- Daicel Corporation v. Celanese International CorporationNo claims unpatentablePTAB · Jun 23, 2016 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Final written decision
Claims 1–4, 6–11, and 13 were not held unpatentable under § 103 because the evidence did not show the required amount of dimethyl ether in the second overhead.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Based on our analysis of the intrinsic and extrinsic evidence, we agree with Patent Owner that a person of ordinary skill in the art would understand the ’507 patent to speak in terms of effects, not molecules. See PO Resp. 50–51; Tr. 41:8–16. We, therefore, construe the recitation “distilling at least a portion of [a] first overhead [comprising methyl iodide, water and at least one PRC] to produce a second overhead stream comprising . . . dimethyl ether” in step (a) of claim 1 as requiring the presence of dimethyl ether in the second overhead stream in an amount that one of ordinary skill in the art would recognize as being more than trace or insubstantial. Such amount would be, for example, more than the amount produced in a conventional, prior art, low water carbonylation process that used the same initial reactor contents and conditions, and the same processing equipment. We further interpret this language as requiring the presence of DME in the second overhead stream in an amount sufficient to cause (1) a reduction in the solubility of methyl iodide in water during the extraction of the second overhead (claim 1, step (b)) and (2) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate (claim 1, step (c)), which increase in recoverable methyl iodide would be recognized as more than insubstantial by the ordinary artisan.” slip op. at 43
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner substantially agrees with Mr. Jones’s opinion, stating: “a person of ordinary skill in the art may be a qualified chemist or chemical engineer, however separations experience, an understanding of industrial-scale processes, and experience in the production of acetic acid, acetic anhydride, or related chemicals is required.” PO Resp. 14. Dr. Porcelli, testified that he “generally agree[s]” with Mr. Jones’s opinion as to the level of ordinary skill in the art” (Ex. 2029 ¶ 15; see also Ex. 1065, 65:9–66:5). During cross-examination, however, Dr. Porcelli testified that one of ordinary skill in the art would require, more specifically, an understanding of the low water acetic process and its implementation on an industrial scale. See, e.g., Ex. 1065, 126:18–127:1. Mr. Jones and Dr. Porcelli agree the description in the ’507 patent implies that the inventive process is a low water process. Ex. 1039 ¶ 50; Ex. 2029 ¶ 26. As discussed in Section VI. B., below, these experts further agree that there are differences in the reactants and reaction products produced in high and low water processes. We find both Mr. Jones and Dr. Porcelli are qualified to give an opinion as to the level of ordinary skill in the art. Accordingly, for purposes of this proceeding we adopt Mr. Jones’s definition of the level of ordinary skill in the art, and add that the ordinary artisan also would have had a specific understanding of the low water carbonylation process for production of acetic acid and its implementation on an industrial scale.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“at least one PRC] to produce a second overhead stream comprising . . . dimethyl ether” as requiring the presence of dimethyl ether in the second overhead stream in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the second overhead and (b) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate. Neither Mr. Miura nor Mr. Jones testified that dimethyl ether would have been present in the second distillation overhead in the ’095 patent Example in an amount that is (1) more than trace or insubstantial, and (2) sufficient to cause (a) a reduction in the solubility of methyl iodide in water during extraction of the second overhead and (b) an increase in the amount of methyl iodide recoverable during the extraction of the first raffinate. Mr. Miura testified that 1.2 wt% DME was present in the second overhead in Experiment 1. Ex. 1005 ¶ 13, Table 1. Mr. Jones testified that he would expect the amount of DME in the second overhead in the ’095 patent process to be about three times the amount of DME in the overhead in Miura Experiment 1 (Ex. 2040, 289:10––298:7), because Mr. Miura’s experiment was carried out under conditions less favorable to DME formation as compared to the conditions in the ’095 patent Example (see Ex. 1060 ¶¶ 133, 139). A preponderance of the evidence, however, does not support a finding that DME was present, if at all, in more than a trace quantity/insubstantial amount in the second overhead of the ’095 patent Example, for the following reasons:” slip op. at 57
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We are not persuaded that Mr. Jones’s calculations provide a reliable method of determining the amount of DME present in a methanol carbonylation process. Mr. Miura and Dr. Porcelli agreed that it is extremely difficult to anticipate the presence or amount of a component such as DME in a methanol carbonylation system such as the one described in the ’095 patent. See Ex. 1046, 281:14–22; Ex. 2029 ¶ 112. Dr. Porcelli testified that Mr. Jones’s estimates of DME content in the ’095 patent Example were based on numerous assumptions that rendered his estimations of reactor and distillation overhead DME concentrations meaningless. See Ex. 2029 ¶¶ 137, 140, 151. Dr. Porcelli testified, for example, that it was “improper and incorrect” for Mr. Jones “to fail to account for DME lost with the vent stream in the reactor, especially because of the high volatility of DME.” Id. ¶ 148. Mr. Miura’s measured amount of DME present in the first overhead in Experiment 1 was less than half the amount Mr. Jones calculated would be present, supporting Dr. Porcelli’s testimony that the loss of DME via the vents would have had a marked impact on the actual amount of DME sent to distillation column 40 (from which the second overhead stream is produced) in the ’095 patent Example. See Ex. 1060 ¶ 153 (“(103 ppm (calc.) vs. 48 ppm (actual)) is likely to due to loss of DME with the vent gas from the splitter condenser, due to the very low boiling point of DME”); see also Ex. 1039 ¶ 97; Ex. 1060 ¶ 121 (wherein Mr. Jones agreed that the loss of DME from the vent stream in the separator (or decanter) after splitter column 14 in the ’095 patent process would be substantial). Dr. Porcelli testified that he believed removal of DME by rapid carbonylation would have had a significant effect on the presence of DME in the ’095 patent Example and that this irreversible reaction should have been considered by Mr. Jones in his calculations. Ex. 2029 ¶¶ 130–131. Mr. Jones conceded “some DME will be carbonylated in the reactor” (Ex. 1060 ¶ 45), and that the carbonylation of DME to make acetic acid under low water conditions is an irreversible reaction (Ex. 2026, 227:19–228:1). See also Ex. 1060 ¶ 27 (arguing Exhibits 2032, 2034 evidence DME formation in a batch reactor during methanol carbonylation, but admitting that as the water and methyl acetate start to diminish, DME concentration begins to drop and DME is eventually carbonylated into either acetic acid or acetic anhydride). Mr. Jones disagreed with Dr. Porcelli’s testimony that “carbonylation of DME is . . . known to have a fast reaction rate” and “would be consumed by carbonylation faster than it would be formed by methanol dehydration, especially under low water conditions” (Ex. 2029 ¶ 130). Ex. 1060 ¶ 44. Mr. Jones provided testimony explaining why he believes “the carbonylation of DME is not particularly fast.” Id.; see id. ¶¶ 45–48. Mr. Jones relied on a textbook by Gauthier-Lafaye (Ex. 1062), published in 1987, as evidence that the carbonylation of DME proceeds more slowly than the carbonylation of methyl acetate. Ex. 1060 ¶ 47. Mr. Jones testified that because the reaction liquid in the ’095 patent Example is reported to contain 1.6 wt% methyl acetate, and the carbonylation rate of DME is even slower than that of methyl acetate, then “it stands to reason that the carbonylation rate of DME is not going to be so fast as to ‘immediately’ react away any DME that is formed via the methanol dehydration equilibrium reaction.” Id. ¶ 48. Mr. Jones further testified that consideration of this competing side reaction was “irrelevant to calculating equilibrium concentration” of DME in the reactor in the ’095 patent Example. Id. ¶ 51. The disclosure in Gauthier-Lafaye relied upon by Mr. Jones relates to the carbonylation of methyl acetate into acetic anhydride. Ex. 1062, 9. The ’095 patent, however, relates to production of acetic acid by a carbonylation process, wherein, according to Akinori, “intermediates [e.g. DME and methyl acetate] ultimately change into acetic acid” (Ex. 1013, 8, equations (2), (3)). Ex. 2029 ¶ 130; see Paper 79, 8–9 (Observation #G.1). In other words, the evidence relied on by Mr. Jones relates to a different reaction system and does not support his testimony that the carbonylation of DME in the ’095 patent reaction system was irrelevant to his calculation of equilibrium DME concentration. Rather we credit Dr. Porcelli’s testimony that removal of DME by rapid carbonylation would have had an effect on the presence, or at least the quantity, of DME in the ’095 patent Example, and that this factor should have been taken into consideration by Mr. Jones in his calculations. See Ex. 2029 ¶ 130.” slip op. at 59
Patent outcomesUS 8,076,507 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,076,507 - Monosol RX, LLC v. Arius Two, Inc.No claims unpatentablePTAB · Aug 5, 2015 · IPR2014-00376 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–7 were not shown unpatentable under §§ 102 or 103 because the cited references did not teach or suggest the required multilayer bioerodable device.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Id. at 11:45–47 (emphasis added). In all, the specification makes evident that the patentee considered the invention to require a multilayer device, at least having one adhesive layer and one backing layer.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Patentability of Claims 1–7 Monosol’s Petition does not attempt to set forth evidence that the prior art references upon which we instituted trial disclose multilayer bioerodable devices, presumably because Monosol contends that challenged claims 1–7 do not require more than one layer. We, however, have reviewed the art upon which we instituted trial, and determine that the references do not disclose a multilayer device as claimed.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentableNot shown unpatentable
“Indeed, Keith distinguishes its product from those in the prior art which have multiple layers. For example, Keith describes Zaffroni5 as teaching an adhesive buccal device having an impermeable backing layer and a drug-containing adhesive layer, similar to the layered structure of the ’019 patent. Id. at 1:39–45. Keith criticizes Zaffroni’s multilayer device, however, stating that it has “the drawback that it must be removed from the mouth after the drug has been dispensed.” Id. Based on the disclosures of Keith and Babaian, we cannot conclude that the references teach or suggest the multilayered bioerodable device of claims 1–7. Neither reference discloses a layered structure, and Keith’s discussion of the drawbacks of the layered devices of the prior art calls into question whether a skilled artisan would modify its single-layer device to incorporate multiple layers. Monosol has not met its burden to establish that claims 1–7 would have been obvious over the combined disclosures of Keith and Babaian.” slip op. at 14
- ExcludeOther
“Our determination that none the prior art references cited by Monosol teach or suggest a layered bioerodable device is the same whether or not we consider Monosol’s Exhibits 1018–1020 and 1023. We therefore dismiss as moot Arius’s Motion to Exclude these Exhibits.” slip op. at 15
Patent outcomesUS 7,579,019 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,579,019 - Standard Innovation Corporation v. Lelo, IncNo claims unpatentablePTAB · Apr 23, 2015 · IPR2014-00148 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–8, 10–12, 14–20, and 22–24 were not shown unpatentable because Petitioner failed to establish LILY as prior art in both obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted in part
“Federal Rule of Evidence 901 requires that the proponent produce evidence sufficient to support a finding that an item is what the proponent claims it is. When offering a printout of a webpage into evidence to prove the website’s contents, the proponent of the evidence must authenticate the information from the website itself, not merely the printout. See Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007), as amended (Nov. 20, 2007) (citing United States v. Jackson, 208 F.3d 633, 638 (7th Cir. 2000)). For this reason, the Board has stated that “[t]o authenticate printouts from a website, the party proffering the evidence must produce some statement or affidavit from someone with knowledge of the website . . . for example a web master or someone else with personal knowledge would be sufficient.” EMC Corp. v. Personalweb Techs., LLC, Case IPR2013-00084, slip op. 45 (PTAB May 15, 2014) (Paper 64) (quoting St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson, No. 8:06˗CV˗223˗T˗MSS, 2006 WL 1320242, at *2 (M.D. Fla. May 12, 2006)); see also Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007) (citing with approval the holding in In re Homestore.com, Inc. Sec. Litig., 347 F.Supp.2d 769, 782–83 (C.D. Cal. 2004), that printouts of webpages must be authenticated by a witness). Petitioner has not provided the testimony of any witness with personal knowledge of the information on the website or the associated printouts for any of the exhibits at issue.10 Exhibits 1015, 1016, and 1022 appear to be printouts of webpages retrieved from the Internet Archive’s “Wayback Machine,” which shows archived versions of other websites. Our reviewing court has held that printouts of webpages from the Wayback Machine were admissible under Federal Rule of Evidence 901(b)(1) where the proponent provided one of two types of supporting evidence: one, a witness that testified regarding how the Wayback Machine worked and how reliable its contents were, or two, a witness having personal knowledge that the printouts were authentic. U.S. v. Bansal, 663 F.3d 634, 667–68 (Fed. Cir. 2011). Here, in contrast to Bansal, Petitioner has not provided either form of supporting evidence. Consequently, Exhibits 1013–1022 are inadmissible under Federal Rule of Evidence 901 because Petitioner has not put forth sufficient evidence to support a finding that these exhibits are what Petitioner claims, or that any of these exhibits is self-authenticating under Federal Rule of Evidence 902.” slip op. at 10
- BurdenNot shown unpatentable
“upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify as a printed publication, a document must be generally available. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify as a printed publication, a document must be generally available. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“Sufficiency of Proof Given our determination above that Exhibit 1002 is inadmissible, Petitioner has not adequately demonstrated that LILY (Exhibit 1002) is a printed publication under either 35 U.S.C. §§ 102(a) or 102(b). Because both asserted grounds of unpatentability rely in part upon the assertion that LILY (Ex. 1002) is prior art, Petitioner has not demonstrated by a preponderance of the evidence that claims 1–20 and 22–27 of the ’178 patent are unpatentable.” slip op. at 24
Patent outcomesUS 7,749,178 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,749,178
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.