- Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Rehearing deniedPTAB · Aug 12, 2024 · IPR2024-00267 · APJ Avelyn M Ross · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show a reasonable expectation of success for the proposed § 103 combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(d): 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 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s 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).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“green, left), placed inside the housing between the housing and heating element (red), and surrounding the heating element and portions of the liquid storage portion (blue). Otherwise, Combined Figure 4 is nearly the same as Annotated Figure 4. Compare Combined Fig. 4, with Ann. Fig. 4. Thus, Petitioner does not propose a simple substitution to include the mouthpiece housing of Thorens231 in the device of Thorens788 in the same manner as used in Thorens231. Rather, Petitioner proposes including the mouthpiece housing of Thorens231 in the device of Thorens788 and then further modifying its placement by inserting it into the housing. See Combined Fig. 4. Neither Petitioner nor Dr. Janet persuasively explain why this arrangement would be expected to be successful nor do they allege that such a modification would have been within the skill set of the ordinarily skilled artisan. In contrast, Patent Owner explains that Petitioner’s [Combined] Figure 4 appears to block any airflow through the device and out of the mouthpiece. Petitioner and its expert do not account for how the mouthpiece would be secured to the liquid storage portion in Thorens788. Moreover, as drawn by Petitioner, the wick touches what is presumably the air inlet for the mouthpiece (although Petitioner does not discuss where the air inlet is), which could adversely impact performance or user experience, such as draw resistance[.] Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have been obvious, including that the skilled artisan would have had a reasonable expectation of success in achieving the claimed invention”).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 11,134,722 - Berkeley Lights, Inc. v. The University Of British ColumbiaRehearing deniedPTAB · Jul 20, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Berkeley Lights’ rehearing request, finding no abuse of discretion in its prior decision that claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(d) (2022). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a 1 We further refer to Patent Owner’s Response (Paper 18, “PO Resp.”), Petitioner’s Reply to the Patent Owner Response (Paper 22, “Pet. Reply”), and Patent Owner’s Sur-reply (Paper 29, “PO Sur-reply”). decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“light of the background knowledge in the art. In particular, we found that Petitioner had not adequately shown that the background knowledge in the art would have been sufficient to inform a person of ordinary skill in the art how to apply the techniques such as “laser tweezers” that Dimov mentions briefly, in a way that would have allowed further analyses of cells outside Dimov’s device. See Dec. 29–31. We also found that Petitioner had not persuasively shown that modifying Dimov’s device to make its trenches accessible with a micropipette was within the background knowledge in the art at the time of the claimed invention. See Dec. 31–34.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner points to only one brief mention, in its Petition, of piercing the top layer of Dimov’s device to retrieve cells with a micropipette. Id. at 6 (citing Pet. 40). That argument was not backed by any evidence other than a conclusory statement by Dr. Meinhart repeating the argument in the Petition. Pet. 40; Ex. 1002 ¶ 120. We do not credit that testimony because it lacks factual support. Xerox Corp v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (the testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight). In particular, to the extent that Petitioner argues on rehearing that Dimov’s top layer could have been pierced successfully by a micropipette because it was only 40 microns thick, Petitioner did not properly make this argument during trial or provide adequate evidentiary support.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Although Dr. Meinhart briefly mentions this in his declaration (see Ex. 1039 ¶ 192), Petitioner has not shown that it made this argument during trial, except to the extent that Petitioner improperly incorporated it by reference from Dr. Meinhart’s declaration. See Reply 24 (citing Ex. 1039 ¶¶ 190–196); 37 CFR § 42.6(a)(3). In any event, we do not credit Dr. Meinhart’s testimony on this point because he provides no factual support. See Ex. 1039 ¶ 192; 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.”). As Patent Owner pointed out in its Sur-Reply, Dr. Meinhart acknowledged at deposition that increasing the spot size would have reduced the lateral gradient force of the levitation laser. PO Sur-reply 23 (citing Ex. 2013, 344:18–345:5). We agree with Patent Owner that “Dr. Meinhart . . . did not consider how this reduction in force would have affected the laser’s ability to levitate a cell in Park’s well successfully (especially with cultured cells through Park’s recirculation pattern).” Id.” slip op. at 12
§ 103 obviousnessPatents in suitUS 10,087,408 - Liquidia Technologies, Inc. v. United Therapeutics CorporationRehearing deniedPTAB · Feb 2, 2023 · IPR2021-00406 · APJ Christopher M Kaiser · IPR · Rehearing
Rehearing was denied; claims 1–8 remain unpatentable because conference distribution established Voswinckel JESC and Voswinckel JAHA as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the abuse of discretion standard. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “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, reply, or a sur-reply.” Id. An abuse of discretion may be found where a decision “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)). D. We Overlooked Patent Owner’s Argument Patent Owner is correct that its argument that the Ghofrani and Sulica research aids were dated after May 15, 2005, appeared in the Sur-Reply. Sur-Reply 9–11. Patent Owner also is correct that we overlooked this argument in relying on these research aids as supporting that Petitioner had established that Voswinckel JESC and Voswinckel JAHA were prior art to the ’793 patent. Final Dec. 11–12; Paper 81, 2 (“the Board’s analysis did not consider whether the research aids themselves were available prior to the critical date”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Under at least some circumstances, a reference may be a printed publication under § 102(b) if it was “displayed to the public,” even if it “was not later indexed in any database, catalog, or library.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). There are several factors relating to whether such a display is sufficient to constitute a printed publication, including “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. In addition, distribution of a reference at a professional conference may, under at least some circumstances, constitute sufficient dissemination to show public accessibility. Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1375–80 (Fed. Cir. 2018); Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380–83 (Fed. Cir. 2018).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether the Voswinckel JESC and Voswinckel JAHA references qualify as prior art” and in particular “whether the Voswinckel JESC and Voswinckel JAHA references were publicly accessible by way of their presentation and/or inclusion in distributed materials, such as at a conference.” Paper 81, 3. As discussed above, we find that both references were distributed sufficiently at professional conferences to be publicly accessible at the time of those conferences. By virtue of this public accessibility, both Voswinckel JESC and Voswinckel JAHA were printed publications early enough to qualify as prior art under 35 U.S.C. § 102(b). G. Asserted Obviousness over ’212 Patent, Voswinckel JESC, and Voswinckel JAHA Petitioner argues that claims 1–8 would have been obvious over the combination of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA. Pet. 30–46. As discussed above, Petitioner has shown by a preponderance of the evidence that both Voswinckel JESC or Voswinckel JAHA qualify as prior art. Accordingly, we do not disturb the obviousness analysis in the Final Written Decision, which relies on the prior-art status of Voswinckel JESC and Voswinckel JAHA. Final Dec. 12–35. slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,716,793 - 10x Genomics, Inc. v. Bio-Rad Laboratories, Inc.Rehearing deniedPTAB · Jul 28, 2021 · IPR2020-00088 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied 10X Genomics’ rehearing request, leaving intact the finding that claims 15–17 were not shown unpatentable over Ismagilov 091 and US Pub. No. 2002/0058332 A1.
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. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Petitioner had the burden of proving that the challenged claims are unpatentable. There is no requirement for the Board to provide notice to Petitioner and an opportunity to fill gaps in its case before issuing a final decision that Petitioner did not meet its burden of proof. Allowing Petitioner to submit new evidence under the circumstances presented here would be inconsistent with the standard applicable to a request for rehearing, which” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“emulsion-breaking would have been either necessary or desirable when synthesizing biological compounds, pharmaceuticals, or nanoparticles, as disclosed in Ismagilov 091. Dr. Fair’s testimony that Ismagilov 091’s uses “would require breaking the emulsions” is conclusory and unexplained. Ex. 1008 ¶ 191 (testifying without explanation that Ismagilov’s “uses would require breaking the emulsions to aggregate sufficient quantities of reaction product”). In addition, Petitioner did not cite even this conclusory testimony in its argument that emulsion-breaking was necessary. Pet. 51. Meanwhile, Ismagilov 091 provides numerous examples of uses of its methods and devices, but no suggestion that emulsion-breaking would be necessary or desirable. Accordingly, we determined that Petitioner did not “direct us to evidence sufficient to establish that it would have been obvious to place the droplets onto a second continuous phase carrier fluid comprising a destabilizing surfactant to destabilize the droplets, as recited in claims 15–17.” Dec. 63. As discussed more fully below, none of Petitioner’s arguments for rehearing persuades us that we erred in determining that the evidence of record failed to show a reason why a person of ordinary skill in the art would have used PFO to break the emulsions in Ismagilov 091.” slip op. at 13
§ 103 obviousnessPatents in suitUS 9,896,722 - Unified Patents, Inc v. Mv3 Partners LLCRehearing deniedPTAB · Oct 2, 2020 · IPR2019-00474 · APJ Jean R Homere · IPR · Rehearing
Rehearing denied; the Board maintained that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 were not shown unpatentable because Wang did not teach the separate determining limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“of the “determining” limitation, not a construction of the language in that limitation. As noted in the Decision, the claim language plainly requires that the STB separately determine whether the user is permitted to provide to the external display device a specific media content received at the mobile device. Id. at 16–17. This is consistent with Petitioner’s view expressed at the hearing. See Tr. 20:6–16 (Petitioner acknowledging that the claim recites the “authenticating” step and “a separate determining step” where “the determining step happens after the authenticating step” (emphasis added)). Although Petitioner disputes that the Specification adequately supports the “determining” limitation, it is not an issue necessitating review by our mere recitation of the claim language. Further, we are not at liberty to ignore the “determining” limitation, despite its alleged lack of written description, in assessing it during a prior art challenge. As set forth in the Decision, we fully addressed the language of the claims as challenged in the Petition. We are not persuaded that in doing so we misapprehended or overlooked any argument raised by Petitioner. In particular, we noted that Petitioner provided sufficient evidence to show that Wang teaches integrating the authentication feature into the STB to authenticate mobile users to access content. Final Dec. 16–17. However, we found such teaching to fall short of satisfying the separate and distinct “determining” limitation, as required by the claim. Id. at 18. As explained in the Decision, Petitioner and its expert addressed the “authenticating” and “determining” limitations together, even though they are separate limitations of the claim. Id. (citing Pet. 39–41; Ex. 1003 ¶ 73). We were unpersuaded by Petitioner’s theory that the “determining” limitation “automatically” occurs by virtue of the authenticating step. Id. Furthermore, we noted the evidence of record was insufficient to show by a preponderance of the evidence that the proposed modification of Wang would have taught or suggested “any additional determination beyond authenticating the user.” Id. at 19.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,863,223 - PTAB · Oct 10, 2019 · IPR2019-00538 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the evidence did not overcome the prior art’s disparagements for the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentable
“[a]lthough Farrington notes certain concerns with shaft-mounted systems, such as swing effects, aesthetics, and the attachment mechanism’s gripping capability, it was known in the art, and within the POSA’s ability, how to adequately address and alleviate those concerns. See EX1011, ¶5; EX1009, ¶¶95-96. For instance, Hackman teaches providing a shaft-mounted system that does not interfere with the golfer’s swing, see EX1012, 4:7- 30 (acknowledging need for golfer to “swing in a normal manner”), and the POSA would have been aware of readily-available accelerometers, gyroscopes, and other sensors, that were sufficiently light and compact so that any impact on a swing would be negligible. EX1009, ¶¶97-98. In addition, for aesthetics, the POSA would have been aware of the wide variety of choices known in the art and would have understood how to design the removable unit for a certain “look and feel”. Id., ¶99. As for grip concerns, Hackman demonstrates the numerous mechanical options available to the POSA that would allow IMU attachment to the club’s shaft without loosening or moving during a swing. See, e.g., EX1012, 10:10-18 (teaching frictional engagement that “is sufficient to hold the analyzer 10 in place during swinging”), FIGS. 1, 4, 7-10; EX1009, ¶¶100-01.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“evidence of disparagement. Pet. 71–73 (citing Ex. 1009 ¶¶ 203– 219). Neither Petitioner nor Dr. Paradiso explains persuasively, however, why a person of ordinary skill in the art would have been persuaded to ignore Kirby’s disparagement of the use of accelerometers for swing measurement. Id. Dec. 28 (emphasis added); see id. at 25 (noting that “Petitioner argues that a person of ordinary skill in the art would have had reason to use an accelerometer-based device like that taught by Kimber and optionally by Kirby, located adjacent to the grip of a golf club, as taught by Kirby, rather than adjacent to the head of the golf club, as taught by Kimber. Pet. 71–73.”) (emphasis added). Thus, as indicated in the Decision, the panel considered all of the arguments and evidence presented by Petitioner in the Petition. However, the panel determined that these arguments and evidence did not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claims.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,589,114 - PTAB · Oct 7, 2019 · IPR2019-00537 · APJ John R Kenny · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution because the cited evidence did not overcome the references’ teachings against the proposed modifications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundDecided for patent owner
“As our Decision noted, however, the only support Dr. Paradiso cited for these propositions is a portion of Hackman and a portion of Exhibit 1017. Ex. 1008 ¶¶ 99–100; Dec. 17. In its Request for Rehearing, Petitioner identifies nothing from its evidence of the general knowledge of an ordinarily skilled artisan, background art, or reasonable expectation of success that provides any further support for these propositions. Req. Reh’g 4–7. Instead, Petitioner merely argues that an ordinarily skilled artisan would have recognized some benefits to using a shaft mounted system with a golf club and would have had a reasonable expectation of success for adding such a system to Farrington’s golf club. Id. None of that evidence, however, suffices to overcome Farrington’s disparagement. The mere fact that, for general purposes, externally mounted systems may have benefits or could be successfully added to Farrington’s golf club does not demonstrate that, as Dr. Paradiso testified, the weight, drag or other swing-related issues highlighted by Farrington associated with such a system would be readily overcome. Accordingly, we are not persuaded that we overlooked evidence that would overcome Farrington’s disparagement of using a swing analysis device mounted on the outside of its golf club. Background Art, and Reasonable Expectation of Success Petitioner argues that we overlooked evidence regarding the general knowledge of an ordinarily skilled artisan, background art, and reasonable expectation of success when we determined, for Ground 3 (based on Kirby and Kimber), that Petitioner made an insufficient showing to overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and to overcome Kimber’s disparagement of placing a swing measurement device near the grip. Req. Reh’g 7–12. None of the evidence cited by Petitioner regarding the level of skill in the art, background art, or a reasonable expectation of success, however, would overcome Kirby’s and Kimber’s disparagements. Id. The mere fact that, for general purposes, accelerometers may have some benefits or that there would be a reasonable expectation that they could be successfully added to Kirby’s golf club does not mean that such a modification would avoid the speed and cost issues noted by Kirby or outweigh them. Similarly, the mere fact that for general purposes there may be some advantages to placing an accelerometer near a grip and reasonable expectation that one could be successfully added near a grip would not overcome Kimber’s disparagement of placing a swing measurement device near the grip or outweigh that concern. Accordingly, we are not persuaded that we overlooked evidence that would overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and Kimber’s disparagement of placing a swing measurement device near the grip.” slip op. at 6
- BurdenNot reached
“Ground 3 (obviousness over Kirby and Kimber) that Kirby alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious. Reh’g Req. 2–3. Ground 4 (obviousness over Kirby, Kimber, and Nusbaum) that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 3. Petitioner, however, does not identify where in the Petition it contended that Kimber alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious or that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 2–3. To the contrary, according to the Petition, the basis for Ground 3 is “Obvious under §103(a) over the combination of U.S. Patent Application Publication 2007/0206837 (‘Kirby,’ EX1013) and Great Britain Patent Application Publication 2430890 (‘Kimber,’ EX1014).” Pet. 4. Similarly, the basis for Ground 4 is “Obvious under §103(a) over the combination of Kirby, Kimber, and Nusbaum.” Id. at 5. Accordingly, we are not persuaded that we overlooked any contention that Kirby alone or Kirby and Nusbaum by themselves would have rendered claims 1, 6–7, 9– 12, 13, 14, 16, and 18–19 obvious.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,831,905 - PTAB · Mar 4, 2019 · IPR2016-01903 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 3 unpatentable because it found no misapprehended or overlooked matter in its obviousness analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“benefit of impermissible hindsight.” Req. 4 (citing PO Resp.4 30–31, Ex. 1008; Ex. 2050 ¶ 1245). More specifically, Patent Owner asserts that Carnahan contains no disclosures related to drag reduction or drag reducing polymers, and that the Holtmyer references and Inaoka do not mention or suggest that one should solve drag reduction problems based on an asphaltene precipitation study. Req. 4 (citing PO Resp. 30–31; Ex. 1008; Ex. 2050 ¶124). Patent Owner additionally argues that we overlooked that the Petition contained no evidence that a person of ordinary skill in the art would have attempted to use solubility parameters to predict drag reduction success in a complex mixture, such as crude oil, prior to the priority date of the ’498 patent, and that Petitioner’s witness testified that he could not identify anyone who had ever previously done this. Req. 6 (citing PO Resp. 32; Ex. 2050 ¶¶23, 126; Ex. 2045, 140:23–141:13). In sum, Patent Owner states that there was no evidence that it would have been obvious to a person of ordinary skill in the art to have combined such disparate references without the benefit of hindsight and the disclosure of the ’498 patent itself. Req. 4–5 (citing PO Resp. 30–31; Ex. 2050 ¶ 125). We considered this evidence and argument in our Final Written Decision, in which we addressed the alleged use of impermissible hindsight to combine the prior art references’ teachings. Dec. 27–28. We found that Petitioner articulated a reason having rational underpinnings for making a proposed combination of the prior art teachings of the Holtmyer Publication, the Holtmyer Patent, and Carnahan, as well as Inaoka and Carnahan. Id. We also addressed the drag reduction limitation, taking into account” slip op. at 4
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In the Final Written Decision, we considered this evidence and argument, and found that Carnahan was reasonably pertinent to one of the problems confronting the inventors of the ’498 patent, namely, solubility. Dec. 32–33. We explained that it was known prior to the ’498 patent that solubility of the drag reducing polymer in the liquid hydrocarbon was necessary to achieve drag reduction, and was an important requirement in preparing a more effective drag reducing polymer. Id. Thus, the inventors of the ’498 patent would have been concerned about whether the drag reducing polymer was soluble in the liquid hydrocarbon the polymer was treating. Id. We found Carnahan to be reasonably pertinent to this problem, because it discloses solubility parameter ranges that one of ordinary skill in the art would have applied to hydrocarbons. Id. Patent Owner’s argument to the contrary does not persuade us that we overlooked or misapprehended that Carnahan is reasonably pertinent to a problem with which the inventors of the ’498 patent were concerned.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for petitioner
“Holtmyer references with the teachings in Carnahan. Thus, Patent Owner presents a new argument, and a request for rehearing is not an opportunity to present new arguments or evidence. Patent Owner also has not directed us to a claim construction that we misapprehended or overlooked. The only construction proffered in Patent Owner’s Response under the section titled “Claim Construction” was for limitations directed to asphaltene content and/or API gravity of the liquid hydrocarbon recited in claims 1 and 5. Id. Claims 1 and 5, however were later removed from this proceeding when Patent Owner disclaimed them. Ex. 2156. Specifically, Patent Owner argued that, despite the use of the term “and/or” in claims 1 and 5, the “repeated, unequivocal statements in the prosecution history show that the claims require both the API gravity and the asphaltene content limitations.” PO Resp. 5. Patent Owner concluded the Claim Construction section of the Patent Owner Response by stating that Patent Owner “respectfully submits that this term should be construed as ‘a liquid hydrocarbon having an asphaltene content of at least 3 weight percent and an API gravity of less than about 26°.’” Id. at 7. Patent Owner now directs us to a footnote in a section of the Patent Owner Response regarding Dr. Epps’s testimony, and argues we should have interpreted that footnote as a proposed claim construction. Req. 12; see PO Resp. 14 n.4. Although Patent Owner could have developed an argument about claim construction of the term “asphaltene” in its Patent Owner Response, Patent Owner chose not to do so. See PO Resp. 5–7. Patent Owner’s choice to not include a proposed construction analysis of the term “asphaltene” prejudices Petitioner, because Petitioner has not been provided adequate notice and opportunity to address whether or how the term “asphaltene” should be construed, and hinders the Board’s ability to discern the argument and provide proper relief. We do not find Patent Owner’s request to sua sponte engage in claim construction of the term “asphaltene” recited in this footnote as a proxy for a proper claim construction analysis. Req. 12; see PO Resp. 14 n.4.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,426,498 - PTAB · Mar 4, 2019 · IPR2016-01901 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1–5 unpatentable under the grounds in the Final Written Decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“benefit of impermissible hindsight.” Req. 4 (citing PO Resp.4 28, Ex. 1008; Ex. 2050 ¶ 1245). More specifically, Patent Owner asserts that Carnahan contains no disclosures related to drag reduction or drag reducing polymers, and that the Holtmyer references and Inaoka do not mention or suggest that one should solve drag reduction problems based on an asphaltene precipitation study. Req. 4 (citing PO Resp. 28; Ex. 1008; Ex. 2050 ¶124). Patent Owner additionally argues that we overlooked that the Petition contained no evidence that a person of ordinary skill in the art would have attempted to use solubility parameters to predict drag reduction success in a complex mixture, such as crude oil, prior to the priority date of the ’249 patent, and that Petitioner’s witness testified that he could not identify anyone who had ever previously done this. Req. 6 (citing PO Resp. 29–30; Ex. 2050 ¶¶23, 126; Ex. 2045, 140:23–141:13). In sum, Patent Owner states that there was no evidence that it would have been obvious to a person of ordinary skill in the art to have combined such disparate references without the benefit of hindsight and the disclosure of the ’249 patent itself. Req. 4–5 (citing PO Resp. 28; Ex. 2050 ¶ 125). We considered this evidence and argument in our Final Written Decision, in which we addressed the alleged use of impermissible hindsight to combine the prior art references’ teachings. Dec. 27–28. We found that Petitioner articulated a reason having rational underpinnings for making a proposed combination of the prior art teachings of the Holtmyer Publication, the Holtmyer Patent, and Carnahan, as well as Inaoka and Carnahan. Id. We also addressed the drag reduction limitation, taking into account” slip op. at 4
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In the Final Written Decision, we considered this evidence and argument, and found that Carnahan was reasonably pertinent to one of the problems confronting the inventors of the ’249 patent, namely, solubility. Dec. 32–33. We explained that it was known prior to the ’249 patent that solubility of the drag reducing polymer in the liquid hydrocarbon was necessary to achieve drag reduction, and was an important requirement in preparing a more effective drag reducing polymer. Id. Thus, the inventors of the ’249 patent would have been concerned about whether the drag reducing polymer was soluble in the liquid hydrocarbon the polymer was treating. Id. We found Carnahan to be reasonably pertinent to this problem, because it discloses solubility parameter ranges that one of ordinary skill in the art would have applied to hydrocarbons. Id. Patent Owner’s argument to the contrary does not persuade us that we overlooked or misapprehended that Carnahan is reasonably pertinent to a problem with which the inventors of the ’249 patent were concerned.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for petitioner
“Holtmyer references with the teachings in Carnahan. Thus, Patent Owner presents a new argument, and a request for rehearing is not an opportunity to present new arguments or evidence. Patent Owner also has not directed us to a claim construction that we misapprehended or overlooked. Patent Owner provided no claim construction analysis in its Response. See PO Resp., passim. Patent Owner directs us to a footnote in a section of the Patent Owner Response regarding Dr. Epps’s testimony, and argues we should have interpreted that footnote as a proposed claim construction. Req. 2–3, 12–13; see PO Resp. 12 n.5. Although Patent Owner could have developed an argument about claim construction of the term “asphaltene” in its Patent Owner Response, Patent Owner chose not to do so. Patent Owner’s choice to not include a proposed construction analysis of the term “asphaltene” prejudices Petitioner, because Petitioner has not been provided adequate notice and opportunity to address whether or how the term “asphaltene” should be construed, and hinders the Board’s ability to discern the argument and provide proper relief. We do not find Patent Owner’s request to sua sponte engage in claim construction of the term “asphaltene” recited in this footnote as a proxy for a proper claim construction analysis. Id.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,450,249 - PTAB · Mar 4, 2019 · IPR2016-01905 · APJ Kristina M Kalan · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Final Written Decision finding claims 1–9 unpatentable stands because Patent Owner showed no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for patent owner
“Ex. 2050 ¶ 1245). More specifically, Patent Owner asserts that Strausz contains no disclosures related to drag reduction or drag reducing polymers, and that the Holtmyer references and Inaoka do not mention or suggest that one should solve drag reduction problems based on an asphaltene precipitation study. Req. 4 (citing PO Resp. 28–29; Ex. 1009; Ex. 2050 ¶124). Patent Owner additionally argues that we overlooked that the Petition contained no evidence that a person of ordinary skill in the art would have attempted to use solubility parameters to predict drag reduction success in a complex mixture, such as crude oil, prior to the priority date of the ’250 patent, and that Petitioner’s witness testified that he could not identify anyone who had ever previously done this. Req. 6 (citing PO Resp. 30; Ex. 2050 ¶¶23, 126; Ex. 2045, 140:23–141:13). In sum, Patent Owner states that there was no evidence that it would have been obvious to a person of ordinary skill in the art to have combined such disparate references without the benefit of hindsight and the disclosure of the ’250 patent itself. Req. 4 (citing PO Resp. 28–29; Ex. 2050 ¶ 125). We considered this evidence and argument in our Final Written Decision, in which we addressed the alleged use of impermissible hindsight to combine the prior art references’ teachings. Dec. 29–30. We found that Petitioner articulated a reason having rational underpinnings for making a proposed combination of the prior art teachings of the Holtmyer Publication, the Holtmyer Patent, and Strausz, as well as Inaoka and Strausz. Id. We also addressed the drag reduction limitation, taking into account testimony of Petitioner’s witness, Dr. Epps, and concluded that the weight of the 5 Declaration of Patent Owner’s witness, Dr. Brian Dunn. evidence presented in this case indicated that there are correlations between solubility parameters and drag reduction that one of ordinary skill in the art would have used to determine whether a particular drag reducing agent (“DRA”) would be effective in a particular liquid hydrocarbon. Id. at 30–33. Thus, we found Petitioner’s articulated reasoning was effective to support its contentions of obviousness. Id. at 29–33. Patent Owner’s mere disagreement with our analysis is not a proper basis for a rehearing request, and does not persuade us that we overlooked or misapprehended the above evidence and argument that Patent Owner provided.” slip op. at 4
- Obviousness (§103) › Analogous artAnalogous artDecided for patent owner
“In the Final Written Decision, we considered this evidence and argument, and found that Strausz was reasonably pertinent to one of the problems confronting the inventors of the ’250 patent, namely, solubility. Dec. 34. We explained that it was known prior to the ’250 patent that solubility of the drag reducing polymer in the liquid hydrocarbon was necessary to achieve drag reduction, and was an important requirement in preparing a more effective drag reducing polymer. Id. Thus, the inventors of the ’250 patent would have been concerned about whether the drag reducing polymer was soluble in the liquid hydrocarbon the polymer was treating. Id. We found Strausz, which is the source of the solubility parameter ranges recited in the ’250 patent, to be reasonably pertinent to this problem. Id. Patent Owner’s argument to the contrary does not persuade us that we overlooked or misapprehended that Strausz is reasonably pertinent to a problem with which the inventors of the ’250 patent were concerned.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for petitioner
“reinforces the patentability of Claims 1–9 and shows that there is no disclosure in the Holtmyer references that suggests anything about the claimed asphaltenes, and there was no motivation to make the combination with Strausz.” Req. 2–3. Patent Owner does not direct us to any evidence or argument it previously made describing how a specific claim construction of the term asphaltene reinforces the patentability of claims 1–9, or how it shows that there would have been no reason to combine the teachings in the Holtmyer references with the teachings in Strausz. Thus, Patent Owner presents a new argument, and a request for rehearing is not an opportunity to present new arguments or evidence. Patent Owner also has not directed us to a claim construction that we misapprehended or overlooked. Patent Owner provided no claim construction analysis in its Response. See PO Resp., passim. Patent Owner directs us to a footnote in a section of the Patent Owner Response regarding Dr. Epps’s testimony, and argues we should have interpreted that footnote as a proposed claim construction. Req. 2–3, 11–12; see PO Resp. 12 n.5. Although Patent Owner could have developed an argument about claim construction of the term “asphaltene” in its Patent Owner Response, Patent Owner chose not to do so. Patent Owner’s choice to not include a proposed construction analysis of the term “asphaltene” prejudices Petitioner, because Petitioner has not been provided adequate notice and opportunity to address whether or how the term “asphaltene” should be construed, and hinders the Board’s ability to discern the argument and provide proper relief. We do not find Patent Owner’s request to sua sponte engage in claim construction of the term “asphaltene” recited in this footnote as a proxy for a proper claim construction analysis. Id.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,450,250
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.