- Fresenius Kabi USA LLC v. Cubist Pharmaceuticals LLCInstitution deniedPTAB · Jan 28, 2016 · IPR2015-01572 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the cited purification methods would yield claim 91’s required purity from each of impurities 1–14.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner does not provide sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9
- BurdenNot shown unpatentable
“sufficient argument or evidence to demonstrate that the purification methods set forth in the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition having no more than 0.5% of each of impurities 1–14. As noted by Patent Owner, the Petition does not address directly the limitations of claim 91. See, e.g., Pet. 26–27, 31. For example, the claim chart for claim 91 merely states “See claim 85,” and the claim charts for claims 49 and 85 do not indicate that the methods set forth in the ’843 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free” of impurities 1–14. Id. at 26–27, 30. The Petition does state that compositions purified using the disclosed methods “would have at least approached and likely exceeded 99% purity levels with respect to all impurities present.” Id. at 20 (citing Ex. 1005 ¶ 148). A 99% purity level, however, would still allow for at least one of the fourteen impurities to be present in the daptomycin composition at a level greater than 0.5%. Thus, we are not persuaded that this evidence demonstrates that the purification methods of the ’843 patent, the ’226 patent, Mulligan, and Lin II would result in a daptomycin composition that is “essentially free of each of impurities 1 to 14,” as recited in claim 91.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“daptomycin composition that is “essentially free” of impurities 1 to 14 in view of the disclosures of the ’843 patent, the ’226 patent, Mulligan, Lin II, and Lakey. Pet. 15–31. In support of this argument, Petitioner notes that daptomycin, or LY146032, is an antibiotic intended for therapeutic use. Pet. 19; Ex. 1007, 1:5–8, 1:36–38; Ex. 1005 ¶ 137. Given this therapeutic application, Petitioner contends a person of ordinary skill in the art would have been motivated to increase the purity of daptomycin compositions “as high as possible.” Pet. 24; Ex. 1005 ¶¶ 75 (asserting that high levels of purity for pharmaceutical preparations of antimicrobial agents would have been a target goal for one of ordinary skill in the art), 137. To achieve this goal, Petitioner contends a person of ordinary skill in the art would have accessed the “extensive tool-box” known in the art for purifying lipopeptide biosurfactants. Pet. 16–17, 23. In particular, Petitioner contends that one of ordinary skill in the art would have understood that the methods disclosed in the ’843 patent, the ’226 patent, Lakey, Mulligan, and Lin II could be used to obtain a daptomycin composition with a purity level exceeding 99%. Pet. 17–18, 20.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,058,238 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentablePTAB · Jan 28, 2016 · IPR2014-01184 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3 and 5–14 are unpatentable under § 103 as obvious over the prior art combinations addressed in the decision.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. remaining claim terms Patent Owner also proposes constructions for the terms wireless telephone device, a signal representing at least a portion of a song, while, and portable electronic device. PO Resp. 5–6, 8–10, 11–12. Upon review of Petitioner’s and Patent Owner’s arguments, we determine that construction of these additional claim terms is not required for purposes of this decision.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Ipsis verbis disclosure is not necessary, however, to satisfy the written description requirement of section 112. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Thus, we must also determine whether, despite the lack of express disclosure, one of ordinary skill in the art would have understood that Patent Owner was in possession of the invention set forth in claim 8. Id. In conducting this analysis, we are cognizant that “a description which renders obvious a claimed invention is not sufficient to satisfy the written description requirement of that invention.” Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997). Dr. Wolf recites the same disclosures as Patent Owner and concludes that one of ordinary skill in the art would understand that the ’812 application demonstrates possession of an invention wherein a radio dial transmitted to a recipient device could be used to cause the transmission of selected information to the recipient device. Ex. 2005 ¶¶ 287, 290. Dr. Wolf does not address, however, the specific configuration set forth in claim 8 of the ’641 patent. In particular, Dr. Wolf does not explain why one of ordinary skill in the art would understand from the recited disclosures that the patentee was possession of a method of streaming a song from a portable electronic device to a recipient device in response to the selection of a selectable menu item “presented on a recipient device display.” In contrast, Dr. Quackenbush analyzes the disclosures of the ’641 patent in detail and concludes that one of ordinary skill in the art, upon review of the priority disclosures as a whole, would not understand the patentee to be in possession of the invention set forth in claim 8. Ex. 1025 ¶¶ 189–207. Specifically, Dr. Quackenbush concludes that the disclosures of the ’812 application and the ’641 Specification focus on the transmission of data from a storage device and digital engine to an electronic device, and not from a portable electronic device to a recipient device, in response to a selection of a selectable menu item presented on a recipient device display. Ex. 1025 ¶¶ 193–203. Upon careful review of both Dr. Wolf’s and Dr. Quackenbush’s” slip op. at 52
Patent outcomesUS 8,532,641 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,532,641 - Avx Corporation v. Greatbatch Ltd.Rehearing grantedPTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing
The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12
- BurdenMixed
“of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,327,553 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2
NonePatents in suitUS 7,035,077 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,370,371 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00947 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 23, 25, 161, 193, and 202.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,061,551 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00946 · APJ Bart A Gerstenblith · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 82, 90, and 91.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Petitioner”) filed a Petition for inter partes review of U.S. Patent No. 6,266,518 B1 (“the ’518 patent”). Paper 1. ParkerVision, Inc. (“Patent Owner”) filed a Preliminary Response on September 24, 2014. Paper 7. On December 18, 2014, we instituted this inter partes review of claims 1, 82, 90, and 91 of the ’518 patent. Paper 8.” slip op. at 2
NonePatents in suitUS 6,266,518 - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing
Denied Patent Owner’s rehearing request; review remains instituted for claims 42–44, 47–51, 53, 55, and 56 as anticipated by the ’095 patent and claim 57 as obvious over the ’095 patent and JP ’712.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has 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 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“granting-in-part Daicel Corporation’s (“Petitioner”) Request for Rehearing (Paper 12) and instituting inter partes review of claims 42–44, 47–51, 53, and 55–57 of U.S. Patent No. 8,076,507 B2 (Ex. 1002, “the ’507 patent”). In Petitioner’s Request for Rehearing, Petitioner persuaded us that, in our initial decision denying institution of inter partes review (Paper 11, “Init. Dec.”), we overlooked testimony in the declaration of its expert, Mr. Cooper (Ex. 1003, “Cooper Declaration”). See Reh’g Dec. 9. Upon reconsideration of the Petition (Paper 2, Petition for Inter Partes Review (“Pet.”)) in light of Petitioner’s Request for Rehearing, we determined the information presented in the Petition was sufficient to support a reasonable likelihood that Petitioner would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by U.S. Patent No. 5,625,095 (Ex. 1010, “the ’095 patent”), and in showing claim 57 would have been obvious over the ’095 patent and Japanese Patent Application No. 2000-72712 (Ex. 1020 (English Translation), “JP ’712”). See Reh’g Dec. 3–5, 9–10. Accordingly, we instituted an inter partes review based on these grounds of unpatentability. Id. at 10. We were not persuaded, however, that we abused our discretion in declining to institute an inter partes review of claims 42–44, 47–51, 53, 55, and 56 based on obviousness over Singh1 (Ex. 1011) in view of the ’095 patent and Akinori2 (Ex. 1013), and claims 42–44, 47–51, 53, and 55–57” slip op. at 2
- BurdenDecided for petitioner
“Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to support its patentability challenge based on anticipation by the ’095 patent. See 37 C.F.R. § 42.22(a)(2) (requiring that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); id. at § 42.104 (requiring that the full statement in the Petition identify the specific portions of the supporting evidence relied upon to support the challenge, and state the relevance of the evidence to the challenge raised). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left instituted claims 58–60, 67, 69, and 71–72 on anticipation grounds and claim 73 on anticipation and obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has 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 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Therefore, we are not persuaded that we erred in determining Petitioner’s arguments and evidence are sufficiently persuasive, at this stage of the proceeding, to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 59 and 67 as anticipated by the ’095 Patent. III. CONCLUSION Patent Owner has not convinced us that we abused our discretion in our decision to institute an inter partes review of claims 58–60, 67, 69, 71, and 72 based on anticipation by the ’095 patent and claim 73 based on obviousness over the ’095 patent and JP ’712.” slip op. at 13
- BurdenDecided for petitioner
“support of the presence of DME are limited to the following sentence: “It is well known that such a mixture will produce at least some amount of DME through equilibrium processes,” PO Req. Reh’g 2 (quoting Pet. 22–23). On page 4 of our Rehearing Decision, we quote Petitioner’s arguments explaining why DME necessarily would be present in the reactor and distillation overheads in the ’095 patent process. Reh’g Dec. 4 (quoting Pet. 22–23). Patent Owner has not explained why these arguments from the Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to support its patentability challenge based on anticipation by the ’095 patent. See 37 C.F.R. § 42.22(a)(2) (requiring that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); id. at § 42.104 (requiring that the full statement in the Petition identify the specific portions of the supporting evidence relied upon to support the challenge, and state the relevance of the evidence to the challenge raised). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and maintained institution on claims 1–4, 6–11, and 13 for obviousness over Singh, the ’095 patent, and Akinori.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has 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 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In support of its challenge as to claims 11 and 13, Petitioner cited column 7, lines 25–27 of the ’095 patent, which read: “When distillation for separation is carried out in one distillation column, water may be charged into the distillation column.” Pet. 59–60. Petitioner also cited column 5, lines 1–5 of Singh, which describe adding water to the distillation column. Id. at 58–59. Petitioner cited paragraphs 71 and 78–80 of Mr. Cooper’s declaration (id. at 34, 41), wherein Mr. Cooper testified that adding water to the distillation columns in the ’095 patent and Singh processes would generate DME (Ex. 1003 ¶¶ 71, 80). Further, as discussed in Section II.A., above, Petitioner explained why one of ordinary skill in the art would have understood from Akinori that DME would be produced in the distillation column and present in the overheads in the ’095 patent and Singh processes, and identified testimony in the Cooper Declaration in support thereof. See e.g. Pet. 27 (citing Ex. 1003 ¶¶ 97–103); Ex. 1003 ¶101 (concluding, after discussing Akinori’s disclosure of the equilibrium side reactions in a Monsanto process, that “[t]he expected result is that DME forms where water and methyl iodide are present under distillative conditions, and that the amount of DME can be increased by feeding water to the distillation column”). As is apparent from the citations in the paragraph above, Petitioner has identified evidentiary support for its contentions that DME would be formed during the distillation steps in Singh and the ’095 patent processes, and that the second overhead would comprise an amount of DME in excess of any DME present in the first overhead, as recited in claims 11 and 13. Patent Owner’s unsupported attorney argument fails to convince us that Mr. Cooper’s testimony is unreasonable, or unsupported by the evidence he relies upon.1 Therefore, we are not persuaded that we erred in determining Petitioner’s arguments and evidence are persuasive, at this stage of the proceeding, to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 11 and 13 over Singh, the ’095 Patent, and Akinori.” slip op. at 10
- BurdenDecided for petitioner
“Our rules require that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence. 37 C.F.R. § 42.22(a)(2). The full statement in the Petition must identify the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. Id. at § 42.104. Patent Owner has not explained why the above statements from the Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to satisfy these rules. With regard to Exhibits 1029 and 1030, Patent Owner has not identified language in the rules or case law to support its contention that the Petition must cite and/or explain the relevance of evidence relied upon in an expert declaration. See 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.”). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 7
Claim constructionPatents in suitUS 8,076,507
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.