- Kelonia Therapeutics, Inc. v. Interius Biotherapeutics, Inc.Rehearing deniedPTAB · Oct 1, 2024 · PGR2024-00008 · APJ Sheridan K Snedden · PGR · Rehearing
The Board denied rehearing and maintained its denial of PGR because Petitioner did not show that Perkins and RCSB PDB made claims 1–30 more likely than not unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Owner’s argument persuasive because Perkins discloses embodiments with “mutations at I182 among a group of 20 other possible locations for modifications,” 13 of which are mutations of specific amino acids that “can be changed to any of the 19 other natural amino acids.” Id. Perkins discloses further that modifications at each of those 20 possible sites can be combined such that “one, two, or more” of the mutations can be made together in other embodiments (Ex. 1006, 17–18), or in other words, “each species [is] combinable to create a vast number of species.” Dec. 35. In addition to the locations of modifications expressly listed in Perkins, Perkins adds yet another option in which “the mutated VSV-G envelope protein is as described in Nikolic et al.” (Ex. 1006, 18), which “describes the crystal structures of VSV G bound to its native LDL-R receptor” that RCSB PDB depicts in entries 5OY9 and 5OYL (Dec. 18). We also considered Dr. Rose’s testimony about the crystal structures depicted in RCSB PDB, namely that a person of ordinary skill in the art would have been motivated to modify Perkins based on the VSV-G crystal structures in the RCSB PDB. Perkins taught that mutations to VSV-G “inhibit binding of VSV-G to the low-density lipoprotein receptor (‘LDL-R’), while preserving the VSV-G protein’s fusogenic function,” and expressly disclosed making a mutation at I182. (See, e.g., Ex. 1005 at 19:29-20:2, 20:29-21:14, 21:16-27; Ex. 1006 at 16.) The VSV-G crystal structures in the RCSB PDB taught that I182 is nearby negatively charged amino acids on the LDL-R. Thus, a person of ordinary skill in the art would have been motivated to incorporate a mutation which negated an interaction with the negatively charged residues in the LDL-R. (Ex. 1005 at 19:29–20:2; Ex. 1006 at 16.) Dec. 37. discussed above, “Perkins provides a list of many mutations and combination[s] thereof, but provides no direction as to which of the many possible choices is likely to be successful.” Id. at 37–38. Thus, we were not persuaded that choosing an embodiment with a mutation at I182 from Perkins’s other listed embodiments with 20 possible locations for modifications, combinations of modifications at 20 possible locations, and the mutations described in Nikolic and depicted in RCSB PDB is an “easily traversed, small or finite number of alternatives that KSR suggested might support an inference of obviousness.” Id. at 35. In view of these findings, we noted that we did not “find sufficient evidentiary support for a determination that the navigation of RCSB PDB crystal structures to achieve the missing limitation would have been ‘evidently and indisputably within the common knowledge of those skilled in the art.’” Id. at 38.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“discussed above, “Perkins provides a list of many mutations and combination[s] thereof, but provides no direction as to which of the many possible choices is likely to be successful.” Id. at 37–38. Thus, we were not persuaded that choosing an embodiment with a mutation at I182 from Perkins’s other listed embodiments with 20 possible locations for modifications, combinations of modifications at 20 possible locations, and the mutations described in Nikolic and depicted in RCSB PDB is an “easily traversed, small or finite number of alternatives that KSR suggested might support an inference of obviousness.” Id. at 35. In view of these findings, we noted that we did not “find sufficient evidentiary support for a determination that the navigation of RCSB PDB crystal structures to achieve the missing limitation would have been ‘evidently and indisputably within the common knowledge of those skilled in the art.’” Id. at 38.” slip op. at 7
§ 103 obviousnessPatents in suitUS 11,767,366 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - PTAB · Mar 4, 2021 · CBM2018-00040 · APJ Christopher G Paulraj · CBM · Rehearing
The Board denied Petitioner’s second rehearing request and left in place its denial of institution because the patent’s CBM review eligibility was not subject to judicial review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our denial of institution in this proceeding in light of the Federal Circuit’s decision in SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019). Paper 19. We also authorized Patent Owner to file an opposition to Petitioner’s second request for rehearing. Paper 20. Subsequently, the Supreme Court granted a petition for certiorari, vacated the Federal Circuit’s first opinion in the SIPCO case, and remanded the case “for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP,” 140 S. Ct. 1367 (2020). On remand, the Federal Circuit determined that the issue of whether a patent qualifies for CBM review is not subject to judicial review. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 870 (Fed. Cir. 2020). Accordingly, because the circumstances that warranted further reconsideration of our denial of institution no longer hold true, we hereby decline to consider the second request for rehearing. For the foregoing reasons, Petitioner’s second request for rehearing is denied. Our original decision to deny institution based on lack of CBM review eligibility therefore stands.” slip op. at 2
NonePatents in suitUS 6,758,370 - Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing deniedPTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7
Claim construction§ 112 disclosurePatents in suitUS 10,155,039 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,382,771 - PTAB · Jun 30, 2020 · IPR2019-01517 · APJ Jennifer Meyer Chagnon · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show a reasonable likelihood that claims 21–28 and 31 were obvious over Voyksner, Watson, and Rainbow.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). III. ANALYSIS” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“precursor of 25-hydroxvitamin D2 having a molecule weight of 412.7 g/mol.” Id. (citing Pet. 27; Ex. 1002 ¶ 57). Petitioner’s arguments explain what a skilled artisan could have done, i.e., select an appropriate precursor ion. However, as discussed in the Decision, the Petition, even when considered along with Dr. Fitzgerald’s testimony, “does not describe specifically why one of ordinary skill in the art would have selected the specific precursor ion” (Dec. 19), when as discussed above, multiple precursors are possible.5 See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“prior art teaches determining the presence or amount of 25-hydroxyvitamin D2 in a sample. However, as discussed in the Decision, claim 21 “requires more than merely determining the presence or amount of 25-hydroxyvitamin D2 in a sample.” Id. at 18. Petitioner does not argue that our interpretation of the plain meaning of claim 21 is incorrect or that we should disregard the step of generating “protonated and dehydrated precursor ion of said 25-hydroxyvitamin D2 with a mass to charge ratio (m/z) of 395.30±0.5.” See id. Accordingly, we are not persuaded that we overlooked Petitioner’s arguments. Further, we agree with Patent Owner that the Petition lacks sufficient explanation of why a person of ordinary skill in the art “would have chosen to [specifically] investigate 25-hydroxyvitamin D2 using Voyksner’s methods in the first place, particularly since Voyksner only discusses ‘dihydroxyvitamin D3’ for the purposes of evaluating the orientation of certain mass spectrometry equipment.” Opp. 5 (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362–63 (Fed. Cir. 2016) (noting that it is error to accept general knowledge in the art without evidence on the record for limitations that are “not evidently and indisputably within the common knowledge of those skilled in the art”) (emphasis in original)).” slip op. at 9
§ 103 obviousnessPatents in suitUS 7,972,867 - Firstspear, LLC v. Lineweight, LLCRehearing deniedPTAB · Mar 25, 2020 · IPR2019-01170 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show that combining Fegen and Stevens would have made the claimed openings compatible with the asserted properties.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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
“motivated to adhere Fegen’s exterior garment layer to a substrate in order to provide a substrate material having water-proofing or scent blocking properties as taught by Stevens.” Pet. 31–32 (citing Ex. 1002 ¶ 55; Ex. 1006, 2:1–4, 3:50–53). In addition, the Petition asserts that one of ordinary skill in the art “would understand that the slits in Fegen extend all the way through the exterior layer and the substrate in order to permit attachments to be more easily secured to Fegen’s garment.” Id. at 35 (citing Ex. 1002 ¶ 62; Ex. 1005, Fig. 3). In the Decision, we determined that Petitioner had failed to establish sufficiently that it would have been obvious to one of ordinary skill in the art to combine Fegen and Stevens in the manner proposed. Dec. 14–16. In particular, we determined that providing slits or openings in the substrate of the proposed combination of Fegen and Stevens “would defeat, or at least greatly diminish, any water-proofing or scent blocking properties of the substrate.” Id. at 15. Thus, we disagreed with Petitioner’s contention that one of ordinary skill in the art would have been motivated to add a substrate to Fegen’s garment for the purpose of providing water-proofing or scent blocking properties. Id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We disagree with this broad assertion because the Petition does not demonstrate sufficiently why providing openings in the substrate, as the claims require, would not have led one of ordinary skill in the art to consider such openings detrimental to the rationale of providing water-proofing or scent blocking properties. Petitioner’s assertion also ignores the fact that the corresponding openings in the substrate would allow sweat and odor to pass through freely, thereby decreasing the effectiveness of water-proofing and scent blocking properties. Although no evidence of record appears to state expressly that openings of the size claimed would allow sweat and odor to pass freely through the substrate, this fact would have been readily apparent to one of ordinary skill in the art. Thus, the Rehearing Request fails to demonstrate that a reasonable fact finder could not have arrived at this fact, such that our determination is supported by substantial evidence. See OSI Pharm., 939 F.3d at 1381–82.” slip op. at 4
- BurdenDecided for patent owner
“Petitioner also argues that “[t]here is no evidence supporting a difference in effectiveness of the water-proofing and scent blocking properties of the substrate whether the substrate is a solid sheet of material or the substrate contains slots or openings in the same location as the exterior layer.” Reh. Req. 3. This argument, however, attempts to improperly shift the burden of persuasion away from Petitioner. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion rests with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Thus, Petitioner has the burden of presenting evidence supporting its assertion that there is no difference in effectiveness of the water-proofing and scent blocking properties of the substrate with or without openings.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,173,436 - Unified Patents Inc. v. American GNC CorporationRehearing deniedPTAB · Mar 17, 2020 · IPR2019-00505 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Unified Patents’ rehearing request and left institution denied because it had not shown JSC was reasonably likely to qualify as a publicly accessible printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“likelihood” standard applicable to decisions to institute an inter partes review. We agree with Petitioner that the “reasonable likelihood” standard applies to the issue of whether a reference asserted in a petition for inter partes review qualifies as a prior art printed publication. See id. at 3. As the Board held in a recent precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 4
- BurdenInstitution denied meritsDecided for patent owner
“are factual disputes that reach beyond the ‘reasonable likelihood’ standard and are more appropriately developed during an instituted trial.” Id. We disagree with this broad assertion because it ignores the fact that, in this case, as explained on pages 15‒16 of the Decision, Petitioner’s evidence does not meet a minimum threshold showing to even present a factual dispute as to availability and dissemination of the reference. See Hulu, Paper 29 at 13 (establishing that the Petition must identify, with particularly, evidence sufficient to establish a reasonable likelihood of public accessibility before the critical date).” slip op. at 5
§ 102 anticipationPatents in suitUS 6,411,871 - Genome & Company v. The University Of ChicagoRehearing deniedPTAB · Jan 9, 2020 · PGR2019-00002 · APJ John E Schneider · PGR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place for claims 1–29 because the Board found no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When 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 may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Owner’s argument. As we noted in our Decision, the issue of whether undue experimentation is required to practice the claimed invention is evaluated using the factors outlined in In re Wands, a fact based inquiry. Dec. 8. Our conclusion for purposes of institution that undue experimentation would be required to practice the claimed invention was based, not only on Dr. Braun’s statement to that effect, but on the detailed analysis presented by Petitioner and Dr. Braun of all of the Wands factors as supported by the evidence of record. Dec. 14–15. show that the experimentation required was other than routine and found it unpersuasive at the institution stage of the proceeding. Id. Patent Owner’s argument was based on the premise that Dr. Braun’s opinion regarding nonenablement was based on the number of experiments and not whether the experiments were routine. Prelim. Resp. 2–4. This argument ignores the fact that our consideration of Dr. Braun’s opinion was based on an analysis of all of the Wands factors, a fact based inquiry that includes analyzing the minimal guidance presented in the Specification and the unpredictability of cancer treatments and unpredictable nature of CPIS, and not merely the number of experiments required. Id. at 15; Ex. 1002 ¶ 166; In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013) (“Enablement is a question of law based on underlying factual findings.”). Although we acknowledge Patent Owner’s argument in support of its position that the claimed subject matter is enabled, we remind Patent Owner that, for purposes of deciding whether to institute a post-grant review, we view a genuine issue of material fact in the light most favorable to the petitioner. 37 C.F.R. § 42.208(c). As Patent Owner offered attorney argument concerning enablement based on the current record, we resolved the parties’ dispute regarding enablement for which Petitioner offered Dr. Braun’s opinion as supported by evidence of record in favor of Petitioner.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for petitioner
“Patent Owner contends that we should reconsider our decision to institute to avoid having Patent Owner address Petitioner’s legally insufficient enablement challenge. Reh’g. Req. 6–9. Patent Owner further contends that we should exercise our discretion and deny the Petition to help maintain the integrity of the patent system and promote fairness. Id. We have considered Patent Owner’s new arguments and are not persuaded. Those arguments were not previously raised in the Preliminary Response, and a request for rehearing is not the proper vehicle to set forth new argument.” slip op. at 5
NonePatents in suitUS 9,855,302 - PTAB · Oct 10, 2019 · IPR2018-00991 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of institution under § 314(a), concluding that the General Plastic factors supported denial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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 › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“between Petitioner and the Prior Petitioners. Unlike the Valve case, however, the majority opinion did not find that the first factor favors denying institution. Rather, the majority opinion determined that the first factor weighs against exercising discretion to deny institution, but only moderately because of the complete overlap in the challenged claims between the Petition and the petition in the 136 IPR, as well as the overlap of many issues and arguments raised by the Petition and the 136 IPR petition. Dec. 12–13. Petitioner’s arguments do not establish that we overlooked or misapprehended anything, or used unreasonable judgment, in determining that the first factor weighs only moderately against exercising discretion to deny institution. Furthermore, even if we were to determine that the first factor heavily weighs against exercising discretion to deny institution, as advocated by Petitioner, this determination would not alter our overall weighing of the General Plastic factors.” slip op. at 8
Discretionary denialPatents in suitUS 9,144,700
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.