- Johnson & Johnson Surgical Vision, Inc. v. Alcon, Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00899 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR on claims 1–17 under § 325(d), finding substantially the same art or arguments had been presented to the Office and no material examination error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“discretion and deny a petition as authorized under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. If either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8. A non-exclusive list of factors, set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), guides our application of that two-part framework. Advanced Bionics, Paper 6 at 9. Those factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Based on the information presented, we find the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’036 patent. Pet. 17 (Petitioner’s asserted definition of the ordinarily skilled artisan); see Prelim. Resp. 20 (reciting that definition without adopting it or proposing an alternative definition).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. 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)). Neither party proposes an express construction for any claim term. See Pet. 17; Prelim. Resp. 61–62. We find no claim term requires express construction in order to resolve whether to exercise our discretion and deny the Petition under Section 325(d). We discuss the scope of certain claim terms as necessary to our analysis of that issue, however, which we turn to in the next section.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In this Decision, we assess the asserted obviousness grounds only to the extent necessary to resolve Patent Owner’s request that we exercise our discretion and deny the Petition under Section 325(d).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,849,036 - Johnson & Johnson Surgical Vision, Inc. v. Alcon, Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00898 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution under § 325(d), finding the petition relied on substantially the same art or arguments previously presented to the Office and failed to show material examination error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“discretion and deny a petition as authorized under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. If either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8. A non-exclusive list of factors, set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), guides our application of that two-part framework. Advanced Bionics, Paper 6 at 9. Those factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“The Board may not institute an inter partes review unless the information presented “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.” 35 U.S.C. § 314(a). The Board has discretion to deny a request for institution when the information presented shows a petitioner raises “the same or substantially the same prior art or arguments previously presented to the Office,” for example, during patent examination. 35 U.S.C. § 325(d).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the information presented, we find the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’913 patent. Pet. 16 (Petitioner’s asserted definition of the ordinarily skilled artisan); see Prelim. Resp. 18 (reciting that definition without adopting it or proposing an alternative definition).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. 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)). Neither party proposes an express construction for any claim term. See Pet. 17; Prelim. Resp. 59–60. We find no claim term requires express construction in order to resolve whether to exercise our discretion and deny the Petition under Section 325(d). We discuss the scope of certain claim terms as necessary to our analysis of that issue, however, which we turn to in the next section.” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,622,913 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Nov 2, 2021 · IPR2021-00800 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on all grounds because the Petition’s deficient, unclear arguments did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
- BurdenDenied
“Although it might be possible for us to guess at the support Petitioner intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
NonePatents in suitUS 10,289,154 - Arun Agarwal v. Sachin JhunjhunwalaInstitution deniedPTAB · Sep 17, 2021 · PGR2021-00071 · APJ Wesley B Derrick · PGR · Institution
The Board denied institution of PGR on claims 1–2 because the Petition did not identify its grounds and supporting evidence with the required particularity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 322(a)(3); 37 C.F.R. § 42.204(b). Our reviewing court, in the context of inter partes review, describes this particularity requirement as “of the utmost importance.” Intelligent Bio- Sys., 821 F.3d at 1369. Further, our rules require that each petition include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2).” slip op. at 13
Discretionary denialPatents in suitUS 10,689,782 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Sep 3, 2021 · IPR2021-00681 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because the Petition did not sufficiently identify where the challenged claim limitations were taught or explain the evidence supporting its grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to explain Petitioner’s positions fully. Where the Petition provides some explanation, it does so only through a web of internal cross-references that require the reader to engage in extensive analysis just to decipher what is being argued, much less evaluate the merits of that argument. Although it might be possible for us to wade through this voluminous information and separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Instead, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999), Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’688 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 16
NonePatents in suitUS 8,289,688 - Daiichi Sankyo, Inc. / Astrazeneca Pharmaceuticals, LP v. Seagen Inc.Institution deniedPTAB · Jun 24, 2021 · PGR2021-00042 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution of PGR on claims 6–8 under § 324(a), finding that the Fintiv factors favored discretionary denial despite potential merit in the enablement challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“parties. We recognize that many legitimate reasons may lead a party not to file a motion to stay a parallel proceeding prior to the Board’s institution decision, including because such a motion may be viewed as premature. Be that as it may, our precedential guidance instructs us to consider whether the court has granted a stay of the parallel proceeding, or whether evidence exists that a stay may be granted upon institution. Fintiv Order at 5–6. As it stands, the record lacks sufficient evidence to suggest that a stay has been granted, or may be granted in the future. It is a judge who 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 judge would rule should a stay be requested in the Texas Litigation. For these reasons, we determine that the facts underlying this factor are neutral.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard is set forth in § 324(a), which provides that a post-grant review shall not be instituted unless “the Director determines that the information presented in the petition filed under section 321, 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.”” slip op. at 2
Discretionary denialPatents in suitUS 10,808,039 - Daiichi Sankyo, Inc. / Astrazeneca Pharmaceuticals, LP v. Seagen Inc.Institution deniedPTAB · Jun 24, 2021 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution of post-grant review for claims 1–5, 9, and 10 under § 324(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Additionally, the Board’s precedential Fintiv Order identifies several factors to be considered when analyzing issues related to the Director’s discretion to deny institution, with the goal of balancing efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“the Fintiv Order”). These factors include: 1) whether a stay exists or is likely to be granted if a” slip op. at 10
Discretionary denialPatents in suitUS 10,808,039 - PTAB · Jun 19, 2020 · IPR2019-00834 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Intel’s rehearing request and left in place its denial of institution for claims 1–3, 6, and 7 under §§ 325(d) and 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“§ 325(d). Inst. Dec. 7–16. We evaluated each of the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“the Becton, Dickinson factors”). Id. We concluded that, “[o]f the six Becton, Dickinson factors, the first factor weighs strongly in favor of denying institution, the third and fifth factors weigh somewhat in favor of denying institution, the second and fourth factors are neutral, and the sixth factor weighs somewhat against denying institution.” Id. at 15–16. Petitioner now argues that this analysis was flawed, with the fourth, fifth, and sixth Becton, Dickinson factors all “strongly favor[ing] reaching the merits and instituting” inter partes review. Req. Reh’g 5–11.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“decision denying institution in the earlier proceeding. But the third General Plastic factor does not require access to the earlier institution decision; it requires only access to either that decision or the corresponding preliminary response. Here, at the time Petitioner filed this Petition, it already had received Patent Owner’s preliminary response in IPR2018-01574. This is sufficient to satisfy the third factor.” slip op. at 8
- Other 314aInstitution denied discretionary otherInstitution denied
“we interpret the Request for Rehearing as arguing that discretionary denial of a second petition is always improper whenever a first petition remains pending.7 Petitioner does not explain the authority for that legal position, and we can find none in either § 314(a) or § 325(d). Institution of inter partes review is never compulsory under § 314(a). Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367–68 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). As for § 325(d), the statutory language appears to refute Petitioner’s position directly. As long as “the same or substantially the same prior art or arguments previously were presented to the Office,” discretion exists to “reject the petition.” 35 U.S.C. § 325(d). There is no mention in the statute 7 Alternatively, the Request for Rehearing could be interpreted as arguing that we should have withheld any decision on the second petition until the rehearing request on the first petition was decided. If we were to interpret the argument this way, we would find it unpersuasive because it would have required us to violate 35 U.S.C. § 314(b)(1), which requires us to issue a decision on institution no later than three months after the filing of the preliminary response. of a limitation on that discretion that requires us to avoid “reject[ing] the petition” whenever the earlier proceeding in which “the same or substantially the same prior art or arguments previously were presented” remains pending. Id. Thus, we are not persuaded that any of the special circumstances that Petitioner describes warrants a conclusion that we abused our discretion in denying institution.” slip op. at 14
Discretionary denialPatents in suitUS 9,070,719 - PTAB · Jun 19, 2020 · IPR2018-01574 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the petition did not show a reasonable likelihood of proving claims 1–3, 6, and 7 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“solely on Liaw’s Fig. 2C, ignoring the portions of Liaw relied on by [Petitioner] and the balance of the unrebutted evidence which uniformly established that a person of ordinary skill would have envisaged Liaw’s dielectric spacer layer as surrounding the gate line.” Req. Reh’g 12–13. We did not ignore any evidence. As discussed above, Petitioner argued that Liaw’s process of blanket deposition followed by anisotropic etching inherently would produce as a result the “spacer surrounding the gate line” recited in the challenged claims. A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). Here, Dr. Thompson testified that Liaw’s process would result in the formation of spacers surrounding the gate lines, Ex. 1002 ¶ 223, but Liaw itself showed that a process of blanket deposition followed by anisotropic etching need not necessarily produce that result. Ex. 1003, 3:61–4:6, Fig. 2C. That our Decision focused on the evidence demonstrating the failure of Petitioner’s inherency argument does not mean that we ignored any other evidence. Accordingly, we are not persuaded that this argument shows an abuse of discretion.” slip op. at 9
- Strike new argumentNew argument disregardedOther
“deposition alone,” without any later anisotropic etching, forms a spacer surrounding the gate line, “satisf[ying] the limitation at issue.” Req. Reh’g 7–9. This is a new argument, not previously presented by Petitioner. As noted above, Petitioner argued previously that Liaw’s entire process (including both blanket deposition and the anisotropic etching that follows) “leaves dielectric sidewall spacer material on all vertical surfaces (or sidewalls) of the gate line.” Pet. 33. Similarly, Dr. Thompson testified that “Liaw’s sidewall spacers surrounded the gate line” because, “[a]fter [Liaw’s] etching step, dielectric sidewall spacer material was left on the perimeter of the gate (i.e., spacers on the long lateral sides and at the end faces of the gate line).” Ex. 1002 ¶ 223. Dr. Thompson also testified that the process described in the challenged patent (including both “blanket deposition” and “Reactive Ion Etching”) “resulted in sidewall spacers that ‘surround the respective gate lines.’” Id. ¶¶ 269–270 (quoting Ex. 1001, 6:11–23). Petitioner argued the same. Pet. 33. In addition, Petitioner argued that Mandelman produced its spacers by blanket deposition followed by “reactive ion etching or plasma etching.” Id. at 62–63; see also Ex. 1002 ¶ 317 (Dr. Thompson testifying that Mandelman produces its spacers in this way). Thus, Petitioner’s argument on rehearing that a spacer surrounding the gate line would have been formed by blanket deposition alone, even in the absence of etching, is new. The presentation of such a new argument violates the requirement that Petitioner identify the place in the record where it previously addressed any argument it raises in the Rehearing Request. 37 C.F.R. § 42.71(d). Accordingly, this new argument is improper on rehearing, and we do not consider the merits of this argument.” slip op. at 5
NonePatents in suitUS 9,070,719 - Gilead Sciences, Inc. v. The United States Of America, Represented By The Secretary Of The Department Of Health & Human ServicesInstitution deniedPTAB · Feb 20, 2020 · IPR2019-01453 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–11 and 13 unpatentable over Szekeres, Smith, or their combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Neither Szekeres nor Smith was cited during examination of the ’509 patent. Pet. 87–88. Instead, they “were considered during examination of a subsequently filed application.” Id. at 88; see also Prelim. Resp. 20 (Patent Owner conceding that “the Examiner considered Petitioner’s asserted references in the ’191 patent after the ’509 patent issued”). Under such circumstances, and because, as explained below, we deny institution based on substantive analysis of the Petition, we decline to decide whether institution should be denied on a discretionary basis under § 325(d).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“facts unique to each patent. See, e.g., Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373–76 (Fed. Cir. 2019) (affirming construction that result or efficacy language appearing in a wherein clause was limiting in light of the intrinsic evidence as a whole). Indeed, determining whether allegedly non-limiting language in a preamble or otherwise “involves examination of the entire patent record to determine what invention the patentee intended to define and protect.” Rowe v. Dror, 112 F.3d 473, 478–80 (Fed. Cir. 1997); Allergan, 935 F.3d at 1374 (holding the court “must read the claims in view of the entire specification” and prosecution history) (internal quotation marks and citations omitted). Based on the entire intrinsic record, we find “protection” is at the heart of the ’509 patent’s invention. In the body of claim 1, step (a) recites “selecting a primate host not infected with the immunodeficiency retrovirus.” Ex. 1001, 12:41–42 (emphases added). The “immunodeficiency retrovirus” in step (a), therefore, requires the preamble language for antecedent basis. Also, the preamble provides meaning about the nature of the infection recited in the body of the claim: “a self-replicating infection by an immunodeficiency retrovirus.”4 Id. at 12:38–39.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Moreover, the brief, high-level mention in Szekeres of Truvada’s FDA-approval does not sufficiently describe Truvada’s use in a PrEP treatment that satisfies step (b) of the claims. When anticipation is the issue, close is not enough. Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1560 (Fed. Cir. 1985) (holding “anticipation is not shown by a prior art disclosure which is only ‘substantially the same’ as the claimed invention”), overruled on other grounds, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc). Indeed, “[a] prior art disclosure that ‘almost’” discloses all the elements arranged exactly as in the claim, “may render the claim invalid under § 103, [but] it does not 18 ‘anticipate.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.”). Here, Petitioner’s theory pieces together a host of disclosures, such as a potential for resistance with certain agents, and then filters and combines those disclosures based on what an ordinarily skilled person allegedly would have “understood” to ultimately conclude that Szekeres unambiguously describes PrEP combination therapy with Truvada.5 Pet. 38–42. But Szekeres simply does not describe in any adequate detail actual or prophetic use of Truvada in a PrEP regimen. In sum, Szekeres does not disclose step (b).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,044,509
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.