- Arconic Technologies LLC v. Novelis Inc.Rehearing deniedPTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing
The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13
NonePatents in suitUS 11,807,942 - PTAB · Apr 6, 2022 · DER2017-00031 · APJ Jameson Lee · DER · Institution
The Board instituted a derivation proceeding as to Respondent’s claims 24–36, finding sufficient evidence that claims 24–30 and 32–35 matched the disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence, which if unrebutted, would support the assertion of derivation.5 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). For establishing derivation, a petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974).” slip op. at 4
- BurdenDecided for petitioner
“Exhibits 1026, 1028, 1041, and 1042, constitute sufficient evidence, under the substantial evidence standard, to support Petitioner’s assertion of conception, except for the requirement of independent corroboration. For instance, there is no declaration testimony from any of the recipients of the email communications or people who were copied on those email communications to corroborate those email communications. There is no testimony from anyone at Pro-Tech to corroborate the nature and existence of the signed manufacturing outline that is Exhibit 1042.” slip op. at 9
None - Playtika Ltd. / Playtika Holding Corp. v. Nexrf Corp.Institution deniedPTAB · Dec 6, 2021 · IPR2021-00952 · APJ Timothy J Goodson · IPR · Institution
The Board denied institution because the Petition presented 96 excessive, unclear grounds without the particularity required by § 312(a)(3).
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“In these circumstances, we determine that discretionary denial is appropriate because the Petition asserts voluminous and excessive grounds and fails to identify them with the requisite particularity. As discussed above, it is the petitioner’s job to distill its case to a reasonable number of well-defined theories and present them with particularity. Here, Petitioner has sketched out myriad paths and invited Patent Owner and the Board to choose their own adventure to arrive at the challenged claims. That is not the Board’s role, nor is it fair to Patent Owner to have to defend against such ill-defined and multifarious challenges. See Microsoft Corp. v. FG SRC, LLC, 860 Fed.Appx. 708, 713 (Fed. Cir. 2021) (“It is not the Board’s job to cobble together assertions from different sections of a petition or citations of various exhibits in order to infer every possible permutation of a petitioner’s arguments. Arguments in a petition must be made with particularity, not opacity . . . .”).” slip op. at 14
Discretionary denialcites PhillipsPatents in suitUS 8,506,406 - Snap Inc. v. Sanderling Management Ltd.InstitutedPTAB · Nov 9, 2021 · IPR2021-00778 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–12, finding a reasonable likelihood that claims 1, 2, and 4–12 would have been obvious over Hogeg and claim 3 over Hogeg and Arujunan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Petitioner that this factor weighs against discretionary denial. As Wyze explained, the reason a stay favors institution is because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that the same or substantially the same art or arguments were previously considered by the Examiner during prosecution of the ’412 patent. There is no dispute that Hogeg was at least considered by the Examiner, even if the Examiner never discussed Hogeg or relied on it in any manner. See Ex. 1002, 63. Although Petitioner correctly points out that Arujunan was not of record during prosecution of the ’412 patent, Petitioner only relies on Arujunan for its challenge to dependent claim 3. See Pet. 10–11, 71. Petitioner relies on Hogeg alone for its challenge to claims 1, 2, and 4–12. See id. at 11. Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner was substantially the same as the prior art relied on in the Petition.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the 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.” Upon consideration of the evidence and arguments in the briefing thus far, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“(2) The Remaining Limitations Patent Owner does not offer any arguments specifically addressing the remaining limitations of claim 1 or Petitioner’s reasons to modify Hogeg as proposed. See Prelim. Resp. 18–30; Prelim. Sur-reply. We have reviewed these aspects of Petitioner’s contentions, and determine that the Petition provides a sufficient showing, at this stage of the proceeding, that Hogeg, when modified as proposed, satisfies each limitation and that one of ordinary skill in the art would have had reason to modify Hogeg as proposed. For the reasons above, we determine, based on the current record, that the Petition shows a reasonable likelihood that Petitioner would prevail in demonstrating that claim 1 would have been obvious based on Hogeg.” slip op. at 40
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,355,412 - Snap Inc. v. Sanderling Management Ltd.InstitutedPTAB · Nov 9, 2021 · IPR2021-00781 · APJ Timothy J Goodson · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that claims 1, 3, 18, and 20 were obvious over Hogeg and claims 3, 7, 17, 20, 24, and 34 over Hogeg and …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Petitioner that this factor weighs against discretionary denial. As Wyze explained, the reason a stay favors institution is because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that the same or substantially the same art or arguments were previously considered by the Examiner during prosecution of the ’986 patent. There is no dispute that Hogeg was at least considered by the Examiner, even if the Examiner never discussed Hogeg or applied it in a rejection. See Ex. 1002, 502. Advanced Bionics Part One asks whether a reference was previously presented to the Office, not whether the Office formed a rejection based on the reference. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).”). Although Petitioner correctly points out that Arujunan was not of record during prosecution of the ’986 patent, Petitioner relies on Hogeg alone for its challenge to claims 1, 3, 18, and 20. See Pet. 11, 18. Under these circumstances, we find Advanced Bionics Part One satisfied because the prior art before the Examiner was substantially the same as the prior art relied on in the Petition.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, we determine that Petitioner has established a reasonable likelihood of prevailing in its contention that claim 1 would have been obvious over Hogeg. 3. Claims 3, 18, and 20 Claim 18 is a system claim that recites many limitations similar to those recited in claim 1. See Ex. 1001, 24:55–25:14. Petitioner contends that Hogeg teaches or renders obvious each of the limitations of claim 18, referring back to its arguments regarding claim 1 for common subject matter. See Pet. 59–65. Claims 3 and 20 recite similar features but depend from different claims: claim 3 depends from claim 1, while claim 20 depends from claim 18. See Ex. 1001, 24:3–7, 25:17–21. Petitioner asserts, with detailed citations to the record, that Hogeg teaches the limitations of claims 3 and 20. See Pet. 57–59, 65. We determine, on the current record, that Petitioner has established a reasonable likelihood of prevailing in its contention that claims 3, 18, and 20 would have been obvious over Hogeg.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC, 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Snap Inc. v. Sanderling Management Ltd.InstitutedPTAB · Nov 9, 2021 · IPR2021-00780 · APJ Timothy J Goodson · IPR · Institution
The Board instituted review of claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 because Snap showed a reasonable likelihood they would have been obvious over Hogeg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Concerning [1b], Petitioner relies on Hogeg’s system 100, which includes network servers, as the claimed “at least one hardware processor,” and the visual content editing functions stored in Hogeg’s repository 104 as the claimed “one or more digital media content processing functions.” Id. at 28–32. Petitioner argues that Hogeg teaches that its visual content editing functions are “associated with at least one distribution rule defining a sensor data condition” as claimed because a subset of functions are selected and distributed based on sensed conditions such as client terminal location. Id. at 33–41. Turning to [1c], Petitioner argues that Hogeg teaches receiving over network 101 sensor data from client terminals 102 that is determined according to outputs of GPS units of client terminals 102. Id. at 42–46. As to [1d], Petitioner argues that Hogeg teaches distributing digital media content processing functions to mobile devices “based on a match between the sensor data condition . . . and the sensor data of the at least one mobile device” as claimed because it describes sending a subset of visual content editing functions to a client terminal based on matching the GPS data from the mobile device with location information related to the visual editing functions stored in system 100. Id. at 46–50. Finally, with respect to [1e], Petitioner asserts that Hogeg teaches that “the at least one digital media content processing function is configured to be used by an application executed on the at least one mobile device” as claimed because Hogeg describes that its visual content editing function is configured to be used by an app, widget, or add-on in client terminal 102. Id. at 50–52. Further, Petitioner asserts that Hogeg’s content editing function “process[es] a digital media content to create an output digital media content” as claimed because it processes an image on a client terminal and creates a new image, which is a modified version of the original image. Id. at 50, 52–55. Based on the current record, we determine that Petitioner has” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 13
- Parallel petitionsDecided for petitioner
“We are satisfied that Petitioner has provided an adequate justification for filing two petitions to challenge the ’986 patent. The Board’s Practice Guide notes that a need to address a large number of claims is one example of a circumstance where more than one petition may be necessary. See Patent Trial and Appeal Board, Consolidated Trial Practice Guide, at 59 (Nov. 2019). Beyond the number of challenged claims, it is reasonable for Petitioner to question how it could effectively challenge in a single petition a claim set that, by itself, fills out 10% of the permissible word count. Finally, Petitioner shows that the two petitions have been structured in a way to minimize the burden on the Board and Patent Owner, by presenting a small number of grounds with consistent arguments that rely on the same art. See, e.g., Google LLC v. Jenam Tech, LLC, IPR2021-00629, Paper 11 at 9 (PTAB Sept. 20, 2021) (finding that Petitioner had provided a satisfactory explanation for filing two petitions against a single patent because “[e]ach petition challenges different claims and presents only one ground against each claim,” as opposed to “a situation where a petitioner is using two petitions to lodge multiple parallel challenges to the same claims”).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Based on our review of the current record, we find that Petitioner has shown that the Examiner erred in failing to reject the claims based on Hogeg. As noted previously, the prosecution history of the ’986 patent includes no analysis or discussion of Hogeg. “[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Advanced Bionics, Paper 6 at 10. The Examiner’s explanation of why the claims were allowable over the prior art of record focused on “the combination of distribution rule defining a sensor data condition and sensor data.” Ex. 1002, 498. However, Petitioner provides a detailed discussion of why Hogeg discloses those features. See Pet. 28–42, 44–46. In its Preliminary Response, Patent Owner does not contest Petition’s contentions regarding these limitations (or any other aspect of the merits of Petitioner’s challenges). See Prelim. Resp. 1–16. As discussed below, we determine on the current record that Petitioner establishes a reasonable likelihood that Petitioner would prevail in demonstrating that the challenged claims would have been obvious based on Hogeg. We also find Petitioner’s showing sufficient to establish that the Examiner erred. The parties’ reliance on the prosecution of related patents involving allegedly similar claims does not impact the outcome of our analysis. See Pet. 17 (mentioning, without elaboration or citation, the EPO rejection of claims); Prelim. Resp. 14–15 (addressing allowance of claims over Hogeg and other material). Because we find that Petitioner made a sufficient showing of Examiner error without relying on the EPO rejection of allegedly similar claims, we need not assess the probative value of the EPO’s rejection, the details of which are not discussed in this Petition. As to Patent Owner’s reliance on the prosecution history of related claims before different Examiners that considered Hogeg and related materials, those arguments do not undermine Petitioner’s showing of Examiner error. First, Patent Owner acknowledges that although the Examiners considered Hogeg, “neither Examiner specifically discussed Hogeg in allowing claims” that were at issue. Prelim. Resp. 15. Second, even if the claims in the related applications are “similar” to the challenged claims, Patent Owner’s briefing does not provide any detailed analysis of the related claims sufficient to determine how the claims in later applications differ from the challenged claims here, and whether those differences are material. See id. at 14–15. Based on the foregoing, we cannot conclude that the Examiners’ allowance of the claims in other applications over Hogeg amounted to a finding that Hogeg fails to disclose one of the limitations in the challenged claims here. Further, even if we agreed that such an implicit finding was made during later prosecution, Petitioner’s challenge based on Hogeg in the Petition provides more compelling evidence of Examiner error than the prosecution of related claims that lack any direct discussion of Hogeg. 5. Conclusion Based on our review of the current record, we determine that Petitioner has demonstrated that the Examiner erred in a manner material to the patentability of challenged claims. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Snap Inc. v. Sanderling Management Ltd.InstitutedPTAB · Nov 9, 2021 · IPR2021-00779 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–11 on all asserted grounds, finding a reasonable likelihood that Snap would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the 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.” Upon consideration of the evidence and arguments in the briefing thus far, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence (“PTAB Rules”), 85 Fed. Reg. 79,120, 79,120 (Dec. 9, 2020) (to be codified at 37 C.F.R. pt. 42) (“[T]he Board will either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Petitioner that this factor weighs against discretionary denial. As Wyze explained, the reason a stay favors institution is because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that the same or substantially the same art or arguments were previously considered by the Examiner during prosecution of the ’866 patent. There is no dispute that Hogeg was at least considered by the Examiner, even if the Examiner never discussed Hogeg or relied on it in any manner. See Ex. 1002 at 132. Although Petitioner correctly points out that neither Svendsen nor Arujunan was of record during prosecution of the ’866 patent, Petitioner only relies on those references for its challenges to dependent claims 3 and 11. See Pet. 63–77. Petitioner relies on Hogeg alone for its challenge to claims 1, 2, and 4–10. See Pet. 27–63. Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner was substantially the same as the prior art relied on in the Petition.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 23–24. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 24 (citing Parulski Decl. ¶¶ 186–187). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,639,866 - BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution deniedPTAB · Sep 7, 2021 · PGR2021-00060 · APJ Ryan H Flax · PGR · Institution
The Board denied institution because the petition did not show claims 1–7 likely unpatentable, and a possible § 112(a) issue for claims 8–9 did not justify instituting on all claims and grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not demonstrated with particularity that it is more likely than not that most claims challenged in the petition are unpatentable under the asserted grounds. Although there is a reasonable argument that claims 8 and 9 may be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis is applicable to only these two dependent claims under a single ground for unpatentability, leaving Petitioner’s other ten grounds insufficient regarding independent claim 1 and dependent claims 2–7. As discussed above, instituting trial under these circumstances would not be an efficient use of the Board’s or the parties’ time and resources. See Chevron, IPR2018- 00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage derives from our review of the record presented. In accordance with the Court’s decision in SAS (138 S. Ct. at 1359– 60) and Office guidance, we deny institution of a post-grant review of the challenged claims of the ’631 patent on any grounds alleged by Petitioner. This decision does not reflect a final determination on the patentability of any claim.” slip op. at 66
- Other 314aInstitution denied discretionary otherInstitution denied
“Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.”). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53– 63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).1 We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1–7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board’s or the parties’ time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S. Ct. at 1359–60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“to read the concept of “flush with” into the claims. We agree with Petitioner’s position that such an interpretation is not supported by the ’631 patent’s written description, which illustrates and describes two embodiments, each having a turbine engine and reduction gearbox configured to be flush with one another, but refers to only the configuration of Embodiment 1 as being “directly connected” and refers to the configuration of Embodiment 2 as being merely “connected.” See Ex. 1001, 5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert witness confirming there is a difference between merely “connected” and “directly connected”). Thus, the intrinsic record supports a conclusion that the concept of “directly connected” is not related to whether one component is “flush with” another component. This disclosure of the ’631 patent also illuminates the meaning of “directly connected.” As shown in Embodiment 2, something may be connected with another thing even if there are intervening components, e.g., a transmission shaft or coupling; however, as shown in Embodiment 1, the ’631 patent uses the term “directly connected” only where no such intervening components are disclosed. Ex. 1001, 5:15– 6:19, Figs. 2, 3. Besides the guidance provided with respect to the embodiments discussed above, the ’631 patent does not otherwise expressly define the term “directly connected.” See generally Ex. 1001. Thus, we consider what the ordinarily skilled artisan would consider to be its ordinary and customary meaning. In this respect, Patent Owner also uses the word “uninterrupted” to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001 ¶¶ 61–71. We conclude based on this record that the concept of “uninterrupted” is more apt than the concept of “flush with,” and find it to be a better description for the ordinary and customary meaning of “directly connected.” For example, the ’631 patent describes, in Embodiment 1, “the turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27 (emphasis added). However, it is without question that Embodiment 1 positions a reduction gearbox between the turbine engine and plunger pump; thus, the engine and pump may be connected, but they are not directly connected. See, e.g., Fig. 2. On the other hand, regarding this same Embodiment 1, the ’631 patent describes that “the turbine engine 19 is directly connected to an input end of the reduction gearbox 24,” and there are no components illustrated or described as being between the turbine engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The connection between the turbine engine and reduction gearbox shown in Embodiment 1 is more aptly described as being uninterrupted. Thus, this illuminates the meaning of “directly connected.” In view of the above, we ascribe to the term “directly connected” its ordinary and customary meaning as it would have been understood by a person of ordinary skill in the art, and we find that ordinary and customary meaning to require that the turbine engine and reduction gearbox are connected with nothing intervening there-between so that their connection is uninterrupted.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s evidence shows that the Apollo 1 apparatus has two gearboxes and a clutch between its turbine engine and plunger pump, thus the Apollo 1 does not meet the claim limitation “the plunger pump is a plunger pump integrated with a reduction gearbox, the turbine engine is directly connected to an input end of the reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained by Mr. Zhang11 as having these two gearboxes and clutch, where at least one of the gearboxes and the clutch forecloses the system from having a single reduction gearbox that is both integrated on a pump and directly connected to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and, notably never attempted to explain exactly what is shown in the above-reproduced photograph from its own Exhibit 1017, even when given the opportunity to address Mr. Zhang’s testimony in its Reply. See generally Reply.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 10,865,631 - PTAB · Aug 12, 2021 · PGR2021-00026 · APJ Jamie T Wisz · PGR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–20 because Petitioner did not show error in the priority-support finding or improper burden shifting.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s 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). A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The ’611 provisional application discloses a first side (8) and a second side (9) of the beveled platform (5)/distal member wherein the first lateral blade (10) and the second lateral blade (11) are “along the sides of said beveled platform.” Ex. 1007, 38. As shown in the annotated figures below, the ’611 provisional application depicts right and left edges, which are the lines/borders between the sides (8, 9) and top of the distal member, wherein these edges extend towards the rearward end from the tip (6). Decision 39–40 (citing Prelim. Resp. 21, 45–46 (citing Ex. 1007, Figs. 1, 3)). Annotated Figures 1 and 3 include added lines and labels indicating the edges of the distal member. Petitioner’s argument appears to hinge on the contention that the beveled nature of the platform prevents it from being an edge. See Req. Reh’g 4, 6. However, Petitioner provides no persuasive arguments or evidence for this contention. We understand that Petitioner disagrees with the Board’s assessment, but simple disagreement is not effective to demonstrate an abuse of discretion.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“The ’611 provisional application discloses a first side (8) and a second side (9) of the beveled platform (5)/distal member wherein the first lateral blade (10) and the second lateral blade (11) are “along the sides of said beveled platform.” Ex. 1007, 38. As shown in the annotated figures below, the ’611 provisional application depicts right and left edges, which are the lines/borders between the sides (8, 9) and top of the distal member, wherein these edges extend towards the rearward end from the tip (6). Decision 39–40 (citing Prelim. Resp. 21, 45–46 (citing Ex. 1007, Figs. 1, 3)). Annotated Figures 1 and 3 include added lines and labels indicating the edges of the distal member.” slip op. at 5
- BurdenDecided for patent owner
“We are not persuaded by Petitioner’s arguments. Contrary to Petitioner’s assertions, Patent Owner’s arguments regarding the claim terms raised by Petitioner were not limited to only showing support in the ’391 patent. In fact, Patent Owner’s Preliminary Response discusses in detail where these claim terms are supported in the ’611 provisional application. See Prelim. Resp. 12–24, 39–41, 43–59. We also disagree with Petitioner’s contention that Patent Owner only provided “conclusory remarks” that the challenged claims were supported by priority applications other than the ’611 provisional. Req. Reh’g 11. For example, the Preliminary Response discusses how the challenged claim terms are supported by U.S. Patent No. 15/207,329 (“the ’329 application”). See Prelim. Resp. 24–27, 61, 63–64. Further, as noted in our Decision, Patent Owner also submitted a claim chart providing exemplary excerpts from the ’611 provisional, the ’329 application, and the ’391 patent to establish support for all elements of several exemplary challenged claims. See Decision 26 n.4 (citing Prelim. Resp., Appx. A). Petitioner has not demonstrated that we improperly shifted the burden to Petitioner. Instead, we concluded that the record before us supported Patent Owner’s contention that the non-disclaimed ’391 patent claims should receive priority to the ’611 provisional application. Decision 42.” slip op. at 8
§ 112 disclosurePatents in suitUS 10,786,391 - Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentablePTAB · Jan 11, 2021 · IPR2019-01054 · APJ James A Tartal · IPR · Final written decision
Claims 1–4, 6–9, and 11–20 were not shown unpatentable because Petitioner failed to establish a sufficient rationale to combine Hedderwick, Koning, and Benac.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Critically, neither Petitioner nor Mr. Prairie acknowledge, much less bridge, the gap between Koning’s use of a brush belt with bristles generally facing downward to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in the proposed combination to receive seeds that are deposited onto or into the bristles from above. In short, what Petitioner casually calls a “known technique” was not taught or suggested by Koning. Patent Owner explains this issue as follows: Koning does not suggest using a brush-belt for retaining and conveying seeds without a separate conveying member to bear their weight. A [person of ordinary skill in the art] would not predict that Koning’s brush-belt could be used successfully for that purpose because, inter alia, a [person of ordinary skill in the art] would not predict that Koning’s belt would successfully receive, retain or convey small seeds on its own due to the unique and unpredictable dynamics of such a belt. Ex. 2203, ¶¶ 136– 138, 164–167. Fundamentally, Koning’s belt, which is intended to steady potatoes while they are conveyed, is not a conveyor belt. Instead, it is a moving belt positioned over top of the potatoes; not intended to support their weight. Petitioners are thus not suggesting using a “familiar element according to known methods” to “yield predictable results.” Cf. KSR, 550 U.S. at 401.” slip op. at 33
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“The basis for Mr. Prairie’s opinion, that a seed would be captured by a moving brush belt in the proposed combination, appears to only be the prior art references themselves. Ex. 2193, 214:6–14, 118:7–23. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” Ex. 2263, 79:17–19, 80:2–4. Mr. Prairie’s reliance on the prior art to support his conclusions is unpersuasive because Mr. Prairie does not account for the differences discussed above between the cited references’ usage of brush belts compared to the way it is used in the proposed combination. In particular, as relevant to the discussion here, Koning does not teach using a brush belt to capture seeds that have been released from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds released from above, as in the proposed combination.” slip op. at 34
- Skill levelSkill level patent owner adoptedDecided for patent owner
“mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 39 (citing Ex. 1002 ¶¶ 21, 22). Mr. Prairie opines this same level of ordinary skill, but adds the additional sentence that such an “ordinary artisan would have been familiar with the mechanics and design of agricultural planters.” Ex. 1002 ¶ 22. Mr. Prairie does not disclose the underlying facts or data on which his opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”) (citations omitted). According to Patent Owner, a person of ordinary skill in the art would have had an undergraduate degree in mechanical engineering, agricultural engineering, or closely related field, and “about two years of experience designing agricultural products or related machinery in industry or academia,” or, alternatively, “about five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” PO Resp. 2–3 (citing Ex. 2203 ¶¶ 47– 52). Patent Owner adds that “[s]uch a person would typically have experience designing projects on a component or small sub-system-level rather than redesigning a larger planting system.” Id. In support of Patent Owner, Dr. Glancey states that Petitioner’s proposed level of ordinary skill is “too restrictive and sets the level of ordinary skill in the art of the ’173 [p]atent too high.” Ex. 2203 ¶ 49. Dr. Glancey provided the following reasons: (1) undergraduate engineering curriculums in place in February 2009 focused on design at the freshman level and continued this focus throughout the student’s degree program, thus avoiding the need for significant post-graduate design experience; (2) masters programs in engineering focus on research for publication in peer-reviewed journals, rather than designing products for industry; and (3) engineering technicians, who may not have formal engineering degrees, “often have years’ worth of relevant hands-on experience” that corresponds to a person of ordinary skill in the art. Id. ¶¶ 50–52. Based on the evidence and arguments of record prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. To the extent there is any inconsistency, we credit the testimony of Dr. Glancey over Mr. Prairie because Dr. Glancey’s opinion was more supported with more persuasive analysis and reasoning, as summarized above. However, we note that the differences between the parties’ proposed definition of the level of ordinary skill in the art are not determinative. The analysis below would be materially the same under either party’s proposed definition.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in controversy need to be construed and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 18
Patent outcomesUS 10,004,173 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,004,173
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.