• Hologic, Inc. v. Enzo Life Sciences, Inc.Rehearing denied
  PTAB · Mar 13, 2017 · IPR2016-00822 · APJ Michael J Fitzpatrick · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution in place because it found sufficient evidence that the non-patent references were prior art for institution purposes.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Petitioner has made a sufficient showing that each of these references qualify as prior art printed publications. For example, Fish appears to be an article from the journal Arthritis and Rheumatism and bears a “March 1981” publication date on the cover of the volume as well as the cover page of the article. Ex. 1006, cover page and 534. Sato appears to be an article from the journal Radiation Research and bears a publication date of 1981. Ex. 1034, 646. Gilham appears to be an article published in a book titled Immobilized Biochemicals and Affinity Chromatography, which includes a copyright date of 1974 and an indication that it contains most of the papers presented in a “Symposium on Affinity Chromatography and Immobilized Biochemicals” held November 7–9, 1973. Ex. 1019, second page after cover (“Library of Congress Cataloging in Publication Data”). VPK appears to be an article from the journal Experimental Cell Research and is dated October 1982. Ex. 1008, cover page. Noyes appears to be an article from the journal Cell and is dated July 1975. Ex. 1007, 301. Finally, Ramachandran appears to be an article from the journal Biotechnology and Bioengineering and is dated 1975. Thus, each of these references bears a date prior to the earliest possible effective filing date for the challenged claims (i.e., Jan. 27, 1983). See Ex. 1001, 1:19; 35 U.S.C. § 120. Moreover, the references are either journal articles or excerpts from a book, and thus appear to have been publicly disseminated. Petitioner has made sufficient showing that these documents qualify as prior art printed publications. After institution, Patent Owner may, if it chooses to do so, continue to challenge the sufficiency or admissibility of the evidence. See 35 U.S.C. § 311(b); 37 C.F.R. § 42.64(b).” slip op. at 4

  • ExcludeNot reached

    “§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5

  § 102 anticipation
  Patents in suitUS 7,064,197
• Hologic, Inc. v. Enzo Life Sciences, Inc.Rehearing denied
  PTAB · Mar 10, 2017 · IPR2016-00820 · APJ Michael J Fitzpatrick · IPR · Rehearing

  The Board denied Enzo’s rehearing request, leaving institution on all petition grounds in place because it found no abuse of discretion in its treatment of the references as prior art for institution.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6 (emphasis added). Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,6 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a post-institution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter partes review are not due until April 24, 2017 (Paper 19), with any evidentiary ruling occurring thereafter. Typically, panels rule on motions to exclude in their final written decisions.” slip op. at 5

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Petitioner has made a sufficient showing that each of these references qualify as prior art printed publications. For example, Fish appears to be an article from the journal Arthritis and 1 Falk Fish, et al., “A Sensitive Solid Phase Microradioimmunoassay For Anti-Double Stranded DNA Antibodies,” Arthritis and Rheumatism, Vol. 24, No. 3, 534–43 (March 1981). 2 P. T. Gilham, “Immobilized Polynucleotides and Nucleic Acids,” Immobilized Biochemicals and Affinity Chromatography, 173–85 (1974). 3 A. C. Van Prooijen-Knegt, et al. “In Situ Hybridization of DNA Sequences in Human Metaphase Chromosomes Visualized by an Indirect Fluorescent Immunocytochemical Procedure,” Experimental Cell Research, Vol. 141, 397–407 (Oct. 1982). 4 Barbara E. Noyes, et al., “Nucleic Acid Hybridization Using DNA Covalently Coupled to Cellulose,” Cell, Vol. 5, 301–10 (July 1975). 5 K. B. Ramachandran, et al., “Effects of Immobilization of the Kinetics of Enzyme-Catalyzed Reactions. I. Glucose Oxidase in a Recirculation Reactor System,” Biotechnology and Bioengineering, Vol. XVIII, 669–84 (1976). Rheumatism and bears a “March 1981” publication date on the cover of the volume as well as the cover page of the article. Ex. 1006, cover page and 534. Gilham appears to be an article published in a book titled Immobilized Biochemicals and Affinity Chromatography, which includes a copyright date of 1974 and an indication that it contains most of the papers presented in a “Symposium on Affinity Chromatography and Immobilized Biochemicals” held November 7–9, 1973. Ex. 1019, second page after cover (“Library of Congress Cataloging in Publication Data”). VPK appears to be an article from the journal Experimental Cell Research and is dated October 1982. Ex. 1008, cover page. Noyes appears to be an article from the journal Cell and is dated July 1975. Ex. 1007, 301. Finally, Ramachandran appears to be an article from the journal Biotechnology and Bioengineering and is dated 1975. Thus, each of these references bears a date prior to the earliest possible effective filing date for the challenged claims (i.e., Jan. 27, 1983). See Ex. 1001, 1:19; 35 U.S.C. § 120. Moreover, the references are either journal articles or excerpts from a book, and thus appear to have been publicly disseminated. Petitioner has made sufficient showing that these documents qualify as prior art printed publications. After institution, Patent Owner may, if it chooses to do so, continue to challenge the sufficiency or admissibility of the evidence. See 35 U.S.C. § 311(b); 37 C.F.R. § 42.64(b).” slip op. at 3

  § 102 anticipation
  Patents in suitUS 7,064,197
• Gopro, Inc. v. Contour IP Holding LLCRehearing denied
  PTAB · Feb 16, 2017 · IPR2015-01080 · APJ Justin T Arbes · IPR · Rehearing

  The Board denied GoPro’s rehearing request, leaving intact its determination that claims 1, 2, and 11–30 were not shown unpatentable because the GoPro Catalog was not proven publicly accessible.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “the Reply and at the oral hearing. Mere disagreement with a decision is not a proper basis for rehearing when a party’s arguments were considered and addressed in the decision. As we stated in the Final Decision, although some cases, such as In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989), refer simply to “the public interested in the art,” the majority of cases define the standard as accessibility to persons interested and ordinarily skilled in the art. Dec. 19–21. We remain persuaded that the appropriate standard is that set forth in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016): “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it’” (citation omitted).2” slip op. at 4

  • BurdenDecided for patent owner

    “decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 8,890,954
• Gopro, Inc. v. Contour IP Holding LLCRehearing denied
  PTAB · Feb 16, 2017 · IPR2015-01078 · APJ Justin T Arbes · IPR · Rehearing

  The Board denied GoPro’s rehearing request, leaving its determination that claims 1–20 were not shown unpatentable because the GoPro Catalog was not proven to be a publicly accessible prior art printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Analysis The party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • BurdenNot shown unpatentable

    “out in the Final Decision, and emphasize again, that Petitioner provided no underlying facts or evidence to substantiate this, other than Mr. Jones’s bare statement that Petitioner “continued to distribute and otherwise make available the GoPro Catalog to [Petitioner’s] actual and potential customers, dealers and retailers through its website, direct mail, and other means of distribution.” See Dec. 22 n.8; Ex. 1012 ¶ 11; Ex. 1022 ¶ 10. We are not persuaded that simply stating that a document was available “by mail” or “on a website,” without additional detail, is sufficient to demonstrate public accessibility of a reference. See Blue Calypso, 815 F.3d at 1349–50 (analyzing the underlying facts regarding a report posted on a website, including the lack of evidence that anyone “viewed or downloaded” the report or that “a query of a search engine” would have led to it). For example, Petitioner does not tell us the website to which it is referring from 2009, identify or provide a copy of the specific web page from which the GoPro Catalog allegedly could have been downloaded, or explain in any detail how someone could have obtained a hard copy via mail. Without supporting evidence from Petitioner, we are unable to determine how potential availability online or by mail impacts the analysis, and are left only with Petitioner’s evidence regarding the 2009 Tucker Rocky Dealer Show, as explained in the Final Decision. See Dec. 22–28 & n.8. It was Petitioner’s burden to prove unpatentability by a preponderance of the evidence, including proving that the GoPro Catalog qualifies as a prior art printed publication under 35 U.S.C. § 102(b). See Pet. 24; 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–80 (Fed. Cir. 2016); Blue Calypso, 815 F.3d at 1348–51 (affirming Board decision that the petitioner “failed to carry its burden of proving public accessibility” of an asserted reference); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015) (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee. ‘Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.’” (citations omitted)). The limited evidence and argument provided by Petitioner during trial did not suffice to meet that burden, for the reasons explained in the Final Decision. See Dec. 19–28.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “proof that Petitioner physically provided a copy of the GoPro Catalog to someone at the 2009 Tucker Rocky Dealer Show that was of ordinary skill in the art. Rather, as Patent Owner correctly points out, we found no evidence that persons of ordinary skill in the art would have been in attendance at—or even aware of—the 2009 Tucker Rocky Dealer Show, such that they could have obtained a copy there. See Dec. 25–28; Opp. 2, 8–13. This is a factor supporting Patent Owner’s position that the GoPro Catalog was not sufficiently accessible to persons interested and of ordinary skill in the art. See Dec. 25–28; Paper 30, 10–13. Again, Petitioner provided no evidence during trial that the 2009 Tucker Rocky Dealer Show was advertised to or open to the general public, such that the public would have known about the show and could have obtained a copy of the GoPro Catalog there, and Patent Owner presented some evidence to the contrary. Dec. 23–25 (citing Exs. 2001, 2002, 1012 ¶ 5). Further, as explained in the Final Decision, the 2009 Tucker Rocky Dealer Show primarily pertained to motorcycles and other action sports vehicles and was directed to sales and marketing personnel, but a person of ordinary skill in the art for purposes of the ’694 patent is someone with a technical background with digital video cameras. Id. at 18–19, 22–28 (citing Exs. 1012, 2001).” slip op. at 5

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

    “inconsistent” with our Decision on Institution (Paper 8, “Dec. on Inst.”). Req. Reh’g 4, 7, 12–14. Petitioner is incorrect. At the institution stage, the standard for institution is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” and we look for only a threshold showing that an asserted reference is prior art. See 35 U.S.C. § 314(a); Dec. on Inst. 13. At the final decision stage, however, a petitioner has the burden of providing unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). There is no inconsistency between finding a reasonable likelihood of prevailing at the time of institution and less than a preponderance of the evidence in a final decision. Indeed, at institution, “the Board is considering the matter preliminarily without the benefit of a full record.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). “The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one . . . .” Id. We stated in the Decision on Institution that our finding of a threshold showing by Petitioner was “[b]ased on the current record.” Dec. on Inst. 17 (“The fact that we institute an inter partes review on a not fully developed record is not dispositive of the ultimate legal conclusion as to whether the GoPro Catalog qualifies as prior art. That conclusion will be based on a preponderance of the fully developed record evidence.”). slip op. at 6

  § 102 anticipation
  Patents in suitUS 8,896,694
• Praxair Distribution, Inc. v. Ino Therapeutics, LLCNo claims unpatentable
  PTAB · Sep 15, 2016 · IPR2015-00891 · APJ Scott A Daniels · IPR · Final written decision

  Praxair failed to prove claims 1–16 unpatentable under the three §103 grounds because it did not establish a sufficient reason to combine the prior art.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “sensed in-line gas concentration being used to perform verification of gas supply and gas delivery to a subject or patient into a device receiving gas concentration information from Peters’s handle and memory on the gas supply cylinder in order to verify and control gas delivery to a patient smacks of hindsight reasoning. After considering the evidence and arguments of both parties, we conclude that Praxair has failed to carry its burden of demonstrating, by a preponderance of the evidence, that independent claim 1 is unpatentable. Because Praxair’s obviousness analysis for dependent apparatus claims 2–11, as well as the dependent method claims 12–16, asserted in each of the grounds in this proceeding relies on the deficient asserted combination including Bathe and Peters, we similarly are not persuaded that Praxair has sustained its burden of demonstrating, by a preponderance of the evidence that claims 2–16 are unpatentable.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “argument and testimony that Peters’s valve could work on Bathe’s cylinder does not explain why or how a person of skill in the art would combine Bathe and Peters, only that they could. PO Resp. 43–44. That Bathe could be modified by simply placing Peters’s valve on the cylinder to control gas flow from the cylinder, does not, alone, satisfy the requirements for combining the prior art. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (Experts “testimony primarily consisted of conclusory references to her belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so.”). Petitioner’s challenge lacks an adequate motivation, not only to incorporate the smart valve of Peters into Bathe, but also to: (1) repurpose the incorporated valve by using (a) its “memory to store gas data comprising one or more of gas identification, gas expiration date and gas concentration” and (b) its processor and transmitter “to send and receive wireless optical line-of-sight signals to communicate the gas data to the control module that controls gas delivery to a subject” and (2) modify the Bathe system, such that its CPU would receive the wirelessly transmitted gas concentration data, even though the CPU already receives (and uses) flow and operator input data to provide a desired NO concentration. See Ex. 1005, 6:5–20.” slip op. at 21

  • Expert testimonyPetitioner expert discountedOther

    “read [Bathe] and been motivated to apply subsequent improvements to component parts of that system, such as the improved valve of [Peters].” Ex. 1002 at ¶ 112 (citing Ex. 1005, 6:11–15). Dr. Stone does not, however, point to any persuasive evidence or disclosure in Bathe, or provide sufficient explanation or reasoning to support this statement. See id. In particular, Dr. Stone does not describe what the “improvements” would have been or provide sufficient rationale as to why Bathe, which already has a connection between a supply cylinder and a gas delivery device and teaches verification of gas concentration from the cylinder by sensor 65 in the delivery system, would be improved by Peters’s manually actuated valve handle and included memory to meet the limitations of the independent claims. See Ex. 1005, 6:11–15. We find Dr. Stone’s testimony deficient as to showing any suggestion in Bathe or otherwise that would have motivated one of skill in the art to add Peters’s valve and memory to Bathe. We are also not persuaded that a person of skill in the art would have” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “D. INO’s Motion to Exclude Patent Owner seeks to exclude the testimony of Dr. Robert Stone (Exs. 1002, 2020). Because we do not rely on Dr. Stone’s testimony in a manner adverse to INO, the motion to exclude is dismissed as moot.” slip op. at 28

  Patent outcomesUS 8,573,210 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,573,210
• Leggett & Platt, Inc. v. Dreamwell, Ltd.Rehearing denied
  PTAB · Jun 29, 2016 · IPR2015-01753 · APJ Barry L Grossman · IPR · Rehearing

  The Board denied rehearing of its decision denying institution because Petitioner did not show that the Board abused its discretion or misapprehended or overlooked a matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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 1 The “statement” to which the Request apparently refers reads: “Petitioner does not cite any persuasive evidence that Kochi achieves any of the asserted advantages of the disclosed alloy without the claimed and disclosed pearlite structure.” Decision 12. 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).” slip op. at 2

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

    “A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). It is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “composition that provided “excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage.” Id. at 33–34. According to Kochi’s disclosure, however, the benefits on which Petitioner relied for the proffered rationale result from: adequately controlling the requirements for the metal microstructure thereof (the area ratio of the second-phase ferrite, and the pearlite lamellar spacing) and the requirements for the chemical components thereof. Decision 12 (citing Ex. 1002 ¶ 71); see also Ex. 1004 ¶ 41 (disclosing the need to control the area ratio of second-phase ferrite to achieve improved resistance to wire-break). Kochi also discloses that “pearlite is the primary constituent of the metal microstructure.” Ex. 1004 ¶ 43. As stated in the Decision, there was no persuasive evidence that Kochi achieves any of the asserted advantages of the disclosed alloy without the disclosed pearlite lamellar structure. Decision 12. In weighing the evidence, the Decision determined there was no persuasive evidence that it would have been obvious to a person of ordinary skill that the asserted benefits in Kochi can be achieved with an alloy that does not include the metal microstructure of Kochi. Id.” slip op. at 4

  § 103 obviousnesscites KSR
  Patents in suitUS 8,474,805
• Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentable
  PTAB · May 11, 2016 · IPR2015-00300 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 27, 28, 88, 101, and 108 are unpatentable as obvious over Dell, Sweere, and Allan, with Planar additionally applied to claim 108.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (internal citations omitted). Generally, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed.” Id.” slip op. at 8

  • ExcludeMotion to exclude, grantedGranted

    “IV. MOTIONS TO EXCLUDE Petitioner filed a Motion to Exclude Exhibits 2003–2006. Paper 33. Each of Exhibits 2003–2005 is a license agreement, and Exhibit 2006 is a Declaration by Robert A. Sobie. All of this evidence was submitted by Patent Owner as objective evidence of secondary considerations. Because we do not rely on any of that evidence in a manner adverse to Petitioner, we dismiss the Motion as moot. Patent Owner filed a Motion to Exclude Exhibit 1007, which is a declaration by T.E. Schlesinger, Ph.D., which Petitioner filed with its Reply. Paper 35. Because we do not rely on Exhibit 1007 in any manner, we dismiss the Motion as moot.” slip op. at 28

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “entity. It was filed without our authorization because it was filed with Patent Owner’s Opposition to Petitioner’s Motion to Exclude despite that Exhibit 202316 is not responsive to the Motion to Exclude. Paper 42 (“Opp. to Pet. Mot. to Excl.”). In fact, Patent Owner’s Opposition requests that we enter into the record “new Exhibit 2023, which was finalized subsequent to Patent Owner’s Response.” Opp. to Pet. Mot. to Excl. 1. A request for relief should not be made in an opposition brief. It should be made in a motion. 37 C.F.R. § 42.20(a) (“Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion.”). Further, a motion (and, thus, a request for relief) may be filed only if authorization has been obtained. 37 C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.”). Consequently, Exhibit 2023 shall be expunged because it was filed without our authorization. See 37 C.F.R. § 42.7.” slip op. at 29

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 6–7 (offering only one proposed construction, which was not material to the patentability challenge);8 PO Resp. 11 (“Patent Owner agrees that the claim terms involved in the [instituted Grounds] do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 7

  Patent outcomesUS 6,721,178 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,721,178
• Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentable
  PTAB · May 11, 2016 · IPR2015-00301 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Dell and Sweere because their combined teachings render the claimed workstation obvious.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDenied

    “(“Galderma”), but Galderma’s facts bear a significant distinction. In Galderma, the non-identified party that was held to be a real party-in-interest was a parent corporation (Nestle Skin Health S.A.) that ultimately owned both named petitioners (Galderma S.A. and Q-Med AB). One of the named petitioners (Q-Med AB) manufactured devices that were accused of infringement in a related lawsuit, but another entity, which was also ultimately owned by the non-identified Nestle Skin Health S.A., distributed the accused devices. Galderma at 8. Furthermore, the Galderma panel found that the business entities involved “do not maintain well-defined corporate boundaries, and are so intertwined that it is difficult to determine where one ends and another begins.” Id. at 9 (internal quotation marks omitted). We have not made that finding here, nor is there sufficient evidence to support such a finding. It is Petitioner alone who stands accused of infringement in the related lawsuit. Riverside has not been named in that lawsuit. Paper 7, 2. Nor has Patent Owner shown that Riverside has a legal, and not merely financial, interest in this inter partes review. As noted in the Guide, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent.” Guide, 77 Fed. Reg. at 48,759. Under the facts before us, it is Petitioner who, having been sued for infringement of the ’220 patent, desires review of the patent. Patent Owner’s Motion to Dismiss and Terminate is denied.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 4–5 (offering only one proposed construction, which was not material to the patentability challenge);5 PO Resp. 9 (“Patent Owner agrees that the claim terms involved in the Ground do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “These stated reasons to combine the relied-upon prior art teachings of Dell and Sweere, and in the manner asserted, are sufficient. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “an apparent reason to combine the known elements in the fashion claimed by the patent at issue”). Further, nothing unpredictable results from such a combination. See id. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Patent Owner argues that there was no reason in the art, other than impermissible hindsight, to locate a computer terminal in Dell’s compartment 100 instead of on the top surface 22 in order to free up work space. PO Resp. 27–28. Patent Owner further argues that it was the inventors of the ’220 patent who “recognized” the need for an unobstructed work surface. Id. at 28. We disagree. Dell explicitly teaches that the work surface may omit the computer so that other equipment may be carried on it. Ex. 1003, 2:43–47 (“These openings can include grommets 32 which can be used to route wires or locking equipment in which to lock a lap/top computer (40 shown in phantom) or other equipment that may be carried on top of the work surface.”). Furthermore, each of Dell’s seven claims requires a work surface, but none of its claims requires a computer (or any other equipment) on the work surface. Id. at 4:32–65. Thus, Dell teaches a top of a work surface that may be free of a computer. Further, Sweere teaches placing a computer separate from its display screen and out of the way. See Ex. 1004, Fig. 29 (illustrating CPU mounting bracket 1218 separate from display screen 216). Petitioner’s obviousness rationale does not rely on hindsight.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner

    “Patent Owner argues that there was no reason in the art, other than impermissible hindsight, to locate a computer terminal in Dell’s compartment 100 instead of on the top surface 22 in order to free up work space. PO Resp. 27–28. Patent Owner further argues that it was the inventors of the ’220 patent who “recognized” the need for an unobstructed work surface. Id. at 28. We disagree. Dell explicitly teaches that the work surface may omit the computer so that other equipment may be carried on it. Ex. 1003, 2:43–47 (“These openings can include grommets 32 which can be used to route wires or locking equipment in which to lock a lap/top computer (40 shown in phantom) or other equipment that may be carried on top of the work surface.”). Furthermore, each of Dell’s seven claims requires a work surface, but none of its claims requires a computer (or any other equipment) on the work surface. Id. at 4:32–65. Thus, Dell teaches a top of a work surface that may be free of a computer. Further, Sweere teaches placing a computer separate from its display screen and out of the way. See Ex. 1004, Fig. 29 (illustrating CPU mounting bracket 1218 separate from display screen 216). Petitioner’s obviousness rationale does not rely on hindsight.” slip op. at 17

  Patent outcomesUS 6,493,220 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,493,220
• Avx Corporation v. Wilson Greatbatch Ltd.All claims unpatentable
  PTAB · May 2, 2016 · IPR2015-00101 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–14, 25–32, 35, 36, 47, and 48 are unpatentable: claims 1–4 and 25–27 as anticipated by Burger, claims 5–9 by Hildegard, and the remaining claims as obvious over Evans I and Hildegard; amendment denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “As the moving party, it is Patent Owner’s burden to prove that its proposed claims are patentable over the prior art. To meet that burden with respect to Evans I and Hildegard, Patent Owner must prove that the boric acid in Electrolyte B would materially affect the basic and novel properties of Patent Owner’s invention, such that it would be excluded from the electrolytes of proposed claims 49–51. In that regard Patent Owner asserts, without citation to Hildegard or any other evidence, that Hildegard “clearly assert[s]” that boric acid would have a material effect. Reply 8 (quoting Prelim. Resp. 17). We are not persuaded by this attorney argument.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “c. Evans I In View Of Hildegard The Petition asserts, and we determine, that it would have been obvious to modify the capacitor of Evans I to substitute its electrolyte with Hildegard’s Electrolyte B as a mere substitution of a prior art element according to its established function. Pet. 43 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); Ex. 1011 ¶¶ 26–27). Indeed, Patent Owner conceded that this was an obvious modification. PO Resp. 1.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner offers declaration testimony from Jan Petrzilek, Ph.D., that some of the acetic acid in Electrolyte B would react with the ammonia to form ammonium acetate. Ex. 1011 ¶ 19. Dr. Petrzilek, implying that some of the phosphoric acid also would react with the ammonia, testifies that not all of either the acetic acid or phosphoric acid would react with the ammonia, and, thus, some amount of those acids remain in Electrolyte B. Ex. 1011 ¶ 19. Dr. Petrzilek explains that this is because the molar amount of ammonia is lower than the molar amounts of those acids. Id. Thus, Dr. Petrzilek concludes that the final mixture of Electrolyte B necessarily includes ammonium acetate, acetic acid, and phosphoric acid. Id. We find Dr. Petrzilek’s testimony to be credible and persuasive. The final mixture of Electrolyte B contains water “up to about 85%” and ethylene glycol “up to about 95%,” which meets element (c)(i) of each of proposed claims 49–51. Ex. 1004, 2:50–52. After the ammonia and acetic acid react, the resulting ammonium acetate would have to constitute less than about 50% of the electrolyte by weight, which meets element (c)(ii) of each of proposed claims 49–51. Ex. 1011 ¶ 19. After the ammonia reacts with both acids, some amount of each acid would remain, and such remaining amounts would be less than the maximum limits recited in element (c)(iii) of each of proposed claims 49–51. Ex. 1011 ¶ 19; Pet. 26– 27.” slip op. at 10

  Patent outcomesUS 6,219,222 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 6,219,222
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01469 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 24 and 31–33 were not shown unpatentable because Petitioner failed to prove obviousness over either asserted reference combination, including failure to establish Bogaerts as prior art.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Interconnect (PCI) bus transaction” to mean “a data signal communication with an interconnected peripheral component.” Pet. 13. Patent Owner agrees with the construction in the Decision on Institution that the claim term “Peripheral Component Interconnect (PCI) bus transaction” means “Peripheral Component Interconnect (PCI) industry standard bus transaction.” PO Resp. 21–22. We see no reason now to deviate from the construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 27, ll. 24–25, col. 28, ll. 35–36; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 19, ll. 31–33 (“the present invention may interface two PCI or PCI-like buses”), with id. at col. 7, ll. 4–6 (“Additionally, the host controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added). Petitioner and Petitioner’s declarant, Mr. Bruce Young, acknowledge that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. Ex. 1003 ¶ 58; Ex. 2006, 1, 3; Ex. 2031, 16:8–12. The evidence Petitioner identifies in support of its proposed construction is the claim construction order issued in ACQIS LLC v. Appro International, Inc., No. 6:09-cv-00148 (E.D. Tex. Feb. 3, 2011). Pet. 12–13 (citing Ex. 1013). In that case, though, the parties did not appear to dispute that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. See Ex. 1013, 7 (“The parties’ primary dispute is whether the term is limited to the conventional, parallel PCI Local Bus, and, therefore excludes PCI Express bus architecture and bus transaction protocol.”). Moreover, the district court subsequently reconsidered its construction and clarified that the term “PCI bus transaction” refers to a PCI industry standard bus transaction. Ex. 1030, 8–10. Therefore, we construe the claim term “Peripheral Component Interconnect (PCI) bus transaction” to mean “Peripheral Component Interconnect (PCI) industry standard bus transaction,” and we construe the claim term “PCI bus transaction” to mean “PCI industry standard bus transaction.”” slip op. at 6

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

    “Horst outputs address and data bits of a PCI bus transaction in serial form over the TNet links. Pet. 31–34. Petitioner’s argument is not persuasive. The TNet processor interface in Horst translates a CPU transaction into a TNet transaction. Ex. 1009, 5 (“The interface to the destination CPU or I/O device provides mapping and validation hardware translating this virtual TNet address to the appropriate physical memory address.”), Figs. 5, 7; Ex. 2021 ¶ 94 (“The TNet Processor Interface generates TNet transactions from CPU front-side bus transactions.”). The TNet processor interface then encodes the TNet transaction using an 8B/9B encoder so that it can be output over the 9-bit serial TNet links. Ex. 1003 ¶¶ 48, 146; Ex. 1009, 3, Figs. 3, 4 (showing “8B/9B encoder”), Table 1; Ex. 2021 ¶ 105. Petitioner does not identify persuasive evidence indicating that either the CPU transaction or the TNet transaction is a PCI industry standard bus transaction. Pet. 31–34 (citing Ex. 1009, 3–8, Figs. 2, 3, 5, 7–9, Table 1; Ex. 1003 ¶¶ 159[24C(i)], 159[24C(iv)], 159[24C(v)], 159[31B(i)], 159[31B(iii)]); Ex. 2021 ¶ 129. Thus, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form. Petitioner points out that, after a TNet transaction is communicated over the TNet links, a TNet bus interface in the console may use information in the TNet transaction to create a PCI industry standard bus transaction if a particular I/O device is connected to a PCI bus. Pet. 31–32 (citing Ex. 1009, 7, Fig. 8). But claims 24 and 31 require more than just communicating information over serial channels that subsequently might be used in the console to create a PCI industry standard bus transaction. Claims 24 and 31, when read in light of the specification, require that the information actually communicated over the serial channels includes address and data bits of a PCI industry standard bus transaction in serial form. Ex. 1001, col. 20, ll. 60–65, col. 21, ll. 15–21, col. 27, ll. 34–38, col. 28, ll. 34–39; Ex. 2022, 15:12–16:2, 22:11–16. As discussed above, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “The evidence identified by Patent Owner indicates that the date “2 October 1996” on Bogaerts is when it was submitted to the CERN/LHCC committee. Ex. 2021 ¶¶ 170, 171, 173; Ex. 2026, 12. Although it is possible that Bogaerts was available in the CERN Library at or around the same time, Petitioner has not shown that by a preponderance of the evidence. For example, Petitioner does not cite persuasive evidence indicating that the “Submitted by 2 Oct 1996” entry in the CERN Document Server record means that Bogaerts was available in the CERN Library on that date. Tr. 23:1–12, 25:5–25; Pet. Reply 21–25. In addition, Petitioner acknowledges that the CERN Document Server record itself was not created until December 18, 2014. Tr. 25:5–25; Ex. 2011, 439. Therefore, Petitioner has not shown sufficiently that Bogaerts is a prior art printed publication based on its availability in the CERN Library.” slip op. at 17

  • ExcludeMotion to exclude, deniedDenied

    “should be excluded for lack of authentication under Fed. R. Evid. 901. PO Mot. 2–6. 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. Here, Patent Owner does not dispute that Exhibit 1011 is what Petitioner claims it is, namely a reference entitled “RD24 Status Report: Application of the Scalable Coherent Interface to Data Acquisition at LHC.” Id. What Patent Owner disputes is whether Petitioner has shown by a preponderance of the evidence that Bogaerts is prior art with respect to the ’814 patent. Id. Patent Owner attempts to characterize this dispute as a question of authentication, arguing that Petitioner has not produced “evidence that [Exhibit 1011] is a true and correct copy of a publication that was publicly available as of the date asserted by Petitioner.” Id. at 3. But this is a question of sufficiency of proof, not admissibility. Therefore, Patent Owner’s Motion to Exclude Exhibit 1011 is denied.” slip op. at 20

  Patent outcomesUS RE42,814 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham

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.