• Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.Rehearing denied
  PTAB · Dec 21, 2017 · IPR2017-01313 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Petitioner’s rehearing request and left in place its § 325(d) denial of institution for claims 1–8 because materially the same prior art had been considered by the Office.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. 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 it 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 P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “As an initial matter, we note that Petitioner states that, for purposes of its Request, it “do[es] not argue Uchida and Uchida II are not materially the same.” Req. Reh’g 3. Because we have discretion to reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office,” see 35 U.S.C. § 325(d) (emphasis added), Petitioner has not established that we abused our discretion in denying the Petition. Given that Uchida (asserted here) and Uchida II (previously presented to the Office) are “materially the same,” substantially the same prior art was previously before the Office. Indeed, the presence of Uchida in the Petition and the materially-identical Uchida II in the prosecution history alone is a sufficient basis to exercise our discretion under Section 325(d).” slip op. at 3

  Discretionary denial
  Patents in suitUS 6,527,874
• Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.Institution denied
  PTAB · Nov 6, 2017 · IPR2017-01313 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution for claims 1–8 under § 325(d), finding the petition relied on substantially the same prior art or arguments previously considered by the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “the same prior art and arguments as those previously presented to the Office, we now decide whether to exercise our discretion to deny institution under § 325(d). Our discretion under § 325(d) involves a balance between several competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11). “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016- 01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, there are the interests of giving petitioners the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id. For the following reasons, we deny the Petition. The disclosures of the primary references asserted by Petitioner were previously presented to, and considered by, the Office. Specifically, the disclosures in Uchida and Kaneko II upon which Petitioner relies were presented to the Office in Uchida II and Kaneko III, both of which were considered by the Office during prosecution of the ’104 application. Petitioner is thus asking the Board to readjudicate the Office’s previous decision on substantially the same issues, without providing any arguments distinguishing the Examiner’s prior consideration of Uchida II and Kaneko III, or any compelling reason why we should re-evaluate substantially the same prior art as that presented during prosecution and considered by the Examiner. Moreover, although we acknowledge that Petitioner has a direct interest in pursuing the instant Petition, we also acknowledge the burden and expense to Patent Owner in having to defend the ’874 patent based on substantially the same prior art or arguments already considered by the Office. We are not persuaded that adjudicating disputes on already-considered issues is an efficient use of Board or party resources. See Unified Patents Inc. v. John L. Berman, Case IPR2016-01571, slip. op. at 12 (PTAB Dec. 14, 2016) (Paper 10) (informative); see also Cultec, Inc. v. StormTech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7) (informative) (denying institution of inter partes review under § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office during prosecution); Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16) (informative) (denying institution of inter partes review under § 325(d) because the Office already decided the dispositive issue of whether the asserted references qualified as prior art with respect to the challenged patent); Juniper Networks, Inc. v. Mobile Telecomm’ns Techs., LLC, Case IPR2017-00642, slip op. at 13 (PTAB July 27, 2017) (Paper 24) (finding that “the Examiner was aware of the contents of [the” slip op. at 15

  Discretionary denial
  Patents in suitUS 6,527,874
• Baker Hughes, A GE Company, LLC (F/K/A Baker Hughes Incorporated) v. Liquidpower Specialty Products Inc. (F/K/A Lubrizol Specialty Products, Inc.)All claims unpatentable
  PTAB · Nov 1, 2017 · IPR2016-00734 · APJ Michelle N Ankenbrand · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 1, 3, 4, 6, 7, and 11 as anticipated by Eaton; claims 1–7 and 11 as obvious over Eaton and Strausz; claims 8–10 as obvious over Eaton, Strausz, and Naiman.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Eaton discloses that a different size flow loop—not dilution—was utilized to achieve turbulent flow of the Bow River crude oil. Ex. 1002, 14:40–42 (“The 1" flow loop was used to test the . . . BOW RIVER crude oil[], which [is] so viscous that [it] do[es] not generate turbulent flow in a ¼" flow loop.”); see id. at 14:42–55 (describing the flow loop test procedure).11 We decline to credit Dr. Dunn’s testimony over Eaton’s explicit disclosure. Accordingly, we determine that Petitioner establishes, by a preponderance of the evidence, that Eaton discloses the API gravity limitation.” slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Eaton discloses that a different size flow loop—not dilution—was utilized to achieve turbulent flow of the Bow River crude oil. Ex. 1002, 14:40–42 (“The 1" flow loop was used to test the . . . BOW RIVER crude oil[], which [is] so viscous that [it] do[es] not generate turbulent flow in a ¼" flow loop.”); see id. at 14:42–55 (describing the flow loop test procedure).11 We decline to credit Dr. Dunn’s testimony over Eaton’s explicit disclosure. Accordingly, we determine that Petitioner establishes, by a preponderance of the evidence, that Eaton discloses the API gravity limitation.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “persuaded by Petitioner’s argument and Dr. Epps’s testimony that the combination of Eaton and Strausz suggests drag reducing polymers having the solubility parameter limitation, because the solubility parameter limitation merely states what one of ordinary skill already knew and would have applied—that the drag reducing polymer must be soluble in the liquid hydrocarbon. See Pet. 41; Ex. 1005 ¶ 32. We also credit Dr. Epps’s testimony setting forth how one of ordinary skill in the art, knowing the target solubility parameter of the liquid hydrocarbon (e.g., for Bow River crude oil, a range of 17.1–19.6 MPa1/2), would have consulted the literature or used calculations to determine which of Eaton’s homopolymers or copolymers would provide a solubility parameter within the target range, and then used Eaton’s disclosed methods to prepare that polymer or polymers. Ex. 1005 ¶¶ 81–92 (citing Ex. 1002, 9:8–18; Ex. 1003, 465–467; Ex. 1007, VII-686, VII-707; Ex. 1012, 1025; Ex. 1037, 252–253). Accordingly, Petitioner establishes, by a preponderance of the evidence, that the combined teachings of Eaton and Strausz disclose the solubility parameter limitation of the challenged claims.” slip op. at 45

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “of ordinary skill in the art would have a reason to combine the teachings of Eaton and Strausz and, in making that combination, a person of ordinary skill would have had a reasonable expectation of success at achieving a drag reducing polymer meeting the limitations of claims 1–7 and 11. That does not end our inquiry, however, because Patent Owner presents arguments and evidence regarding objective indicia of nonobviousness that we must consider before reaching our conclusion on obviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). We consider those arguments and evidence below.” slip op. at 57

  Patent outcomesUS 8,022,118 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,022,118
• Tianma Micro-Electronics Co., Ltd. v. Japan Display Inc. And Panasonic Liquid Crystal Display Co., Ltd.All claims unpatentable
  PTAB · Oct 20, 2017 · IPR2016-00991 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1–4, 6–11, 13, and 14 as obvious over Tomioka and Nishikawa; claims 5 and 12 as obvious over those references and Chaudhari.

  RulingsFinal written decision

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

    “In our Institution Decision, we determined that we could measure the reasonable likelihood of proving unpatentability of the challenged claims without making an express construction of the preamble. Dec. 8. We also determined that, because Petitioner argued that the prior art teaches this preamble phrase (see, e.g., Pet. 21–23, 37–39), it was not necessary for us to decide this issue in order to determine whether to institute trial. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that only claim terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). Here, because our Decision does not turn on the express construction of the preambles of claims 1 and 8, and because we address Petitioner’s arguments regarding the prior art’s teaching of the preamble phrase, we maintain that position. B.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Analysis i. Person of Ordinary Skill in the Art For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have been someone with a Ph.D. degree in polymer chemistry/physics or polymer engineering and about 2 years of experience in LCD technology; or with a M.S. or B.S. degree in polymer chemistry/physics or polymer engineering and about 3–5 years of experience in LCD technology.” Pet. 17. The level of ordinary skill in the art is further demonstrated by the prior art asserted in the Petition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Regarding the claim 1 clause “wherein the cyclobutanetetracarboxylic acid dianhydride and/or its derivative is a compound represented by a formula [1] . . .” we credit Dr. West’s unrebutted testimony that the “alignment-control films disclosed in Tomioka differ from the claimed films only by the substitution of CBDA with derivatives of CBDA, such as 1,3- dimethyl-1,2,3,4-cyclobutanetetracarboxylic acid dianhydride (‘1,3- dimethyl-CBDA’).” Ex. 1006 ¶ 119. Petitioner’s evidence and argument are sufficient to show that this is nothing more than a simple substitution of one known element for another to obtain predictable results. See Pet. 24–27 (citing Ex. 1006 ¶¶ 120–26); see also In re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”). As Petitioner correctly notes, Tomioka acknowledges that its ‘acid containing components’ are not limited to the dianhydrides listed therein. Pet. 26 (citing Ex. 1008 ¶ 76). Petitioner is also correct that Nishikawa explicitly identifies both CBDA and 1,3-dimethyl-CBDA as preferred dianhydrides for achieving “good liquid crystal alignability.” Id. at 26–27 (citing Ex. 1009, 5:64–67). We also credit Dr. West’s unrebutted testimony that “one of ordinary skill in the art would have considered CBDA and 1,3-dimethyl- CBDA to be interchangeable for purposes of forming alignment-control films.” Ex. 1006 ¶ 126.” slip op. at 14

  Patent outcomesUS 8,758,871 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,758,871
• Mylan Laboratories Limited v. Aventis Pharma S.A.All claims unpatentable
  PTAB · Sep 21, 2017 · IPR2016-00712 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–5 and 7–30 are unpatentable; the contingent motion to amend claims 27–30 with substitute claims 31–34 is denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “unpatentable. Therefore, we address Patent Owner’s contingent motion to enter proposed substitute claims 31–34. MTA 1, App. (claims 31–34). For the reasons that follow, Patent Owner’s motion is denied.” slip op. at 66

  • ExcludeMotion to exclude, deniedDenied

    “McSorley’s Declaration in connection with Exhibits 1089 or 1090 to support our decision. Therefore, Patent Owner’s Motion to Exclude Exhibits 1089 and 1090 is denied as moot.” slip op. at 81

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “e. Conclusion When we balance Petitioner’s strong evidence of obviousness against” slip op. at 52

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(a) regarding the patentability of the challenged claims. In this case, the claimed treatment method, administering a 20 to 25 mg/m2 dose of cabazitaxel in combination with prednisone to docetaxel-refractory metastatic prostate cancer patients, was disclosed more than one year before the earliest effective filing date to which the ’592 patent might be entitled.4 Therefore, for the reasons that follow and based on our review of the complete trial record, we determine Petitioner has shown by a preponderance of the evidence that claims 1–5 and 7–30 of the ’592 patent are unpatentable. We further determine that Patent Owner’s Contingent Motion to Amend claims 27–30 is denied.” slip op. at 4

  Patent outcomesUS 8,927,592 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,927,592
• Autodesk, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg, S.A.All claims unpatentable
  PTAB · Sep 11, 2017 · CBM2016-00043 · APJ Christopher M Kaiser · CBM · Final written decision

  Claims 1, 2, 4–7, and 12–19 are unpatentable under § 101; claims 3, 8–11, and 20 are subject to adverse judgment after disclaimer.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Statutory Disclaimer During the pendency of this proceeding, Patent Owner filed a disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2014. According to this disclaimer, Patent Owner disclaims claims 3, 8–11, and 20 of the ’820 patent. Id.; see also Resp. 1 (“Contemporaneously with the filing of this Response, Patent Owner is disclaiming claims 3, 8, 9, 10, 11, and 20 of the ’820 Patent.”). Our rules provide for entry of adverse judgment against a Patent Owner who disclaims “a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Although Patent Owner does not disclaim all the challenged claims, and although Patent Owner therefore has some claims remaining in this trial, we construe the disclaimer of claims 3, 8–11, and 20 as a request for the entry of adverse judgment solely with respect to those claims. We grant the request and enter adverse judgment with respect to claims 3, 8–11, and 20.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “1. Add-On Computer Software Code Both parties propose construing “add-on computer software code,” a term that appears in every challenged claim. Ex. 1001, 78:43–82:36. Petitioner argues that this term should be interpreted as a “set of computer code that cannot be run independently from a parent program.” Pet. 22. Patent Owner argues that the term should be interpreted as “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.” Resp. 42–43. We agree with Patent Owner. Patent Owner’s construction is taken directly from the written description of the ’820 patent, which provides a reasonably clear, deliberate, and precise definition of the term. See Paulsen, 30 F.3d at 1480; Ex. 1001, 61:42–51 (“The plug-in (add-on) computer software code is . . . .”). To the extent that Petitioner’s proposed construction seeks to limit add-on software code further by requiring that the software code be incapable of running independently from a parent program, as opposed merely to being designed to run within the parent program as an internal component, this further limitation is inconsistent with the lexicography undertaken by the patentee of the ’820 patent. Accordingly, we construe “add-on computer software code” as a “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.”” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “As discussed above, the ’820 patent describes solving problems with the generation of cost estimates of construction projects, including that the process takes significant time and effort, that the estimates produced are difficult to revise, and that the estimates can be inaccurate, leading to cost overruns and difficulties obtaining construction loans. Ex. 1001, 1:15–62. The claims recite a computer readable medium or system for automating the process of generating a price schedule, which is used to develop the overall project cost estimate. Id. at 78:43–82:36. In so doing, the claims do not recite any “specific asserted improvement in computer capabilities,” such as the “self-referential table for a computer database” in Enfish, 822 F.3d at 1336. Instead, the claims of the ’820 patent “invoke[]” known aspects of computer technology, including “[a] non-transitory computer readable medium,” “a computer that includes a processor and a memory,” “an add-on computer software code,” “a software design tool,” and “a database,” “merely as a tool” for solving the problem of improving the known process of generating construction project cost estimates. Id.; Ex. 1001, 78:43–60. Accordingly, the claims of the ’820 patent are not like those considered in Enfish, where the claims were determined at the first step of the Alice framework not to be directed to abstract ideas because they were directed to “[a] specific asserted improvement in computer capabilities.” 822 F.3d at 1336. Instead, Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent are focused “on a process that qualifies as an ‘abstract idea.’” Id. The ’820 patent makes clear that the heart of the claimed subject matter is generating prices for construction projects, a process that can be accomplished without automation technology. Ex. 1001, 1:15–62. The claims themselves recite “[a] non-transitory computer readable medium [that] causes [a] computer to generate a price schedule” and “[a] system for creating a pricing schedule.” Id. at 78:43–51, 82:4. As discussed above, the computer technology recited in the claims is used merely as a tool to automate the process of determining the price of a construction project. Determining a price is an abstract idea. See Versata Dev. Grp., 793 F.3d at 1333–34 (Fed. Cir. 2015). Thus, on the current record, Petitioner has made a sufficient showing that the claims of the ’820 patent are directed to an abstract idea under the first step of the Alice analysis.” slip op. at 20

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “application of an abstract idea. Mayo, 566 U.S. at 78. Petitioner argues that the challenged claims have no such elements, because “the challenged claims add nothing more than well-understood, routine, conventional activity to the abstract idea of calculating a price.” Pet. 32–48. Patent Owner argues that the presence of the add-on computer software code limitations in the challenged claims transforms those claims into patent-eligible applications. Resp. 49–50. We are persuaded that Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355.” slip op. at 23

  Patent outcomesUS 8,515,820 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Enfish
  Patents in suitUS 8,515,820
• Micron Technology, Inc. v. President And Fellows Of Harvard CollegeRehearing denied
  PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing

  The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.

  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). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner 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)Instituted

    “We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,969,539
• Pungkuk Edm Wire Manufacturing Company v. Seong, Ki ChulNo claims unpatentable
  PTAB · Aug 16, 2017 · IPR2016-00764 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board entered adverse judgment against claims 1, 3, 4, 6, and 9; Petitioner did not prove claims 2, 5, 7, 8, and 10 anticipated by Mukherjee because cracks were not shown to be necessarily …

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “and instead only addresses the patentability of claims 2, 5, 7, 8, and 10 of the ’036 patent over Mukherjee. See PO Resp. 2–3, 9–28. We asked Patent Owner during the hearing whether it was conceding the unpatentability of the claims that it did not address in the Patent Owner Response (i.e., claims 1, 3, 4, 6, and 9). Tr. 55:20–56:4 (“[W]e instituted on a number of grounds that you did not -- and on a number of claims that you did not address in your patent owner response. Are you conceding unpatentability of those claims on those grounds?”). Patent Owner’s counsel responded that Patent Owner was conceding the unpatentability of those claims. Id. at 55:20– 56:10 (“JUDGE KOKOSKI: You're conceding that they're [claims 1, 3, 4, 6, and 9] not patentable? MR. SUTTON: That they're not patentable, that's correct.”). The Board’s rules permit a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). The Board construes a party’s “[a]bandonment of the contest” as a request for adverse judgment. Id. § 42.73(b)(4). Accordingly, we construe Patent Owner’s concession that claims 1, 3, 4, 6, and 9 are unpatentable to be an “abandonment of the contest” and a request for adverse judgment as to those claims. Therefore, we enter adverse judgment against claims 1, 3, 4, 6, and 9 of the ’036 patent. C.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Patent Owner contends that the term “cracks,” which, for purposes of the Decision on Institution, we determined did not require an explicit construction (Dec. on Inst. 11), should be construed to be mean “narrow breaks.” PO Resp. 8–9. Petitioner did not address Patent Owner’s proposed construction in its Reply, but when asked during the hearing if it disagreed with it, Petitioner indicated that Patent Owner’s construction was “fine.” Tr. 18:3–21. Based on the record developed at trial, and in the absence of controversy about the construction of the term, we construe “cracks” to mean “narrow breaks.” B.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Inherency requires that the claim limitation in question is necessarily present in the reference. See, e.g., Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (“[A] prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.”); see also SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343–44 (Fed. Cir. 2005) (patent challenger must demonstrate “that ‘the disclosure [of the prior art] is sufficient to show that the natural result flowing from the operation as taught [in the prior art] would result in’ the claimed product.”) (citations omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quotation omitted). “If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Petitioner, therefore, must show that cracks in the alloy layer and the coating layer are necessarily present in Mukherjee.” slip op. at 10

  • ExcludeOther

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1014–1017, 1019, and 1020. Paper 59. We do not consider the merits of Patent Owner’s Motion to Exclude because, as explained above, even if the disputed evidence is considered, Petitioner has not shown by a preponderance of the evidence that claims 2, 5, 7, 8, and 10 of the ’036 patent are unpatentable as anticipated by Mukherjee. Accordingly, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 16

  Patent outcomesUS 6,492,036 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,492,036
• Pungkuk Wire Manufacturing Company v. Seong, Ki ChulNo claims unpatentable
  PTAB · Aug 16, 2017 · IPR2016-00763 · APJ Kristina M Kalan · IPR · Final written decision

  Petitioner did not prove claims 1–4, 6, 9–11, and 14–18 unpatentable as anticipated by Mukherjee because cracks in both required layers were not shown to be inevitable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). “If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” Cont’l Can, 948 F.2d at 1269 (emphasis added). Thus, the question we must answer to determine the inherency of a claim limitation in the prior art is whether the disclosure of the prior art shows that the limitation necessarily would result from following the express disclosure of the prior art, as opposed to showing that the limitation only might result from following the express disclosure of the prior art. Here, Petitioner has not directed us to sufficient evidence of record for us to find that this question should be answered affirmatively.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). “If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” Cont’l Can, 948 F.2d at 1269 (emphasis added). Thus, the question we must answer to determine the inherency of a claim limitation in the prior art is whether the disclosure of the prior art shows that the limitation necessarily would result from following the express disclosure of the prior art, as opposed to showing that the limitation only might result from following the express disclosure of the prior art. Here, Petitioner has not directed us to sufficient evidence of record for us to find that this question should be answered affirmatively.” slip op. at 7

  • Expert testimonyPetitioner expert discountedOther

    “Neither is Dr. Misiolek’s testimony sufficient to support a finding that the Mukherjee process necessarily creates cracks in the alloy layer or in the coating layer. In his initial declaration, Dr. Misiolek states that “[t]he wire drawing process disclosed by Mukherjee would crack the outside beta and gamma brass alloy layer and the outer zinc layer of the coated wire.” Ex. 1008 ¶ 8 (emphasis added). As support for this statement, Dr. Misiolek testifies that “beta brass, gamma brass, and zinc each have a lower ductility compared to alpha brass and these layers are exposed to the highest strain.” Id. Dr. Misiolek does not sufficiently explain, however, why the lower ductility of beta brass, gamma brass, and zinc means that the alloy layer and the coating layer necessarily would crack as a result of the Mukherjee drawing process. The presence of a relatively brittle alloy layer and zinc layer, and the application of a relatively large amount of strain to those layers, seem to make the formation of cracks more likely, but it is not clear from Dr. Misiolek’s testimony why the presence of such circumstances makes the formation of cracks completely certain. The testimony in Dr. Misiolek’s third declaration does not make the reasoning any more clear. Ex. 1019 ¶ 9 (testifying that “the drawing process in column 6 of Mukherjee would cause cracks to form on the surface of the wire” without explaining why). Thus, Dr. Misiolek’s testimony is conclusory and entitled to little weight. 37 C.F.R. § 42.65(a). Moreover, there is evidence of record that, in any given wire drawing process, “whether cracks actually occur depends on multiple factors, including . . . the temperature used during the [drawing] process, and . . . the speed of the drawing.” Ex. 2002 ¶ 14. Dr. Misiolek does not dispute this testimony, and Petitioner does not direct us to any evidence to the contrary. Ex. 1019 ¶¶ 14–18; Reply 16–28. Mukherjee does not disclose either the speed of its wire drawing process or the temperature at which that process takes place. Ex. 1002, 6:58–65. Accordingly, there is insufficient evidence of record to find that wires produced using the Mukherjee process always and inevitably must have cracks in the alloy layer and in the coating layer.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1020, 1021, 1022, 1023, 1025, and 1026. Paper 63. We do not consider the merits of Patent Owner’s Motion to Exclude because, as explained above, even if the disputed evidence is considered, Petitioner has not shown by a preponderance of the evidence that claims 1–4, 6, 9–11, and 14–18 of the ’523 patent are unpatentable as anticipated by Mukherjee. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot. CONCLUSION For the reasons given, we are not persuaded that Petitioner has shown by a preponderance of the evidence that claims 1–4, 6, 9–11, and 14–18 of the ’523 patent are anticipated by Mukherjee. In addition, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 13

  Patent outcomesUS 6,306,523 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 6,306,523
• Pungkuk Wire Manufacturing Company v. Seong, Ki ChulNo claims unpatentable
  PTAB · Aug 16, 2017 · IPR2016-00762 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Mukherjee did not necessarily disclose a crack structure on the alloy layer.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Cir. 2003) (citation omitted) (emphasis added). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). “If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” Cont’l Can, 948 F.2d at 1269 (emphasis added). Thus, the question we must answer to determine the inherency of a claim limitation in the prior art is whether the disclosure of the prior art shows that the limitation necessarily would result from following the express disclosure of the prior art, as opposed to showing that the limitation only might result from following the express disclosure of the prior art. Here, Petitioner has not directed us to sufficient evidence of record for us to find that this question should be answered affirmatively.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Misiolek’s testimony also is not sufficient to support a finding that the Mukherjee process necessarily creates a crack structure in the surface of the alloy layer. In his initial declaration, Dr. Misiolek states that “[t]he wire drawing process disclosed by Mukherjee would crack the outside beta and gamma brass alloy layer.” Ex. 1008 ¶ 8 (emphasis added). As support for this statement, Dr. Misiolek testifies that “beta brass, gamma brass, and zinc each have a lower ductility compared to alpha brass and these layers are exposed to the highest strain.” Id. Dr. Misiolek does not explain why the first statement necessarily follows from the second. The presence of a relatively brittle alloy layer and the application of a relatively large amount of strain to that layer seem to make the formation of cracks more likely, but it is not clear from Dr. Misiolek’s testimony why the presence of such circumstances makes the formation of cracks completely certain. The testimony in Dr. Misiolek’s second declaration does not make the reasoning any more clear. Ex. 1013 ¶ 9 (testifying that “the drawing process in column 6 of Mukherjee would cause cracks to form” without explaining why). Thus, Dr. Misiolek’s testimony is conclusory and entitled to little weight. 37 C.F.R. § 42.65(a). Moreover, there is evidence of record that “whether cracks actually occur [in any given wire drawing process] depends on multiple factors, including . . . the temperature used during the [drawing] process, and . . . the speed of the drawing.” Ex. 2003 ¶ 14. Dr. Misiolek does not dispute this testimony, and Petitioner does not direct us to any evidence to the contrary. Ex. 1013 ¶¶ 14–18; Reply 12–22. Mukherjee does not disclose either the speed of its wire drawing process or the temperature at which that process takes place. Ex. 1002, 6:58–65. Accordingly, there is insufficient evidence of record to find that wires produced using the Mukherjee process always and inevitably must have a crack structure on the surface of their alloy layers. Therefore, we cannot find that Mukherjee anticipates claim 1 of the ’535 patent.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “1019, and 1020. Paper 48. We do not consider the merits of Patent Owner’s Motion to Exclude because, as explained above, even if the disputed evidence is considered, Petitioner has not shown by a preponderance of the evidence that claims 1–5 of the ’535 patent are unpatentable as anticipated by Mukherjee. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 11

  Patent outcomesUS 6,482,535 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 6,482,535

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.