- Mexichem UK Ltd. v. The Chemours Company FC, LLCInstitution deniedPTAB · Jul 12, 2019 · IPR2019-00529 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on claims 1–11, and it declined to institute the remaining grounds under § 314(a).
RulingsInstitution decision- Skill levelSkill level board ownOther
“Resp. 7–8. Patent Owner contends that “a POSITA is a person with a masters or doctorate degree in chemistry and/or chemical engineering, and having at least 3 years of experience working on the research, development, manufacture and formulations of HFC, HCFC and HFO compounds and mixtures.” Id. at 8 (citing Ex. 2003 ¶ 23). Patent Owner’s declarant Dr. Thrasher testifies, however, that he has “reviewed Dr. Sandford’s definition of a person of ordinary skill in the art” and his opinions “do not change under Dr. Sandford’s definition.” Ex. 2003 ¶ 24. We agree with the parties that a POSITA would have had an advanced degree in chemistry or chemical engineering, and experience in the research, development, and/or manufacture of hydrofluorocarbons (HFC) and hydrofluoroolefins (HFO), which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and we note that our conclusions would be the same under either definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b); see also Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (applicable to inter partes reviews filed on or after November 13, 2018). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d 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 those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not propose a construction for any of the claim terms. Pet. 21–22. For purposes of this Decision, based on the record before us, we determine that no claim term requires explicit construction.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“sufficiently establishes that Rao ’434, Rao ’781, and Rao ’597 disclose compositions comprising HFO-1234yf, 3,3,3-trifluoropropyne, and at least one additional compound, as recited in independent claims 1, and 7 of the ’709 patent, or compositions comprising HFC-245eb, 3,3,3- trifluoropropyne, and at least one additional compound as recited in independent claim 11 of the ’709 patent. The ’709 patent states that the examples present a “general procedure [that] is illustrative of the method used for analyzing the products of fluorination reactions.” Ex. 1001, 12:30– 33. Examples 1, 2, and 3 of the ’709 patent use that procedure to measure the reaction product of (1) vapor phase dehydrofluorination of HFC-245eb to HFO-1234 with fluoride alumina catalyst, (2) pyrolysis of HFC-245eb, and (3) liquid phase dehydrofluorination of HFC-245eb to HFC-1234yf, respectively. Id. at 13:1–14:16. Although the ’709 patent provides the amounts of a number of different reaction products detected in each example, i.e., HFO-1234yf, HFO-1234ze, and HFC-245eb, notably absent is a measurement for 3,3,3-trifluoropropyne. Id. There is no indication, therefore, that the products in the examples of the ’709 patent represent the claimed compositions of the ’709 patent, each of which requires the presence of 3,3,3-trifluoropropyne.” slip op. at 15
- Burden
“this result. An experiment reproducing or recreating an example falls within the scope of that example so long as the reproduction is consistent with the teachings of the example, any deviations are immaterial, and the reasons for any deviations are adequately explained. See, e.g., Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1357 (Fed. Cir. 2016) (finding “no clear error” in the district court’s determination that the prior art application’s process was recreated “fairly, accurately, and with no material variation”); Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 n.4 (Fed. Cir. 1995) (finding no error in the district court’s determination that one skilled in the art would have understood that testing departing from the “strict letter” of a prior art example was nonetheless consistent with that example). Based on the current record, we are not persuaded that Petitioner sufficiently establishes that its replication of Rao ’434’s example falls within the scope of the example.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,147,709 - Ditec Solutions, LLC v. Woblleworks, Inc.Rehearing deniedPTAB · Mar 13, 2019 · IPR2018-01414 · APJ Sheldon M Mcgee · IPR · Rehearing
The Board denied Ditech’s rehearing request, leaving institution denied because the arguments did not show that the Board misapprehended or overlooked its construction of claims 1 and 13.
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
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“held cake decorator extruder” as “a three-dimensional (3D) drawing device” in the ʼ444 patent’s Notice of Allowance. Req. 4; Ex. 1002, 344. When viewed in context, however, we do not share Petitioner’s view that the Examiner’s mere characterization of Young’s extruder as a three-dimensional (3D) drawing device, on its own, rises to the level of a “rejection” of Patent Owner’s arguments distinguishing 3D drawing devices from devices that deposit material in layers over time. Ex. 1002, 317–322.2 In fact, the Examiner provides no discussion whatsoever regarding the “three-dimensional” aspect of Young’s device in the Notice of Allowance, but rather focuses on Young’s internal actuators, motor, and gear train. Id. at 344. Thus, the Examiner’s isolated statement that Young’s device is a three-dimensional (3D) drawing device, without more, is not enough to 2 We disagree with Petitioner’s contention (Req. 5) that Patent Owner’s statements made during prosecution were not sufficiently “clear and unmistakable” to invoke the doctrine of prosecution disclaimer. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003); see also Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378–79 (Fed. Cir. 1998) (explaining how “explicit statements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of a claim” because “[b]y distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover.”). persuade us that the Examiner was unequivocally rejecting Patent Owner’s construction of “a three-dimensional (3D) drawing device.”” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Thus, Petitioner’s Request raises new arguments that could have been raised in its Petition. Specifically, the prosecution histories of both the ʼ444 patent and the ʼ266 application provided ample notice to Petitioner of Patent Owner’s previous claim construction positions. Petitioner could have presented a countervailing claim construction argument in its Petition, but instead raises new arguments here in its Request. These new arguments fail the standard set forth in Rule 42.71(d) at the outset because the Board cannot overlook or misapprehend an argument that was not before it. Nevertheless, we determine that even if these arguments were timely made in the Petition or in a Board-authorized Reply, they do not persuade us that the claim construction for the phrase “three-dimensional (3D) drawing device” as set forth in our Decision was erroneous. Dec. 11.” slip op. at 5
Claim constructionPatents in suitUS 9,731,444 - Hologic, Inc. v. Biomérieux, Inc.Rehearing deniedPTAB · Jan 31, 2019 · IPR2018-00569 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Hologic’s rehearing request, leaving in place the denial of institution under § 325(d) for claims 1–6.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board determined that these factors weighed in favor of denying institution because, inter alia: the Examiner considered the same prior art or prior art cumulative to Petitioner’s prior art during prosecution, id. at 12–13; the Examiner thoroughly considered the patentability of the ’352 patent’s claims over the lengthy period of prosecution, id. at 13–15; Petitioner’s arguments were substantially the same as the findings the Examiner made with respect to prior-art reference Montagnier, which is a strong (if not stronger) reference than the prior art Petitioner asserted in these Petitions for inter partes review, id. at 15–18; Petitioner failed to address §325(d) in the Petition, id. at 18; and Petitioner failed to persuade the Board that the Examiner erred in relying on the unexpected results shown in the Laayoun Declaration, id. at 18–21; see also id. at 21–22 (weighing the factors). As to the final finding, the Board considered Petitioner’s argument that the Laayoun Declaration is not persuasive evidence of non-obviousness because the Declaration compares the claimed invention to Bell’s prior-art primers, rather than Backus’s “closest prior art” primers. Id. at 20–21. The Board explained that Petitioner bears the burden to prove unpatentability in an inter partes review, and had failed, in this case, to provide “some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers.” Id. at 21. The Board noted that the Examiner was aware of Backus, but nevertheless “accepted Bell as the closest prior art.” Id. The Board “decline[d] to revisit that decision,” because “Petitioner d[id] not persuade us that the Examiner erred in accepting that evidence as showing unexpected results.” Id. at 21–22.” slip op. at 4
Discretionary denialPatents in suitUS 8,697,352 - Hologic, Inc. v. Biomérieux, Inc.Rehearing deniedPTAB · Jan 31, 2019 · IPR2018-00568 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Hologic’s rehearing request, leaving in place the § 325(d) denial of institution for claims 1–6 because Hologic did not show the Board abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board determined that these factors weighed in favor of denying institution because, inter alia: the Examiner considered the same prior art or prior art cumulative to Petitioner’s prior art during prosecution, id. at 12–13; the Examiner thoroughly considered the patentability of the ’352 patent’s claims over the lengthy period of prosecution, id. at 13–15; Petitioner’s arguments were substantially the same as the findings the Examiner made with respect to prior-art reference Montagnier, which is a strong (if not stronger) reference than the prior art Petitioner asserted in these Petitions for inter partes review, id. at 15–18; Petitioner failed to address §325(d) in the Petition, id. at 18; and Petitioner failed to persuade the Board that the Examiner erred in relying on the unexpected results shown in the Laayoun Declaration, id. at 18–21; see also id. at 21–22 (weighing the factors). As to the final finding, the Board considered Petitioner’s argument that the Laayoun Declaration is not persuasive evidence of non-obviousness because the Declaration compares the claimed invention to Bell’s prior-art primers, rather than Backus’s “closest prior art” primers. Id. at 20–21. The Board explained that Petitioner bears the burden to prove unpatentability in an inter partes review, and had failed, in this case, to provide “some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers.” Id. at 21. The Board noted that the Examiner was aware of Backus, but nevertheless “accepted Bell as the closest prior art.” Id. The Board “decline[d] to revisit that decision,” because “Petitioner d[id] not persuade us that the Examiner erred in accepting that evidence as showing unexpected results.” Id. at 21–22.” slip op. at 4
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for patent owner
“Here, Petitioner attempted to show that Bell is not the closest prior art by presenting schematics comparing the nucleotide sequences of Backus’s primers to Bell’s primers and repeating Dr. Linnen’s statements that he considered the Backus primer set “closer” to the claimed primer set than the Bell primer set. Pet. 52–54 (citing Ex. 1020 ¶¶ 317–327). But neither Petitioner nor Dr. Linnen attempted to explain—or present any evidence— that Backus’s primers would have achieved the same results as the claimed primers. See Instit. Dec. 21. Put differently, Petitioner’s bare assertions failed to establish a reasonable likelihood that Patentee’s unexpected results would have been any different when compared to Backus. See Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006) (calling patent challenger Unilever’s argument that patentee Kao’s unexpected results were not compared to the closest prior art “not sustainable”: “Even if we were to conclude that Gangadharan was clearly the closest prior art, Unilever has not demonstrated, or even alleged, that Gangadharan achieved [the unexpected results] reported by Kao. . . . In the absence of such an allegation, any error made by the trial court in using Gueret for its comparison would be harmless.”). Third, we note that Petitioner’s case appears to rely on an overly mechanical application of the “closest prior art.” See Reh’g Req. 6–12. Although unexpected results must be shown to be unexpected compared to the closest prior art, the Federal Circuit has warned against applying that requirement “so rigidly as to require [patentee] to identify and focus on just one prior art product when multiple, similar” products “existed or were described in the prior art.” Tris Pharma, Inc. v. Actavis Labs. FL, Inc., 2019 WL 254418, at *7 (Fed. Cir. Jan. 16, 2019). Thus, as we stated in the Institution Decision, we decline to revisit the Examiner’s decision to accept the Laayoun Declaration absent some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers. Instit. Dec. 21.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,697,352
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.