- PTAB · Sep 12, 2014 · IPR2013-00558 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Jul 29, 2014 · IPR2014-00546 · APJ Kristen L Droesch · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2014-00546 without a final written decision and granted confidential treatment of their settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On July 28, 2014, the parties filed a Joint Motion to Terminate the proceeding. Paper 10. Accompanying the Motion, the parties filed a true copy of a Settlement and License Agreement resolving the dispute that is the subject of this proceeding. Ex. 2005. The parties request that the Settlement and License Agreement be treated as business confidential information, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 11. This proceeding is in the preliminary stages, as no significant activity has occurred since the filing of Patent Owner’s Preliminary Response on July 10, 2014. Paper 9. Based on the facts of the case, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 8,405,147 - Scentair Technologies, Inc. v. Prolitec, Inc.All claims unpatentablePTAB · Jul 18, 2014 · IPR2013-00180 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 are unpatentable as obvious over Le Pesant and Privas.
RulingsFinal written decision- BurdenMixed
“Dr. Shedd, ScentAir has not carried its burden of proving that Le Pesant would have suggested to one with ordinary skill in the art selecting a control scheme based on the volume of the space to be treated. Le Pesant’s only discussion of volume is in the context of diffused droplet size. The reference discusses the use of a droplet size that results in a “dry fog,” and states that “[m]eans of diffusing very small droplets in high numbers like this are well suited to the volume of 16 residential rooms and meeting rooms, typically containing air volumes of between 30 and 100 cubic meters.” Ex. 1005, 10:5-10. Contrary to ScentAir’s interpretation, however, this statement does not disclose that the device of Le Pesant may be used in 30-100 cubic meter rooms. Rather, Le Pesant is stating diffusion means which result in a “dry fog” droplet size are suitable for such volumes. Nor does Le Pesant disclose that the programming of its device should be adjusted according to the volume of the room; Le Pesant merely suggests that its device is suitable for various volumes. The reference is silent as to whether adjustments to the programming of the device are necessary for the device to operate in these various volumes.5 Le Pesant, therefore, does not suggest selecting a control scheme based on volume. Nor does Dr. Garris’ testimony that it is “common sense” that concentration of diffused liquid is affected by volume (Ex. 1004 ¶ 22) provide the necessary reason to modify Le Pesant. A known relationship between concentration and volume does not provide a reason to modify the device to take advantage of that relationship, especially when at least one interpretation of Le Pesant suggests that no modification is necessary. ScentAir has not articulated a persuasive reason” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Prolitec asks that we construe control schemes as “a set of operational parameters for the appliance.” PO Resp. 6. ScentAir does not proffer a particular construction, but Prolitec notes that, in related district court litigation, ScentAir defined the term as “systematic plan of control.” Id. (citing Ex. 1015, 3). We decline to adopt either construction as the broadest reasonable interpretation of the claim language. Prolitec’s construction, “a set of operational parameters for the 8 appliance,” merely repeats language used in the claim immediately following control schemes, and therefore, adds nothing to the understanding of the term. See, e.g., Ex. 1001, 9:27-29 (“each of the control schemes specifying operational parameters for the appliance”). In addition, by focusing on the “operational parameters” aspect of the control scheme, Prolitec’s construction ignores that the control schemes are relationships between inputs and those operational parameters, which may be selected by the user according to some other criteria. This feature was repeatedly emphasized by Prolitec’s counsel at oral argument. Tr. 34 (“adjusting all of these other variables automatically according to that easy to estimate variable . . . in our view that's the whole point of the ’068 control schemes.”). ScentAir’s district court claim construction, by focusing on a “systematic plan of control,” similarly errs by focusing only on the output of the control scheme, and not also on the input. Based on the foregoing, we consider the broadest reasonable interpretation of a plurality of control schemes to be a system of correlations between particular inputs and particular outputs for controlling the diffusion means, which permits a user to select a particular correlation based on user criteria.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“Prolitec argues that this rationale fails to provide a reason to combine the references, contending that Le Pesant does not express a “desire” to treat various volumes and that Privas does not disclose volume-based control. PO Resp. 36. We disagree with the latter argument, as we have already found that Privas discloses selecting a “set point” based—at least in part—on the volume of the space to be treated. With respect to the former argument, we find that Le Pesant discloses treating rooms of varying volumes, at least ranging between 30 and 100 cubic meters. Ex. 1005, 10:8-10. As discussed above, this does not provide a reason to modify Le Pesant to include volume-based control, but we conclude that it provides sufficient reason to combine Le Pesant with Privas, which discusses volume-based control. A person of ordinary skill in the art seeking to use the liquid diffusion device of Le Pesant in rooms of varying volumes would have reason to incorporate the volume based-control of Privas’ liquid diffusion device.” slip op. at 21
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A prior art reference is considered to be analogous if it is either: 1) from the same field of endeavor, regardless of the problem addressed; or 2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “A 21 reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. The determination of whether a prior art reference is analogous is a factual one. Id. at 658. We find that Privas is analogous art, as it is from the “same field of endeavor” as the ’068 patent. Prolitec argues that Privas is directed to fumigation devices, whereas the ’068 patent is directed to atomizers. PO Resp. 30-31. Prolitec cites the testimony of Dr. Shedd, who notes that the two devices operate under different principles of diffusion. Id. (“In an atomizer like the ’068 patent device, fluid is diffused in a liquid state but in Privas it is diffused in a gaseous state.”) (citing Ex. 2001, ¶¶ 44, 82). ScentAir asserts that Privas is from the same field of endeavor as the ’068 patent, noting that the Privas fumigation device contains both an atomizer and an evaporator. Pet. Reply 10. ScentAir cites Dr. Garris’ testimony that the Privas device is “structurally and functionally akin to the subject matter of the ’068 patent—but with an additional diffusion means.” Id. (citing Ex. 1019 ¶ 35). We do not consider the additional evaporator of Privas as somehow removing Privas from the same field of endeavor as the ’068 patent. Both devices are used treat the air within a space using diffusion means that comprise an atomizer. Prolitec has not pointed us to any functional difference that would distinguish the devices in a meaningful way. Tr. 48 (“JUDGE CRUMBLEY: At least some portion of [Privas’] operation is the same as ScentAir’s. MR. BAISH: That’s true, yes.”). Indeed, the devices of Privas and the ’068 patent have 22 significant structural similarities, including the reservoir of liquid and the atomizer/venturi. These structural and functional similarities would have led one of ordinary skill in the art working in the field of atomizing devices, such as those of the ’068 patent, to consider similar devices, such as the fumigator of Privas. See In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004).” slip op. at 21
Patent outcomesUS 7,930,068 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,930,068 - PTAB · Jul 16, 2014 · IPR2014-00151 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motion and terminated the inter partes review without a final written decision on patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the present record, we determine that it is appropriate to terminate this inter partes review both as to Petitioner Norwex and Patent Owner UMF without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 6,258,455 - PTAB · Jun 25, 2014 · IPR2014-00133 · APJ Grace Karaffa Obermann · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On June 16, 2014, pursuant to 35 U.S.C. § 317(a), the parties filed a joint motion to terminate the proceedings. Paper 18. Accompanying the motion, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. Paper 19; Ex. 2001. The parties sought, and the Board granted, authorization for the filing of joint motions to terminate these proceedings and requests to file the settlement agreement as business confidential information. A decision to institute an inter partes review in this case was entered by the Board on May 15, 2014. An initial conference was held on June 17, 2014. No significant activity has occurred since entry of our decision to institute. Based on the facts of the case, it is appropriate to terminate the proceeding. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 7,537,706 - PTAB · Jun 25, 2014 · IPR2014-00132 · APJ Grace Karaffa Obermann · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Board on May 15, 2014. An initial conference was held on June 17, 2014. No significant activity has occurred since entry of our decision to institute. Based on the facts of the case, it is appropriate to terminate the proceeding. Therefore, the joint motion to terminate the proceeding is granted. Accordingly, it is ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, to be kept separate from the patent file, is granted; FURTHER ORDERED that the joint motion to terminate the proceeding is granted; and FURTHER ORDERED that the proceeding is terminated.” slip op. at 2
NonePatents in suitUS 7,033,492 - PTAB · May 20, 2014 · IPR2013-00124 · APJ Lora M Green · IPR · Final written decision
The Board granted cancellation of claims 1-26 and allowed substitute claims 27-44, but denied substitute claim 45 as unpatentable over Behan.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundMixed
“In order to establish a prima facie case of obviousness based on structural similarity, the prior art must provide a reason to make the claimed compound, and there must also be “„adequate support in the prior art‟ for the 7 P.E.A. Teal et al., (Z)-11-Hexadecen-1-ol: A Behavioral Modifying Chemical Present in the Pheromone Gland of Female Heliothis Zea (Lepidoptera:Noctuidae), 116 CAN. ENTOMOLOGY 777-79 (1984). Ex. 2003. 8 Yih-Shen Hwang et al., Structure-Activity Relationship of Unsaturated Fatty Acids as Mosquito Ovipositional Repellents, 10 J. OF CHEM. ECOLOGY 145-51 (1984). Ex. 2004. change in structure.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (quoting In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). The United States Court of Appeals for the Federal Circuit noted that the test for obviousness of a compound based on structural similarity is in accordance with the legal principles enunciated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), specifically, that it is important to identify “„a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does‟ in an obviousness determination.” Takeda, 492 F.3d at 1356-57 (quoting KSR, 550 U.S. at 418). Thus, “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda, 492 F.3d at 1357.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“We acknowledge that McMahon and the Zhang Declaration are evidence that the ordinary artisan would not have had a reasonable expectation that, because a compound is known to repel mosquitoes, such as Aedes aegypti, the compound would also repel ticks, such as Amblyomma variegatum. Claim 45, however, encompasses the use of isolongifolanone when R1 is a hydrogen atom and R2 is an oxygen atom, which is the same compound specifically taught by Behan. See Pet. 7-8 (showing the structure of isolongifolanone, and discussing how it is encompassed by the chemical formula set forth in claim 1). As discussed above, Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites. “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) (noting that the realization of a new benefit of an old process does not render that process patentable); Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was drawn to the same use comprising the same steps of the prior art, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”). We, therefore, conclude that the preponderance of the evidence does not support the patentability of proposed claim 45.” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,579,016 - Crestron Electronics, Inc. v. Norman IP Holdings, LLCAdverse judgmentPTAB · Jan 17, 2014 · IPR2013-00278 · APJ Thomas L Giannetti · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled all challenged claims: 4, 6-9, 13-17, 20, 35-39, 42, 47-50, 53-57, and 60.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). No motion to amend the claims is pending, and, in fact, Patent Owner has requested that each claim for which this inter partes review was instituted be cancelled. Paper 14 at 2. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims as requested is appropriate.” slip op. at 2
NonePatents in suitUS 5,592,555 - PTAB · Oct 7, 2013 · IPR2013-00076 · APJ Brian J Mcnamara · IPR · Final written decision
The Board granted the parties’ joint motion, terminated the proceeding after settlement, and did not issue a final written decision on patentability.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A decision by the Board to institute a trial was entered on July 22, 2013.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On October 1, 2013, the Board authorized the parties to file a Joint Request To Terminate and a Joint Request to File the Settlement as Business Confidential under 37 C.F.R. 42.74(c). Paper No. 18. On October 2, 2013 the parties filed a Joint Motion Terminate And To Seal, Paper No. 19. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. With their Motion To Terminate and Seal the parties also filed a copy of a written settlement agreement. Paper No. 19, Ex. A.” slip op. at 2
NonePatents in suitUS 6,799,084
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.