- 3M Company v. Bay Materials, LLCInstitutedPTAB · Jan 18, 2023 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7, 11–14, 18, and 31 on all asserted grounds, finding at least one claim sufficiently shown anticipated by Yu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition includes detailed arguments that map the limitations of the challenged claims to specific disclosures in Yu (Sample 1). Id. at 50–62. The Petition also maps adequately the limitations of the challenged claims to specific disclosures in Stewart (Example 2). Id. at 62–66. For example, Petitioner shows sufficiently that Yu (Example 1) coextrudes “a multilayered polymeric film,” that is, a “sheet,” arranged in the hard-soft-hard-soft-hard, five-layer configuration required by claim 11. Pet. 50–51; Ex. 1002 ¶¶ 124, 126–128; Ex. 1012 ¶¶ 63, 78, 92. Petitioner also shows sufficiently that the hard layers in that configuration of Yu (Example 1) are “hard” and the hard layers are “hard” within the meaning of claim 11. Pet. 53; Ex. 1002 ¶ 131; Ex. 1012 ¶ 78. In other words, Petitioner shows sufficiently, on this record, that Yu (Example 1) anticipates claim 11. Based on the information presented, we find that Petitioner shows sufficiently, for purposes of trial institution, that at least one challenged claim of the ’263 patent is anticipated by Yu (Sample 1).” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“That prior art disclosure of elastomeric materials for use as the outer layers in an unclaimed and disfavored soft-hard-soft layer configuration does not convey, with reasonable clarity, that the inventors had possession of the claimed subject matter, in which the elastomeric material forms the inner layer of a polymeric sheet in a hard-soft-hard layer configuration. See id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure of the ’176 application (Ex. 2001 ¶ 109), that circumstance is insufficient to establish written description support. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that precedent). Accordingly, we agree with Petitioner that the invention that Patent Owner seeks to protect in the ’263 patent does not appear to be “part of the invention” described in the ’176 application. Pet. 40; see Ex. 2001 ¶ 109 (describing elastomeric materials, having the specified hardness, only in the context of an unclaimed prior art soft-hard-soft embodiment). On this record, we preliminarily agree with Petitioner that the earliest effective filing date to which the ’263 patent appears to be entitled is December 18, 2019, namely, the filing date of the ’256 application, from which the ’263 patent issued. Ex. 1001, codes (21), (22). Patent Owner may contest this issue in a timely response to the Petition.” slip op. at 9
- Skill levelNot reached
“The parties disagree about whether the ordinarily skilled artisan would have had specific “experience with dental appliances or access to individuals with such experience.” Prelim. Resp. 17; see Pet. 14–15 n.1 (disagreeing with that proposition). Neither party explains why a resolution of that Stat. 284 (September 16, 2011), includes revisions to Section 102(a) that became effective on March 16, 2013. For reasons explained in this Decision, on this record it appears Petitioner is correct that the challenged claims are entitled to an effective filing date no earlier than December 18, 2019 and, therefore, the AIA provisions apply in this proceeding. See Pet. 22, 39–40; Ex. 1001, code (60). 2 WO 20010/043419 A1, published Apr. 22, 2010, with English Translation (Ex. 1015). 3 We take notice that the first and second grounds identified in the Petition assert anticipation based on the same prior art disclosure. 4 US Pub. 2004/0224283 A1, published Nov. 11, 2004 (Ex. 1008). dispute is necessary to this Decision to institute review. See, e.g., Prelim. Resp. 17 n.2 (“even under Petitioner’s proposed definition, the Petition fails to show a reasonable likelihood that any claim is unpatentable”); Pet. 14–15 & n.1 (arguing about the issue without explaining how a resolution of the dispute would change the outcome of the decision on institution). If either party believes that the difference in level of skill would have a material effect on the analysis of the patentability of the challenged claims, that issue should be specifically addressed in briefing during the trial. We will resolve that dispute only to the extent necessary in any final written decision. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). “Petitioner discusses the terms “layer A,” “layer B,” “layer C,” “layer C,” “layer B',” inner layer B,” “inner layer B',” and “inner layer D.” Pet. 15–20. Patent Owner discusses the terms “layer” and “inner.” Prelim. Resp. 19–22. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 15–20 (addressing issues of claim construction, without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 19–22 (same).” slip op. at 7
Claim construction§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,870,263 - PTAB · Oct 13, 2020 · PGR2019-00045 · APJ Christopher C Kennedy · PGR · Final written decision
The Board cancelled claims 13, 18, and 19, but denied substitute claims 23–25 because their percentage-and-range limitations introduced new matter.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“3. Scope of Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Although Patent Owner does not appear to separately address this requirement in the Revised Motion to Amend, see generally Revised MTA, we have reviewed the proposed substitute claims and determine that they do not enlarge the scope of the claims of the patent because they add limitations that render each proposed substitute claim narrower than original challenged claim 13.2 Petitioner does not contend otherwise. See generally Opp. On this record, we determine that the Revised Motion to Amend satisfies this requirement.” slip op. at 9
- 112 supportMotion to amend, deniedDenied
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
§ 112 disclosurePatents in suitUS 10,071,852
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.