- Microsoft Corporation v. Ipa Technologies Inc.Institution deniedPTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13
Discretionary denialPatents in suitUS 7,036,128 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2
- BurdenDenied
“event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,036,128 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,036,128 - Triple Plus Ltd. v. Mordechai Ben OldAll claims unpatentablePTAB · Aug 16, 2019 · PGR2018-00038 · APJ Bart A Gerstenblith · PGR · Final written decision
Claim 1 is unpatentable as obvious over the Triple+ NWL, including the obvious substitution of a butterfly valve for its ball valve.
RulingsFinal written decision- BurdenDecided for petitioner
“We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claim, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued” slip op. at 2
- ExcludeMotion to exclude, grantedGranted
“subject declaration was filed as Patent Owner’s Preliminary Response. Patent Owner’s Preliminary Response states: “Patent Owner, Mordechai Ben Old, hereby submits the following preliminary response in the form of declaration.” Paper 7, 2. To the extent Patent Owner’s Preliminary Response/declaration would be given any weight post-institution, we agree with Petitioner that it would be considered routine discovery and that Patent Owner was required to make himself available for deposition. See Practice Guide, 77 Fed. Reg. at 48,761 (“Routine discovery includes: . . . (2) the cross-examination of the other side[’]s declarants . . . .”). Patent Owner did not do so. Additionally, the record reflects that Patent Owner has continued to fail to participate in this proceeding. In particular, Patent Owner did not respond to our Order specifying “that Patent Owner shall appear . . . on or before May 30, 2019, and show cause as to why adverse judgment should not be issued against Patent Owner for abandonment of the contest pursuant to 37 C.F.R. § 42.73(b)(4).” Paper 14, 3. Accordingly, in light of Patent Owner’s failure to participate in the proceeding by appearing for a deposition by Petitioner or otherwise, we agree that the appropriate remedy is to exclude Patent Owner’s declaration, submitted as its Preliminary Response (Paper 7). Thus, to the extent we would have considered Patent Owner’s declaration at this post-institution stage of the proceeding, we decline to do so.3” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had: “a Bachelor of Science degree in a field of engineering or a closely related discipline, and at least one year of practical academic or industrial experience designing, testing and/or manufacturing fluid control valves.” Pet. 11 (citing Ex. 1003 ¶¶ 28–30). As discussed above, Patent Owner did not file a Response. We reiterate our preliminary finding from the Decision on Institution, that, consistent with the level of ordinary skill in the art reflected by the prior art of record, we adopt the level of ordinary skill in the art proposed by Petitioner based on the present record. See Dec. on Inst. 10; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“one exception that the Triple+ NWL includes a ball valve whereas claim 1 requires a butterfly. See id. at 32–63; see also id. at 31 (“the Triple+ NWL discloses every element of claim 1 except for the choice of quarter turn rotary valve type,” i.e., the claimed butterfly valve). Petitioner asserts that “[t]he ball valve is interchangeable with the claimed ‘butterfly,’ and it would have been obvious to [a person of ordinary skill in the art] to substitute one for the other.” Id. at 35 (citing Ex. 1003 ¶¶ 36–40, 56–57). Petitioner relies upon Dr. Johnson’s testimony in support of this position. See, e.g., id. at 36 (citing Ex. 1003 ¶¶ 36–40). In particular, Petitioner states: a ball valve (like in the Triple+ NWL) is a member of the same family of valves as the butterfly. Except for the shape of the valve member, both are functionally and operationally identical, and both can and were used as shut-off valves for main water lines entering a residence or other structure. Id. (citing Ex. 1003 ¶¶ 36–40). Petitioner asserts that “[t]he Triple+ NWL used a ball valve and was intended for use as a shut-off valve on the main water line.” Id. at 37. Petitioner thus contends that: (1) this use for any quarter turn rotary valve type was well known to one of ordinary skill in the art, id. (citing Ex. 1003 ¶¶ 39–40); (2) “replacing a ball valve with a butterfly valve was a ‘simple design choice and an obvious replacement’” to a person of ordinary skill in the art, id. at 37–38 (quoting Ex. 1003 ¶¶ 56– 57); and (3) “[s]ubstituting one known type of a valve for another— particularly within the same family of valves such as the quarter turn rotary valve family—is the epitome of an obvious design choice” to a person of ordinary skill in the art, id. at 38 (citing KSR, 550 U.S. at 416, 421).7” slip op. at 17
Patent outcomesUS 9,671,031 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,671,031 - PTAB · Jun 19, 2019 · IPR2018-01159 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied West’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In a request for rehearing, we do not review the merits of the Institution Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked. 37 C.F.R. § 42.71(d) (“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.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Initially, we remind Petitioner that we did not find that one of ordinary skill in the art would not have been motivated to modify Carrel in view of David-Hegerich. See Dec. on Inst. 17–22. Rather, we found that Petitioner did not demonstrate a reasonable likelihood of showing that one of ordinary skill in the art would have modified Carrel as proposed by Petitioner. See id.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,586,011 - 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.