• Satco Products, Inc. v. Seoul Semiconductor Co., LtdRehearing denied
  PTAB · Dec 8, 2020 · IPR2020-00248 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Sanga disclosed the claimed spacer-layer bandgap requirement.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9

  • BurdenDecided for patent owner

    “We further note that for purposes of the bandgap requirement of the spacer layer limitation, Petitioner relies on the specific barrier layer, spacer layer, and quantum well layer described for Example 1. Pet. 35–36 (comparing the bandgap of the In0.03Ga0.97N layer of Example 1 with the GaN barrier layer of Example 1 and the In0.3Ga0.7N quantum well layer of Example 1). Example 1 does not expressly include an n-side multilayer structure with an InxGa1-xN/InyGa1-yN configuration, wherein each layer contains indium and x<y≤ 0.1. Therefore, Petitioner’s analysis of the bandgap requirement for claim 9, which expressly relies on Sanga Example 1, requires replacing the actual spacer layer in Example 1 with a different layer, while keeping the barrier layer and quantum well layer the same for purposes of bandgap comparison. Petitioner, however, has not provided adequate justification for doing so. Petitioner’s citation to Sanga’s general disclosure of “a multilayer having a periodic structure repeating InxGa1-xN/InyGa1-yN (0≦x<y<1)” in support of its InGaN/InGaN stack argument is unhelpful. Reh’g Req. 3. We acknowledge that this statement discloses the use of stacked InGaN layers of varying indium composition in general. But Petitioner does not direct us to bandgap values for this generic periodic structure, and to arrive at the bandgap requirement of the spacer layer limitation of claim 9, Petitioner refers back to Example 1, and its analysis of the bandgap values of the specific barrier layer, spacer layer, and quantum well layer disclosed therein. As such, we are not persuaded this general disclosure of Sanga cures the deficiencies discussed above.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In its Rehearing Request, Petitioner presents new arguments in support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “bandgap requirement to the spacer layer as a whole, but Patent Owner argued that this requirement should be construed such that it requires all the layers comprising the spacer layer to meet the bandgap requirement. Reh’g Req. 6. Petitioner, however, never identifies any particular matter that we misapprehended or overlooked in connection with this argument. Furthermore, Petitioner did not propose a construction of the bandgap requirement in the Petition (Pet. 7–20), and Patent Owner argued that Petitioner’s arguments fail regardless of how the bandgap limitation is construed (Prelim. Resp. 36). In this regard, we note that in our Decision we determined that we did not need to construe the bandgap requirement. Dec. 6.” slip op. at 7

  Claim construction
  Patents in suitUS 9,716,210
• Longi Green Energy Technology Co., Ltd. / Longi Solar Technology Co., Ltd. et al. v. Hanwha Q Cells & Advanced Materials CorporationAll claims unpatentable
  PTAB · Dec 3, 2020 · IPR2019-01072 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 12–14 are unpatentable as obvious over Hagino and over Hagino with Duerinckx and Hoex 2006; the Bhattacharyya grounds did not prove them unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Upon review, Petitioner’s Motion to Exclude fails to establish that Petitioner is entitled to the remedy it seeks. To the extent the Motion seeks exclusion of evidence under FRE 403 as overly prejudicial, Petitioner does not adequately explain what prejudice it would suffer if we were to simply disregard or give little weight to the uncited paragraphs of Dr. Lebby’s testimony, rather than excluding them from the record. Indeed, as the Board is not a jury, it would appear that the risk of unfair prejudice against which Rule 403 guards is diminished, if not eliminated entirely. See, e.g., Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“in the context of a bench trial, evidence should not be excluded under 403 on the ground that it is unfairly prejudicial”); see also Gulf States Utils. Co. v. Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981). The Board is capable of hearing relevant evidence and weighing its probative value, including determining the weight to be given Dr. Lebby’s testimony or disregarding it entirely.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under the Phillips standard, the “words of a claim ‘are generally given their ordinary and customary meaning,’” which is “the meaning that the term would have to a person of effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Only those terms in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In our Institution Decision, we determined that no term of the challenged claims required an express construction. Dec. on Inst. 8. During trial, neither party proposed that we adopt any specific construction of a claim term. Upon review of the record and the parties’ positions, we agree that no term appearing in the challenged claims requires express construction. slip op. at 10

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner relies on the Declaration of Sanjay Banerjee, Ph. D. (Ex. 1003). Dr. Banerjee testifies that a person having ordinary skill in the art would have “an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field,” or alternatively, “a bachelor’s degree in electrical engineering, applied physics, chemistry, or materials science, and at least three years designing, developing, or researching in the field.” Ex. 1003 ¶ 46. We adopted this definition for purposes of deciding whether to institute trial. Dec. on Inst. 9. For purposes of this inter partes review, Patent Owner “does not contest this level of skill.” PO Resp. 2. In view of this agreement, we adopt Dr. Banerjee’s definition of the level of ordinary skill in the art.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Banerjee’s testimony supports the conclusion that a person of ordinary skill in the art would have interpreted Hagino’s disclosure in this manner. Dr. Banerjee states that paragraph 29 of Hagino is “certainly . . . the only described method for forming ‘silicon nitride’ layers” in the reference. Ex. 1003 ¶ 211. We noted in our Institution Decision that this appeared to not be the case, because silicon nitride could also be applied through spin coating Solution A. Dec. on Inst. 30 n.10. But on the full record now before us, we credit Dr. Banerjee’s testimony, because upon further evaluation the Solution A spin-coating method does not pertain to the deposition of a silicon nitride layer. We have also reviewed Dr. Lebby’s testimony on this issue in evaluating how a person of ordinary skill would have interpreted Hagino. disclose using a CVD deposition method (Ex. 2008 ¶ 87), he does not address how a person of ordinary skill in the art would have understood Hagino to deposit a silicon nitride layer in the First Embodiment without using CVD. In particular, Dr. Lebby did not indicate, in Hagino or elsewhere, any disclosure that spin coating was a recognized method for depositing a silicon nitride layer. The only method for depositing silicon nitride recognized by Dr. Lebby was CVD as disclosed by the ’215 patent, and he testified that CVD deposition of a silicon nitride layer in the presence of silane leads to the “cracking” of silane and “typically you would . . . see hydrogen as part of a deposited layer.” Ex. 1053, 55:6–57:20. Based on the foregoing, we find that Hagino discloses deposition of a surface layer of silicon nitride using CVD that corresponds to the second layer of claim 12. We also credit Dr. Banerjee’s uncontradicted testimony that performing CVD deposition of silicon nitride in the presence of silane, as Hagino discloses (Ex. 1006 ¶ 29), would necessarily result in hydrogen being embedded in the layer. Ex. 1003 ¶¶ 206–213.” slip op. at 20

  Patent outcomesUS 9,893,215 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,893,215
• Satco Products, Inc. v. Seoul Viosys Co., Ltd.Rehearing denied
  PTAB · Dec 2, 2020 · IPR2020-00655 · APJ Erica A Franklin · IPR · Rehearing

  The Board denied Satco’s rehearing request and maintained denial of institution for claims 1, 2, 6, and 7 because Satco did not show the Board misapprehended or overlooked its petition arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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. 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. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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. 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. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 3

  • BurdenDecided for patent owner

    “misapprehended Petitioner’s argument relating to the meaning of the word “continuous” not based upon what it presented in the Petition, but instead based upon newly raised arguments regarding what it asserts is the ordinary and customary meaning of the term. That showing is misplaced as a Rehearing Request does not provide an opportunity to raise additional arguments or supplement information set forth in the Petition. Thus, Petitioner has not shown that we have misapprehended any matter raised in” slip op. at 7

  None
  Patents in suitUS 9,627,435
• Smartmatic USA Corp. v. Election Systems & Software, LLCRehearing denied
  PTAB · Nov 30, 2020 · IPR2019-00531 · APJ Sheldon M Mcgee · IPR · Rehearing

  The Board denied Smartmatic’s rehearing request, leaving intact the determination that original claim 16 and substitute claims 21–29 were not shown unpatentable over Johnson and Cummings.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS 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. 37 C.F.R. § 42.71(d). Specifically, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). Petitioner’s First Argument” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “As an initial matter, we disagree that we misapprehended Petitioner’s proffered basis for modifying the teachings of Johnson. Req. 1–2, 4–9. Our Decision makes clear that we understood the challenge as it was presented by Petitioner. For example, we expressly stated that “Petitioner asserts that a person of ordinary skill in the art would have been motivated to modify the teachings of Johnson with those of Cummings at the time of the invention to provide options for either depositing the paper ballot or returning it to the voter,” and quoted Petitioner’s proffered rationale for doing so––i.e., because “a voter may wish to receive his or her printed ballot if it were incorrectly marked in order to gain assurance that the ballot will not be mistakenly counted during a recount or audit of the paper ballots.” Dec. 18. We also characterized Petitioner’s obviousness challenge as being “over the combined teachings of Johnson and Cummings” and noted how the Petition “set[s] forth the [asserted] obviousness rationale and expectation of successfully modifying the teachings of Johnson with those of Cummings.” Id. at 14–15; see also id. at 17–18 (summarizing Cummings’ teachings); id. at 19–20 (identifying “Petitioner’s proffered modification” as “adding Cummings’ ‘ballot return’ feature to Johnson’s device”). Ultimately, we determined Petitioner failed to show that “the skilled artisan would have been motivated to make the proffered modification to the teachings of Johnson,” and “[i]n particular,” had not shown such artisan “would have modified Johnson to provide a voter with options for either depositing a physical ballot to a ballot box or returning the ballot to the voter.” Id. at 25. Notably, the language in our Decision (id.) tracks, almost verbatim, Petitioner’s proffered motivation for modifying Johnson’s teachings with those of Cummings to arrive at the subject matter of claim 16 (Pet. 57). Petitioner’s emphasis of our use of the phrase “considering Johnson’s teachings as a whole” (Req. 4) reflects a misunderstanding of the context in which this statement was used. Dec. 25. Specifically, this statement was part of an introductory paragraph summarizing the deficiencies in Petitioner’s case, and does not indicate that we focused solely on the teachings of Johnson in assessing the strength of Petitioner’s challenge. Indeed, as the Decision goes on to explain, a detailed analysis of Johnson’s teachings was necessary to determine how the skilled artisan would have viewed Johnson’s silence on the specifics of processing its segregated paper ballots “that have not been approved by the voter.” Ex. 1002, 6:56–60; see Dec. 26 (“According to Petitioner, ‘Johnson does not teach never providing the voter with a ballot.’ Reply 15. Petitioner thus appears to argue that Johnson’s lack of physical access to the printed ballot does not apply to every step in Johnson’s voting process.”). To discern how the skilled artisan would have viewed Johnson’s teachings, we stressed that we are required to consider Johnson’s teachings as a whole, which we did. Dec. 26 (noting that even though Johnson may be silent on specific teachings regarding how to handle disapproved paper ballots, that fact “does not negate our obligation to consider the teachings of the Johnson reference as a whole.” (citing In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)); id. at 25–27 (finding “Johnson repeatedly stresses the voter’s inaccessibility to the physical ballot” and that Johnson “when considered as a whole––does not suggest that a voter should be given physical possession of the inaccurate or disapproved ballots after it is segregated”). Only after we undertook this factual inquiry into the full scope and content of Johnson’s teachings were we then able to conclude, as a matter of law, that the claims would not have been obvious over the combined disclosures of Johnson and Cummings. Dec. 34, 41–42; In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009 (“The teachings of a prior art reference are underlying factual questions in the obviousness inquiry.”).” slip op. at 3

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “(Ex. 1023) and US 2005/0035199 (Ex. 1038), which purportedly “corroborates Dr. Bederson’s testimony as to why a [skilled artisan] would have been motivated to make the proposed modification of Johnson,” we disagree. Req. 6–7. The Decision addresses Chung specifically (Dec. 27–28 (citing Ex. 1023)) and furthermore explains why we ascribed little weight to Dr. Bederson’s testimonial evidence regarding how election audits are carried out (id. at 32–33). Regarding Chung, in the Decision we noted a key difference in how ballots were handled in Chung’s voting system vis-à-vis Johnson’s system–– i.e., “where the paper ballot remains inaccessible to the voter [Johnson], and Chung’s system where the paper ballot is given to a voter in the first instance.” Id. at 27–28. This difference is not to be understated because Petitioner tried to establish similarities between Johnson and Chung to support its argument that Johnson’s disclosure is “consistent with other voting machines that, for some period of time prevent the voter from accessing the ballot, only to later return the ballot to the voter.” Reply 11. Our Decision reflects the reasons we rejected that argument after considering Johnson’s disclosure as a whole. See Dec. 25–31. Specifically, based on the differences between the Johnson and Chung systems, we found Petitioner’s reliance on Chung to lack sufficient probative value. Id. at 27– 28; Ex. 1023, Fig. 4, ¶¶ 86, 99. And while our Decision does not specifically mention US 2005/0035199 (Ex. 1038), we note that Petitioner cited this exhibit in support of Dr. Bederson’s testimonial evidence regarding how election audits are carried out. Reply 24; Ex. 1024 ¶ 47 (citing Ex. 1038 ¶ 35, and opining “there is no reason all of Johnson’s ballots must be collected to conduct an audit of an election.”). Our Decision makes clear, however, that we ascribed little weight to Dr. Bederson’s opinion on such matters and explained our rationale for doing so. Dec. 32–33 (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)); id. at 45 (according this disputed evidence “minimal weight”).” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,096,471
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing denied
  PTAB · Nov 10, 2020 · PGR2019-00003 · APJ Sheridan K Snedden · PGR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–14 are unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3

  § 102 anticipation
  Patents in suitUS 9,867,839
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing denied
  PTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving unpatentable claims 1-4, 9, 10, 12, 14, 16-18, 23-25, and 27-29 based on Varenna 2012 anticipation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “acknowledged Acceleration Bay and addressed with particularity the evidence of record tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 15. Specifically, in our Decision, we credited indicia on the face of Verrena 2012, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including “the statement ‘Advance Access publication 30 November 2012,’” and a conventional edition identifier from the journal Rheumatology. Dec. 17 (quoting Ex. 1005). Patent Owner advanced no” slip op. at 4

  • Strike new argumentNew argument consideredDecided for petitioner

    “We are not persuaded by Patent Owner’s contentions and note that we addressed these same arguments in our Order denying Patent Owner’s motion to strike. Paper 24; see also Paper 13, 1 (Patent Owner contending that “Exhibit 1044 and related argument are new evidence and argument regarding the alleged accessibility of Varenna 2012 (Ex. 1005) that Petitioner could have submitted with the Petition, but chose not to.”). Rather than pointing out any matters that the panel misapprehended or overlooked, Patent Owner expresses disagreement with that decision, and attempts to offer additional reasoning and argument not advanced during trial. Req. Reh’g, 12–15. That effort is ineffective to establish reversible error. Furthermore, in our Final Written Decision, we noted that Even if we set aside Dr. Robinson’s Declaration, . . . we are persuaded that the indicia of publication on the face of Varenna 2012 are sufficient to establish that Varenna 2012 was “sufficiently accessible to the public interested in the art” and “disseminated or otherwise made available” to the interested public before the critical date, and consequently, a printed publication. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). Dec. 19 n.4. For that reason also, Patent Owner shows no reversible error in our Final Written Decision holding that Dr. Robinson’s testimony bolsters” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  § 102 anticipation
  Patents in suitUS 9,820,999
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing granted
  PTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing

  The Board granted the petitioner’s rehearing request, vacated the final written decision, and will issue a revised decision after overlooking Varenna 2012 in Grounds 5–7.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2

  None
  Patents in suitUS 9,820,999
• Satco Products, Inc. v. Seoul Semiconductor Co., Ltd.Rehearing denied
  PTAB · Nov 9, 2020 · IPR2020-00151 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Satco’s rehearing request, leaving in place the denial of institution on claims 1–7 because the petition did not adequately show Wang disclosed the different-shape limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In our Decision, we determined that Petitioner failed to demonstrate adequately that Wang discloses the different shape limitation. Dec. 17–19. In particular, we noted that the images from Wang Petitioner relied upon offered insufficient information to determine whether the separation region between first and second top leads has a different shape than the separation region between the first and second bottom leads. Dec. 17–19. For example, we stated that Petitioner never presented views comparing the top and bottom portions of the separation region to demonstrate adequately that the top and bottom portions have different shapes. Dec. 19.” slip op. at 3

  • BurdenDecided for patent owner

    “Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Wang’s figures to the claim language itself in our Decision. In doing so, we determined that Wang’s figures provided insufficient information to determine whether Wang discloses the “different shape” limitation. Dec. 17–19. Our discussion of the figures in the ’919 patent merely highlighted the deficiencies in Petitioner’s reliance on the figures in Wang by providing an example of information that could be used to determine whether the top and bottom portions of the separation regions have different shapes. At no point did we import any specific features from the Specification into the “different shape” limitation or “require shapes similar to the ‘exemplary embodiment’ of FIG. 5A of the ’919 patent.” Req. Reh’g 4. Rather, we merely compared the type of information presented in the ’919 patent with the type of information presented in Wang to reinforce our determination that Petitioner failed to direct us to evidence in Wang that would allow a person of ordinary skill in the art to determine that Wang discloses a separation region that has a different shape between the top leads and the bottom leads. In view of the foregoing, we are not persuaded that we committed any legal errors, or that we narrowed the plain meaning of “different shape.”” slip op. at 7

  Claim construction
  Patents in suitUS 9,978,919
• Neenah, Inc. / Avery Products Corporation v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Rehearing denied
  PTAB · Nov 6, 2020 · IPR2020-00636 · APJ Michelle N Ankenbrand · IPR · Rehearing

  The Board denied rehearing of its decision denying institution, finding the petition failed to show a reasonable likelihood of prevailing on the challenged obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “institute a petition, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears 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, and the place where each matter was previously addressed” in the Petition. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “argument in the Petition. Rather, as we highlighted in the Decision, Petitioner’s entire reason to combine argument was: Not only are Oez-PCT and Oez-US authored by the same inventor, but also both are specifically directed to image transfer sheets with white layers for improving the quality of image transfer onto dark fabrics. Accordingly, a [person of ordinary skill in the art] would have been motivated to combine the teachings of Oez-PCT and Oez-US, such as to use the transfer sheet application process taught by Oez-US. Dec. 21 (quoting Pet. 48–49 (section titled “Introduction [to Oez-PCT] and Motivation to Combine”)). The Petition did not contain any other reason to combine discussion for this particular ground. Petitioner’s Rehearing Request, however, directs us to additional portions of the Petition that Petitioner now contends we should have considered as supporting its argument for reason to combine. Req. 6–7. Here, Petitioner’s post hoc attempt to cobble together a reason to combine discussion does not persuade us that that we overlooked or misapprehended any rationale to combine set forth in the Petition.” slip op. at 3

  • BurdenNot shown unpatentable

    “independent claim 1: (1) limitation [A2] “a titanium oxide or other white or luminescent pigment,” and (2) limitation [A6] “the titanium oxide or other white or luminescent pigment present in a concentration and configurations sufficient to provide an opaque background for indicia received by the ink receptive portion.” Pet. 12 (Petitioner’s numbering of claim 1’s elements from [Pre] through [A6]), 29–32 (Petitioner’s arguments as to how Oez-US and another reference teach limitations 1[A2] and 1[A6], in which Petitioner discusses the requirement that the polymer melts and mixes with another layer or layers during application). For the ground based on Kronzer and Oez-US, Petitioner argued that “Kronzer in view of Oez-US teaches 1[A2]” and that “Kronzer in view of Oez-US teaches 1[A6].” Id. at 62, 64. For its substantive argument, however, Petitioner referred back to the section of the Petition in which Petitioner argued that Oez-US discloses the “white layer.” See id. (referring to Pet. § VII.A.2.d, which describes Oez-US and another reference as disclosing the melt and mix requirement of the white layer). Thus, it was not clear from the Petition which reference Petitioner was relying on to teach the “white layer” that melts and mixes with another layer. Even if we agree with Petitioner that we misapprehended or overlooked that the Petition relies on Kronzer as teaching the layers and Oez-US as teaching only the white pigment, the Petition does not discuss how the combined teachings of Kronzer and Oez-US disclose a white layer that melts and mixes with another layer or layers. As we explained in the Decision, although Petitioner asserted that Kronzer teaches the melting temperatures of various polymers used in its layers and discloses examples of applying heat transfer sheets to fabrics with an iron set at about 163°– 177° C, that general statement failed “to explain sufficiently how a white layer of the asserted Kronzer and Oez-US combination would melt with another layer.” Dec. 23–24. Further to that point, we note that the Petition in this case does not contain an analysis in the Kronzer and Oez-US ground that discusses the melt and mix requirement, unlike the Petitions in the related cases Petitioner cites in its Rehearing Request. Compare Pet. 59–70, specifically 62, 64, with e.g., IPR2020-00634, Paper 2 at 71–72 (Petitioner explaining how “Kronzer and Oez-US further teach the ‘melt and mix’ requirement”). Petitioner appears to acknowledge as much in the Rehearing Request, arguing that its Kronzer and Oez-US ground in this case demonstrates that layers in contact with one another will melt and mix, but citing only to the portions of the Petition addressing how Oez-US and another reference allegedly disclose the “melt and mix” requirement. Reh’g Req. 15 (citing Pet. 31 and § VII.A.2.d; Ex. 1020 ¶¶ 112–115, 38–60). We could not have overlooked or misapprehended an argument about Kronzer and Oez-US disclosing the melt and mix requirement because Petitioner did not make such an argument in the Petition. Accordingly, Petitioner does not persuade us that we abused our discretion in denying to institute an inter partes review.” slip op. at 6

  § 103 obviousnesscites KSR
  Patents in suitUS 7,771,554
• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Oct 22, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Everstar’s rehearing request, leaving in place the denial of institution on claims 1–30 because it had not shown an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 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) (2019). 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.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “As Petitioner points out, the ’097 patent characterizes reinforcing strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 5

  • Expert testimonyDecided for patent owner

    “We are not persuaded by Petitioner’s argument that a genuine dispute of material fact exists with regard to the parties’ proposed construction of “disposed at a central portion.” Petitioner acknowledges that its declarant, Dr. Fantone, testified that none of the claim terms required a specific construction and that the claim terms “would be understood by one of ordinary skill in the art.” Req. Reh’g 13–14 (citing Ex. 1009 ¶ 22). As Petitioner points out, Dr. Brown, Patent Owner’s declarant, did not offer any “statement of disagreement with Petitioner’s position that the terms should be afforded their ordinary and customary meaning.” Req. Reh’g 14. As a result, there is no “conflicting” testimony from the declarants on this point. Nor is there any conflicting testimony from the declarants regarding the ordinary and customary meaning of “disposed at a central portion.” Although Dr. Fantone testified generally that a person of ordinary skill in the art would understand what “disposed at a central portion” means, Dr. Fantone never explained what that understanding would be. Thus, there is no dispute of material fact on this record regarding the plain and ordinary meaning of the claim term.” slip op. at 9

  Claim construction
  Patents in suitUS 9,671,097

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.