- Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 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 foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - PTAB · Oct 6, 2017 · IPR2017-01353 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, 11–13, 15, and 18 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 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 Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 904 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’904 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
§ 103 obviousnesscites PhillipsPatents in suitUS 8,500,904 - PTAB · Oct 6, 2017 · IPR2017-01351 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, and 4–7 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“well as the testimony of Mr. Harlos and Dr. Bruce, we conclude that Petitioner has not demonstrated a reasonable likelihood that claims 1, 2, and 4–7 are unpatentable over the recited prior art references. Accordingly, we do not institute inter partes review with respect to any of the asserted grounds. IV. ORDER It is hereby ORDERED that inter partes review is not instituted.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Because the reaction of STMP and potato starch in Graux occurs before the starch is added to the gypsum and water mixture, and because the reaction converts the starch and STMP into di-starch orthophosphate and tetrasodium pyrophosphate, i.e., STMP is consumed during Graux’s reaction process, we are not persuaded that Graux expressly teaches or suggests a set gypsum that is “formed from”12 calcined gypsum, water, and sodium trimetaphosphate, as required by claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded by Petitioner’s argument that one of ordinary skill in the art would have looked to Hjelmeland to determine the amount of STMP to use in Graux. Pet. 21 (asserting that an ordinary artisan would have found it obvious to use the amount of condensed phosphate specified by Hjelmeland in the plaster composition of Graux). Although, as noted by Petitioner, Graux and Hjelmeland both disclose the use of a condensed phosphate, the references use this material in different ways. In particular, Graux uses the condensed phosphate (STMP) to crosslink a potato starch, whereas Hjelmeland discloses adding the condensed phosphate to a gypsum suspension to act as a retarding agent. Ex. 1006, 5:39–50; Ex. 1008, 3:60–4:16. Petitioner does not explain why the concentration of STMP used to retard the setting of a gypsum suspension is in any way related to the amount of STMP required to effectively crosslink a starch. Nor does Petitioner explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink its starch, would have then sought to add STMP to Graux’s mixture in view of Hjelmeland’s genus disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the same fashion as recited in the claims of the ’980 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Based on the foregoing, Petitioner has not demonstrated that Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teach or suggest every limitation of independent claim 1. As dependent claims 2 and 4–7 depend directly from claim 1, we are likewise not persuaded that the combination of Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teaches or suggests the subject matter of these claims.” slip op. at 13
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,758,980 - PTAB · Oct 6, 2017 · IPR2017-01350 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that challenged claims 1–7, 10–15, 18, 22, 26, 29, 32–34, and 40 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314; 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 Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“After reviewing the parties’ positions, we are not persuaded that Petitioner has demonstrated sufficiently that the prior art references teach or suggest including an enhancing material in the mixture of Graux in an amount such that, when the mixture is cast in the form of a ½ inch gypsum board, the board has a sag resistance of less than about 0.1 inch per two feet in length, as determined according to ASTM C473-95. Petitioner has not directed us to any sag resistance values for gypsum boards made using the ingredients disclosed in Graux and measured according to ASTM C473- 95,13 or evidence sufficient to establish that the claimed sag resistance value is an inherent property of a gypsum-containing product formed from the mixture disclosed in Graux. See Trintec Indus., Inc. v. Top–U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.”) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). With regard to Petitioner’s argument that the ’284 patent discloses prior art gypsum boards having a sag resistance of less than 0.1 inch, we note that Petitioner has not directed us to any evidence demonstrating that these products contain the enhancing materials recited in independent claims 1, 2, 4, 5, 10, 34, or 40. Further, we agree with Patent Owner that the mere fact that a person of ordinary skill in the art would have been aware of the test methods set forth in ASTM C473-95 does not establish that boards tested according to 13 Even if we were to agree with Petitioner that Graux discloses a mixture of calcined gypsum, water, and a claimed enhancing material––which, for the reasons discussed above, we do not––Petitioner’s argument still suffers from this deficiency. those test methods would have a particular sag resistance value, or that a person of ordinary skill in the art would have been able to produce a board having a particular sag resistance value. Under the heading “Significance and Use” in the section discussing Humidified Deflection (i.e., sag resistance), ASTM C473-95 states only that “[t]his test method covers a procedure for evaluating the deflection of gypsum board.” Ex. 1009, 8 (Section 49.1) (emphasis added). We are not persuaded that such a disclosure would have taught or suggested combining the components of Graux to achieve a gypsum board having a sag resistance of less than about 0.1 inch per two foot length of said board. Based on the foregoing, Petitioner has not demonstrated that Graux discloses every limitation of independent claims 1, 2, 4, 5, 10, 34, or 40, or that one of ordinary skill in the art would have sought to modify Graux in view of ASTM C473-95, or any of the other recited prior art references, to arrive at the subject matter of the challenged claims. And, as each of the challenged dependent claims depends, directly or indirectly, from one of independent claims 1, 5, and 10, we are also not persuaded that these claims would have been obvious over Graux, ASTM C473-95, Hjelmeland, Sucech, Baig, and Summerland.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP to Satterthwaite’s mixture. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’284 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 18
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,342,284 - PTAB · Oct 6, 2017 · IPR2017-01352 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–4, 6, 8, and 10 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 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 Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDenied
“comprising calcined gypsum, water, an accelerator, and one or more enhancing materials selected from a group that includes STMP. Ex. 1038, 32:2–9. Petitioner does not direct us to any embodiment or teaching in Graux in which STMP is added directly to a mixture of gypsum, water, and an accelerator. Instead, Petitioner relies on the addition of a cross-linked starch in Graux as satisfying the requirement that the claimed matrix of set gypsum is prepared from a mixture comprising sodium trimetaphosphate. Pet. 33. On this record, we are not persuaded that this disclosure is sufficient to show that STMP is present in the mixture of gypsum, water, and an accelerator in Graux.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’914 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 20
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,142,914 - PTAB · Oct 3, 2017 · IPR2017-01088 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 2 was unpatentable under any of the three § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 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 Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed board ownDecided for patent owner
“materials,” for purposes of this Decision we need only resolve whether the proper construction of the term “enhancing materials” is broad enough to encompass boric acid. Example 2 of the ’236 patent states that samples were prepared by mixing beta calcium sulfate hemihydrate, an accelerator, and water with either “0 g additive (control samples), 3 g of STMP (inventive samples), or 3 g of other additives (comparative samples).” Ex. 1030, 13:41–46. According to Table 2 of the ’236 patent, boric acid is one of the “other additives” used in making the “comparative samples.” Id. at 14:22. The ’236 patent explains that “[t]he additives employed in the comparative samples (outside the scope of the invention) are representative of other materials that have been employed to attempt to improve resistance of gypsum board to sagging under conditions of high humidity.” Id. at 14:8–13 (emphasis added). As Patent Owner points out, the ’236 patent further characterizes the board made using boric acid as one of the “noninventive comparative boards.” Id. at 14:28–32. We find this discussion of comparative examples as being outside the scope of the invention constitutes a clear indication that the “patentee disavow[ed] the full scope of a claim term . . . in the specification.” Thorner, 669 F.3d at 1365. As a result, these comparative examples, including a composition comprising gypsum, water, an accelerator, and boric acid, are “outside the reach of the claims of the patent.” SciMed, 242 F.3d at 1341; see also Prelim. Resp. 32–34 (Patent Owner referring to boric acid as a “conventional additive[]”). Therefore, when viewed in the context of the specification, the correct construction of “enhancing material” cannot include boric acid.” slip op. at 8
- BurdenNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,425,236 - PTAB · Oct 3, 2017 · IPR2017-01086 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 7–9, and 54–57 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 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
- 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, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Claims of a patent that will expire within 18 months from the Notice of Filing Date, however, are construed using “a district court-type claim construction approach,” provided a motion under 37 C.F.R. § 42.20 is filed within 30 days from the filing of the petition. 37 C.F.R. § 42.100(b). Patent Owner timely filed such a motion, and Petitioner does not dispute that the ’550 patent expired shortly after the Petition was filed. Paper 6, 2; Pet. 9. Thus, to the extent necessary, we will construe the claims of the ’550 patent using “a district court-type claim construction approach.” 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Petitioner provides proposed constructions for the terms “accelerator,” “set gypsum-containing product,” and “enhancing material(s).” Pet. 11–15. Patent Owner responds to Petitioner’s proposed constructions with its own proposed constructions of these terms. Prelim. Resp. 21–28. Upon review of Petitioner’s and Patent Owner’s arguments and supporting evidence, however, we determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP or condensed phosphate to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP or other condensed phosphate to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’550 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
- Expert testimonyOther
“pyrophosphate. Id. Consistent with Mr. Harlos’ testimony, Patent Owner’s declarant, Dr. Bruce, testifies that the STMP of Graux is “consumed” during the crosslinking reaction.9 Ex. 2001 ¶ 110.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,632,550 - PTAB · Oct 3, 2017 · IPR2017-01011 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 5, and 7–9 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, Preliminary Response, Reply, and Sur- reply, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“Based on the foregoing, Petitioner has not demonstrated that Graux discloses every limitation of independent claim 1, or that one of ordinary skill in the art would have sought to modify Graux in view of ASTM C473- 95 and Hjelmeland to arrive at the subject matter of claim 1. Thus, Petitioner has not demonstrated a reasonable likelihood that independent claim 1 would have been obvious over Graux, ASTM C473-95, and Hjelmeland. And, because independent claim 7 requires the same enhancing materials as recited in claim 1, and because challenged dependent claims 2, 4, 5, 8, and 9 depend directly from either claims 1 or 7, we are likewise not persuaded that claims 2, 4, 5, and 7–9 would have been obvious over the combination of Graux, ASTM C473-95, and Hjelmeland.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP to Satterthwaite’s mixture in view of Hjelmeland’s genus disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’034 patent. Id. (“[I]it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 18
- Expert testimonyPetitioner expert discountedOther
“As shown in the figure above, the reaction between the potato starch and STMP results in the formation of di-starch orthophosphate and tetrasodium pyrophosphate. 9 Ex. 1001 ¶ 50. This is consistent with testimony from Patent Owner’s declarant, Dr. Bruce, indicating that the STMP of Graux is “consumed” during the crosslinking reaction. Ex. 2001 ¶ 111. Because the reaction of STMP and potato starch in Graux occurs before the starch is added to the gypsum and water mixture, and because the reaction converts the starch and STMP into di-starch orthophosphate and 9 Mr. Harlos testifies that the “crosslinks between starch molecules” in Graux are “permanent” and “require a large amount of energy to break.” Ex. 1001 ¶ 49. tetrasodium pyrophosphate, i.e., STMP is consumed during the Graux reaction process, we are not persuaded that Graux expressly teaches or suggests adding STMP to a mixture of gypsum, water, and an accelerator, as required by claim 1.” slip op. at 10
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,964,034 - Lupin Ltd. / Lupin Pharmaceuticals, Inc. v. Horizon Therapeutics, Inc.All claims unpatentablePTAB · Sep 26, 2017 · IPR2016-00829 · APJ Deborah Katz · IPR · Final written decision
Claims 1–15 are unpatentable under § 103 over the ’859 publication, Blau, and Simell; claims 3, 6, 11, 14, and 15 also rely on Brusilow ’84.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We are not persuaded by Patent Owner’s argument that the lack of specific residency/fellowship training or certification, disqualifies Dr. Vaux from providing opinion testimony on the motivations, understandings, and actions of those of ordinary skill in the art. Dr. Vaux testifies that he is “a medical doctor with specialty training in Pediatrics and Clinical Genetics” and is currently Professor and Clinical Chief of the Division of Medical Genetics in the Department of Medicine at UC San Diego. Ex. 1002 ¶ 1. He also testifies: Since 1994, I have regularly diagnosed and treated patients with urea cycle disorders (“UCD”), and continue to do so today. In treating UCD patients, I regularly prescribe nitrogen scavenging drugs and treat patients who are maintained on therapy with nitrogen scavenging drugs. Ex. 1002 ¶ 1. Thus, Dr. Vaux has actually treated UCD patients for at least five years (a requirement recited by Patent Owner, see PO Resp. 16), including prescribing drugs. Patent Owner does not direct us to evidence that Dr. Vaux’s testimony is untruthful or that his treatment of UCD patients is ineffective, indicating that he does not understand how to treat them. Accordingly, even if Dr. Vaux does not have the specialized certificates or particular training that Patent Owner argues are necessary, he has done the job for over twenty years of one who would carry out the claimed methods. We consider this experience more relevant than certificates or training. Thus, we determine that Dr. Vaux is qualified to provide opinions about the motivations, understandings, and actions of one of ordinary skill in the art.” slip op. at 15
- Skill levelSkill level board ownOther
“Patent Owner and Petitioner define a person of ordinary skill in the art as having similar qualifications (compare Pet. 8–9, citing Ex. 1002 ¶ 19 with PO Resp. 15–16, citing Ex. 2006 ¶ 26), but Patent Owner argues that the ordinarily skilled artisan must additionally have “at least three years of residency/fellowship training in Medical Genetics, including Biochemical Genetics, followed by certification in Clinical Genetics and Clinical Biochemical Genetics by the American Board of Medical Genetics and Genomics.” PO Resp. 15–16, citing Ex. 2006 ¶ 26. We agree with the qualifications on which the parties agree and find that one of ordinary skill in the art would have an M.D. or equivalent degree, with a residency and specialized training in the diagnosis or treatment of inherited metabolic disorders, such as UCDs and other nitrogen retention disorders. See Pet. 8– 9; PO Resp. 15–16. We also agree with Patent Owner that one of ordinary skill in the art would have experience treating patients with nitrogen retention disorders, including UCDs. See PO Resp. 16.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Nevertheless, we agree with the parties8 that the claim term “upper limit of normal” (“ULN”) means the highest value in a range of normal values. See Pet. 10; PO Resp. 21. We determine that the plain meaning and the broadest reasonable interpretation of the claim term “less than the upper limit of normal” is any value less than the highest value in the range of normal values. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard); see 37 C.F.R. § 42.100(b).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In summary, the ’859 publication teaches that those of skill in the art would have known to use HPN-100 to treat subjects with UCDs. It also teaches that measuring plasma or blood level of ammonia was known to be useful in determining the effectiveness of a drug regimen for a particular patient and that measuring blood ammonia was a known step in adjusting drug dosages. The ’859 publication teaches that maintaining normal plasma ammonia levels was desirable in the art. Although specific measurements of 8 Patent Owner notes that the parties do not dispute the meaning of any of the claim terms. PO Resp. 2. Because the meaning of the terms in the challenged claims are evident from their ordinary meaning and not controversial, we need not provide a separate analysis of them. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘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).”). plasma ammonia do not necessarily indicate the upper limit of normal consistently across different ways of measuring it, the ’859 publication teaches that treatment would have been considered to be effective when plasma ammonia levels were less than what is determined to be the upper limit of normal in a given case. In addition to the ’859 publication, Petitioner relies on Blau and Simell for the teaching to collect blood from UCD patients after a fast in order to measure plasma ammonia levels. Ex. 1006 at 273 (Table 11.9); Ex. 1005 at 1118; see Pet. 25–26 (citing Ex. 1002 ¶¶ 58, 59); see also id. 1002 ¶ 46, n.2 (citing Ex. 1015 at S11). Anticipating Patent Owner’s argument that Blau relates to diagnosis not treatment of UCDs, Petitioner also cites to Exhibits 1010 and 1015 as evidence that it was generally recommended to measure plasma ammonia after a fast. See Pet. 16, n.2. Exhibit 1010 is a “Lab Update” about measurement in ammonia in blood, and Exhibit 1015 is a publication entitled “Measurement of ammonia in blood.” Both state that most methods recommend collecting a sample from patients who have fasted for at least 6 hours. See Ex. 1010, 4; Ex. 1015, 1. From this evidence, we agree with Petitioner that those of skill in the art would have known that measuring fasting serum ammonia levels, as taught in at least Simell and Blau, was known to be useful with the methods taught in the ’859 publication. In regard to Ground 2, which challenges claim 3 and the claims that depend on it, Petitioner cites Brusilow ’84 for its teaching of measuring a patient’s fasting plasma ammonia level when he or she is admitted, presumably to a hospital, and, in response to elevated levels, treating with the nitrogen scavenging drugs sodium benzoate and phenylacetate. See Pet.” slip op. at 11
Patent outcomesUS 9,095,559 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,095,559 - 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 obviousnessPatents in suitUS 6,969,539
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.