- Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.Rehearing grantedPTAB · Aug 10, 2023 · PGR2022-00023 · APJ Jeffrey N Fredman · PGR · Rehearing
On Patent Owner’s rehearing request, the Board held claim 25 unpatentable under § 112(a) because it depends from claim 14, which lacks written description support.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We therefore agree with Petitioner that we overlooked the correct dependency of claim 25. Claim 25, as a claim dependent from claim 14, lacks written descriptive support because claim 25 fails to cure the absence of descriptive support for claim 14.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“In the Final Written Decision, we determined that claim 14 lacked descriptive support. We noted that Claim 14, in particular, recites a GDC-0199 dosing regimen “compris[ing] a dose of 20 mg per day for one week, a dose of 50 mg per day for one week, a dose of 100 mg per day for one week, a dose of 200 mg of GDC-0199 per day for one week, and a dose of 400 mg per day.” Unlike for claim 1, such disclosure is not found in a single example, but results from picking and choosing three separate selections from column 24. “The written description requirement is not met when, as here, the specification provides at best disparate disclosures that an artisan might have been able to combine in order to make the claimed invention.” Flash-Control, LLC v. Intel Corp., 2021 WL 2944592 *4 (Fed. Cir. 2021) (citing Ariad, 598 F.3d at 1352.)” slip op. at 3
§ 112 disclosurePatents in suitUS 10,993,942 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Jun 17, 2020 · IPR2019-01302 · APJ John E Schneider · IPR · Rehearing
Granted rehearing and instituted inter partes review of claims 1–30 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Guan, Lee, and Hovland.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Petitioner in turn.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Request for Rehearing and conclude there are genuine issues of material fact about the teachings of Guan that warrant institution and resolution at trial.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner contends that Guan is non-analogous art in that it is not related to stimulation of the clitoris. Prelim. Resp. 59. Patent Owner also contends that there is no motivation to combine the teachings of Lee and Guan. Id. at 60–63. Patent Owner argues that one skilled in the art would not consider using the indirect stimulator of Guan in the dildo of Lee as it would require a modification of Lee beyond a simple substitution of elements. Id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner has also provided a reasonable motivation to combine the teachings of Lee and Guan. Lee comprises a dildo with an extension which directly stimulates the clitoris, a body part. Ex. 1006, Fig. 1; Ex. 1002, ¶¶ 72, 134–137. Guan discloses an apparatus, which indirectly stimulates a body part. Ex. 1007, 3; Ex. 1002 ¶ 137. Given the teaching in the art of the problems with direct stimulation versus indirect stimulation, we agree on this record with Dr. Prisco that one skilled in the art would have had a reason to substitute the indirect stimulation device of Guan for the direct intensive and is best decided on a full record. Cf. Monark Knitting Mach, Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 886 (Fed. Cir. 1998) (determining that issues of fact concerning secondary considerations precluded grant of summary judgment) reasonable expectation of success. Ex. 1002 ¶¶ 132–137.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,937,097 - PTAB · May 21, 2018 · IPR2018-00049 · APJ George C Best · IPR · Rehearing
The Board denied Parker’s rehearing request, granted institution on every ground in Laird’s petition under SAS, and denied Laird’s rehearing request as moot.
RulingsRehearing decision- RehearingRehearing, deniedGranted in part
“(d) Rehearing. 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. 37 C.F.R. § 42.71(d) (2018). To be entitled to relief, the party seeking rehearing must demonstrate that the Board abused its discretion. 37 C.F.R. § 42.71(c) (2018); see also PNY Techs., Inc. v. Phison Elecs. Corp., No. IPR2013-00472, slip op. at 2 (PTAB April 24, 2014) (Paper 16) (available at https://go.usa.gov/xQUuS). A decision based on an erroneous interpretation of law, a factual finding that is not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors may represent an abuse of discretion. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“of an IPR. Wi-Fi One LLC v. Broadcom Corp., 878 F.3d 1364, 1372 (Fed. Cir. 2018) (holding that § 314(a) “grants the Director discretion not to institute even when the threshold is met.”). The Director has delegated this discretion to the PTAB. 37 C.F.R. § 42.4(a). The Board has identified a nonexhaustive list of factors to be considered in deciding whether or not to refuse to institute an IPR in the context of evaluating follow-on petitions. Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR 2016-01357, slip op. at 16 (PTAB September 6, 2017) (Paper 19) (precedential in relevant part) (available at https://go.usa.gov/xQUvu). For the purpose of this decision, we assume without deciding that at least two of these factors also are relevant to our decision regarding whether or not to institute an IPR that does not involve a follow-on petition—for example, whether to institute an IPR with respect to all 15 grounds of alleged unpatentability set forth in Laird’s Petition even though we have determined that Laird has not established a reasonable likelihood of success with respect to 13 of those 15 grounds. These factors are (6) the finite resources of the Board and (7) the Board’s statutory obligation to issue a final written decision not later than one year after the IPR institution date. See id. (factors 6 and 7).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“opinion in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). In that decision, the Supreme Court held that in an instituted IPR, we must issue a final written decision addressing each patent claim challenged by the petitioner. SAS, 138 S. Ct. at 1354.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“stability of Nguyen’s soft gel material because Nguyen does not describe the physical properties of this soft gel. Paper 13, 3–4. This argument is not persuasive because Nguyen describes the soft gel material as “a colloid in which the disperse phase has combined with the continuous phase to form a viscous ‘jelly-like’ product.” Ex. 1008, col. 3, ll. 6–8. Nguyen further states that the degree of cross-linking between the amine resin and the rubber composition and/or between the rubber compounds themselves will determine the consistency of the soft gel, which can range from “liquid-like” to “solid-like.” Id. at col. 4, ll. 18–34. In the absence of evidence to the contrary—and Parker has provided none—this is sufficient support for the opinion provided by Laird’s expert that Nguyen describes a form-stable composition.” slip op. at 4
Discretionary denialPatents in suitUS 7,208,192 - Hospira, Inc. v. Genentech, Inc.Rehearing grantedPTAB · Oct 26, 2017 · IPR2017-00731 · APJ Zhenyu Yang · IPR · Rehearing
The Board granted Hospira’s rehearing request and instituted review of claims 1–14 for obviousness over Baselga ’94 and Baselga ’96.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“recites “in the absence of an anthracycline derivative.” In the Petition and the Preliminary Response, neither party proposed a construction for that term. Patent Owner, however, argues that “[e]ven if a person of ordinary skill would have chosen to combine an anti-ErbB2 antibody and a taxoid, there is no reason an ordinarily skilled artisan would have avoided anthracyclines as part of that treatment.” Prelim. Resp. 52 (emphasis added). In our Decision denying institution, we agreed with Patent Owner, stating that evidence of the record is “insufficient to suggest that an ordinary artisan would have avoided anthracyclines while pursuing the combination therapy with anti-ErbB2 antibody and a taxoid in a treatment regimen for humans.” Dec. 10 (emphasis added). In its Request for Rehearing, Petitioner contends that we erred in interpreting the limitation “in the absence of an anthracycline derivative” as requiring “avoidance” of an anthracycline derivative. Reh’g Req. 6. According to Petitioner, this term “is a negative limitation that is satisfied by anti-ErbB2 antibody–paclitaxel combinations that do not include an [anthracycline] derivative.” Id. at 5. After reconsidering the current record, we find Petitioner’s argument persuasive. In particular, because Baselga ’94 suggests a therapeutic composition consisting of an anti-ErbB2 antibody and paclitaxel, and does not suggest that doxorubicin must necessarily be included as part of the same treatment regimen, we are persuaded that the reference satisfies the limitation “in the absence of an anthracycline derivative.” Cf. Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir. 2005) (concluding the prior art anticipates a claim requiring a composition “essentially free of antioxidants,” because the prior art teaches “optional inclusion” of antioxidants, “despite no express teaching to exclude the antioxidants”).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, Petitioner has presented sufficient evidence, for purposes of instituting trial, to show that in considering prior therapy received, an ordinary artisan would have been motivated to treat patients with ErbB2- overexpressing breast cancer by administering a combination of an anti- ErbB2 antibody and a taxoid, and “in the absence of an anthracycline derivative.”” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner, however, points to other evidence to show that prior art teaches an ordinary artisan to combine an anti-ErbB2 antibody with a taxoid. Specifically, Petitioner refers to Baselga ʼ94 for teaching that, in mouse xenografts, “individual treatment with either anti-HER2 4D5 or paclitaxel alone resulted in 35% growth inhibition whereas the combination ‘resulted in a major antitumor activity with 93% inhibition of growth’ without increasing toxicity.” Id. at 45 (citing Ex. 1005 at 4). Similarly, Baselga ’96, citing Baselga ’94, teaches that “[i]n preclinical studies, both in vitro and in xenografts, rhuMAb HER2 markedly potentiated the antitumor effects of several chemotherapeutic agents, including … paclitaxel without increasing their toxicity.” Id. at 44 (quoting Ex. 1004, 15). Based on these teachings, we are persuaded that an ordinary artisan would have had a reason to treat HER2-positive breast cancer patients with a combination of rhuMAb HER2 and a taxoid.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner argues that Exhibit 2029, which states that “breast cancers that overexpress p185 [i.e., HER2] will not respond well to Taxol,” teaches away from the claimed combination therapy. Prelim. Resp. 51 (citing Ex. 2029,5 1362). We are not persuaded on this record. In an obviousness inquiry, we must analyze the prior art as a whole, and not individually. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (explaining that the question is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination”). Other evidence of record shows paclitaxel had been approved for treating breast cancer (see, e.g., Ex. 1025, 10), demonstrates synergy of paclitaxel and an anti-ErbB2 antibody in human breast cancer xenografts (see, e.g., Ex. 1005, 4; Ex. 1004, 15), and suggests clinical trials of the combination therapy (see, e.g., Ex. 1005, 4; Ex. 1004, 15). Weighing all evidence of record, we are not persuaded that prior art as a whole teaches away from combining paclitaxel and an anti-ErbB2 antibody in treating HER2-positive cancers.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 7,846,441 - Milwaukee Electric Tool Corporation / Techtronic Industries Co. Ltd. et al. v. Irwin Industrial Tool CompanyRehearing grantedPTAB · Jan 15, 2016 · IPR2015-01462 · APJ Michael L Woods · IPR · Rehearing
The Board granted rehearing and instituted trial on claims 21–30 under Ground 2, as obvious over Redford, alongside the grounds previously instituted.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Specifically, Petitioner acknowledges that the Petition (Paper 2, “Petition”) included a “typo[graphical error] in the heading [that] might have caused the Board to overlook claims 21–30 in Ground 2 of the Petition.” Id. at 2–3; Paper 2, 26 (listing claims 1–5, 14–20, and 32–34 in the heading of Ground 2 of the Petition). Upon reviewing the record before us, we agree with Petitioner that the typographical error in the Petition caused us to “overlook the fact that claims 21–30 were included in Ground 2 of the Petition.” Req. Reh’g 2. Furthermore, based on our review of Petitioner’s explanations and supporting evidence, we are also persuaded that Petitioner has established a reasonable likelihood of prevailing in its challenge of claims 21–30 under Ground 2, in addition to claims 1–5, 14–20, and 32–34, as obvious over Redford. See Paper 2, 4, 26–31; see also Paper 7, 19–20 (instituting review of claims 1–5, 14–20, and 32–34 under Ground 2 in the Decision).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon reviewing the record before us, we agree with Petitioner that the typographical error in the Petition caused us to “overlook the fact that claims 21–30 were included in Ground 2 of the Petition.” Req. Reh’g 2. Furthermore, based on our review of Petitioner’s explanations and supporting evidence, we are also persuaded that Petitioner has established a reasonable likelihood of prevailing in its challenge of claims 21–30 under Ground 2, in addition to claims 1–5, 14–20, and 32–34, as obvious over Redford. See Paper 2, 4, 26–31; see also Paper 7, 19–20 (instituting review of claims 1–5, 14–20, and 32–34 under Ground 2 in the Decision).” slip op. at 2
NonePatents in suitUS 8,579,555 - Umicore AG & Co. KG v. BASF CorporationRehearing grantedPTAB · Dec 7, 2015 · IPR2015-01124 · APJ Jo-Anne M Kokoski · IPR · Rehearing
Granted Patent Owner’s rehearing request and limited trial to the listed § 103 grounds, excluding claims 17, 18, 21, and 22.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree that we overlooked Patent Owner’s arguments that Petitioner failed to demonstrate sufficiently that Maeshima, Breck, and Dedecek disclose or suggest the SAR values recited in claims 17, 18, 21, and 22. Upon further consideration, we agree with Patent Owner that Petitioner has not offered adequate evidence demonstrating that the higher SAR values required by claims 17, 18, 21, and 22 would have been obvious to a person having ordinary skill in the art over the combination of Maeshima and Breck, or over the combination of Dedecek and Breck. See, e.g., Pet. 13–14, 43; Ex. 1108 ¶¶ 122–129. Patent Owner’s Request for Rehearing is granted.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree that we overlooked Patent Owner’s arguments that Petitioner failed to demonstrate sufficiently that Maeshima, Breck, and Dedecek disclose or suggest the SAR values recited in claims 17, 18, 21, and 22. Upon further consideration, we agree with Patent Owner that Petitioner has not offered adequate evidence demonstrating that the higher SAR values required by claims 17, 18, 21, and 22 would have been obvious to a person having ordinary skill in the art over the combination of Maeshima and Breck, or over the combination of Dedecek and Breck. See, e.g., Pet. 13–14, 43; Ex. 1108 ¶¶ 122–129.” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,404,203 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part, instituting review of claims 42–44, 47–51, 53, 55, and 56 for anticipation and claim 57 for obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews 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 an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 99. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 99 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 101–102. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“terms, and we agree, for purposes of this decision, that claim 42 does not require a specific quantity of DME in the distillation overhead. We do not agree with Petitioner, however, that the Singh and ’507 patent disclosures are identical with respect to the addition of water to distillation column 22. As indicated in our Decision, both Singh and the ’507 patent describe adding small amounts of water to column 22 for the purpose of inhibiting impurity formation. See Dec. 5–6. The ’507 patent, however, includes additional description of adding water to column 22 for the purpose of producing DME in the distillation overhead. See id. at 7 (citing Ex. 1002, col. 11). This additional description of adding water to produce DME in the distillation overhead does not refer back to the description of adding water as an inhibitor (see Ex. 1002, 10:9–32), or otherwise indicate that the small amounts of water used to inhibit impurity formation in the ’507 patent and Singh processes would produce DME in a distillation overhead. In addition, for the reasons explained in our Decision (Dec. 25–26), Petitioner has not persuaded us that the prosecution history of the ’507 patent includes an admission by Patent Owner that the addition of any amount of water to the distillation step would result in DME in an overhead stream. See Req. Reh’g 10. In sum, Petitioner has not convinced us that our Decision was based on an erroneous claim interpretation or that we overlooked evidence that the addition of any amount of water in the steps common to the Singh and the ’507 patent processes would necessarily result in the presence of DME in a distillation overhead. With respect to Petitioner’s assertions regarding Akinori, we note the Petition relied on Akinori as evidence that DME was necessarily produced in the ’095 patent process. See Pet. 43. Petitioner did not explain how Akinori was relevant to show the presence of DME in the distillation overhead of Singh. For the above reasons, the Request for Rehearing is denied as to the challenge based on Singh in view of the ’095 patent and Akinori.” slip op. at 7
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part; IPR was instituted on claims 58–60, 67, 69, 71, and 72 for anticipation by the ’095 patent and claim 73 for obviousness over the ’095 patent and JP ’712.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews 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 an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 99–100. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 58 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 59, 60, 67, 69, 71, and 72, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 25–30.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“on the combination of the ’095 patent and Akinori, based on our determination in Section 1.A., above, that Petitioner had established a reasonable likelihood it would prevail on the merits in showing claim 58 was anticipated by the ’095 patent alone, and the Petition did not articulate a substantive difference between the two challenges. In the present challenge, the Petition fails to explain how Akinori is relied upon for a teaching of a claim 73 feature not described in the ’095 patent. See Pet. 47–51. The Petition does explain, however, why claim 73 would have been obvious over the combination of the ’095 patent and JP ’712. See id. at 50–51. Based on the record before us, Petitioner has established a reasonable likelihood it would prevail in showing claim 73 would have been obvious over the ’095 patent and JP ’712. Therefore, the Request for Rehearing is granted as to claim 73, and trial is instituted based on the combination of the ’095 patent and JP ’712.” slip op. at 11
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part and review instituted on claims 1–4, 6–11, and 13 as obvious over Singh, the ’095 patent, and Akinori.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews 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 an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50. In sum, upon reconsideration of this challenge in light of the Request for Rehearing, we determine Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that it would prevail on the merits in showing claims 1–4, 6–11, and 13 would have been unpatentable over Singh, the ’095 patent, and Akinori. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“declaration testimony; rather, we assessed the persuasiveness of Mr. Miura’s testimony in light of other factual evidence in the record. See Dec. 16–20; Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate. . . . In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within that discretion.”). We did not conclude DME is absent in the distillation overhead in the ’095 patent Example. We found Mr. Miura’s testimony and Experiment 1 were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example given the differences in the ’095 patent Example and Experiment 1 reaction liquids. Thesedifferences were not addressed adequately by Mr. Miura. In this regard, we found Mr. Miura’s dismissal of these differences as “slight,” without further discussion, was not persuasive in light of our actual comparison of the ’095 patent Example and Experiment 1, that revealed “Miura’s Experiment 1 contained more than twice the amount of rhodium and about 34% of the amount of water used in the ’095 patent Example,” Dec. 19, and our review of the ’095 patent and Petitioner’s own patent, U.S. Patent No. 7,683,212 B2 (Ex. 2014), that indicate these differences would affect the reaction product, Dec. 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,076,507
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.