- Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00762 · APJ Christopher M Kaiser · IPR · Rehearing
Denied Petitioner’s rehearing request; claims 1–5 remain instituted only on the Mukherjee anticipation ground, with institution denied on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“sufficiently that Briffod discloses the “crack structure” of the recited claims on the surface of its film 2. Dec. 14–15. This was based on the failure of Petitioner and Briffod to explain whether the voids that Petitioner contends constitute cracks are present on “the surface” of the layer in question. Id. In its Request for Rehearing, Petitioner now argues that conclusion was an abuse of discretion. Request 6–9. Petitioner argues that Briffod discloses voids contained within film 2 and that these voids “qualify as cracks.” Id. at 6. As stated in our Decision, we agree that Briffod discloses voids within film 2, and, for the purposes of deciding whether to institute inter partes review, we accepted Petitioner’s contention that the voids in question constitute “cracks.” Dec. 13–14. The challenged claims, however, require that the “alloy layer has a crack structure on its surface,” and the Petition failed to explain why the presence of cracks within a layer demonstrates the presence of cracks on the surface of that layer.” slip op. at 5
- BurdenDecided for patent owner
“Finally, Petitioner argues that the roughness of the surface of film 2 and the roughness of overlying thin film 3 demonstrate the presence of voids on the surface of film 2. Request 8–9. Once again, Petitioner fails to explain adequately where this argument was made previously. Petitioner intermittently points to portions of the Petition where it contends that this argument was made previously, but Petitioner also intersperses arguments that do not cite to the Petition. Id. (citing Pet. 13–14, 23). To the extent that the citations are missing, we cannot consider this argument. 37 C.F.R. § 42.71(d). Even if we could consider this argument, we would not be persuaded that it showed an abuse of discretion in our conclusion that Petitioner failed to show sufficiently that Briffod discloses the presence of a crack structure on the surface of thin film 2. Briffod shows voids within thin film 2, and Briffod shows that thin film 2 has a rough surface. Ex. 1003, Fig. 1b. Briffod also states that the voids caused by the Kirkendall effect “may be the reason for the observed porosity of [thin film 3].” Id. at 4:21– 29. It is not clear that this establishes a causal relationship of any kind between the presence of voids and the rough surface, because it only posits a possible connection. Even if the voids do cause the surface to be rough, they could do so through several conceivable mechanisms, only one of which is the accumulation of voids at the surface. Petitioner did not explain in the Petition why we should assume any causal relationship, much less the single type of causal relationship that would satisfy the language of the challenged claims.” slip op. at 6
§ 102 anticipationPatents in suitUS 6,482,535 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00764 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no abuse of discretion in denying institution on the Briffod and Takano anticipation grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“evidence presented, that Petitioner established sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Dec. 19–20. Specifically, we stated that Briffod describes the surface of thin film 3 as shown in Figure 1b (the claimed “coating layer,” according to Petitioner) as “very rough,” with “many holes of 1 to 2µ which confirms the sponge-like structure suggested by the appearance of the surface.” [Ex. 1003, 4:8–15.] Briffod does not, however, describe the characteristics of film 2, which Petitioner contends is the “alloy layer” required by the claims. See Pet. 29 (quoting Ex. 1003, 2:55–56); id. at 30 (same). Petitioner does not provide any other evidence that shows sufficiently that Briffod discloses voids or cracks that are formed in the alloy layer. Id. Therefore, we considered Petitioner’s arguments and evidence that cracks or voids are formed in Briffod film 2, and deemed it insufficiently persuasive. Moreover, with respect to Petitioner’s argument that Briffod Figure 1b “illustrates the Kirkendall voids as small circles in the film 2,” we note that Briffod describes Figure 1b as illustrating the Briffod invention “in a schematic manner” (Ex. 1003, 2:51–55), and does not explain what, if anything, the “small circles” drawn in film 2 signify. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. As a result, we did not abuse our discretion in denying institution of inter partes review of claims 2, 5, 7, 8, and 10 on the asserted ground of unpatentability based on Briffod.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“to show anticipation because Comparative Example 2, alone, shows all of the features of claims 1 and 6 of the ’036 patent.” Req. Reh’g 13. Petitioner does not point us to where this argument was made in the Petition; instead, Petitioner directs us to page 19 of the Petition, which is an overview of Takano. Id. at 12. In contrast, in the claim charts, which “show features of Takano that correspond to the claims of the ‘036 patent,” Petitioner identifies Example 1 as disclosing some limitations of the claims, and Comparative Example 2 as disclosing others. See, e.g., Pet. 33–34 (claim chart for claim 1). Per 37 C.F.R. § 42.71(d), Petitioner must point out where the matter was previously addressed in its Petition. We could not have overlooked argument or evidence that was not presented in the Petition. A request for rehearing is not an opportunity to supplement a petition.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,492,036 - Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the refusal to institute on Takano anticipation of claims 1–4, 6, and 14–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if it also “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering the Request for Rehearing, the Decision, and the evidence currently of record, we determine that Petitioner has not demonstrated an abuse of discretion. Accordingly, we deny the Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“arguments in support of the asserted anticipation of claims 1–4, 6, and 14–18 by Takano. Req. 1. In refusing to institute on this ground, we concluded that Petitioner had not shown sufficiently that Takano anticipates claims 1– 4, 6, and 14–18 because Petitioner’s argument required combining disclosures from multiple embodiments disclosed in Takano. Dec. 18. Petitioner now presents two arguments that this determination was an abuse of discretion. Req. 5–8.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,306,523 - PTAB · Jun 27, 2016 · IPR2016-00351 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution because Free-Flow did not show a reasonable likelihood that claims 1–14 were obvious over Perkins and Mykleby; its reason to combine was inadequate.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the information presented, we conclude that the record does not establish that there is a reasonable likelihood that Free-Flow will prevail in challenging claims 1–14 of the ’288 patent as unpatentable. Accordingly, we do not institute trial.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 13–24. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 25. Automated argues that the defined “problem”—namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 15. We agree. Free- Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 13–24. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 25. Automated argues that the defined “problem”—namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 15. We agree. Free- Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,767,288 - PTAB · Jun 27, 2016 · IPR2016-00350 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution because Free-Flow did not adequately show a reason to combine Perkins and Mykleby for claims 1–13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Free-Flow has not made an adequate showing that a person of ordinary skill in the art would have had a reason to combine Perkins and Mykleby,5 we cannot conclude that Free-Flow has shown that “there is a reasonable likelihood that the petitioner would prevail with respect to” any of claims 1–13 on the ground of obviousness over the combination of Perkins and Mykleby. 35 U.S.C. § 314(b). We, therefore, decline to institute inter partes review of the challenged claims on this ground. III. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition and Preliminary Response does not establish that there is a reasonable likelihood that Free-Flow will prevail in challenging claims 1–13 of the ’191 patent as unpatentable under § 103(a).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 14–25. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 29–30. Automated argues that the defined “problem”— namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 16. We agree. Free-Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for patent owner
“forth an adequate reason to combine Perkins and Mykleby. Prelim. Resp. 14–25. We agree, and are not persuaded that Free-Flow has made an adequate showing that a person of ordinary skill in the art would have modified the web of Perkins with the perforations of Mykleby. Free-Flow’s first argument on this point is that one of ordinary skill in the art would have sought to combine the references because they are both “directed to the same problem.” Pet. 29–30. Automated argues that the defined “problem”— namely “automated, continuous production of inflatable sealed plastic bag units”—is not really a problem, but rather a definition of the field of technology to which Perkins and Mykleby pertain. Prelim. Resp. 16. We agree. Free-Flow’s argument may be enough to show that the two references are analogous art, see Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010), but simply demonstrating that a set of references are all directed to the same problem is not, by itself, a sufficient rationale to combine the references. See id. (upon finding that two references were directed to the same problem, the Court proceeded to analyze whether a person of ordinary skill in the art would have been motivated to combine the references); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Accordingly, Free-Flow’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Perkins and Mykleby.” slip op. at 12
- Expert testimonyOther
“explain what problems exist in the web of Perkins, or how those problems would have been solved by Mykleby. By Free-Flow’s own analysis, the problem of “continuous, quick production of plastic bags” is addressed by the web and apparatus of Perkins itself; it is unclear why a person of ordinary skill in the art would have considered it desirable to further modify Perkins to include the variable perforations of Mykleby. Free-Flow simply states that a person of ordinary skill in the art “would have understood the potential for the variable perforations disclosed by Mykleby to increase production rate of sealed plastic bag units and decrease cost associated with torn or damaged units by facilitating separation of individual bag units.”4 Pet. 31. But as Dr. Kimmel testifies, Mykleby identifies the benefit of variable-length perforations as “allow[ing] the pouches to separate from the lower perforated portion first without separating the upper perforated portion. . . . These variable perforations allow individual pouches to be filled with fluid and separated but remain connected until the sheet has moved through the entire automatic packaging apparatus.” Ex. 1004 ¶ 74. Free-Flow does not explain, nor can we discern, why this partial separation would “increase production and decrease costs” when used in the web of Perkins. 4 The only relevant evidence Free-Flow cites in support of this statement is paragraph 77 of Dr. Kimmel’s Declaration, which merely parrots the language of the Petition word for word, without providing any additional analysis or explanation. Compare Ex. 1004 ¶ 77, with Pet. 31.” slip op. at 14
§ 103 obviousnessPatents in suitUS 7,550,191 - PTAB · Jun 22, 2016 · IPR2016-00444 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not show the claimed perforation lines or a reason to combine the references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that any of the claims it challenges are unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“by both parties, we are not persuaded that Petitioner has made an adequate showing that Titchenal teaches or suggests the recited “opposite edge lines of perforations.” Treating Titchenal’s fill side as the “inflation edge,” Titchenal clearly teaches perforations “that extend inward from the inflation edge.” Ex. 1007, 3:19–25, Fig. 1. Petitioner argues that this same disclosure teaches or suggests the recited “opposite edge lines of perforations . . . that extend inward from the opposite edge.” Pet. 42–43. But Titchenal does not show perforations extending inward from the edge opposite its fill side. Ex. 1007, Fig. 1. Slit 38, slit 40, and the land between them cannot be the claimed “line[] of perforations,” because Petitioner relies on slit 40 to be the claimed “continuous gap” that “space[s] apart” the inflation-edge and opposite-edge lines of perforations. Without slit 40 as part of the “line[] of perforations,” Titchenal shows, at best, a single perforation in slit 38, and a single perforation does not constitute a “line[] of perforations.” And Petitioner does not offer any explanation for why a person of ordinary skill in the art would interpret Titchenal’s single line of perforations extending inward from one side as suggesting two lines of perforations, each extending inward from opposite sides. Pet. 42–43. The only evidence to which Petitioner directs us with respect to this point is paragraph 91 of Dr. Kimmel’s declaration, which does nothing more than parrot the language of the Petition word for word, without providing any analysis or underlying facts to support the opinion. Compare Ex. 1004 ¶ 91, with Pet. 42–43. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8). Because Petitioner has not made an adequate showing that the limitations of claim 1 are taught or suggested by the combination of Peper and Titchenal, we cannot conclude that Petitioner has demonstrated “a reasonable likelihood that the petitioner would prevail with respect to” claim 1. 35 U.S.C. § 314(b). Accordingly, we do not institute inter partes review of claim 1 on this ground. Because claims 2 and 5 both depend from claim 1, we also do not institute inter partes review of those claims on this ground.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“33. This argument may be enough to demonstrate that the three references are analogous art, which requires that the references be either “in the field of the [inventor’s] endeavor or . . . reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). But this similarity among references is not sufficient to demonstrate that a person of ordinary skill in the art would have sought to combine the teachings of the references. Showing this requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, Petitioner’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Sperry with Peper and Titchenal.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“1007, Fig. 1. Slit 38, slit 40, and the land between them cannot be the claimed “line[] of perforations,” because Petitioner relies on slit 40 to be the claimed “continuous gap” that “space[s] apart” the inflation-edge and opposite-edge lines of perforations. Without slit 40 as part of the “line[] of perforations,” Titchenal shows, at best, a single perforation in slit 38, and a single perforation does not constitute a “line[] of perforations.” And Petitioner does not offer any explanation for why a person of ordinary skill in the art would interpret Titchenal’s single line of perforations extending inward from one side as suggesting two lines of perforations, each extending inward from opposite sides. Pet. 42–43. The only evidence to which Petitioner directs us with respect to this point is paragraph 91 of Dr. Kimmel’s declaration, which does nothing more than parrot the language of the Petition word for word, without providing any analysis or underlying facts to support the opinion. Compare Ex. 1004 ¶ 91, with Pet. 42–43. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8).” slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,897,220 - PTAB · Jun 22, 2016 · IPR2016-00447 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution for claims 1, 2, 5–10, and 13–20 because Petitioner did not show a reasonable likelihood of success on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing any of the challenged claims are unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The only evidence to which Petitioner directs us with respect to this point is paragraphs 80 and 81 of Dr. Kimmel’s declaration, which does nothing more than parrot the language of the Petition word for word, without providing any analysis or underlying facts to support the opinion. Compare Ex. 1003 ¶¶ 80–81, with Pet. 28–29. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. ___, No. 15-446, slip op. at 13 (U.S. June 20, 2016). In determining the broadest reasonable construction, we presume that claim terms carry their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee may define a claim term in a manner that differs from its ordinary meaning; however, any special definitions must be set forth in the Specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Upon review of the parties’ arguments and supporting evidence, we determine that no claim terms require construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Pet. 8 (asserting “that none of the ’439 patent terms require construction for this IPR”).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Treating Titchenal’s fill side as the “inflation edge,” we agree that Titchenal discloses perforations 50 “that extend inward from the inflation edge.” Ex. 1007, 3:19–25, Fig. 1. Figure 1 of Titchenal does not disclose, however, a line of perforations extending inward from the edge opposite its fill side, and slit 38, land 42, and slit 40 in combination cannot be the claimed “line[] of perforations,” because Petitioner relies on slit 40 as the claimed “gap forming line[] extending between the inflation edge line[] of perforations and the opposite edge line[] of perforations.” Ex. 1007, 3:6–9 (“Lines of weakness 36 at their lower extents comprise at least one slit or cut and preferably two slits 38 and 40 interrupted or separated by a land or joined region 42.”); Pet. 32 (“A POSA would understand the ‘slits’ disclosed by Tichenal to be the ‘gap forming lines extending between the inflation edge lines of perforations and the opposite edge lines of perforations.”). Without slit 40 as part of the “line[] of perforations,” Titchenal shows, at best, a single perforation in slit 38, which does not constitute a “line[] of perforations.”” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,357,439 - PTAB · Jun 22, 2016 · IPR2016-00445 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not show the claimed opposite-edge perforations or a reason to combine the references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“by both parties, we are not persuaded that Petitioner has made an adequate showing that Titchenal teaches or suggests the recited “opposite edge lines of perforations.” Treating Titchenal’s fill side as the “inflation edge,” Titchenal clearly teaches perforations “that extend inward from the inflation edge.” Ex. 1007, 3:19–25, Fig. 1. Petitioner argues that this same disclosure teaches or suggests the recited “opposite edge lines of perforations . . . that extend inward from the opposite edge.” Pet. 36–37. But Titchenal does not show perforations extending inward from the edge opposite its fill side. Ex. 1007, Fig. 1. Slit 38, slit 40, and the land between them cannot be the claimed “line[] of perforations,” because Petitioner relies on slit 40 to be the claimed “continuous gap” that “space[s] apart” the inflation-edge and opposite-edge lines of perforations. Without slit 40 as part of the “line[] of perforations,” Titchenal shows, at best, a single perforation in slit 38, and a single perforation does not constitute a “line[] of perforations.” And Petitioner does not offer any explanation for why a person of ordinary skill in the art would interpret Titchenal’s single line of perforations extending inward from one side as suggesting two lines of perforations, each extending inward from opposite sides. Pet. 36–37. The only evidence to which Petitioner directs us with respect to this point is paragraph 86 of Dr. Kimmel’s declaration, which does nothing more than parrot the language of the Petition word for word, without providing any analysis or underlying facts to support the opinion. Compare Ex. 1004 ¶ 86, with Pet. 36–37. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8). Because Petitioner has not made an adequate showing that the limitations of claims 1 and 5 are taught or suggested by the combination of Peper and Titchenal, we cannot conclude that Petitioner has demonstrated “a reasonable likelihood that the petitioner would prevail with respect to” these claims. 35 U.S.C. § 314(b). Accordingly, we do not institute inter partes review of claims 1 or 5 on this ground. Because claims 2, 4, 6, and 8 each” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“claimed “line[] of perforations,” because Petitioner relies on slit 40 to be the claimed “continuous gap” that “space[s] apart” the inflation-edge and opposite-edge lines of perforations. Without slit 40 as part of the “line[] of perforations,” Titchenal shows, at best, a single perforation in slit 38, and a single perforation does not constitute a “line[] of perforations.” And Petitioner does not offer any explanation for why a person of ordinary skill in the art would interpret Titchenal’s single line of perforations extending inward from one side as suggesting two lines of perforations, each extending inward from opposite sides. Pet. 36–37. The only evidence to which Petitioner directs us with respect to this point is paragraph 86 of Dr. Kimmel’s declaration, which does nothing more than parrot the language of the Petition word for word, without providing any analysis or underlying facts to support the opinion. Compare Ex. 1004 ¶ 86, with Pet. 36–37. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8).” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“that a person of ordinary skill in the art would have combined Fuss with Peper and Titchenal. Petitioner first argues that one of ordinary skill in the art would have sought to combine Fuss, Peper, and Titchenal because “all three patents are directed to the same problem—automated, continuous production of inflatable, sealed, separable plastic bag units.” Pet. 29–30. This argument may be enough to demonstrate that the three references are analogous art, which requires that the references be either “in the field of the [inventor’s] endeavor or . . . reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). But this similarity among references is not sufficient to demonstrate that a person of ordinary skill in the art would have sought to combine the teachings of the references. Showing this requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, Petitioner’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Fuss with Peper and Titchenal.” slip op. at 12
§ 103 obviousnesscites KSRPatents in suitUS 8,425,994 - PTAB · Jun 22, 2016 · IPR2016-00446 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“that a person of ordinary skill in the art would have combined Fuss with Peper. Petitioner first argues that one of ordinary skill in the art would have sought to combine Fuss and Peper because “both patents are directed to the same problem—automated, continuous production of sealed, separable, inflatable dunnage units.” Pet. 28. This argument may be enough to demonstrate that the references are analogous art, which requires that the references be either “in the field of the [inventor’s] endeavor or . . . reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). But this similarity among references is not sufficient to demonstrate that a person of ordinary skill in the art would have sought to combine the teachings of the references. Showing this requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, Petitioner’s first argument is insufficient to show that a person of ordinary skill in the art would have combined Fuss with Peper.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“shape . . . in the film,” and it recognizes that this phenomenon should be “accommodat[ed].” Ex. 1005 ¶¶ 50, 54. But Petitioner does not explain why or how Fuss recognizes that this phenomenon is a primary cause of “unreliable inflation.” The only evidence relevant to this issue to which Petitioner directs us is paragraph 67 of Dr. Kimmel’s declaration, which merely parrots the language of the Petition word for word. Compare Ex. 1003 ¶ 67, with Pet. 30. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). And “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529, slip op. at 15 (PTAB Sep. 23, 2014) (Paper 8).” slip op. at 11
§ 103 obviousnesscites KSRPatents in suitUS 7,757,459 - Midwest Industrial Supply, Inc. v. Soilworks, LLCInstitution deniedPTAB · May 9, 2016 · PGR2016-00004 · APJ Christopher M Kaiser · PGR · Institution
The Board denied institution for claims 1–26 because the petition did not show they were more likely than not unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless the Director determines . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims it challenges is unpatentable. Accordingly, we do not institute post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“alkane with a methyl substituent,” that a “dimethyl-branched alkane” be construed as “an alkane with two methyl substituents,” and that “trimethyl-branched alkane” be construed as “an alkane with three methyl substituents.” Pet. 6. Patent Owner does not oppose these constructions, but, given that the precise construction of these terms does not appear to be important to the resolution of issues presented in the present Decision, we conclude that “methyl-branched alkane,” “dimethyl-branched alkane,” and “trimethyl-branched alkane” need not be construed expressly at this time. 3. “Binder” Petitioner suggests that the term “binder” should be construed. Pet. 5–6. Petitioner does not, however, offer a proposed construction for this term. Id. Given this, and given that the precise construction of “binder” does not appear to be important to the resolution of issues presented in the present Decision, we conclude that “binder” need not be construed expressly at this time.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We agree with Patent Owner. Petitioner has not directed us to evidence of record sufficient to establish that any of Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen discloses the limitations requiring the acyclic and cyclic compounds in the synthetic fluid to be at least 65 weight percent compounds with carbon chain lengths in the range of C24 to C36. Petitioner’s argument with respect to these limitations is that Hawkins ’266 and Hawkins ’270 disclose the use of DSF-65, that the ’592 patent describes the use of Risella X 420, and that, according to Dr. Fetzer, DSF-65, Risella X 420, EK35, and EnviroKleen all have similar compositions. Pet. 14, 28– 29; Ex. 1002 ¶¶ 33–34. But the ’592 patent does not mandate the use of Risella X 420 in its claimed invention; instead, this product is only one of several commercial products that can be included “[i]n certain embodiments” of the disclosed invention. Ex. 1003, 4:15–21. It does not necessarily follow that Risella X 420, or a similar composition, falls within the scope of any of the claims of the ’592 patent.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“§ 103(a) as obvious over the combination of Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen. Pet. 42–69. Relying on the testimony of Dr. Fetzer, Petitioner explains how these references teach each of the limitations of these claims. Id. Neither Petitioner nor Dr. Fetzer explains why a person of ordinary skill in the art would have combined these references. Id.; Ex. 1002 ¶¶ 35–36. Moreover, Petitioner’s obviousness arguments are identical to Petitioner’s anticipation arguments. Pet. 10–38, 42–69. The only exception is that the Fetzer Declaration includes the following language with 10 Even if we were to assume that compositional similarity to Risella X 420 was indicative of whether a compound fell within the scope of the claims, as Petitioner argues, it is not clear on the present record that the evidence of record is more likely than not to support a finding that the DSF-65, EK35, and EnviroKleen products have compositions similar to that of Risella X 420. Although Petitioner argues that they do, e.g., Pet. 14, and Dr. Fetzer testifies that they do, Ex. 1002 ¶ 33, neither Petitioner nor Dr. Fetzer explains how to interpret the data presented at pages 32–202 of Dr. Fetzer’s Declaration in order to reach this conclusion. respect to obviousness: “even if the claims are found not to be anticipated, all the claims would be obvious in view of [Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen].” Ex. 1002 ¶ 36. This conclusory statement is not sufficient to satisfy Petitioner’s burden under 37 C.F.R. § 42.204(b). As discussed above, at most, Petitioner has demonstrated that the DSF-65 product disclosed in Hawkins ’266 and Hawkins ’270 and the EK35 and EnviroKleen products all have compositions similar to the Risella X 420 described in the Specification of the ’592 patent, without demonstrating that those products have the compositions of the fluids claimed in the ’592 patent. Based on the evidence before us, we cannot conclude that it is more likely than not that Petitioner will be able to demonstrate that Hawkins ’266, Hawkins ’270, EK35, and EnviroKleen render obvious claims 1–26.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,968,592
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.