• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached

    “Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Celltrion, Inc. v. Biogen, Inc.Rehearing denied
  PTAB · Jan 2, 2018 · IPR2017-01095 · APJ Erica A Franklin · IPR · Rehearing

  The Board denied Celltrion’s rehearing request, leaving in place the denial of institution on the challenged anticipation ground for claims 1–4.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 4

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

    “evidence of record, we determined that Petitioner demonstrated a reasonable likelihood that it would prevail only in showing the unpatentability of claims 1–3, 5, and 6 on the following grounds: A. Claims 5 and 6 under 35 U.S.C. § 102(b) as anticipated by Marcus; B. Claim 6 under 35 U.S.C. § 103(a) as obvious over Marcus and the ’137 patent; C. Claims 1–3 under 35 U.S.C. § 103(a) as obvious over Czuczman, Foon, and Dana; and D. Claim 3 under 35 U.S.C. § 103(a) as obvious over Czuczman, Foon, Dana, and the ’137 patent. Dec. 34. Thus, we instituted an inter partes review of only those claims, based upon only those grounds. Id. In the Rehearing Request, Petitioner” slip op. at 3

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

    “improved response rates, duration of response, disease-free survival, and time to next antilymphoma treatment,” for the “beneficial synergistic effect” limitation of claim 4. Dec. 15. However, as we explained in the Decision, Petitioner did not discuss or explain how that teaching demonstrates “a clinical outcome that reflects a greater beneficial effect than the additive effects of rituximab and CVP when administered alone,” as required by our claim construction. Dec. 15–16. At most, the Petition explains that the combination therapy provided an improvement “compared with CVP” alone. Pet. 2, 41 (quoting Ex. 1005, 6). Indeed, relying on Marcus’ comparison of ritixumab and CVP with CVP alone, Petitioner summarily asserts in the Petition that “[b]ased on this reported improvement in clinical outcomes, Marcus accordingly reports a beneficial synergistic effect of the combination.” Pet. 39 (citing Ex. 1002 95). Petitioner’s declarant, Dr. Lossos, also relies on Marcus’ “reported improvement in clinical outcomes” based upon “a clinical trial comparing CVP with CVP plus rituximab.” Ex. 1002, 54–55. Petitioner has not shown, however, that the Petition or the declaration includes any discussion regarding a comparison of the combination therapy to rituximab alone, or, significantly, a comparison of the combination therapy to the additive effects of rituximab alone and CVP alone, as required to demonstrate a “beneficial synergistic effect.”” slip op. at 5

  • Disclosure Requirements (§112) › Written description (Ariad)Not reached

    “CVP. Rather, the Decision states that Petitioner acknowledges that the ’202 application describes using rituximab “in combination” with CVP. Dec. 10. With regard to the timing for such combination, the Decision explains that original claim 17 of the ’202 application expressly recites an option for administering rituximab “during” a chemotherapeutic regimen. Dec. 10–11. Petitioner asserts that we abused our discretion by relying on that disclosure because it only serves to render the claimed invention obvious. Reh’g Req. 12 (citing Pet. 20). That argument was not raised on the cited page of the Petition, or at all with respect to arguments addressing the claim limitation for administering rituximab during CVP therapy. Moreover, as we stated in the Decision, the ’202 application “expressly recited that option” in original claim 17, such that a person of skill in the art would have understood Applicants to have been in possession of the claimed method of administering rituximab during a chemotherapeutic regimen. Dec. 11. Petitioner has not explained persuasively otherwise, or at all, in the Petition or in the Rehearing Request.” slip op. at 9

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,296,821
• Microsoft Corporation v. Smart Skins LLCRehearing denied
  PTAB · Nov 21, 2017 · IPR2016-00404 · APJ Robert J Weinschenk · IPR · Rehearing

  The Board denied Microsoft's rehearing request, maintaining that claims 1, 12, 13, 15, 23, and 24 are entitled to the July 17, 2001 priority date and that Janik and Kehoe are not prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “part of U.S. Patent Application No. 10/087,098 (Ex. 1014, “the ’098 application”), which was filed on March 1, 2002, and that the ’864 patent and the ’098 application claim priority to U.S. Provisional Patent Application No. 60/306,326 (Ex. 1015, “the ’326 provisional”), which was filed on July 17, 2001. Dec. 14–15 (citing Paper 1 (“Pet.”), 10; Paper 14 (“PO Resp.”), 8; Ex. 1001; Ex. 1014, 2). We determined that Smart Skins LLC (“Patent Owner”) had shown sufficiently that the challenged claims of the ’864 patent are entitled to a filing date of July 17, 2001, because the disclosures of the ’098 application and the ’326 provisional (collectively, “the priority applications”) provide written description support for the challenged claims of the ’864 patent. Dec. 14–21.” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “established by Patent Owner for the challenged claims (July 17, 2001) predates the earliest filing dates of Janik and Kehoe established by Petitioner (September 4, 2001, and October 24, 2001, respectively). Dec. 22. We determined that, as a result, Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Dec. 22. Therefore, we concluded that Petitioner had not shown by a preponderance of the evidence that claims 1, 12, 13, 15, 23, and 24 would have been obvious over Janik and Kehoe. Id. at 23. Petitioner argues that, because we erred in determining that the challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e).” slip op. at 14

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

    “challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Petitioner requests that we address the asserted ground of unpatentability based on Janik and Kehoe “conditionally,” even if we do not change our determination regarding the priority date of the challenged claims. Req. Reh’g 15. We are not persuaded, though, that it would be an efficient use of resources to address all of the parties’ arguments and evidence regarding the asserted ground of unpatentability based on Janik and Kehoe when Petitioner has not met its burden to show that Janik and Kehoe are prior art to the challenged claims. Therefore, we decline to “conditionally” address any remaining issues regarding the asserted ground of unpatentability based on Janik and Kehoe.” slip op. at 15

  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,079,864
• Wombat Security Technologies v. Phishme, Inc.Rehearing denied
  PTAB · Jul 20, 2017 · PGR2017-00009 · APJ Jennifer S Bisk · PGR · Rehearing

  The Board denied Wombat’s rehearing request, leaving institution of PGR denied because the petition did not show the patent was eligible for PGR.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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.” slip op. at 3

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

    “sufficiently shown that the ’038 patent was eligible for post-grant review. Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that the challenged claims were not entitled to the benefit of the filing date of Application No. 13/785,252 (“the ’252 application”) to which the ’038 patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This finding was based on the following deficiencies of the Petition: (1) the Petition did not discuss the relevant disclosure of the application to which the ’038 patent claims priority—Application No. 13/785,282 (“the ’252 application”)—as originally filed, citing instead to the ’940 patent, which issued from the ’252 application; (2) the Petition did not address the Examiner’s statements in the Notice of Allowability that “[t]he present application is being examined under the pre-AIA first to invent provisions”; and (3) Petitioner did not satisfy its burden to show that a person of ordinary skill in the art would not have understood the inventor to have possession of “providing feedback to the individual confirming that the identified email was a simulated phishing attack” (“the feedback limitation”). Id. For the third deficiency, we found the feedback limitation supported by at least paragraphs 5 and 18 of the ’252 application, which discuss training individuals who receive simulated phishing attacks such that users are better able to recognize and thwart a real phishing attack. Id. at 11–12.” slip op. at 2

  • BurdenDecided for patent owner

    “being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4

  • Disclosure Requirements (§112) › Written description (Ariad)Not reached

    “being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4

  § 112 disclosure
  Patents in suitUS 9,398,038
• United Services Automobile Association v. Nader Asghari-Kamrani And Kamran Asghari-KamraniRehearing denied
  PTAB · Oct 13, 2016 · CBM2016-00064 · APJ Joni Y Chang · CBM · Rehearing

  The Board denied rehearing, leaving in place institution on claims 1–3, 5–28, and 30–55 based on the showing that those claims were more likely than not obvious over Nicholson and Brown.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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 previously addressed in a motion, an opposition, or a reply. Id. 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 may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2

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

    “2003/0046591 A1 (Ex. 1017), published on March 6, 2003, and WIPO International Publication No. WO 03/021837 A1 (Ex. 1028), published on March 13, 2003, more than one year before the actual filing date of the ’432 patent (September 15, 2008)—are also prior art under § 102(b), showing what was known in the art and the knowledge of a person of ordinary skill in the art at the time of the invention.4 See In re Van Langenhoven, 458 F.2d 132, 136–37 (CCPA 1972) (citing In re Hafner, 410 F.2d 1403 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 690–91 (CCPA 1958)) (noting that, because the patentee could not claim the benefit of the filing date of any prior-filed application, the patentee’s own prior patent or publication that was published more than one year from the actual filing date of the application at issue was available as prior art under § 102(b)). Therefore, we disagree with Patent Owner that we committed a clear error in determining that claim 1 does not recite a technological feature that is novel and unobvious over the prior art, and that we committed a clear error in concluding that Petitioner had demonstrated that the claims at issue are more likely than not unpatentable as obvious over Nicholson and Brown. For the reasons stated above, Patent Owner has not established that we abused our discretion in determining that the ’432 patent is not excluded as a technological invention, and that it is more likely than not that claims 1–3, 4 Petitioner’s asserted ground of unpatentability, on which we instituted a trial, is based on the combination of Nicholson and Brown under § 103(a). See Paper 2, 27–63; Dec. 35. 13 5–28, and 30–55 of the ’432 patent are unpatentable under § 103(a) as obvious over Nicholson and Brown.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner

    “was made. Req. Reh’g 13–14 (citing 35 U.S.C. § 103(a)). In the Decision (Dec. 18–19), we noted that in determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). We further noted in the Decision (Dec. 19) that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art). On this record, Nicholson, which was filed on July 14, 2006, and published on January 25, 2007, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.2 Ex. 1034 at [22], [43]. And, Brown, which was filed on June 3, 1996, and issued on April 14, 1998, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.3 Ex. 1035 at [22], [45]. Therefore, based on the current record, both Nicholson and Brown are prior art under § 102(b) as to the challenged claims. In addition, on this record, the publications of the first prior-filed application—U.S. Patent Application Publication No.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “demonstrated based on the current record that the benefit claim to the third prior-filed application complies with the requirements of 35 U.S.C. § 120, among which is the requirement that the original disclosure of the third prior-filed application provides written description support for the challenged claims as required by 35 U.S.C. § 112, first paragraph. See Dec. 26–27. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011); In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). Once again, Patent Owner’s arguments ignore the requirements of 35 U.S.C. § 120. As we determined in our Decision, Patent Owner has not shown, at this juncture, that the original disclosure of the second prior-filed application or the original disclosure of the third prior-filed application provides sufficient written description support for each limitation of the challenged claims. Dec. 23–29. Without this showing, the challenged claims are not entitled to the benefit of the filing date of any prior-filed application. Id. Therefore, on this record, “at the time of the invention” is not August 29, 2001, the filing date of the first prior-filed application, as alleged by Patent Owner, but rather, September 15, 2008, the actual filing date of the application that issued as the ’432 patent.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 8,266,432
• Bioactive Laboratories v. BTG International Inc.Rehearing denied
  PTAB · Aug 2, 2016 · IPR2015-01305 · APJ Toni R Scheiner · IPR · Rehearing

  The Board denied BioActive Laboratories’ rehearing request, leaving institution denied for claims 1–22 because the ’352 patent was not shown to be prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “After reviewing the arguments and evidence presented in the Petition, however, we were not persuaded that Petitioner had shown that the ’352 patent fails to provide proper written description support or enablement for the claims of the ’414 patent. Accordingly, we were not persuaded that the ’352 patent is prior art to the claims of the ’414 patent and declined to institute an inter partes review on grounds based on the ’352 patent. Dec. 10–11.” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “anticipated by, and claims 8 and 19 are unpatentable over U.S. Patent No. 4,489,352 (Ex. 1004, “the ’352 patent”). Petitioner acknowledged that the ’352 patent “is listed in the priority chain on the face of the ’414 patent” (Pet. 5), and that the specifications of the ’352 patent and the ’414 patent are identical (id. at 29), but argued that: [T]he ’352 patent is in fact prior art because not one application in the ’414 patent’s alleged priority chain complies with the requirements of 35 U.S.C. § 112. In particular, the ’414 patent’s priority applications do not describe or enable the full scope of the claimed invention. Therefore, the ’414 patent’s priority claim fails under 35 U.S.C. § 120 and the ’352 patent qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “[T]he ’352 patent is in fact prior art because not one application in the ’414 patent’s alleged priority chain complies with the requirements of 35 U.S.C. § 112. In particular, the ’414 patent’s priority applications do not describe or enable the full scope of the claimed invention. Therefore, the ’414 patent’s priority claim fails under 35 U.S.C. § 120 and the ’352 patent qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 2

  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 8,048,414

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.