- PTAB · Jun 6, 2025 · IPR2025-00257 · APJ Lilan Ren · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Cable and Naware and over Comb and Tummala.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“discussed below, we decline to exercise our discretion to deny the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Institution of an inter partes review requires that “the information presented in the petition . . . and any response . . . 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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“persuaded that Petitioner has sufficiently shown for purposes of institution that a person of ordinary skill in the art would have been motivated to combine the teachings of Cable and Naware in the manner argued by Petitioner. For example, both references directly relate to 3D printing, and we are persuaded that Cable teaches “a heated build platform and calls on the POSITA to implement this teaching via suitable solutions known in the art.” Pet. 13 (noting that Cable teaches a build platform that can be heated “by any suitable heating elements” (citing 1006 ¶ 45)). The current record also indicates that Naware taught known options in this regard, e.g., where it describes a build plate to be used in a 3D printing process that includes contact plates and temperature control modules. See, e.g., Ex. 1007, code (57). Petitioner additionally argues that there is a reasonable expectation of success in combining Cable with Naware because “3D printers with temperature-controlled heated build plates were well-known technologies at the time of the ’660 patent in 2014, and these technologies had been successfully demonstrated in the real-world by then.” Pet 15 (citing various portions of Ex. 1003). Patent Owner does not contest Petitioner’s arguments with respect to a reasonable expectation of success in combining Cable with Naware. See generally Prelim. Resp. Based on our review and consideration of the current record, we are persuaded that Petitioner has sufficiently shown for the teachings of Cable and Naware in the manner argued by Petitioner.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not contest Petitioner’s description of a person of ordinary skill in the art (a ‘POSITA’) having a bachelor’s degree in Mechanical Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 37. Patent Owner does not address the specific knowledge that Petitioner contends that ordinarily skilled artisan would possess. Id. For purposes of this decision, we adopt Petitioner’s unopposed definition of the level of ordinary skill in the art as it appears consistent with the disclosures of the ’660 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,592,660 - Wuhan Healthgen Biotechnology Corp. v. Ventria Bioscience Inc.Institution deniedPTAB · Aug 19, 2022 · IPR2022-00712 · APJ Michael A Valek · IPR · Institution
Institution was denied for claims 1–9 and 11–13 because the petition did not show a reasonable likelihood of establishing unpatentability on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regarding the alleged motivation to combine Tanaka’s purification “guidance,” Petitioner has not articulated persuasive reasoning with rational underpinning to explain why a POSA would have sought to further purify Deeter’s rHSA. Deeter already teaches that its rHSA is purified using ion-exchange chromatography and reports that such rHSA is equivalent to or better than pHSA in stimulating cell growth. Ex. 1003 ¶¶ 116–120 (Examples 7–9). In view of these disclosures, Petitioner has not sufficiently explained why a POSA would be have been motivated to apply a different purification process or to add additional purification steps to Deeter’s existing process.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that Petitioner’s description of the level of ordinary skill in the art is supported by the record. Thus, for purposes of this decision, we apply Petitioner’s description of a POSA.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party suggests that the issues presented in the Petition turn on claim construction. See Pet. 16 (noting the parties’ competing constructions in a related proceeding, but urging that the prior art discloses the limitations “[r]egardless of which interpretations are applied”); Prelim. Resp. 19 (“validity of the ’951 patent does not hinge on claim construction”). We agree that no formal claim construction is necessary for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Regarding the alleged motivation to combine Tanaka’s purification “guidance,” Petitioner has not articulated persuasive reasoning with rational underpinning to explain why a POSA would have sought to further purify Deeter’s rHSA. Deeter already teaches that its rHSA is purified using ion-exchange chromatography and reports that such rHSA is equivalent to or better than pHSA in stimulating cell growth. Ex. 1003 ¶¶ 116–120 (Examples 7–9). In view of these disclosures, Petitioner has not sufficiently explained why a POSA would be have been motivated to apply a different purification process or to add additional purification steps to Deeter’s existing process.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,618,951 - RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01752 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place the determination that Salesforce was an RPI and the petitions were time-barred under § 315(b).
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 to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barDenied
“In the Final Decision on Remand, we determined that Salesforce was a real party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination, we terminated the previously instituted inter partes reviews. Id. at 40. On October 9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed below, we deny Petitioner’s Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)).” slip op. at 4
Discretionary denialPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01751 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place termination of the instituted IPRs because Salesforce was an RPI and the petitions were time-barred under § 315(b).
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 to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Final Decision on Remand, we determined that Salesforce was a real party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination, we terminated the previously instituted inter partes reviews. Id. at 40. On October 9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed below, we deny Petitioner’s Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)). In this case, Petitioner had ample opportunity to brief the issue of RPI. See Paper 28, Paper 29 (redacted version); Paper 38, Paper 37 (redacted version); Paper 98, Paper 95 (redacted version); Paper 100, Paper 104 (redacted version); Paper 101, Paper 102 (redacted version). Petitioner also had an opportunity to argue the issue of RPI in two oral hearings. See Paper 77, Paper 112, Paper 123 (redacted version). Moreover, in its Request for Rehearing, Petitioner had a chance to identify any matters it believes this panel misapprehended or overlooked in its Final Decision on Remand. Petitioner further had an opportunity to file a Reply to Patent Owner’s Response to its Request. Thus, both before and after this panel issued its Final Decision on Remand, Petitioner had notice and an opportunity to be heard on issues relevant to these cases on remand from the Federal Circuit. Finally, although a change in panel after remand from the Federal Circuit is not common, this panel, like the original panel, decided the merits of each case based on the entirety of the record. Stated another way, either panel would have decided the case after careful consideration of the same evidence. Nor can Petitioner complain that it lacked notice and an opportunity to be heard regarding the panel change – Petitioner received notice of the panel change both before and in the panel decision, and Petitioner’s Request for Rehearing and Board-authorized Reply gave it ample opportunity to be heard. Accordingly, we are not persuaded that the change in panel has prejudiced Petitioner in any way or violated Petitioner’s due process rights.” slip op. at 4
Discretionary denialPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01750 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place the remand decision terminating the reviews because Salesforce was an RPI and the petitions were time-barred under § 315(b).
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 to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“III. ANALYSIS In the Final Decision on Remand, we determined that Petitioner had not shown, by a preponderance of the evidence, that Salesforce was not an RPI in these proceedings. Dec. 1–2, 6–7, 30–35, 40. As noted above, in light of this determination, we terminated the previously instituted inter partes reviews, and denied inter partes reviews under 35 U.S.C. § 315(b). Id. at 35, 40.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)). In this case, Petitioner had ample opportunity to brief the issue of RPI. See Paper 28, Paper 29 (redacted version); Paper 38, Paper 37 (redacted version); Paper 98, Paper 95 (redacted version); Paper 100, Paper 104 (redacted version); Paper 101, Paper 102 (redacted version). Petitioner also had an opportunity to argue the issue of RPI in two oral hearings. See Paper 77, Paper 112, Paper 123 (redacted version). Moreover, in its Request for Rehearing, Petitioner had a chance to identify any matters it believes this panel misapprehended or overlooked in its Final Decision on Remand. Petitioner further had an opportunity to file a Reply to Patent Owner’s Response to its Request. Thus, both before and after this panel issued its Final Decision on Remand, Petitioner had notice and an opportunity to be heard on issues relevant to these cases on remand from the Federal Circuit. Finally, although a change in panel after remand from the Federal Circuit is not common, this panel, like the original panel, decided the merits of each case based on the entirety of the record. Stated another way, either panel would have decided the case after careful consideration of the same evidence. Nor can Petitioner complain that it lacked notice and an opportunity to be heard regarding the panel change – Petitioner received notice of the panel change both before and in the panel decision, and Petitioner’s Request for Rehearing and Board-authorized Reply gave it ample opportunity to be heard. Accordingly, we are not persuaded that the change in panel has prejudiced Petitioner in any way or violated Petitioner’s due process rights.” slip op. at 4
Discretionary denialPatents in suitUS 8,484,111 - Teva Pharmaceuticals USA, Inc. v. Corcept Therapeutics, Inc.No claims unpatentablePTAB · Nov 18, 2020 · PGR2019-00048 · APJ David Cotta · PGR · Final written decision
Claims 1–13 were not shown unpatentable because the prior art did not establish a reasonable expectation that doses above 300 mg/day of mifepristone could be safely co-administered with a strong CYP3A inhibitor.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The definition of a POSA that best incorporates both experience with drug-drug interaction and experience treating patients is Petitioner’s proposed multidisciplinary team. Patent Owner does not object to defining the POSA as part of a multidisciplinary team, so long as that team includes a person with experience treating Cushing’s syndrome, which, as discussed above, is appropriate. Tr. 38. Accordingly, we define the POSA as: a multidisciplinary team that includes researchers and clinicians in the field and is able to draw upon not only the individual skills of each team member, but also the specialized skills of others to solve a given problem. The 6 Claim 5 and its dependents are directed to “[a] method of treating symptoms associated with elevated cortisol levels.” Cushing’s syndrome is “caused by excess levels of cortisol.” Ex. 1001, 1:31–33. Accordingly, claim 5 relates to Cushing’s syndrome even if it does not specifically recite that the patient has Cushing’s syndrome. All of the other claims expressly recite Cushing’s syndrome. researchers and clinicians would have an M.D., a Pharm. D., and/or a Ph.D. in pharmacology or a related discipline. The clinician would have at least four years of experience treating patients with Cushing’s syndrome using mifepristone and/or CYP3A inhibitors. The researcher would have at least four years of experience studying drug-drug interactions involving CYP3A inhibitors.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Further, if we were to consider Petitioner’s new argument, we would find that the claims do require safety, as entirely consistent with what both parties unmistakably understood, as evidenced by their patentability arguments throughout the proceeding (until Petitioner’s new argument in its Reply). In this regard, we note that the preambles in the independent claims at issue, i.e., in claims 1, 5, and 10, are necessarily limiting and we consider the scope of the challenged claims as a whole, including preambles, in our patentability analysis. The preamble in claim 1, for example, recites a “method of treating Cushing’s syndrome in a patient who is taking an original once-daily dose of 1200 mg or 900 mg per day of mifepristone.” Ex. 1001, 68:2–16. Claims 5 and 10 contain similar language relating to a patient taking an “original once-daily dose” of 1200 mg or 900 mg per day of mifepristone, although claim 5 is directed to a “method of treating symptoms associated with elevated cortisol levels,” and claim 10 is directed” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In addition, when considering the recited methods of treatment (or controlling hyperglycemia) in a patient in the context of the specification, we interpret the recited methods to require administration of drugs in a manner that is safe for a patient. The summary section in the specification of the ’214 patent, for example, states that: concomitant administration of a CYP3A inhibitor such as ketoconazole and a GRM such as mifepristone is believed to be safe for the subject, and to provide the therapeutic benefits of both drugs to the subject, and may allow the reduction in the amount of a GRM, or of a CYP3A inhibitor, administered to the subject; such reduction may reduce the risk of toxic effects of the CYP3A inhibitor concomitantly administered with the GRM. Ex. 1001, 3:50–58 (emphasis added); see id. at 4:4–21. That disclosure, along with many other statements in the specification, clarify that safety and efficiency are important aspects of the recited methods, especially in relation to toxic effects that might preclude treatment in patients. See also id. at 13:1–3 (stating “Applicant discloses herein methods for the safe concomitant administration of both a glucocorticoid receptor modulator (GRM) and steroidogenesis inhibitor to a subject.”), 13:10–23 (same).” slip op. at 20
- Strike new argumentNew argument disregardedDecided for patent owner
“Our regulations require the Petition to identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). A reply is not an opportunity to start anew, to fill in gaps or to remedy omissions in a petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1357 (2018) (explaining that “petitioner’s contentions [in a petition] ... define the scope of the litigation all the way from institution through to conclusion.”); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. We therefore decline to consider Petitioner’s belatedly presented new argument in its Reply that the claims do not require safety. See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., 821 F.3d at 1369–70 (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Even if we were to consider Petitioner’s new argument regarding claim construction, we would not find it persuasive because Petitioner’s obviousness rationale incorporates an expectation of safety. Irrespective of whether the claims require safety, Petitioner cannot carry its burden to establish that the claimed methods would have been obviousness without establishing that – as posited in the Petition – the POSA would have expected co-administration to be safe.” slip op. at 18
Patent outcomesUS 10,195,214 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,195,214 - Apotex Inc. / Apotex Corp. v. Celgene CorporationRehearing deniedPTAB · Apr 30, 2020 · IPR2018-00685 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution on all challenged claims under § 325(d) for grounds I and II and for failure to establish printed-publication status for ground III.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. 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). 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.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“presented in the petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 at 10 (Feb. 13, 4 2020) (precedential). Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. If the same or substantially the same art or arguments were previously presented to the Office, we then consider whether petitioner has demonstrated the Office erred. Id. In evaluating the Petition and accompanying evidence in light of the Becton, Dickinson factors, we determined that grounds I and II were “based on substantially the same prior art and arguments previously presented to the office,” and that Petitioner had “neither sufficiently pointed out how the Examiner erred, nor provided additional evidence or facts that warrant reconsideration of the Examiner’s decision.” Inst. Dec. 26. Accordingly, we exercised our discretion under 35 U.S.C. §325(d) and denied institution of grounds I and II on that basis.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we determined that the Petition failed to establish a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one claim challenged in the Petition, and declined to institute an inter partes review on any of the three grounds asserted. Specifically, with respect to grounds I and II, we declined to institute pursuant to our discretion under 35 U.S.C. § 325(d). Inst. Dec. 22–26. With respect to ground III, we determined that Petitioner had not met its burden of establishing that the Celgene Press Release was available as a printed publication. Id. at 27–31.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“we determined that the Petition failed to establish a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one claim challenged in the Petition, and declined to institute an inter partes review on any of the three grounds asserted. Specifically, with respect to grounds I and II, we declined to institute pursuant to our discretion under 35 U.S.C. § 325(d). Inst. Dec. 22–26. With respect to ground III, we determined that Petitioner had not met its burden of establishing that the Celgene Press Release was available as a printed publication. Id. at 27–31.” slip op. at 3
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,741,929 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · Apr 17, 2020 · PGR2018-00062 · APJ Grace Karaffa Obermann · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the Final Written Decision holding claims 1–30 unpatentable based on Varenna and other references.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon a request for rehearing, we review our decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. We deny the Request for Rehearing based on application of those principles.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“persons of skill in the art could have located it.” Req. Reh’g 1 (emphasis in original). On the contrary, we addressed with particularity the substantial evidence tending to show that Varenna “was ‘sufficiently accessible to the public interested in the art’ and ‘disseminated or otherwise made available’ to the interested public before the critical date.” Dec. 9 (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)). In our Decision, we properly credited “indicia on the face of [the] reference, such as printed dates and stamps,” which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, Paper 29 at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Those indicia included not only details of the copyright notice, indicating publication of Varenna “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” but also additional legends, including “the statement ‘Advance Access publication 30 November 2012,’” and a conventional edition identifier from the journal Rheumatology. Id. at 9–10 (quoting Ex. 1005). Patent Owner advanced no evidence tending to cast doubt on that publication date. Although the burden of proof never shifted to Patent Owner on the issue of Varenna’s public availability, where Patent Owner declined to advance counter evidence on point, the Board did not err by crediting the indicia, which appear on the face of Varenna, as part of the totality of evidence bearing on the issue.” slip op. at 6
- Strike new argumentNew argument consideredDecided for petitioner
“The precedential decision in Hulu is instructive here, and specifically recognizes “limited opportunities” that “exist for the petitioner to present new evidence” pertaining to the question of public availability. Hulu, Paper 29 at 14. One opportunity expressly identified in Hulu is “in a reply to the patent owner response” where “the patent owner challenges a reference’s status as a printed publication.” Id., Paper 29, 14–15. That is precisely the circumstance here. Patent Owner shows no reversible error in our finding that Dr. Robinson’s Declaration, submitted with Petitioner’s Reply, responds to arguments raised for the first time in Patent Owner’s Response. Dec. 13 (comparing Reply 3–7 and Ex. 1031, with Resp. 12–15). In any event, in our alternative holding, we explain why substantial evidence supports our finding of public availability, “[e]ven if we set aside Dr. Robinson’s Declaration.” Dec. 9. This is not a situation where Petitioner submitted Reply evidence that changed the theory of the patent challenge or, as Patent Owner suggests, represents a circumstance comparable to raising “a new obviousness argument” not advanced in the Petition. Req. Reh’g 11 (quotation omitted); see Pet. vii (identification of Varenna and its alleged publication date of “Nov. 2012”), 3–4 (bridging paragraph, asserting that Varenna was “published in 2012”), 33 (asserting that “Varenna 2012 is one of dozens of references” presented during patent prosecution). Moreover, no prejudice attended allowance of the Reply evidence, where we also allowed Patent Owner a Sur-Reply to address that evidence. Dec. 13. Patent Owner takes issue with the Board’s observation that “Patent Owner was afforded an opportunity (fully taken) to file a Sur-Reply on issues raised in Dr. Robinson’s Declaration.” Id. (citing Sur-Reply 2–11). Patent Owner points out that the Sur-Reply included “only a short paragraph” countering that Declaration, but acknowledges that this circumstance was the result of Patent Owner’s own assessment of the relative importance of the evidence. Req. Reh’g 2–3 n.2. Patent Owner’s strategic calculation, regarding how much space or effort to devote to countering Dr. Robinson’s testimony, does not denigrate the opportunity afforded in the Sur-Reply, or reveal reversible error in the Decision.” slip op. at 8
- BurdenDecided for petitioner
“The Board did not, as Patent Owner argues, “shift[] the burden of proof to Patent Owner to prove that Varenna was not disseminated or otherwise made available to the public.” Id. at 1 (emphasis in original). On the contrary, the Board reasonably weighed the objective proof of public availability against Patent Owner’s bare attorney arguments on point. See Dec. 8–15 (reasoning that the indicia of public accessibility appearing on the face of Varenna, combined with Patent Owner’s conduct during patent prosecution and information submitted under oath in Dr. Robinson’s Declaration, outweigh Patent Owner’s conclusory attorney arguments, which are supported by no objective proof). The objective evidence points in one direction; namely, that Varenna is what it appears to be, a copy of a journal article published in Rheumatology by the Oxford University Press in November of 2012. Id. Patent Owner shows no reversible error in the Decision relating to the Board’s assignment of Petitioner’s burden of proof, any inferences drawn from the evidence of record, or the alternative holding that Dr. Robinson’s testimony bolsters the substantial evidence of record showing that Varenna was publicly available at the time of the invention.” slip op. at 10
§ 102 anticipationPatents in suitUS 9,707,245 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · Mar 26, 2020 · PGR2018-00001 · APJ Grace Karaffa Obermann · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 3–30 unpatentable for lack of enablement because the specification does not guide an artisan to practice their full scope without undue experimentation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we review our decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. Based on an application of those principles, we deny the Request for Rehearing.” slip op. at 2
- Expert testimonyOther
“zolendronic acid dosage forms could achieve bioavailabilities as high as 1.1% to “a belie[f] in ‘fairies.’” Req. Reh’g 2 (quoting Dec. 14; Ex. 2014, 137:21–138:8). That testimony represents a small fraction of the totality of evidence that undergirds our finding that an ordinarily skilled artisan generally would have expected that attaining a human bioavailability for zolendronic acid above 1% required an enhancer. See Dec. 12–21 (citing substantial evidence for that proposition). Even if we set aside the testimony misattributed to Dr. Wargin, substantial evidence supports that finding.” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable
“unenhanced dosage form of zoledronic acid disclosed in Aronhime or Exhibit 2026 would have attained a bioavailability that falls within the scope of the challenged claims. The key is whether an ordinarily skilled artisan, reading the disclosure of the ’268 Patent, would have been equipped to practice the full scope of the claimed invention. We did not overlook or misapprehend Exhibit 2026. We correctly determined that, in this unpredictable field of pharmaceutical formulation, an ordinarily skilled artisan would have required direction (lacking in the Specification or the prior art) explaining how to prepare dosage forms that meet the full range of bioavailabilities embraced by the challenged claims, including the specified high endpoint human bioavailability of about 4%. See, e.g., Dec. 11–12 (citing undisputed evidence of unpredictable nature of the field of invention (Ex. 1005 ¶ 60)).” slip op. at 7
§ 112 disclosurePatents in suitUS 9,539,268 - Reactive Surfaces Ltd., LLP v. LG Chem Ltd.All claims unpatentablePTAB · Feb 24, 2020 · IPR2018-01520 · APJ Timothy G Majors · IPR · Final written decision
Claims 1–8 are unpatentable as obvious; the contingent motion to amend is granted for substitute claims 9–16.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “anti-fingerprint coating” The phrase “anti-fingerprint coating” appears twice in claim 1: first in” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“fingerprint must “vaporize” from the coated surface.30 As discussed above (Section III(C)), the claimed “anti-fingerprint” functionality encompasses a coating that is capable of actively reducing transfer of a fingerprint or decomposing a fingerprint transferred to a surface of the coated substrate. Accordingly, notwithstanding Buchanan’s shortcomings in evidencing inherent vaporization of enzymatically decomposed fingerprint components, we are unpersuaded this is fatal to Petitioner’s challenge. Rather, for” slip op. at 43
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“conclusory” lack merit. Dr. Cairns has relevant expertise in this area, whereas Petitioner’s declarant, Dr. Rozzell, does not. Ex. 2035 (Rozzell dep.), 128:15–20 (“[Y]ou are not a person of ordinary skill in the art as it pertains to the use of haze values to assess visibility, are you? A. No.”); Ex. 2033 (Cairns Decl.) ¶¶ 2–9 (describing, inter alia, Dr. Cairns’s many years of experience working with and researching specialized coatings for display and touch-sensor applications and optical properties for such devices). Accordingly, Dr. Cairns’s testimony about there being a recognized and sufficiently definite correlation between haze and contaminant (including fingerprint) visibility on display devices is entitled to greater weight than Dr. Rozzell’s opinions on the topic. See, e.g., Ex. 2036 ¶¶ 62–67 (analyzing portions of the patent and prior art to support the opinion that haze is correlated to visibility); Ex. 2035 (Rozzell dep.) 125:1– 16 (“[W]hatever familiarity you have acquired with respect to the utilization of haze as a measurement of visibility has been acquired in the context of this IPR; correct? A That’s correct.”). Dr. Cairns’s opinions are also not conclusory as argued, but are supported with evidence from the patent and the prior art as noted. Ex. 2036 ¶¶ 62–67. slip op. at 83
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“have wanted to combine Amin’s and Wang’s coatings, Petitioner simply does not provide an adequate, evidence-backed analysis of how such person would have predictably done so. As Patent Owner points out, the evidence on this record raises doubts that the two coatings could have been successfully combined. MTA Reply 6–8. Specifically, evidence of record supports Patent Owner’s argument that a skilled artisan would not have reasonably expected “that the digestive enzymes of Wang could be successfully immobilized on the fluorine-coated surface of Amin.” Id.; Ex. 2036, ¶¶ 6–10; Ex. 2035, 15:5˗19:2. Notably, the testimony of Petitioner’s own declarant supports the conclusion that the combination Petitioner proposes would not have been reasonably predictable—if even possible at all. When Dr. Rozzell was asked if there were other materials (like enzymes) that could be adhered to the surface of Amin’s coatings, he did not know. Ex. 2035: 15:16–17:13 (“[Y]ou don’t know what any of those materials [that might adhere] are, sitting here today? A Not without doing some research on my end.”) (“So turning back to our discussion of immobilizing an enzyme on this [Amin’s coating], you don’t know of a way, today, that you could immobilize an enzyme on top of a fluorine-coated layer. A Well, I’ve personally not done exactly that type of experiment, but I can imagine that there would be approaches that would allow you to do that. Q But you don’t know any of them today? A I can’t tell you one as I’m sitting here today. Q Okay. And you’ve not recalled seeing this in a publication? A No.”).” slip op. at 87
Patent outcomesUS 8,932,717 unpatentableClaim construction§ 103 obviousnesscites Graham · NautilusPatents in suitUS 8,932,717
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.