- Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01254 · APJ Robert A Pollock · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5 because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 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. See Star Fruits S.N.C. v. United States, 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
- BurdenDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Because Petitioner raised none 1 Genbank entry AB025198.1. “Mus musculus mRNA for alpha-1,6- fucosyltransferase, complete cds,” https://www.ncbi.nlm.nih.gov/nuccore /%20AB025198. 2 Yanagidani et al., Purification and cDNA Cloning of GDP-i-Fuc:N-acetyl- β-d-glucosaminyl fucosyltransferase (α1-6FucT) from Human Gastric CancerMKN45 Cells, 121 J. Biol. Chem. 626-632 (1997). 3 Naofumi Uozumi, Purification and cDNA Cloning of Porcine Brain GDPL-Fuc:N-Acetyl-β-D-Glucosaminide α1→6Fucosyltransferase, 271 J. Biol. Chem. 27810-27817 (1996). of the above arguments in the Petition, nor timely submitted any of Exhibits 1039, 1042, and 1043, Petitioner has not established that we misapprehended or overlooked this evidence. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866– 67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“of Drs. Van Ness and Jefferis. Req. Reh’g 12–14 (citing Ex. 1007 ¶¶ 18–20, 40–43, 77; Ex. 1026 ¶¶ 11–13). With respect to the latter, Petitioner points to Dr. Jefferis’s statement that a person of ordinary skill in the art “would have had knowledge of the scientific literature no later than October 6, 2000 concerning the means and methods for creating cells in which the gene for the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 11. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6-fucosyltransferase, focusing, instead, on the “basic enabling techniques described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 13 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269(20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 68. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 16–17. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 5
NonePatents in suitUS 8,067,232 - Aragen Bioscience, Inc. / Transposagen Biopharmaceuticals, Inc. v. Kyowa Hakko Kirin Co., Ltd.Rehearing deniedPTAB · Jan 22, 2018 · IPR2017-01252 · APJ Robert A Pollock · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1–12 because the petition did not establish access to the necessary mammalian FUT8 genetic material.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 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. See Star Fruits S.N.C. v. United States, 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)Institution denied meritsInstitution denied
“isolated fucosyltransferase knock-out host cell.” Consistent with Patent Owner’s position, we construed the fucosyltransferease knock-out as “a disruption of FUT8, the gene encoding α1,6-fucosyltransferase.” Dec. 13. In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious the challenged claims because it failed to present sufficient evidence that one of ordinary skill in the art would have had access to the necessary genetic starting material. Dec. 19– 24. In particular, we determined that “Petitioner fails to establish adequately that DNA encoding a mammalian α1,6-fucosyltransferase was either available, or could be routinely obtained by those of ordinary skill in the art.” Id. at 24. According to Petitioner, our finding is “clearly erroneous” and based on “misunderstandings about the record evidence, as well as a failure to weigh, in full, unrebutted expert testimony before the Board.” Req. Reh’g 1. We do not find Petitioner’s argument persuasive.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Because Petitioner raised none of the above arguments in the Petition, nor timely submitted any of Exhibits 1 Genbank entry AB025198.1. “Mus musculus mRNA for alpha-1,6- fucosyltransferase, complete cds,” https://www.ncbi.nlm.nih.gov/nuccore /%20AB025198. 2 Yanagidani et al., Purification and cDNA Cloning of GDP-i-Fuc:N-acetyl- β-d-glucosaminyl fucosyltransferase (α1-6FucT) from Human Gastric CancerMKN45 Cells, 121 J. Biol. Chem. 626-632 (1997). 3 Naofumi Uozumi, Purification and cDNA Cloning of Porcine Brain GDPL-Fuc:N-Acetyl-β-D-Glucosaminide α1→6Fucosyltransferase, 271 J. Biol. Chem. 27810-27817 (1996). 1038, 1041, and 1042, Petitioner has not established that we misapprehended or overlooked this evidence. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866– 67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the fucose-adding enzyme fucosyltransferase was knocked out, resulting in a modified sugar chain giving improved antibodies.” See id. at 12; Ex. 1026 ¶ 11. But Dr. Jefferis provides no definitive statement with respect to the availability of DNA encoding a mammalian α1,6-fucosyltransferase, focusing, instead, on the “basic enabling techniques to create the modified-antibody-producing mammalian cells described in the patent claims.” See Ex. 1026 ¶ 12; see also id. ¶ 13 (discussing statement in prosecution history “that construction of gene constructs and knock-out CHO cells were ‘standard methods’ in the prior art”). Accordingly, we do not find Dr. Jefferis’s testimony relevant to the availability of a mammalian FUT 8 gene sequence. Dr. Van Ness, in contrast, referenced “the known genetic sequence of the α1,6-fucosyltransferase gene,” after asserting that “[t]he human fucosyltransferase gene sequence had been cloned in 1994 by Sasaki et al. (269 (20) J. BIOL. CHEM. 14730–37 (1994)).” Ex. 1007 ¶¶ 40, 77. As discussed in our Decision, Sasaki does not disclose a mammalian α1,6- fucosyltransferase recited in claim 1, but an α1,3-fucosyltransferase. Dec. 20–21. As such, Sasaki fails to support Dr. Van Ness’s generic reference to “the known genetic sequence of the α1,6-fucosyltransferase gene.” Because neither Dr. Van Ness nor Petitioner presented any evidence demonstrating how the nucleotide sequence of an α1,3-fucosyltransferase teaches or suggests that of the α1,6-fucosyltransferase recited in claim 1, we accorded little weight to Dr. Van Ness’s opinion. Id.” slip op. at 6
NonePatents in suitUS 6,946,292 - PTAB · Nov 7, 2017 · DER2016-00003 · APJ Jameson Lee · DER · Institution
The Board denied institution because the petition lacked substantial evidence of derivation for any challenged claim, including sufficient proof of conception, communication, and the required claim comparisons.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support the assertion of derivation.4 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). A petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974). The showing of communication must be corroborated. 37 C.F.R. § 42.405(c). Assuming that corroborated conception and communication both are established, a petitioner would be able to regard as a derived invention those” slip op. at 3
- BurdenDenied
“B. The Alleged Invention – Conception and Communication First, Petitioner has not sufficiently specifically identified the features of an invention that he allegedly conceived. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “Petitioner Sindoni conceived of a major advance in the pickup truck equipment field”; and (2) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application.” Pet. 3, 16. We do not understand the position of Petitioner to be that Mr. Sindoni conceived of the very first ramp system for a pickup truck. An Information Disclosure Statement submitted by Petitioner during prosecution of the ’548 Application identifies three prior art references disclosing a ramp system for a pickup truck, i.e., U.S. Patent Nos. 3,976,209; 4,624,619; and 7,445,268. Ex. 3002. Also, Petitioner’s ’548 Application generally refers to preexisting ramps for pickup trucks and characterizes them as unsatisfactory. Ex. 1002 ¶ 5. Yet, neither the Petition nor the Declaration of Mr. Sindoni sets forth any particular feature of the “ramp system for a pickup truck” that Petitioner allegedly conceived, much less the entirety of what Petitioner has conceived. This deficiency alone dooms the Petition, because we do not know what was conceived by Petitioner. Second, Petitioner has not sufficiently identified the features of any invention that he allegedly communicated to Respondent. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application”; and “Petitioner disclosed the invention to Respondent to this end, and Respondent acknowledged receipt of the disclosure.” Pet. 3, 16. The Petition does not, however, point to corroborating evidence of communication or evidence of how Respondent has acknowledged receipt of Petitioner’s conceived “invention” at any time. The Declaration of Mr. Sindoni, the Petitioner, is no better. Mr. Sindoni testifies: “Details of the invention were communicated to FCA US LLC by me more than a year before FCA US LLC filed the Chrysler application and more than two years before the Sindoni application was filed.” Ex. 1003 ¶ 7 (emphasis added). However, Mr. Sindoni in his Declaration nowhere identifies or explains the referenced “[d]etails of the invention.” Submitted by Petitioner as Exhibit 1006 is a document that appears to be signed by Mr. Sindoni and a representative of an entity named “U.S. Patent Commission,” that pertains to disclosure by Mr. Sindoni of an invention to U.S. Patent Commission at some time. But that document has not been addressed in the declaration testimony of Mr. Sindoni. Nor is there a declaration from Angela Stevens, the individual who signed on behalf of U.S. Patent Commission, addressing the document. Thus, it has not been authenticated. Also, although the Petition generally refers to Exhibit 1006 as “Petitioner’s Invention Disclosure,” (Pet. 9–14), we do not know specifically what subject matter the Petitioner possibly had conceived because the Petitioner makes no averment in that regard. Furthermore, the content of Exhibit 1006 has not been explained either in the Petition or in the Declaration of Mr. Sindoni. Pages 4 and 5 of Exhibit 1006 appear to contain technical illustrations but are substantially illegible. On May 3, 2017, we issued an Order (Paper 7) stating: “[I]f Petitioner can provide a more legible copy of the last two pages of Exhibit 1006, then another full copy of Exhibit 1006, including the more legible last two pages, shall be filed within two weeks of the date of this communication.” Paper 7, 3. Petitioner filed no replacement copy of Exhibit 1006. We note also that the signature of Angela Stevens, on behalf of U.S. Patent Commission, on page 1 of Exhibit 1006, is undated, and Petitioner submitted no declaration of Angela Stevens to substantiate and explain her signature, e.g., when she received the document. In any event, Petitioner makes no explanation as to the relationship, if any, between U.S. Patent Commission and Respondent. We decline to assume that they are the same entity. Thus, we will not assume communication with U.S. Patent Commission is the same as communication with Respondent. For the foregoing reasons, the Petition is fatally deficient with regard to the” slip op. at 5
NonePatents in suitUS 9,067,525 - Argentum Pharmaceuticals LLC v. Cipla Ltd.Rehearing deniedPTAB · Oct 31, 2017 · IPR2017-00807 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in declining to construe the terms or in reserving disputed motivation and reasonable-expectation issues for trial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 4
- Expert testimonyOther
“osmolality, poor spray quality, and unacceptable settling and caking” resulting from the attempted formulation of Cramer’s Example III. Id. at 8– 10; see also Prelim. Resp. 25. The Board, however, addressed those issues in the Institution Decision and determined that “Patent Owner’s arguments and expert testimony highlight disputed issues of fact about whether the skilled artisan would have been motivated to combine the teachings of Hettche, Phillipps, and Segal to arrive at the claimed subject matter, and would have had a reasonable expectation of success.” Instit. Dec. at 20 (citing Ex. 1002, 268–87; Ex. 2007 ¶¶ 40–47; Ex. 2111, 1; Ex. 2044, 1–2). The Board concluded that those “issues are best resolved following trial with the benefit of a full record.” Id. We are still of that view. Accordingly, we are not persuaded that the Board misapprehended or overlooked the issue of reasonable expectation of success.” slip op. at 5
- BurdenOther
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review 1 Helmut Hettche, U.S. Patent No. 5,164,194 (Nov. 17, 1992) (“Hettche”). Ex. 1007. 2 Gordon H. Phillipps, et al., U.S. Patent No. 4,335,121 (Jun. 15, 1982) (“Phillipps”). Ex. 1009. 3 Catherine A. Segal, Int’l Publication No. WO 98/48839 (Nov. 5, 1998) (“Segal”). Ex. 1012. 4 FLONASE® (fluticasone propionate) Nasal Spray, 50 mcg Product Information (Dec. 1998) (“Flonase Label”). Ex. 1010. the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“In the Institution Decision, the Board determined that “no claim term requires express interpretation for purposes of this Decision.” Instit. Dec. 7. In its Rehearing Request, Patent Owner argues that the Board “misapprehended or overlooked the importance of construing the terms ‘nasal spray’ and ‘suitable for nasal administration’” found in all the challenged claims. Reh’g Req. 2. In particular, Patent Owner asserts that those terms mean “pharmaceutical formulations that are tolerable to patients, homogeneous, and can be suitably deposited onto the nasal mucosa.” Id. (citing Paper 7, Preliminary Response (“Prelim. Resp.”), 9). Patent Owner alleges that, had the Board construed “nasal spray” and “suitable for nasal administration,” then the Board would have denied the obviousness grounds because “none of the combinations of cited art teach a person of ordinary skill in the art how to make the claimed fixed-dose combination ‘nasal spray’ or formulation ‘suitable for nasal administration’ with a reasonable expectation of success.” Id. at 2–3 (citing Prelim. Resp. 9). We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,168,620 - Duane Brockman v. Wesley BainterInstitution deniedPTAB · May 11, 2017 · DER2016-00002 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding because the petition did not provide substantial evidence that the challenged claims were the same or substantially the same as the invention conceived and communicated.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature. Claim 6 requires a motor movably mounted to a frame for translation between a retracted position and an extended position, and a control unit that causes both the motor and the anchor member to move from a retracted position to an extended position and from an extended position to a retracted position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such motor and control module, and the Petition does not account for such a feature.” slip op. at 8
- Adverse judgmentAdverse judgmentDenied
“II. Discussion In its Response to the Show Cause Order, Petitioner argues that 35 U.S.C. § 135 does not require a petitioner’s involved application to be maintained after a derivation petition has been filed, that Petitioner’s entire purpose for filing the Petition was for the Board to direct that “the Petitioner be added as a named inventor [in] Respondent[’s] Application,” and that “the Respondent be removed as a named inventor from the Respondent Application.” Paper 6, 1–2. Under the circumstances here, we do not enter adverse judgment against Petitioner for having abandoned the ’929 Application. Hereinafter, we discuss the merits of the Petition for purposes of determining whether a derivation proceeding should be instituted.” slip op. at 2
- BurdenNot shown unpatentable
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature.” slip op. at 8
NonePatents in suitUS 9,215,847 - Geosys-Intl, Inc. v. Farmers Edge Precision Consulting, Inc.All claims unpatentablePTAB · Aug 17, 2016 · IPR2015-00708 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–29 are unpatentable as obvious under § 103 over the three instituted combinations of Hauwiller, the patent Background, and, for specified claims, Dickson or Shibusawa.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between Dr. Johannsen’s and Dr. Heiniger’s articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Dr. Heiniger’s definition of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningOther
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute, we construed the phrase “calculating a map”4 in claims 1–3, 12, 14, 20–22, and 28 to mean “performing calculations to produce a map.” Dec. to Inst. 6–7. With respect to the phrase “maximum possible crop yield” in claims 1, 14, and 20, we declined to adopt Petitioner’s proposed meaning of that term as “yield goal” and instead applied the ordinary and customary meaning of the claim language. Id. at 7–8. We further determined that no other claim term required express construction. Id. at 8. Following institution, neither party challenged those constructions or proposed other terms for construction. On the record now before us, we do not discern reason to deviate from the constructions set forth in the Decision to Institute.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“a “conventional method” that is used for calculating nitrogen needs for a field. Ex. 1001, 1:39–40. Hauwiller’s system is open to a variety of recommendation equations, as Patent Owner’s declarant agrees. See Ex. 1005, 8:36–48, 9:18–21, 9:34–38, 13:30–35, 13:39–45; Ex. 1020, 8:11–16. This openness supports the obviousness of employing within Hauwiller’s system a conventional equation (or certain aspects of a conventional equation) such as the one set forth in the Background of the ’620 patent. Furthermore, while the conventional equation includes several variables, a basic teaching of the equation is that in calculating the fertilizer recommendation, the amount of nitrogen already present should be subtracted from the nitrogen needed to realize the yield goal. See Ex. 1001, 1:39–50. Dr. Johannsen’s testimony that “subtraction of existing nutrients from the nutrient amount was a conventional thing to do particularly because it helps reduce leaching due to over fertilization” is consistent with this understanding of the conventional equation. See Ex. 1008 ¶ 71. We also recognize that the ’620 patent describes the equation as being a conventional approach for calculating nitrogen needs “for a field” rather than for a specific site within the field. Ex. 1001, 1:39–40. But Hauwiller recognizes that “[d]esired yield potential varies depending upon the soil characteristics by location” and, for that reason, describes the desirability of constructing “a yield goal map for creating an application map based upon site specific yield goals.” Ex. 1005, 9:32–41 (emphasis added). Thus, Hauwiller teaches the advantages and desirability of a site-specific approach. We agree with Petitioner that the “subtracting” step would have been accomplished by applying the teachings of the equation in the Background of the ’620 patent to the site-specific approach of Hauwiller. The evidence supports Petitioner’s contentions summarized above, and we agree with Petitioner that all of the features of claims 1 and 20 are disclosed in Hauwiller and the prior art described in the Background of the ’620 patent, and that there is adequate reason to combine the teachings of the prior art. We have considered Patent Owner’s arguments to the contrary, but we do not find them persuasive for the reasons discussed below.” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We have considered Patent Owner’s and Dr. Heiniger’s opposing views. We observe that Dr. Heiniger does not explain adequately the basis of his opinion that, despite the teachings of the prior art, a person of ordinary skill in the art would have “thought that yield data from previous years would not work for that purpose” because a skilled artisan would have viewed yield data as “fundamentally different” from a measure of biomass. See Ex. 2033 ¶ 167. We also do not discern that either Patent Owner or Dr. Heiniger adequately considers that, in view of the teachings of the prior art, one of ordinary skill in the art would have known that “leaf area index” is a known measure of biomass. See Ex. 1001, 1:63–65. In that regard, they do not explain why a skilled artisan would not understand readily that leaf area index constitutes the type of field history data and previous crop information that Hauwiller contemplates as useful in developing a map for a given field. Accordingly, on the record before us, we conclude that Petition has shown where all the features of claims 2 and 21 are found in the prior art, and that there is articulated reasoning why a person of ordinary skill in the art would have combined the teachings of Hauwiller and the Background of the ’620 patent. Patent Owner’s and Dr. Heiniger’s general views to the contrary, in our view, do not account appropriately for how a skilled artisan would have understood the teachings of the prior art.” slip op. at 23
Patent outcomesUS 6,889,620 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,889,620 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCRehearing deniedPTAB · Jul 13, 2016 · IPR2014-01555 · APJ James T Moore · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1, 2, 7–12, 14–17, 19, 21–24, 31–42, and 44 unpatentable, and corrected the judgment to include claim 44.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Rehearing Requests A rehearing request for a final decision is governed by 37 CFR § 42.71 (d), which provides that a party dissatisfied with a decision must specifically identify all matters believed to have been misapprehended or overlooked, and the place where each matter was previously addressed.5 We therefore consider Patent Owner’s request for rehearing to determine whether we misapprehended or overlooked a matter, and whether it makes a difference to our determination in the Final Written Decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In our final written decision we observed that “‘intimately and entirely coated’ mean[s] exactly what it says. In other words, it means the embodiment shown in Figs. 1a through 1c of the ʼ558 patent drawings and associated discussion in the written description portion of the specification.” Paper 50, 23. In doing so, we relied principally on the intrinsic evidence of record in the specification. On rehearing, Patent Owner asserts that the claim interpretation used by the Board is not part of the record and was not presented by Petitioner. Reh’g Req. 3. We are not persuaded by this argument. First, the Patent Owner itself advocated in the Patent Owner’s response that Kinoshita did not contain oxidation catalyst species “intimately and entirely coated with an absorber.” Paper 29, 19–20. Second, the Board is not bound by the Petitioner and Patent Owner’s interpretation of the claim language, which may have inherent favoring of a particular interpretation for strategic reasons, as discussed in the final written decision. See Paper 50, 23. Patent Owner states that it has had no opportunity to address the claim construction and that it is fundamentally unfair and unreasonable that Patent Owner has not had a chance to address this claim construction. Reh’g Req. 2–3. We take such a statement seriously. However, we are unable to discern how the Board overlooked or misapprehended any fact or argument, let alone how the claim interpretation adversely affected the outcome of this proceeding for the Patent Owner.” slip op. at 8
- BurdenDecided for petitioner
“loading, Hoekstra has insufficient catalyst to form a continuous layer, and there is no evidence the method of Hoekstra results in all platinum being entirely covered. Id. at 11–12. As we have not interpreted claim 1 as requiring a continuous catalyst layer, we are unpersuaded by the first assertion. As to the second, we relied upon evidence from Hoekstra example 1, Dr. Crocker, and Dr. Farrauto. For example, Dr. Farrauto testified that barium oxide completely coated the platinum group metal. Ex. 1003A. More specifically, Dr. Farrauto testified: 39. Hoekstra also discloses that prior to calcining the platinum group metal-impregnated carrier material, the composite is further impregnated with a compound of an alkaline earth metal in solution with a reducing agent. Ex. 1005 at col. 3, ln. 51-55. The reducing agent prevents the leaching of the platinum group metal component from the carrier into the alkaline earth metal solution. See Ex. 1005 at col. 1, ln. 37-59; col. 3, ln. 55-59; col. 5, ln. 4-8. 40. Because the platinum group metal component does not leach from the carrier, the alkaline earth metal compound will be coated over the platinum group metal component. Ex. 1003, 11–12. We also specifically noted that Hoekstra describes this prevention of leaching. Hoekstra explicitly states in describing the result of process steps described in Example 1 that “[t]his example demonstrates that the inclusion of a reducing agent, e.g., hydrazine hydrate, obviates leaching of the platinum group metal component from the carrier material during the second impregnation step [i.e., adding a barium oxide layer].” Ex. 1005, col. 5:4–8 (italics added).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“evidence that claims 1, 7, 8, 12, 14, 21, 22, 32–35, and 38–42 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b) and claims 9–11 and 23 of the ʼ558 patent are unpatentable under 35 U.S.C. § 103(a). (Ground 2, Hoekstra). Paper 50, 78. We also determined that Petitioner established by a preponderance of the evidence that claims 33–40, 42, and 44 of the ʼ558 patent are anticipated by Kinoshita. (Ground 3, Kinoshita). Id. at 79. We additionally determined that Petitioner established by a preponderance of the evidence that claims 1, 2, 7–10, 14, 15, 17, 19, 24, 31, 33–37, 39, and 40 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b). (Ground 4, Inui). Id. We finally determined that Petitioner established that claims 1, 7, 8, 14–17, 19, and 31 of the ʼ558 patent are unpatentable under 35 U.S.C. § 102(b) and that claims 21–23 of the ʼ558 patent are unpatentable under 35 U.S.C. § 103(a). (Ground 5, Stiles). Id.” slip op. at 4
Claim construction§ 102 anticipationPatents in suitUS 5,451,558 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentablePTAB · Jan 22, 2016 · IPR2014-01556 · APJ Fred E Mckelvey · IPR · Final written decision
Claims 1–4, 6–7, and 9–16 are unpatentable under § 103(a) over the combined prior art; the anticipation grounds do not establish unpatentability.
RulingsFinal written decision- Strike new argumentNew argument disregardedDecided for patent owner
“(a) A party may request oral argument on an issue raised in a paper at a time set by the Board. The Trial Practice Guidelines advise as follows: A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (col. 2) (Aug. 14, 2012) (italics added). The rationale in support of the Rule and Guideline is fundamental fairness to an opponent. 37 C.F.R. § 42.1(b) (Part 42 “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”) It is not just to an opponent for a party to raise an argument not based on the Petition, Opposition, or Reply, or to discuss evidence not in the record. Why? There is no meaningful opportunity for the opponent to rebut the argument or address the evidence. Likewise, the Board is at a disadvantage because judges do not prepare for oral argument based on arguments and evidence not present in the record. To the extent that arguments and discussions took place at oral argument in this case contrary to the principles set out above, those arguments and discussions have not been considered in rendering a decision on the merits.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Petitioner’s “comprising” position. While the regeneration gas can “comprise” elements not set out in parts [A1] and [A2] of claim 1, as reproduced above, part [A2] is restricted to an inert carrier gas. According to the ʼ911 patent, the regeneration gas is substantially oxygen free, albeit the regeneration gas can contain up to one percent oxygen. Ex. 1001A, col. 3:27–29. A regeneration gas containing more than one percent oxygen would cease to be a regeneration gas within the meaning of claim 1. Any reasonable interpretation of “regeneration gas,” consistent with the Specification, would require that the regeneration gas have no more than up to one percent oxygen. In reaching our conclusion, we have not added a limitation from the Specification into claim 1 of the ʼ911 patent; rather, we interpret the meanings of “regeneration gas” and “inert carrier gas” as set out in the claim.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“to doubt that the NOx released by the [Hirota] absorbent . . . [would] be reduced . . . by . . . [the Hirota] process” “provid[ed] there is sufficient reductant present.” Ex. 1056, page 89:18–21. However, Dr. Crocker’s cross-examination testimony does not establish that the Hirota process anticipates the process of claim 1 of the ʼ911 patent. The issue here is not whether Hirota is operative; rather, it is whether Hirota operates with “an inert carrier gas” within the meaning of claim 1 of the ʼ911 patent. During oral argument, Petitioner called attention to the wording of Hirota, with emphasis on the fact Hirota does not use the word “shall” or “must” but rather uses the word “is.” Transcript of Oral Argument, Paper 56, page 4:7 through page 5:15. According to Petitioner, under a broadest reasonable interpretation standard, the regeneration gas of claim 1 should be interpreted broadly. Id. at page 5:12–15. But, Petitioner previously had agreed that it makes no “difference what the claim construction is here,” (id. at page 3:20–23). We view the “shall,” “must,” and “is” discussion as a formalistic wordsmithing side-show given that the meaning of the regeneration gas is clear from its description in the Specification. We find that Hirota does not describe the subject matter of claim 1 of the ʼ911 patent. Accordingly, Petitioner has failed to prove that Hirota anticipates claim 1 of the ʼ911 patent.” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Likewise, Land justifies a holding that joint inventors Guth and Campbell (Ex. 1004A) are separate entities vis-à-vis joint inventors of the Guth, Campbell, and Wagner ʼ911 patent (Ex. 1001A). Patent Owner maintains that Guth ʼ758 and Campbell’s “work may not be used against [them] unless there is a time bar under 35 U.S.C. 102(b).” Paper 28, page 19 (quoting MPEP § 2136.05 (7th ed. July 1998)). However, Guth and Campbell’s work is not being used against them; it is being used against the inventive entity of the ʼ911 patent: Guth, Campbell, and Wagner. At oral argument, counsel for Patent Owner stated “[s]o what I’m saying is I agree that Land probably applies.” Transcript of Oral Argument, Paper 56, page 14:19–20. On the record before us, there is insufficient evidence that Wagner contributed to, or is a joint inventor of, the subject matter described and/or claimed in the ʼ911 patent.” slip op. at 39
Patent outcomesUS 5,953,911 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 5,953,911 - Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentablePTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision
Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner
“During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17
- Skill levelSkill level board ownDecided for petitioner
“Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23
Patent outcomesUS 8,606,658 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 8,606,658 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9
- BurdenNot shown unpatentable
“those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,940,089
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.