• Sma Solar Technology America, LLC v. Tigo Energy, Inc.Rehearing denied
  PTAB · Apr 2, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Rehearing

  The Board denied SMA’s rehearing request, leaving institution denied for claims 1–20 because the request showed no overlooked matter, misapplication of law, or abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Rule 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, a reply, or a sur-reply. 37 C.F.R. § 42.71(d). 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. Moreover, “[w]hen rehearing a decision on petition, a panel 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

    “patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “reads on the micro-controller recited in the claims of the ’848 patent” (Req. 6), the test for anticipation is not whether the prior art reads on the claims, but rather whether the claims read on the prior art. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth. slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “D. Petitioner’s Section 103 Argument Petitioner argues throughout the Request that Mieth also discloses the “micro-controller” limitation under 35 U.SC. § 103. See Req. 7, 9–11, 13– 15. As explained above, however, the Request does not identify any matters that the Board misapprehended or overlooked. We addressed Petitioner’s obviousness arguments in our Institution Decision, and determined that those arguments failed to demonstrate a reasonable likelihood that Petitioner would prevail on its arguments that Mieth and Balogh, or Mieth, Balogh, and Liu, teach or suggest the claimed “micro-controller” limitation. Inst. Dec. 13–15.” slip op. at 8

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,966,848
• Berkeley Lights, Inc. v. The University Of British ColumbiaRehearing denied
  PTAB · 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 obviousness
  Patents in suitUS 10,087,408
• Scentair Technologies, LLC v. Prolitec, Inc.Rehearing denied
  PTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3

  § 103 obviousness
  Patents in suitUS 9,480,767
• Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing denied
  PTAB · 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 denial
  Patents in suitUS 10,301,231
• Favored Tech Corporation v. P2i LtdRehearing denied
  PTAB · Oct 21, 2020 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place institution of review on claims 1–17 based on the Petition’s challenges.

  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) (2019). 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 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

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner also provides a reason why a person of ordinary skill in the art would have used [Baalmann’s] outer-wall configuration with a 1 m3 chamber such that the plasma zone covers the full chamber volume: “because doing so would have maximized the effective chamber capacity at any given chamber size by allowing the reactive plasma to reach all substrate surfaces, even for large substrates or large batches of smaller substrates extending near the outer limits of the chamber.” Pet. 35; Ex. 1002 ¶ 125. Dec. 20–21. Patent Owner does not address this portion of the Decision or our citation to page 35 of the Petition in the section of its Rehearing Request asserting we incorrectly found the Petition asserts a ground of obviousness based on Baalmann alone. Req. Reh’g 7–11.5 These portions of the record, which address Petitioner’s evidence demonstrating a person of ordinary skill in the art would have had reason to use a particular reactor configuration and plasma zone size, undermine Patent Owner’s assertion that “Petitioner’s obviousness theory fails to provide any reasoning why a POSA would combine Baalmann’s separate and distinct teachings to arrive at the claimed” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaching away argument in the Decision, we will do so here. With regard to Patent Owner’s contention that “Baalmann teaches away from the claimed method because . . . Baalmann discloses applying a power of 2kW in its only example using a reactor large enough to potentially satisfy claim 1’s plasma zone volume requirement, which would result in a plasma power density well outside the claimed range” (Req. Reh’g 14), we note that a reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not direct us to any such evidence in Baalmann, and we will not “read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Additionally, although the one example of a 1 m3 reactor in Baalmann involved using a power density that did not fall within the claimed range, for purposes of an obviousness analysis, we cannot ignore the broader disclosure of Baalmann regarding the use of power densities in the range of between 0.5 kW/m3 and 5kW/m3, which does overlap the claimed range. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Req. Reh’g 14. Patent Owner cites to pages 54–56 of the Preliminary Response as the source for this argument and evidence. Although these pages do provide a discussion of the use of certain power densities in prior art references, this portion of the Preliminary Response primarily addresses Patent Owner’s arguments regarding whether a person of ordinary skill in the art “would have had a reasonable expectation of success when combining the disparate process of Coulson and Baalmann,” not what a person of ordinary skill in the art would have been “motivated” to do. Prelim. Resp. 56; see Par Pharmaceutical v. Twi Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (noting the proper analysis under § 103 requires “consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success”) (quoting Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). As such, Patent Owner appears to present a new argument for the first time in the Rehearing Request. Not only is such an argument improper (see 37 C.F.R. § 42.71(d)), but the fact that it was raised for the first time in the rehearing means it is not something we could have overlooked. Even if Patent Owner had presented this “motivation” argument in the Preliminary Response, we remain unpersuaded of any error in our Decision. Patent Owner fails to explain sufficiently why a person of ordinary skill in the art would look to other prior art references for guidance regarding the use of a particular power density in large scale reactors in view of our determination that Baalmann itself discloses the use of a power density in the claimed range in a large scale reactor.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,389,070
• Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing denied
  PTAB · Aug 10, 2020 · PGR2019-00046 · APJ Sheldon M Mcgee · PGR · Rehearing

  The Board held claims 1–20 unpatentable as obvious over the stated combinations and denied Patent Owner’s rehearing request.

  RulingsRehearing decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In light of the complete record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. In addition to the academic requirements associated with obtaining a bachelor’s degree in chemistry or chemical engineering, Petitioner’s definition includes at least two years of experience specific to chemical formulations used in the agricultural industry. Pet. 8. Patent Owner’s “definition” is generic to “formulation chemistry.” Sur-Reply 4. Patent Owner does not explain, nor do we discern, why the skilled artisan would not have had at least some work experience in developing chemical formulations in the relevant field, i.e., the agrochemical industry. Indeed, some of Patent Owner’s arguments are directed to solvent delivery systems used in the agricultural market. PO Resp. 57–78.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “filing date, we apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither party offers a construction for any claim term. Pet. 11; see also PO Resp., generally. On the complete record, we determine that no claim limitations need an express construction to resolve the controversy.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “analogous art. PO Resp. 47; Sur-Reply 8, 15–16. Patent Owner incorrectly frames the analogous art inquiry by comparing whether the prior art references are analogous to each other. See PO Resp. 47 (“not all three references are in the same field of endeavor”); Sur-Reply 16 (asserting that CN400 “is not analogous art with Iannotta [] and/or Kolc” because CN400’s NBPT is purportedly “not dissolved in any solvent”). Our reviewing court has stated, however, that “[a] reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.” Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), the court stated Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Innovention Toys, 637 F.3d at 1322. Regarding whether the CN400 patent is in the same field of endeavor as the ʼ108 patent, we must consider the scope of the ʼ108 patent as a whole and not just the claims. In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009) (rejecting appellant’s attempt to rely on the claimed subject matter to define the relevant “field of endeavor” when the specification described a broader one). Significantly, the ʼ108 patent discloses both solutions and suspensions of NBPT. See Ex. 1001, 5:20–52, 6:5–12, 6:39–40 (disclosing various solutions of NBPT), and 13:24–36 (setting forth an embodiment that formed “a suspension of NBPT in the aqueous mixture” that may “be solved by agitation”). Therefore, regardless of whether CN400’s process set forth in its claim 1 results in a solution or suspension of NBPT, CN400 is from the same field of endeavor as defined by the ʼ108 patent itself––“solvent formulations for the urease inhibitor . . . NBPT.” Ex. 1001, 1:15–18. Even if CN400 was not in the same field of endeavor as the ʼ108 patent, we find it is reasonably pertinent to the particular problem with which the inventor was involved. The ʼ108 patent identifies NBPT formulation toxicity as problematic to the environment, animals, and possibly humans (id. at 2:60–62, 4:8–33), and expressly states “it is desirable to develop formulations/fertilizers that are less toxic to the environment and to animals and humans” (id. at 4:34–36). The skilled artisan would have been aware of this toxicity problem with NBPT-containing formulations (Ex. 1025, 1; Ex. 1007 ¶ 6), and CN400 was also concerned with this problem (Ex. 1006, 1 (Abstract), ¶¶ 2, 5; see also Ex. 2006, 461 (machine translation of CN400 abstract noting how use of its fertilizer formulation will not pollute the environment), 462 ¶ 2, 463 ¶ 5. Notably, Patent Owner does not address this second test in its briefing. Tr. 39:6–11 (Patent Owner’s counsel acknowledging “[w]e did not address the other prong in the briefing”). Thus, on several bases, we find CN400 is analogous art to the ʼ108 patent and may be properly relied on in our obviousness determination.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,221,108
• Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing denied
  PTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.

  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 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 3

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12

  § 103 obviousness
  Patents in suitUS 7,382,771
• Corning Incorporated v. Panduit Corp.Rehearing denied
  PTAB · Jan 16, 2020 · IPR2019-00776 · APJ Debra L Dennett · IPR · Rehearing

  The Board denied Corning’s rehearing request and left institution denied for claims 1–4 because the petition did not show a reasonable likelihood of proving obviousness on any asserted ground.

  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 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

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,488,115 B2 (Ex. 1001, “the ’115 patent”). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the choosing limitation of the claims would have been obvious over cited references in view of the knowledge of one of ordinary skill in the art. Dec. 20, 26, 29. We, thus, found that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’115 patent are unpatentable as obvious on any asserted ground. Id. at 22, 23, 27–30.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’115 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 42 (citing Ex. 1005 ¶ 252).” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “The second part of Petitioner’s first argument is that we “committed legal error by construing claim 1” of the ’115 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction, either expressly or implicitly. In fact, we determined that no claim term required express construction. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing (Reh’g Req. 6–9), but Petitioner identifies nothing in our Decision that indicates we construed the “choosing” limitation of claim 1 to require that the DMD slope always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7

  Claim construction§ 103 obviousness
  Patents in suitUS 8,488,115
• Corning Incorporated v. Panduit Corp.Rehearing denied
  PTAB · Jan 16, 2020 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Rehearing

  Denied Corning’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood that claims 1–4 were obvious on any asserted ground.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2018). 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

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,351,027 B2 (“the ’027 patent,” Ex. 1001). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the combined teachings of the prior art would have rendered obvious the limitation of claim 1 that requires “choosing for use in a communications network those optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number” (“the choosing step”). Dec. 23–25, 29–30, 32. We, thus, determined that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’027 patent would have been obvious based on any asserted ground. Id. at 25–26, 30–33.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot reached

    “negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’027 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))); see also Dec. 25 (concluding that Petitioner’s argument appears to be the product of hindsight). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 44 (citing Ex. 1005 ¶ 164).” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “legal error by construing claim 1” of the ’027 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction. In fact, we determined that no claim term required express construction, expressly or implicitly. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing, see Reh’g Req. 6– 9, but does not identify anything in our Decision that indicates we construed the choosing step of claim 1 as requiring that the DMD slope should always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7

  Claim construction§ 103 obviousness
  Patents in suitUS 8,351,027
• Baker Hughes, A GE Company, LLC (F/K/A Baker Hughes Incorporated) v. Liquidpower Specialty Products Inc. (F/K/A Lubrizol Specialty Products, Inc.)Rehearing denied
  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 obviousness
  Patents in suitUS 8,426,498

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.