- Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing deniedPTAB · Aug 10, 2020 · PGR2019-00046 · APJ Sheldon M Mcgee · PGR · Rehearing
The Board held claims 1–20 unpatentable as obvious over the stated combinations and denied Patent Owner’s rehearing request.
RulingsRehearing decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In light of the complete record now before us, we adopt Petitioner’s definition of one of ordinary skill in the art. In addition to the academic requirements associated with obtaining a bachelor’s degree in chemistry or chemical engineering, Petitioner’s definition includes at least two years of experience specific to chemical formulations used in the agricultural industry. Pet. 8. Patent Owner’s “definition” is generic to “formulation chemistry.” Sur-Reply 4. Patent Owner does not explain, nor do we discern, why the skilled artisan would not have had at least some work experience in developing chemical formulations in the relevant field, i.e., the agrochemical industry. Indeed, some of Patent Owner’s arguments are directed to solvent delivery systems used in the agricultural market. PO Resp. 57–78.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“filing date, we apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither party offers a construction for any claim term. Pet. 11; see also PO Resp., generally. On the complete record, we determine that no claim limitations need an express construction to resolve the controversy.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“analogous art. PO Resp. 47; Sur-Reply 8, 15–16. Patent Owner incorrectly frames the analogous art inquiry by comparing whether the prior art references are analogous to each other. See PO Resp. 47 (“not all three references are in the same field of endeavor”); Sur-Reply 16 (asserting that CN400 “is not analogous art with Iannotta [] and/or Kolc” because CN400’s NBPT is purportedly “not dissolved in any solvent”). Our reviewing court has stated, however, that “[a] reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.” Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), the court stated Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Innovention Toys, 637 F.3d at 1322. Regarding whether the CN400 patent is in the same field of endeavor as the ʼ108 patent, we must consider the scope of the ʼ108 patent as a whole and not just the claims. In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009) (rejecting appellant’s attempt to rely on the claimed subject matter to define the relevant “field of endeavor” when the specification described a broader one). Significantly, the ʼ108 patent discloses both solutions and suspensions of NBPT. See Ex. 1001, 5:20–52, 6:5–12, 6:39–40 (disclosing various solutions of NBPT), and 13:24–36 (setting forth an embodiment that formed “a suspension of NBPT in the aqueous mixture” that may “be solved by agitation”). Therefore, regardless of whether CN400’s process set forth in its claim 1 results in a solution or suspension of NBPT, CN400 is from the same field of endeavor as defined by the ʼ108 patent itself––“solvent formulations for the urease inhibitor . . . NBPT.” Ex. 1001, 1:15–18. Even if CN400 was not in the same field of endeavor as the ʼ108 patent, we find it is reasonably pertinent to the particular problem with which the inventor was involved. The ʼ108 patent identifies NBPT formulation toxicity as problematic to the environment, animals, and possibly humans (id. at 2:60–62, 4:8–33), and expressly states “it is desirable to develop formulations/fertilizers that are less toxic to the environment and to animals and humans” (id. at 4:34–36). The skilled artisan would have been aware of this toxicity problem with NBPT-containing formulations (Ex. 1025, 1; Ex. 1007 ¶ 6), and CN400 was also concerned with this problem (Ex. 1006, 1 (Abstract), ¶¶ 2, 5; see also Ex. 2006, 461 (machine translation of CN400 abstract noting how use of its fertilizer formulation will not pollute the environment), 462 ¶ 2, 463 ¶ 5. Notably, Patent Owner does not address this second test in its briefing. Tr. 39:6–11 (Patent Owner’s counsel acknowledging “[w]e did not address the other prong in the briefing”). Thus, on several bases, we find CN400 is analogous art to the ʼ108 patent and may be properly relied on in our obviousness determination.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,221,108 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Rehearing
Denied Corning’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood that claims 1–4 were obvious on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2018). In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,351,027 B2 (“the ’027 patent,” Ex. 1001). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the combined teachings of the prior art would have rendered obvious the limitation of claim 1 that requires “choosing for use in a communications network those optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number” (“the choosing step”). Dec. 23–25, 29–30, 32. We, thus, determined that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’027 patent would have been obvious based on any asserted ground. Id. at 25–26, 30–33.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot reached
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’027 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))); see also Dec. 25 (concluding that Petitioner’s argument appears to be the product of hindsight). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 44 (citing Ex. 1005 ¶ 164).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“legal error by construing claim 1” of the ’027 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction. In fact, we determined that no claim term required express construction, expressly or implicitly. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing, see Reh’g Req. 6– 9, but does not identify anything in our Decision that indicates we construed the choosing step of claim 1 as requiring that the DMD slope should always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027 - VF Outdoor, LLC v. Cocona, Inc.Rehearing deniedPTAB · Dec 9, 2019 · IPR2018-00190 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied VF Outdoor’s rehearing request, leaving intact the determination that claims 27, 28, 30, 32, 33, and 35–37 are unpatentable and claims 38 and 39 are not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- ExcludeOther
“We are not persuaded of good cause. First, during Petitioner’s opening portion of the Oral Hearing, we specifically questioned Petitioner about the combination’s MVTR, to which Petitioner replied “those MVTR ranges are disclosed by Dutta” and “the issue is when you switch out a different particle which is the same class of particles, they’re particles that adsorb or trap substances, they’re molecular filter particles, would there be a reasonable expectation of success? Our expert opined that it would be.” Tr. 25:15–23. Petitioner’s proposed new evidence addresses an element of Petitioner’s case-in-chief—whether Petitioner’s obviousness combination meets the MVTR limitation of claim 27. The panel’s questions about the MVTR limitation and Patent Owner’s responsive comments at the Oral Hearing are not good cause justifying submission of new evidence at the rehearing stage to fill a gap in Petitioner’s case-in-chief. Second, the evidence Petitioner seeks to submit, i.e., Dr. Haggquist’s testimony that “an active particle … may be replaced by any other active particle to obtain a substantially similar result” and that “all other active particles are capable of improving the transmission of vapor through the water-proof cured base material” does not explicitly address whether swapping Haggquist’s particles with Dutta’s particles would result in the claimed MTVR range. Req. 14–15. On the basis of the explanation presented in the Rehearing Request alone, we cannot properly ascertain the significance of this testimony as it relates to claim 27. Moreover, we view Petitioner’s request to introduce new evidence in its Rehearing Request as an attempt to supplement the arguments presented in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. For example, Petitioner had the opportunity in the Petition to present evidence regarding the MVTR of the proposed combination, but did not do so. It would be improper, at this stage in the proceeding, to allow Petitioner to introduce additional evidence, and explanations thereof, in an attempt to bolster its original argument in the Petition, which, as discussed previously, did not meet its burden of proof with regard to the MVTR limitation. See Dec. 36. Even if we were to allow Petitioner to submit its additional evidence, we are not persuaded that it would be sufficient to correct the deficiencies of the original Petition. Consequently, we are not persuaded there is good cause to allow Petitioner to submit Exhibit 1060, and we exercise our authority under 37 C.F.R. § 42.7(a) to expunge Exhibit 1060.” slip op. at 9
NonePatents in suitUS 8,945,287 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCRehearing deniedPTAB · Jan 30, 2019 · IPR2014-01558 · APJ James T Moore · IPR · Rehearing
The Board denied Volkswagen’s rehearing request, leaving claims 3, 16, and 20 not shown unpatentable because Saito, read in context, did not establish the claimed regeneration limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We find Petitioner’s position to be lacking in substance. The quotation provided by Petitioner is only a partial quotation. The complete quotation from Saito, with appropriate following context italicized, is as follows: The method of reducing NOx using a reducing agent such as hydrogen is widely known as a nonselective catalytic reduction method, but in this method, if large amounts of oxygen are present in the exhaust gas [amounts of] reducing agent sufficient to react with the oxygen will be added and the NOx will be reduced, which is not economical in so much as large amounts of reducing agent are consumed, and thus the use of nonselective catalytic reduction methods was limited to situations in which oxygen was not present, or situations in which the oxygen concentration had been greatly lowered. In the method of the present invention, the amount of reducing agent consumed is the amount necessary to reduce and remove the NOx that has been absorbed by the catalyst, which is a very small amount, and therefore this is very economically advantageous. Ex. 1008A, 3 column 1, lines 38–54 (emphasis added). The italicized language, to us, indicates that this discussion in Saito is not that simply of one nonpreferred specific embodiment of catalyst renewal taught, but rather a discussion of the reasons why nonselective catalytic reduction methods of exhaust gas directly were not generally used due to their prohibitive costs. Moreover, it is a stretch to say that catalytic reduction methods are the same as renewing a devitalized catalyst as alleged in Petitioner’s request for rehearing. In this we agree with the Patent Owner that this disclosure of a prior art “non-selective catalytic reduction method does not render claims 3, 16, and 20 obvious.” Paper 75, 10. To the extent that Petitioner asserts we did not consider this argument, we have again considered it and again find it to be unpersuasive based upon Saito itself, when taken in complete context. As noted before, Saito’s example is explicit that Saito uses two catalyst beds and regenerates each catalyst bed independently of each other. PO Resp. 21, 24. By the use of valving, the reducing agent is introduced into the catalyst bed through which exhaust gas is not flowing. Id. at 21 (citing Ex. 1008B, 3). As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d). The request for rehearing is therefore DENIED.” slip op. at 12
- Strike new argumentNew argument disregardedOther
“As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d).” slip op. at 13
- Expert testimonyNot reached
NonePatents in suitUS 5,599,758 - Wockhardt Bio AG v. Janssen Oncology, Inc.Rehearing deniedPTAB · Dec 3, 2018 · IPR2016-01582 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its decision holding claims 1–20 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“Patent Owner now presents a new argument that we misapprehended the teachings of the prior art with respect to claims 4, 11, 19, and 20. Req. 12–14. Patent Owner, however, does not point out where this matter was previously raised. Because Patent Owner has not previously raised any of its arguments presented in the Request, we are not permitted to consider its arguments now. 37 C.F.R. § 42.71(d). Moreover, we did not overlook Patent Owner’s arguments regarding these claims; rather, we considered and adopted Petitioner’s arguments regarding these claims. Dec. 45; cf. Cutsforth, Inc. v. Motive Power, Inc., 636 F. App’x 575 (Fed. Cir. 2016) (nonprecedential). Patent Owner’s failure to argue specifically against these claims during trial does not permit Patent Owner to now present arguments in this regard.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In our Final Written Decision, in connection with our assessment of motivation to combine Sartor with Gerber and O’Donnell, we addressed the disputed portion of Dr. Godley’s testimony directly. Dec. 26 (“Fourth, Patent Owner argues that Petitioner’s expert agrees that prednisone was not known to have anti-cancer treatment effects in prostate cancer patients.”) There, we agreed with Petitioner that Dr. Godley’s interpretation of Sartor was “consistent with Petitioner’s position regarding Sartor, i.e., that prednisone has its own anti-cancer effect.” Id. (citing Ex. 1002 ¶ 116; Ex. 2162, 61:15–62:17). Patent Owner’s disagreement with our analysis is not a proper basis for a rehearing request. Regarding the Board’s consideration of Sartor’s credibility, we evaluated the evidence and testimony before us to conclude that, despite the fact that Sartor was a chart review, it is a “peer-reviewed article published in a reputable journal” and its format did not undercut its teachings. Dec. 24. Regarding the Board’s use of the word “palliative,” we disagree that such use constitutes a new theory advanced by the Board. Req. 7–8. Rather, we used the term “palliative” three times in the Final Written Decision—once to accurately quote the language used by Dr. Godley in his Declaration (Dec. 26 (citing Ex. 1002 ¶ 116)), once to accurately quote Dr. Godley’s testimony (Dec. 26–27 (citing Ex. 2162, 66:1–10, 66:17–67:1), and once in our discussion of claim construction (Dec. 33). None of these instances advances a new theory. Although we noted that Dr. Godley stated that prednisone could be prescribed for palliative treatment in reconciling that statement with our claim construction (id. at 26–27), we relied on Petitioner’s arguments in chief regarding reasons to combine Gerber, O’Donnell, and Sartor in reaching our ultimate determination of unpatentability. Id. at 11–13.” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,822,438 - Mylan Pharmaceuticals Inc. / Actavis Laboratories FL, Inc. et al. v. Janssen Oncology, Inc.Rehearing deniedPTAB · Dec 3, 2018 · IPR2016-01332 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–20 unpatentable under the Final Written Decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“Decision, particularly noting Patent Owner’s argument that “there is no prior art evidence that ketoconazole causes mineralocorticoid excess.” Dec. 17 (citing PO Resp. 18). We also considered Petitioner’s countervailing evidence (id. at 17–18), Patent Owner’s Identification of New Arguments and Evidence in Petitioner’s Reply (Paper 65), and Petitioner’s reply to the same (Paper 74). We also noted in our Final Written Decision that Petitioner’s motivation to combine appeared to be premised on the adverse effects caused by reduced production of cortisol. Dec. 13. We also relied, in the Final Written Decision, on Dr. Garnick’s testimony that CYP17 inhibitors undesirably suppressed the production of cortisol, which is necessary for other biochemical cycles in the body, and which led to adverse side effects. Id. at 12–13 (citing Ex. 1002 ¶¶ 42, 44, 58). We also relied on Dr. Garnick’s testimony that “in light of steroid synthesis inhibitors’ known effects on the adrenal pathways,” one of ordinary skill in the art “would have been motivated to administer a glucocorticoid with administered abiraterone acetate to counteract expected endocrine disruptions.” Dec. 17 (citing Ex. 1097 ¶¶ 21–66). We expressly addressed Petitioner’s arguments and evidence, Patent Owner’s arguments and evidence, and the respective testimony on this issue, and did not overlook Patent Owner’s testimony or other testimony regarding the relationship between ketoconazole and mineralocorticoid excess. Nor are we persuaded, given our consideration and analysis of the testimony and other evidence, that we misapprehended the import of this testimony and evidence, or Petitioner’s reliance on the same for Petitioner’s arguments to support motivation to combine the reliedupon references.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for petitioner
“under 35 U.S.C. § 282. Patent Owner further argues that the Board overlooked or misapprehended that evidence that skilled artisans evaluated O’Donnell and nevertheless proceeded to undertake studies based on abiraterone acetate monotherapy. Req. 13. Patent Owner, however, does not point us to where these argument were raised previously. 37 C.F.R. § 42.71(d). Therefore, Petitioners did not have an opportunity to respond to these issues. Nor did Patent Owner previously address the question of why the presumption of validity in 35 U.S.C. § 282 controls inter partes review proceedings in light of the statement in 35 U.S.C. § 316(e) that “In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” Accordingly, because Patent Owner does not demonstrate that these arguments were raised previously, and because we cannot be assured that Petitioner has had any opportunity to respond, we do not consider these arguments in our present order.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,822,438 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Nov 16, 2018 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Patent Owner’s request for rehearing of the SAS Order, leaving review instituted on all challenged claims and all grounds in the Petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“overlooked express statutory requirements that the Board was obligated to assess before considering the Petition for re-institution.” Reh. Req. 10 (citing 35 U.S.C. § 312(a)). Specifically, Patent Owner argues “the Petition fails to meet the particularity requirement [of 35 U.S.C. § 312(a)(3)] at least with respect to the multiple grounds identified on pages 47–59 of the Petition” because of the “vague formulation” (i.e., Veeck in view of Kellerer, Boehm, and/or Mitchell). Id. at 12. Patent Owner, however, does not identify where this “matter was previously addressed in a motion, an opposition, or a reply,” as required by 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked something that was not presented previously. A Request for Rehearing is not an opportunity to raise new arguments against a petition. To the extent Patent Owner believes the grounds newly instituted in the SAS Order lack sufficient particularity under 35 U.S.C. § 312(a)(3), it can make such arguments in its supplemental briefing.” slip op. at 10
- Director reviewOther
“The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 12
NonePatents in suitUS 7,382,771 - Ceramtec GmbH v. Ceramedic LLCRehearing deniedPTAB · Feb 10, 2017 · IPR2015-00398 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied CeramTec’s rehearing request, declining to hold claims 8–10 unpatentable over Lin and Yeh on a new ground absent from the Petition and instituted trial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- BurdenDecided for patent owner
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“At the very least, this argument fails because Petitioner does not point to the place where each matter was previously addressed in a motion, an opposition, or a reply. Indeed, Petitioner cannot, as this ground was not raised in the Petition, was not instituted in the Decision on Institution, was not addressed by Patent Owner, and was not raised in the Reply. Petitioner’s marshalling of alleged admissions by Patent Owner directed to related issues is not persuasive. Additionally, in its Request, Petitioner presents numerous arguments that were not raised earlier, in an effort to persuade us that we should decide in its favor. Req. 2–5. We need not determine whether these arguments would have been persuasive if previously presented, because they were not so presented. These arguments are, therefore, not timely in a request for rehearing pursuant to 37 C.F.R. § 42.71(d). Moreover, we cannot, at this late stage in the proceeding, create out of whole cloth a new ground that Petitioner has not presented, and to which Patent Owner has not had a chance to respond. Our rules require us to “secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). If we were to grant a request for rehearing on a ground not even presented in the Petition, the due process and other ramifications of such an action would be extensive. In the present proceeding, Patent Owner would be prejudiced. Other proceedings before the Board would be imbued with uncertainty as to which grounds, claims, or combinations of art, instituted or not, should be the focus of the parties’ arguments. In sum, if we were to grant Petitioner’s request, we would be overreaching in exercising our discretion.” slip op. at 4
§ 103 obviousnessPatents in suitUS 6,066,584 - Amerigen Pharmaceuticals Limited v. Janssen Oncology, Inc.Rehearing deniedPTAB · Jul 21, 2016 · IPR2016-00286 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left institution in place for claims 1–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the party believes the Board 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). The Board applies an abuse of discretion standard in reviewing institution decisions. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusNot reached
“The issue of secondary considerations is highly fact-specific. At this stage of the proceeding, the record regarding such secondary considerations is incomplete. Based on the record before us, we determine that Patent Owner’s evidence of secondary considerations is insufficient to preclude trial. Such evidence of secondary considerations should be more fully evaluated in the context of a trial when the ultimate determination of obviousness is made.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,822,438
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.