- Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00032 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Patent Owner’s request for rehearing to authorize a request for Director rehearing of the final written decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Given the particular circumstances of this proceeding, particularly that the Request for Rehearing was filed prior to the Supreme Court’s Arthrex decision, we construe Patent Owner’s Request for Rehearing as requesting authorization to file a Request for Rehearing by the Director of the Final Written Decision and grant this request. Patent Owner is authorized to file a Request for Rehearing by the Director of the Final Written Decision within 30 days of the date of this decision. See 37 C.F.R. §§ 42.5, 42.71(d).” slip op. at 3
- Director reviewDirector review, grantedGranted
“Given the particular circumstances of this proceeding, particularly that the Request for Rehearing was filed prior to the Supreme Court’s Arthrex decision, we construe Patent Owner’s Request for Rehearing as requesting authorization to file a Request for Rehearing by the Director of the Final Written Decision and grant this request. Patent Owner is authorized to file a Request for Rehearing by the Director of the Final Written Decision within 30 days of the date of this decision. See 37 C.F.R. §§ 42.5, 42.71(d).” slip op. at 3
NonePatents in suitUS 7,933,827 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00030 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Nasdaq’s rehearing request and authorized it to seek Director rehearing of the final written decision within 30 days.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“STANDARD 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, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). 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
- Director reviewDirector review, grantedGranted
“The United States Patent and Trademark Office subsequently implemented an interim procedure1 whereby review of a final written decision by the Director may be requested by a party to a post-grant review proceeding.” slip op. at 3
NonePatents in suitUS 7,921,051 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00029 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Nasdaq’s rehearing request and authorized it to seek Director rehearing of the final written decision within 30 days.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Given the particular circumstances of this proceeding, particularly that the Request for Rehearing was filed prior to the Supreme Court’s Arthrex decision, we construe Patent Owner’s Request for Rehearing as requesting authorization to file a Request for Rehearing by the Director of the Final Written Decision and grant this request. Patent Owner is authorized to file a Request for Rehearing by the Director of the Final Written Decision within 30 days of the date of this decision. See 37 C.F.R. §§ 42.5, 42.71(d).” slip op. at 3
NonePatents in suitUS 7,747,506 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Ften, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00020 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Patent Owner’s request for rehearing and authorized it to seek Director rehearing of the final written decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“STANDARD 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, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). 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
- Director reviewDirector review, grantedGranted
“Arthrex, Inc., 141 S. Ct. 1970 (2021). The Supreme Court held “that 35 U.S.C. § 6(c) is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own. The Director may engage in such review and reach his own decision.” Arthrex, 141 S. Ct. at 1987. The Supreme Court “conclude[d] that the appropriate remedy is a remand to the Acting Director for him to decide whether to rehear the petition.” Id. The United States Patent and Trademark Office subsequently implemented an interim procedure1 whereby review of a final written decision by the Director may be requested by a party to a post-grant review proceeding.” slip op. at 3
NonePatents in suitUS 8,386,371 - Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Neonode Smartphone LLCRehearing grantedPTAB · Dec 3, 2021 · IPR2021-00144 · APJ Michelle N Ankenbrand · IPR · Rehearing
Granted rehearing and instituted IPR of claims 1–6 and 12–17 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Petitioner, as the party challenging the Decision, has the burden of showing that we should modify the Decision. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. Id. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that we misapprehended Hirayama307’s distinction between icon 41 and window 43 and, as a result, misapprehended the Petition’s arguments related to icon 41. Specifically, Hirayama307 discloses that window 43 appears “after having touched the desired icon 41 with the point of the pen 3,” and that window 43 is “the processing display form” of icon 41. Ex. 1006, 5:64–66. Thus, contrary to our determination in the Decision that “Hirayama307 appears to duplicate or relocate the representation of the function, i.e., icon, during gliding,” a closer reading of Hirayama307 indicates that icon 41 and window 43 are different, though Hirayama307 at times uses the term “large icon” or “enlarged icon” to describe window 43. See, e.g., Ex. 1006, 6:7–14, 6:22–23, 6:30. We acknowledge that Patent Owner disagrees with Petitioner, but we find that the parties’ disagreement raises an issue of fact that is best resolved on a full trial record. Accordingly, we determine that Petitioner shows sufficiently at this stage of the proceeding that Hirayama307 discloses the limitation “wherein the representation of the function is not relocated or duplicated during the gliding.” In light of this determination, we need not address Petitioner’s additional arguments related to whether Hirayama307 discloses the limitation at issue.10” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“2:48–51. Hirayama307 explains that, after the user moves the pen point from icon 41 to display portion 3, “an icon (hereinafter . . . referred to as a window) enlarged in the form of the processing display mode of the desired icon 41 is automatically displayed on the display portion 1 as shown in FIG. 3B.” Id. at 5:3–12.” slip op. at 6
- Other 314aInstituted
“§ 314(a). See 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless . . . .”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); 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.” (citing 35 U.S.C. § 314(a))). When deciding whether to exercise our discretion, we may consider the number of claims and grounds that meet the reasonable likelihood standard and whether, in the interests of efficient petition should be denied. Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42 (PTAB Jan. 24, 2019) (informative); SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons, D2 (June 5, 2018), available at https://www.uspto.gov/sites/ default/files/documents/sas_qas_20180605.pdf. Here, Petitioner demonstrates a reasonable likelihood of prevailing on its challenges involving Hirayama307, which address all challenged claims. On this record, and based on the particular facts of this proceeding, we find that instituting a trial is an efficient use of the Board’s time and resources.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,879 - Avx Corporation v. Greatbatch Ltd.Rehearing grantedPTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing
The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12
- BurdenMixed
“of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,327,553 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part, instituting review of claims 42–44, 47–51, 53, 55, and 56 for anticipation and claim 57 for obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, 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)InstitutedInstituted
“Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 99. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 99 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 101–102. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“terms, and we agree, for purposes of this decision, that claim 42 does not require a specific quantity of DME in the distillation overhead. We do not agree with Petitioner, however, that the Singh and ’507 patent disclosures are identical with respect to the addition of water to distillation column 22. As indicated in our Decision, both Singh and the ’507 patent describe adding small amounts of water to column 22 for the purpose of inhibiting impurity formation. See Dec. 5–6. The ’507 patent, however, includes additional description of adding water to column 22 for the purpose of producing DME in the distillation overhead. See id. at 7 (citing Ex. 1002, col. 11). This additional description of adding water to produce DME in the distillation overhead does not refer back to the description of adding water as an inhibitor (see Ex. 1002, 10:9–32), or otherwise indicate that the small amounts of water used to inhibit impurity formation in the ’507 patent and Singh processes would produce DME in a distillation overhead. In addition, for the reasons explained in our Decision (Dec. 25–26), Petitioner has not persuaded us that the prosecution history of the ’507 patent includes an admission by Patent Owner that the addition of any amount of water to the distillation step would result in DME in an overhead stream. See Req. Reh’g 10. In sum, Petitioner has not convinced us that our Decision was based on an erroneous claim interpretation or that we overlooked evidence that the addition of any amount of water in the steps common to the Singh and the ’507 patent processes would necessarily result in the presence of DME in a distillation overhead. With respect to Petitioner’s assertions regarding Akinori, we note the Petition relied on Akinori as evidence that DME was necessarily produced in the ’095 patent process. See Pet. 43. Petitioner did not explain how Akinori was relevant to show the presence of DME in the distillation overhead of Singh. For the above reasons, the Request for Rehearing is denied as to the challenge based on Singh in view of the ’095 patent and Akinori.” slip op. at 7
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part; IPR was instituted on claims 58–60, 67, 69, 71, and 72 for anticipation by the ’095 patent and claim 73 for obviousness over the ’095 patent and JP ’712.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, 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)InstitutedInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 99–100. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 58 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 59, 60, 67, 69, 71, and 72, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 25–30.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“on the combination of the ’095 patent and Akinori, based on our determination in Section 1.A., above, that Petitioner had established a reasonable likelihood it would prevail on the merits in showing claim 58 was anticipated by the ’095 patent alone, and the Petition did not articulate a substantive difference between the two challenges. In the present challenge, the Petition fails to explain how Akinori is relied upon for a teaching of a claim 73 feature not described in the ’095 patent. See Pet. 47–51. The Petition does explain, however, why claim 73 would have been obvious over the combination of the ’095 patent and JP ’712. See id. at 50–51. Based on the record before us, Petitioner has established a reasonable likelihood it would prevail in showing claim 73 would have been obvious over the ’095 patent and JP ’712. Therefore, the Request for Rehearing is granted as to claim 73, and trial is instituted based on the combination of the ’095 patent and JP ’712.” slip op. at 11
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part and review instituted on claims 1–4, 6–11, and 13 as obvious over Singh, the ’095 patent, and Akinori.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, 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)InstitutedInstituted
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50. In sum, upon reconsideration of this challenge in light of the Request for Rehearing, we determine Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that it would prevail on the merits in showing claims 1–4, 6–11, and 13 would have been unpatentable over Singh, the ’095 patent, and Akinori. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“declaration testimony; rather, we assessed the persuasiveness of Mr. Miura’s testimony in light of other factual evidence in the record. See Dec. 16–20; Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate. . . . In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within that discretion.”). We did not conclude DME is absent in the distillation overhead in the ’095 patent Example. We found Mr. Miura’s testimony and Experiment 1 were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example given the differences in the ’095 patent Example and Experiment 1 reaction liquids. Thesedifferences were not addressed adequately by Mr. Miura. In this regard, we found Mr. Miura’s dismissal of these differences as “slight,” without further discussion, was not persuasive in light of our actual comparison of the ’095 patent Example and Experiment 1, that revealed “Miura’s Experiment 1 contained more than twice the amount of rhodium and about 34% of the amount of water used in the ’095 patent Example,” Dec. 19, and our review of the ’095 patent and Petitioner’s own patent, U.S. Patent No. 7,683,212 B2 (Ex. 2014), that indicate these differences would affect the reaction product, Dec. 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,076,507
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.