluid flow path through the tubing spool, tubing hanger, and into the tree (e.g., via the plenum) that is in communication with ‘annular region 56.’” Pet. Reply 19–20 (citing Ex. 1032 ¶ 61). Dec. 75. For these reasons, Patent Owner fails to show that we misapprehended the evidence presented and, as a result, erred in determining that the alternative production flow passage of Reimert is an annulus flow passage through the subsea tree, as shown by a preponderance of the evidence by Petitioner.” slip op. at 7
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“A request for rehearing is not an opportunity to submit new arguments that were not made previously, and Patent Owner fails to identify where the constitutional arguments it now presents were previously raised. See 37 C.F.R. § 42.71(d). We issued the Decision in this case on October 14, 2020, nearly a year after the Federal Circuit issued Arthrex on October 31, 2019. The Federal Circuit issued a mandate in Arthrex on April 6, 2020. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020). Thus, Patent Owner had notice of Arthrex prior to the Final Written Decision. Indeed, Patent Owner submitted a sur-reply (Paper 26, filed May 15, 2020) and conducted oral arguments on June 29, 2020 (see Paper 42) without presenting any Appointments Clause argument. The Federal Circuit has rejected similar Appointments Clause challenges on the ground that the Board judges were deemed constitutionally appointed as of the date that the Federal Circuit issued its precedential decision in Arthrex. Caterpillar Paving Products Inc. v. Wirtgen America, Inc., 957 F.3d 1342, 1343 (Fed. Cri. 2020); see also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”). Accordingly, we deny Patent Owner’s request that this case be dismissed.” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,945,202
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.