- Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentablePTAB · Jan 22, 2016 · IPR2014-01558 · APJ Fred E Mckelvey · IPR · Final written decision
Claims 1–14 and 16–20 are unpatentable as obvious over Campbell, Saito, and Stiles; the Board found the Hirota, Takeshima, and Saito anticipation grounds insufficient.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We see no need to repeat that discussion here, and adopt it as written therein. Petitioner has failed to establish that Hirota describes a regeneration gas falling within the scope of the regeneration gas of claim 1 of the ʼ758 patent. Accordingly, Petitioner has failed to satisfy its burden of proving by a preponderance of the evidence that the subject matter of claim 1 of the ʼ758 patent is anticipated by Hirota.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner
“Whenever a ground based on obviousness is involved, the preferred manner of setting out differences is to state “the subject matter of claim x differs from the reference in that (1) …, (2) …., and (n) ….” Vague statements or hints of differences not only burdens the Board, but puts a patent owner at somewhat of a disadvantage with having to guess what any differences a petitioner believes may exit. Reluctance on the part of counsel to “admit” to and identify a difference is hard to understand, given the fact that a difference does not mean the subject matter claimed is non-obvious. Dann v. Johnston, 425 U.S. 219, 230 (1976) (mere existence of differences between the prior art and an invention does not establish the invention’s non-obviousness).4 Campbell appears to differ from the subject matter of claim 1 of the ʼ758 patent in that Campbell does not describe an in situ regeneration.” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Discussion While Campbell does not describe in situ regeneration, and assuming arguendo that claim 1 of the ʼ758 patent requires in situ regeneration, in situ regeneration is a well-known technique described by Saito and Stiles. An in situ regeneration in Campbell makes sense because it eliminates a need to discard spent catalyst and permits one skilled in the art to reuse catalytic material. The reuse of catalytic material would have been recognized as significant due to the expense of platinum. Ex. 1056, page 13:20–23. Patent Owner maintains that the catalytic material of Saito and Stiles “is very different from that of the ʼ758 patent.” Paper 29, 4 Petitioner’s failure to clearly identify differences is not consistent with 37 C.F.R. § 42.104(b)(4) and 42.104(b)(5), as well as 35 U.S.C. § 312(a)(3), which require identifying the grounds “with particularity.” The Petition must specify where each element of a challenged claim is found in the prior art patents or printed publications. 37 C.F.R. § 42.104(b)(2). page 29. “There is nothing in either Saito or Stiles to suggest . . . that the regeneration methods of these two references might be succesfully used for regenerating the catalyst/absorber of Campbell.” Id. at page 30.” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“balance in favor of non-obviousness, both in the courts and the PTO. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1902); The Barbed Wire Patent, 143 U.S. 275 (1892); Webster Loom v. Higgins, 105 U.S. 580 (1881); Ex parte Artsana USA, Inc., Appeal 2014-004116, 2014 WL 4090808 (PTAB Aug. 18, 2014); Murata Mfg. Co. v. Synqor, Inc., Appeal 2014-001167, 2014 WL 1397381 (PTAB Apr. 10, 2014); Ex parte Whirlpool Corp., Appeal 2013-008232, 2013 WL 5866602 (PTAB Oct. 30, 2013). However, in this case, we are unable to credit much, if any, weight, to Patent Owner’s evidence of long-felt need and commercial success. For long-felt need and commercial success to be convincing, there must be a “nexus” between (1) the long-felt need/commercial success and (2) the claimed subject matter. In re Fielder, 471 F.2d 640, 646 (CCPA 1973). Patent Owner’s evidence is bottomed on Patent Owner’s experience with what is referred to as a “SCONOx catalytic absorption system.” Ex. 2006A ¶ 4 (direct Declaration testimony of Thomas Girdlestone). Patent Owner characterizes the claimed method as embodying a SCONOx system. Paper 29, page 37:3–4. According to Mr. Girdlestone, the effectiveness of reducing NOx in a SCONOx system was tested at a turbine facility run at EmeraChem’s then-affiliate Sunlaw Energy in California. Ex. 2006A, ¶ 5. Further according to Mr. Girdlestone, both the EPA and the Cal EPA” slip op. at 46
Patent outcomesUS 5,599,758 unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 5,599,758 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Jan 4, 2016 · IPR2015-01673 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds, finding the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1. Our analysis applies with equal force to the remaining claims forming the basis of the Ground 1 challenge.” slip op. at 12
- BurdenDecided for patent owner
“Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“found sulfuric acid described as an alternative for ammonium sulfate. But, then one has to ask: “Where has Petitioner set out to prove that a Gogek Example 3 composition with sulfuric acid used in place of ammonium sulfate meets the limitations of claim 32 as it depends from claim 1?” The relevant testimony is that of Dr. Frederick J. Hirsekorn. Ex. 1005, ¶ 84: Gogek renders the . . . [sulfuric acid] limitation of . . . Claim 32 . . . obvious at least because it discloses that the chemical adjunct may comprise sulfuric acid. Ex. 1003, 1:72–2:4. At the time of the . . . invention of the ’827 Patent, it would have been obvious to a person of ordinary skill in the art to add a small amount of the sulfuric acid as taught in Gogek to the specific formulation of Example 3 of Gogek in order to acid catalyze the inversion of the sucrose in the molasses to produce additional reducing sugars (e.g., dextrose) available for consumption during curing. Producing additional reducing sugar reactants in situ would help ensure that all of the ammonium cations react with the carbonyl group of a reducing sugar, and allow the reaction to run to completion through the consumption of all reactants. Completing the reaction would also improve the quality of the binder. Therefore, one of ordinary skill in the art would have been motivated to use the sulfuric acid expressly disclosed in Gogek with the ammonium sulfate used in the formulation from Example 3 of Gogek in order to achieve these well-known benefits. Agreeing arguendo with Dr. Hirsekorn’s observations, those observations at best prove that one would have found it obvious to use sulfuric acid along with, or possibly in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of ammonium sulfate with a small amount of sulfuric acid would produce a block having the characteristics of the material of claim 32 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1003, col. 1:72. As is often the case in patent specifications, Gogek does not say why ammonium sulfate is preferred. It is not unreasonable to assume that Gogek had some reason for making the statement. Once Example 3 is replicated with a change that would not be the preferred embodiment, it is not unreasonable to assume that a non-preferred embodiment may have properties differing from those of a block made in accordance with Example 3 without sulfuric acid. Petitioner bears the burden of proof. We have not been given” slip op. at 10
§ 103 obviousnessPatents in suitUS 9,039,827 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9
- BurdenNot shown unpatentable
“those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,940,089 - Corning Incorporated v. DSM IP Assets B.V.No claims unpatentablePTAB · May 1, 2014 · IPR2013-00047 · APJ Fred E Mckelvey · IPR · Final written decision
Corning’s request to cancel claims 1–14 was denied because it failed to prove that Coady or Szum inherently disclosed the claimed %RAU limitations.
RulingsFinal written decision- Strike new argumentNew argument disregardedDecided for patent owner
“9. Discussion The rationale urged for non-consideration is based on our trial rules, including our rule relating to replies. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the . . . patent owner response.”). Practice relating to replies is addressed in our Office Patent Trial Practice Guide. 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012): A reply may only respond to arguments raised in the corresponding opposition [, in this case DSM’s response]. [37 C.F.R.] § 42.23. While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. The Board will not attempt to sort proper from improper portions of the reply. Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claims, and new evidence that could have been presented in a prior filing. There came a time when Corning says it made an inquiry “to” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The dispositive claim limitations of the ʼ306 patent are limitations [2(a)] and [2(b)], as set out in claim 1 reproduced above. Corning has failed to prove by a preponderance of the evidence that the prior art inherently describes either limitation. Under the claim construction Corning proposed in its Petition (Pet. 14-16), Corning has failed to prove its case; accordingly, there is no occasion for further construction of the %RAU language of limitations [2(a)] and [2(b)] in claim 1.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“burden of establishing that the %RAU limitations of the claims of the ‘306 patent are inherently described in Coady or Szum. Based on the evidence entitled to be considered, Corning has not established that the %RAU limitation is inherently described by either Coady or Szum. As a result, Corning has failed to sustain its burden of proof.” slip op. at 18
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“Sogah’s testimony is proper reply testimony. Cf. Liberty Mutual Ins. Co., supra n.3 at 65 (“To rebut Mr. Ehsani’s assertions regarding Kosaka’s Figures 10 and 11, it would be reasonable for Mr. Andrews’s rebuttal testimony to address those same figures.”) (italics added). We decline DSM’s request to exclude the Item 2 evidence.” slip op. at 13
Patent outcomesUS 6,438,306 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,438,306 - Corning Incorporated v. DSM IP Assets B.V.No claims unpatentablePTAB · May 1, 2014 · IPR2013-00043 · APJ Fred E Mckelvey · IPR · Final written decision
Corning failed to prove claims 1-18 of the ’103 patent unpatentable because it did not establish that Szum ’157 inherently disclosed the 95% cure-dose limitation.
RulingsFinal written decision- BurdenNot shown unpatentable
“4. Decision on the 95% limitations Corning has the burden of proof, and has failed to sustain its burden of establishing by a preponderance of evidence that the prior art inherently describes the 95% limitation. While DSM does not have any burden to disprove inherency, it failed to establish that the relevant limitation is not inherent.. A preponderance of evidence has not emerged on the factual question of whether Szum ’157 Examples 10-1 and 10-2 inherently describe a composition within the scope of the claims of the ʼ103 and ʼ508 patents. Hence, the party with the burden of proof necessarily loses. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir. 1988).” slip op. at 27
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Nevertheless, to the extent that there is a conflict between the two witnesses with respect to Corning’s cure dose proofs, we credit Bowman over Reichmanis. The Bowman testimony is detailed and supported by underlying data, while the Reichmanis testimony is general and is not credibly supported by underlying data. 37 C.F.R. § 42.65(a), (b)(5).” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Once the data points are curve-fitted, the “maximum” modulus surfaces at the point where the curve flattens out. See, e.g., Ex. 2030, Fig. 1 (essentially between a dose of 1.00 and 2.00 J/cm2). At a dose of 0.2, the modulus is essentially 0.5. Once one skilled in the art has a properly fitted curve, determination of 95% of the maximum modulus is possible. As seen visually in Figure 1, the maximum appears to be at a modulus of about 0.95 MPa. As shown in Figure 1, the cure dose required to obtain 95% of the maximum attainable modulus was determined to be from 0.72 to 0.76 J/cm2—a value outside the limits of claim 1 of the ʼ103 patent and claim 1 of the ʼ508 patent.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“MOTIONS TO AMEND In IPR2013-00043, DSM has filed a Motion to Amend (Paper 45) contingent on claim 12 of the ʼ103 patent being held unpatentable. In IPR2013-00044, DSM has filed a Motion to Amend (Paper 44) contingent on claim 17 of the ʼ508 patent being held unpatentable. Since claim 12 of the ʼ103 patent and claim 17 of the ʼ508 patent have not been held unpatentable, there is no occasion to reach or decide the motions to amend.” slip op. at 27
Patent outcomesUS 7,171,103 not shown unpatentable§ 102 anticipationPatents in suitUS 7,171,103 - Corning Incorporated v. DSM IP Assets B.V.No claims unpatentablePTAB · May 1, 2014 · IPR2013-00044 · APJ Fred E Mckelvey · IPR · Final written decision
Corning’s challenges to claims 1–18 of the ’103 patent and claims 1–22 of the ’508 patent failed because it did not prove the prior art inherently met the 95% cure-dose limitation.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“ʼ157 inherently describes a coating having the required cure dose, there is conflicting testimony of Bowman and Reichmanis. Both witnesses appear to be qualified scientists. We have no reason to question the good faith of either witness and we believe they have testified faithfully to their respective opinions. Nevertheless, to the extent that there is a conflict between the two witnesses with respect to Corning’s cure dose proofs, we credit Bowman over Reichmanis. The Bowman testimony is detailed and supported by underlying data, while the Reichmanis testimony is general and is not credibly supported by underlying data. 37 C.F.R. § 42.65(a), (b)(5).” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“Fitting data points to a curve is important. The data points, when properly fitted to a curve, permit one skilled in the art to determine whether 95% of the maximum attainable modulus is attainable at the relevant cure dose for a given composition. According to the ʼ103 patent, cure doses of 0.2, 0.3, 0.5, 0.75, 1.0, and 2.0 J/cm2 are to be employed. ’103 patent 9:58-60; see also ’508 patent 7:58-59. A “dose-modulus curve was then created by plotting the modulus values vs. the dose and by fitting a curve through the data points.” ’103 patent 9:39-41. The ’103 patent and the ’508 patent do not indicate that the data points are to include the origin (0,0 data point).” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“MOTIONS TO AMEND In IPR2013-00043, DSM has filed a Motion to Amend (Paper 45) contingent on claim 12 of the ʼ103 patent being held unpatentable. In IPR2013-00044, DSM has filed a Motion to Amend (Paper 44) contingent on claim 17 of the ʼ508 patent being held unpatentable. Since claim 12 of the ʼ103 patent and claim 17 of the ʼ508 patent have not been held unpatentable, there is no occasion to reach or decide the motions to amend.” slip op. at 27
Patent outcomesUS 6,961,508 not shown unpatentable§ 102 anticipationPatents in suitUS 6,961,508
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.