- PTAB · Jan 6, 2023 · IPR2022-01203 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Patent Owner has not persuaded us that we should exercise our discretion to deny institution. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’989 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date.”). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,14 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“numerical solubility limit into the claims, noting that the ’989 patent expressly defines “non-ionic side groups capable of imparting solubility in water” as simply “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solution with no visible particulates.” Prelim. Reply 1 (citing Ex. 1001, 54:9–13). Petitioner notes that this definition contains no numerical limit, and that it is followed by a statement that in some embodiments, the R group is capable of imparting solubility in excess of 10 mg/mL. Id. at 2 (citing Ex. 1001, 54:13–16). Petitioner contends that reading a limitation from “some embodiments” into the claims would be “one of the cardinal sins of patent law.” Id. (citing Phillips, 415 F.3d at 1320; Polaris Innovations Ltd. v. Brent, 48 F.4th 1365, 1375–76 (Fed. Cir. 2022)). Petitioner also directs our attention to related patents that expressly claim a solubility in excess of 10 mg/mL, arguing that when Patent Owner sought to claim such polymers, it knew how to do so. Id. (citing Ex. 1005, 218:11–12; Ex. 1006, 239:43–45, 252:51–52, 254:39–40, 262:56–57, 269:31–35).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“proposed claim construction on solubility above, which we declined to do on the present record. For this reason, we find them unpersuasive. In addition, we note that Xue expressly discloses that its glycopolymers utilizing PEG-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstract, 2289–90. Petitioner sufficiently sets forth why a person of ordinary skill in the art would have considered the PEG side chains of Xue to impart solubility in water, which is all we have construed the claims to require.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,458,989 - PTAB · Sep 14, 2022 · IPR2022-00673 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–18 under § 103 based on WO684 and NO366, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“prior situations, how the New Hampshire District Court would rule should a stay be requested in the New Hampshire litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“A judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties. We decline to infer, based on actions taken in different cases with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.”). We view this factor as neutral because neither of the parties in the New Hampshire litigation has requested a stay thus far. See id. at 12 (determining that Factor 1 is neutral when neither party has requested a stay and the issue has not been ruled on by the district court).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that both WO684 and NO366 were at least considered by the Examiner, even if the Examiner never discussed the references or relied on them in any manner. See Ex. 1001, code (56) (listing both WO684 and NO366 among the references cited). Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art references.” slip op. at 16
- Skill levelOther
“person having ordinary skill in the art “has a Master’s degree in Mechanical Engineering or Robotics and at least three to four years of experience working as an engineer in the field of AS/RS [Automated Storage and Retrieval Systems].” Pet. 26 (citing Ex. 1003 ¶ 62). Petitioner argues in the alternative that one of ordinary skill in the art “has at least a Bachelor’s degree in Mechanical Engineering, and at least four to five years of experience working as an engineer in the field of AS/RS.” Id. (citing Ex. 1003 ¶ 63). Patent Owner argues that “the level of ordinary skill in the art is ‘at least a bachelor’s degree in mechanical engineering, and at least two to three years’ experience working in the field of the design of robotic vehicles for material handling system[s].” Prelim. Resp. 29 (citing Ex. 2001 ¶ 50). Patent Owner contends that the parties agreed that this level of skill applies to WO684 in a related ITC proceeding, and should be adopted here. Id. at 29–30 (citing Ex. 2007, 19–20). We note that the parties’ respective proposals overlap considerably, with Petitioner’s alternative proposal nearly identical to Patent Owner’s proposal. We need not resolve which proposal most closely aligns with the level of ordinary skill in the art here, however, because even if we adopt Patent Owner’s proposal we would come to the same ultimate conclusion that Petitioner satisfies its burden of showing a reasonable likelihood of establishing the unpatentability of any of the challenged claims.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any constructions for any claim terms, and “Patent Owner also believes no claim term requires construction and submits that the Petition is defective under any reasonable claim construction.” Prelim. Resp. 30. Based on our review of the current record, we need not formally construe any claim terms to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,961,051 - Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentablePTAB · Apr 6, 2022 · IPR2020-01533 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over the combined prior art, considered with the knowledge of a person of ordinary skill in the art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither Patent Owner nor Dr. Jaczynski disputes Petitioner’s definition of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For purposes of this proceeding, I will accept [Petitioner’s] definition of a [person of ordinary skill in the art].”). Upon review of the ’046 patent and the prior art of record, we find Petitioner’s uncontested definition reasonable and supported by the evidence of record. Accordingly, we adopt this definition of one of ordinary skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the parties’ arguments and supporting evidence, we determine that no terms of the ’046 patent require construction in order to resolve the disputes in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral estoppel applies “[i]f the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” Id. Petitioner points to no prior decision of the Board where the issue of whether it would have been obvious to denature a krill product and then store it for 1 to 36 months before extraction was at issue. Moreover, to demonstrate that the added limitation would have been obvious, Petitioner relies heavily on the disclosures of Budziński, which was not at issue or analyzed in the prior proceedings. Pet. 39. Accordingly, Petitioner has not demonstrated that collateral estoppel applies to any issue in this proceeding. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Breivik II’s disclosures would have understood that extraction of fresh krill is preferable over stored krill products, and that extraction should be performed on the fishing vessel as opposed to on land. PO Resp. 53. On this record, we agree with Patent Owner that Breivik II teaches or suggests a successful method of immediately processing and extracting fresh caught krill on-board a fishing vessel. We also agree that Breivik II suggests that its disclosed method may have advantages over conventional krill oil extraction processes. The disclosed advantages to immediately denaturing and extracting krill oil discussed in Breivik II, however, are only “expected,” not definitive, and we are directed to no disclosure in Breivik II to suggest that extraction from a stored, denatured krill meal was unlikely to result in a useful krill oil. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (noting that the case law “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (explaining that a reference teaches away when it suggest that a particular course of action “is unlikely to be productive of the result sought by the applicant,” and that “[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product of the same use”). Moreover, although, as noted in Breivik II, oxidation and enzymatic hydrolysis are of particular concern during krill processing procedures, Petitioner and Dr. Tallon persuasively demonstrate that the denatured and “stable” krill meal of Budziński was not subject to significant enzymatic hydrolysis or deterioration of krill lipid antioxidants, such as astaxanthin. Ex. 1006 ¶¶ 172, 421, 434; Ex. 1086 ¶¶ 50–51; see also Ex. 1010, 822–823 (Fricke disclosing storing denatured krill products for a period of time before extraction with a polar solvent). As such, we are not persuaded that Breivik II would have taught away from, or otherwise discouraged, one of ordinary skill in the art from extracting krill oil from a denatured and stable krill meal that has been stored from between 1 and 36 months. Patent Owner further argues that, consistent with Breivik II’s disclosures, Budziński instructs that krill should be “processed as soon as possible after capture” and that “[t]he only way to meet this requirement is to install processing facilities on-board the vessel.” PO Resp. 51 (citing Ex. 1008, 25). The required processing of Budziński, however, is to denature the problematic krill enzymes, not to extract krill oil. Ex. 1008, 25. And, once the krill products are denatured, Petitioner persuasively demonstrates that krill oil extraction could be successfully performed either on-board a vessel or on land after a storage period of up to 13 months. In view of the foregoing, we find that Breivik II and Budziński do not teach away from, or counsel against, extracting krill oil from a krill meal that had been denatured and stored for 1 to 36 months.” slip op. at 26
Patent outcomesUS 9,816,046 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,816,046 - PTAB · Feb 18, 2022 · IPR2021-01369 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1, 11, and 13 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the Challenged Claims of the ’251 patent. Accordingly, we institute an inter partes review with respect to all Challenged Claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The following two-part framework is used to determine whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition does not provide proposed constructions for any terms of the ’251 patent. Pet. 11. And although Patent Owner disputes Petitioner’s assertions regarding certain claim terms, it does not contend that any terms of the ’251 require express construction for purposes of this Decision. See, e.g., Prelim. Resp. 23–24, 35. Upon review of the parties’ arguments and supporting evidence, we find that no terms of the ’251 patent require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,492,251 - PTAB · Mar 4, 2021 · CBM2018-00040 · APJ Christopher G Paulraj · CBM · Rehearing
The Board denied Petitioner’s second rehearing request and left in place its denial of institution because the patent’s CBM review eligibility was not subject to judicial review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our denial of institution in this proceeding in light of the Federal Circuit’s decision in SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019). Paper 19. We also authorized Patent Owner to file an opposition to Petitioner’s second request for rehearing. Paper 20. Subsequently, the Supreme Court granted a petition for certiorari, vacated the Federal Circuit’s first opinion in the SIPCO case, and remanded the case “for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP,” 140 S. Ct. 1367 (2020). On remand, the Federal Circuit determined that the issue of whether a patent qualifies for CBM review is not subject to judicial review. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 870 (Fed. Cir. 2020). Accordingly, because the circumstances that warranted further reconsideration of our denial of institution no longer hold true, we hereby decline to consider the second request for rehearing. For the foregoing reasons, Petitioner’s second request for rehearing is denied. Our original decision to deny institution based on lack of CBM review eligibility therefore stands.” slip op. at 2
NonePatents in suitUS 6,758,370 - Unified Patents Inc. v. KCG Technologies LLCAll claims unpatentablePTAB · Feb 10, 2021 · IPR2019-01536 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–13 are unpatentable as obvious; the revised motion to amend is denied because proposed substitute claims 14–26 are unpatentable as obvious or indefinite.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“We agree with Petitioner. Proposed substitute claim 24 recites “the handheld device” without antecedent basis. This lack of antecedent basis renders proposed substitute claim 24 indefinite, as we noted in our Preliminary Guidance. Pet. Opp. to RMTA 25; Prelim. Guidance 8 (“Proposed substitute claim 24 also recites ‘the handheld device’ and also suffers from the lack of antecedent basis). Despite having the opportunity to correct its error and amend proposed substitute dependent claim 24 when independent claim 14 was amended to remove the recitation of “a handheld device,” Patent Owner did not do so in its Contingent Revised Motion to Amend. RMTA 31. Proposed substitute claim 24 is indefinite because the claim “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021)13; see MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020). This is because “the handheld device” is only recited in proposed substitute claim 24, and the proposed substitute claim fails to inform one skilled in the art the scope of invention related to synchronizing “data on the handheld device” “in the virtual smart phone.” Because proposed substitute claims 25 and 26 depend from proposed substitute claim 24, we similarly agree with Petitioner that claims 25 and 26 also are indefinite for lacking an antecedent basis for the term “handheld device.” Pet. Opp. to RMTA 25. Accordingly, we determine Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 24–26 are unpatentable under 35 U.S.C. § 112 as indefinite.” slip op. at 40
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). When the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). A claim preamble also is limiting if the preamble is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc., 182 F.3d at 1305. We disagree with Patent Owner. Specifically, we do not agree that limitations in the body of the claims require the preamble to serve as an antecedent basis nor do they derive essential structure from the preamble. Rather, all of the elements recited in the body of claim 1 comprise a “virtual smart phone.” That is, we do not discern, and Patent Owner fails to persuasively point us to, any structure imparted by the preamble’s recitation of a “virtual smart phone.” See Pet. Reply 1–2. We similarly do not agree that the without the term “virtual smart phone” there would be no understanding of the “emulating” or “handheld device” limitations. Rather, the recited “software application executing on the processor” limitation provides the structure and meaning for the “emulating” of the “handheld device” features. Furthermore, we agree with the Petitioner that there is no evidence in the record that the prosecution history requires that the preamble is limiting, and the claims were distinguished during prosecution based on the recitation of a “virtual” smart phone. Id. at 2–3. Accordingly, we do not agree with Patent Owner that the preamble is limiting. slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“on the process to . . . emulate features of a handheld device.” Ex. 1001, 12:58–60 (emphasis added). Patent Owner argues that the term “‘emulate’ has a meaning in the art that is common and understood to mean ‘to imitate.’” PO Resp. 18. Patent Owner provides a dictionary definition to support its contention. Ex. 2004 (defining “emulate” as “to imitate in an effort to equal or surpass”). Patent Owner contends the use of “emulate” in claim 1 comports with its commonly understood meaning as “to imitate,” as does the use of the term “emulate” in the written description. Pet. 18–20 (citing Ex. 1001, 1:66–2:3, 2:6–3:5, 12:54–13:2 (claim 1)). Petitioner argues that the term “emulate” should be given its plain and ordinary meaning and does not contest Patent Owner’s construction of the term “emulate” as “to imitate.” Pet. 6–7; Pet. Reply 7. Petitioner, however, contests Patent Owner’s application of that construction to the asserted prior art. Pet. Reply 4–7 (citing Ex. 1034 ¶¶ 24–26). Petitioner specifically argues that Patent Owner implies that “(1) the imitation must be an exact duplicate in display and manner of input . . . or (2) the imitation relates only to the display and touch screen aspects.” Pet. Reply 4–5. In support of its position that Patent Owner’s interpretation of “to imitate” improperly narrows the meaning of “emulate,” Petitioner contends the written description discloses “less than full replication as emulation” and “controlling the handheld device th[r]ough control of a projected image using a variety of control input mechanisms provides emulation.” Pet. Reply 5–6 (citing Ex. 1001, 2:2–5, 3:57–61, 4:63–66, 6:24–42). Petitioner also notes that the dictionary definition Patent Owner proffered indicates that an exact duplication is not required. Pet. Reply 7 (“The complete definition of emulate [as] ‘to imitate in an effort to equal or surpass.’ Ex. 1004, 3”). We conclude that a preponderance of evidence supports the construction of the term “emulate” to mean “to imitate,” without any further restriction such as exact duplication or only display or touch screen aspects. Accordingly, we construe the term “emulate” as “to imitate.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at or before the priority date of the ’955 patent “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in the field of automotive information systems.” Pet. 6 (citing Ex. 1002 ¶¶ 38–39); Ex. 1034 ¶ 14 (Petitioner’s expert reiterating the same level of ordinary skill in the art). Patent Owner does not propose an ordinary level of skill in the art. We agree with and adopt the level of ordinary skill in the art as articulated by Petitioner.” slip op. at 10
Patent outcomesUS 9,671,955 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,671,955 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - PTAB · Oct 14, 2020 · IPR2020-00131 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Medtronic’s rehearing request and left in place its denial of institution for claims 25-39, finding no overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s 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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Other
“ANALYSIS The Petition in IPR2020-00131 was the fourth filed by Petitioner against the ’380 patent and is identified by Petitioner as “Petition 2B.” Paper 2, 2. The other three petitions are identified by Petitioner as “Petition 1A,” “Petition 1B,” and “Petition 2A” and assigned case numbers IPR2019- 00128, IPR2019-00129, and IPR2019-00130, respectively. Id. In its papers, Petitioner asserted that the fourth petition challenging claims of the ’380 patent was justified because Petitions 1A and 1B rely on a primary reference to which Patent Owner has “raised a priority date issue” and Petition 2B, in contrast to Petition 2A, addresses claims that are in means-plus-function format. Id. at 2–4 (quoting Microsoft Corp. v. IPA Techs., Inc., IPR2019- 00810, Paper 12 at 15 (PTAB Oct. 16, 2019)).” slip op. at 2
Discretionary denial - Pharmacosmos A/S v. American Regent, Inc.Institution deniedPTAB · Aug 14, 2020 · PGR2020-00009 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution of PGR challenging claims 1–22, finding substantially the same art and arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“instituted “unless . . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” But even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, institution of review remains discretionary. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). In exercising that discretion, we are guided by the statutory requirement, in promulgating regulations for post-grant review, to consider the effect of any regulations on “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings,” 35 U.S.C. § 326(b), as well as the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). Office guidance, issued June 5, 2018, also explains that the Board “will evaluate the challenges and determine whether § 325(d) is sufficiently” slip op. at 28
Discretionary denialPatents in suitUS 10,478,450 - PTAB · Jun 12, 2020 · IPR2019-01544 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because Petitioner did not show abuse of discretion in the findings on analogous art or motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is analogous prior art (1) if it is from the same field of endeavor regardless of the problem addressed, or (2) if it is not within the field of the inventor’s endeavor, it is reasonably pertinent to the particular problem with which the inventor is involved. Id. Petitioner argues that we erred in applying both prongs of the Bigio test. Req. Reh’g 1–7.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 9,017,488
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.