- Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing was granted and IPR instituted on claims 1–28 because the petition showed a reasonable likelihood that claim 1 was obvious over Linnarsson, McCloskey, and ordinary skill.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can provide a distinction based on a ‘polynucleotide sequence.’” Req. 6 (quoting Dec. 14 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we erroneously determined that the proposed modification could not achieve the claim language, stating the following: Petitioner’s proposal appears to defeat satisfaction of another portion of claim 1, namely a “second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.” Ex. 1001, 30:62–64. For if the second tag is “added to the CDS or TSO after extension,” as opposed to the sample polynucleotide, as Petitioner argues (Pet. 39 (emphasis added)), it would appear that the second tag would be incapable of distinguishing any sample polynucleotide from other sample polynucleotides. Rather, the second tag would be ligated to each and every extension product bearing a CDS or TSO without regard to the sequence of any sample polynucleotide. Dec. 16. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis. 2. Advanced Bionics Part Two Patent Owner argues that the Petition “fails to show any error in the Examiner’s application during prosecution of the prior art teachings Petitioner now purports to invoke from . . . McCloskey.” Prelim Resp. 23; see also id. at 24–25 (“Revisiting the same art and arguments already overcome during prosecution is a waste of the Board’s limited resources and would unfairly burden PO.”). However, Petitioner argued that “the Examiner committed major error in Examination by erroneously stating that the prior art fails to teach a dual tagging approach when, in fact, this approach is plainly taught in both McCloskey and McCloskey II.” Pet. 67. The record supports Petitioner’s position, and we agree that the error was material to patentability. See Ex. 1005, 131 (Notice of Allowance). Accordingly, and having considered all of the Becton, Dickinson factors, we do not exercise discretionary denial.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey with the knowledge of a person of ordinary skill in the art to obtain the claimed subject matter. 8. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 21
- Obviousness (§103) › Analogous artNot reached
“the three references is analogous art to the ’013 patent as opposed to each other. Prelim. Resp. 46 (citing Pet. 35; Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi- Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’013 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,697,013 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing granted and IPR instituted on claims 1–26; the Board found a reasonable likelihood that claim 1 would have been obvious over Linnarsson and McCloskey.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can ‘provide a distinction based on a polynucleotide’s sequence.’” Req. 6 (quoting Dec. 15 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we denied the Petition because “adding a second tag sequence to Linnarsson’s CDS and/or TSO would do nothing to achieve such a distinction,” i.e., “a distinction based on a polynucleotide’s sequence.” Id. at 15. That was error. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the ’197 patent. See Ex. 1001, code (56) (listing McCloskey II under “References Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey to obtain the claimed subject matter. 6. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 18
- Obviousness (§103) › Analogous artNot reached
“GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi-Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’197 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,240,197 - Ford Motor Company v. Ethanol Boosting Systems, LLC, And Massachusetts Institute Of TechnologyRehearing grantedPTAB · Nov 21, 2022 · IPR2021-00339 · APJ Lynne H Browne · IPR · Rehearing
Granted Ford’s rehearing request and instituted IPR on claims 1, 2, 5-15, 18, 20, 21, 23, 25, 27-29, and 31 on all petition grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“For the reasons discussed below, we grant Petitioner’s Rehearing Request, and institute an inter partes review. We determine, based on the information in the Petition, Rehearing Request, exhibits, and other briefing, that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).” slip op. at 3
- Prior constructionPrior construction not adoptedTerm construed board ownDecided for petitioner
“C. Claim Construction Given the decision of the Federal Circuit reversing the district court’s claim construction, we now reconsider our claim construction determination in our Decision. As discussed above, on appeal the District Court’s finding that “the specification . . . makes clear that what is invented is a dual fuel engine’” was reversed. Ex. 1042, 3, 7. In other words, the Federal Circuit determined that the claims do not require a dual-fuel system. The Federal Circuit’s decision was based on several determinations. Id. at 4–7. The Federal Circuit determined that “[t]here is nothing in the claim language that requires the use of different fuels in the direct-injection system and the portinjection system.” Id. at 4. It further determined that “[t]he asserted patents’ specifications do not impose a single-fuel requirement either.” Id. at 5. Accordingly, we adopt the Federal Circuit’s claim construction as our own.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion For Claim 1 We have reviewed Petitioner’s assertions set forth in Section II.D.3 above. Based on the current record, we find these assertions to be sufficiently persuasive and supported by the cited evidence to justify institution of review.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“uses portion fuel injection.” Ex. 1001, 16:65. Petitioner asserts that “Miura discloses an ECU,11 PI, and DI.” Pet. 13 (citing Ex. 1008 ¶¶ 15–16; Ex. 1003 ¶¶ 156, 160). Petitioner asserts further that “A POSITA12 would have modified Schray to include a port fuel injector as well as its disclosed direct fuel injector, as is taught by Miura, to provide the engine of Schray with additional benefits relating to mixing and stable combustion at low loads.” Pet. 10.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 10,619,580 - Ford Motor Company v. Ethanol Boosting Systems, LLC, And Massachusetts Institute Of TechnologyRehearing grantedPTAB · Nov 21, 2022 · IPR2021-00340 · APJ Lynne H Browne · IPR · Rehearing
Rehearing was granted and IPR instituted on claims 1, 4, 6-15, 18, 20-29, 31, and 33 on all petition grounds after adopting the Federal Circuit’s fuel-term construction.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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. We review our Decision under an abuse of discretion standard. 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 the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Analysis For Claim 113 As discussed in Section II.C above, we have determined that the claim construction in our Decision was wrong. In the Decision we determined that claim 1 required a duel-fuel system. See Dec. 18 (stating, “we construe the fuel terms consistent with the constructions applied in Ford I and Ford II.”). We now understand the claims to be applicable to single fuel systems. Accordingly, Patent Owner’s contentions that Schray and Miura are directed to single fuel systems are unavailing. 6. Conclusion For Claim 1 We have reviewed Petitioner’s assertions set forth in Section II.D.3 above. Based on the current record, we find these assertions to be” slip op. at 13
- Prior constructionPrior construction not adoptedDecided for petitioner
“district court’s construction of the fuel terms. Paper 16; Ex. 1042 (providing the Federal Circuit’s opinion). The Federal Circuit construed the fuel terms to encompass a configuration where the first fueling system and the second fueling system use the same fuel, consistent with how Patent Owner construed the claim at the district court, and how Petitioner construed the terms in the Petition. See Pet. 15 (“Petitioner adopts Patent Owner’s (“[Patent Owner] contends that the district court erred in construing the first fueling system to be limited to using fuels different than the fuel in the second system because there is no clear disclaimer of a single-fuel invention. We agree.”). C. Claim Construction Given the decision of the Federal Circuit reversing the district court’s claim construction, we now reconsider our claim construction determination in our Decision. As discussed above, on appeal the District Court’s finding that “the specification . . . makes clear that what is invented is a dual fuel engine’” was reversed. Ex. 1042, 3, 7. In other words, the Federal Circuit determined that the claims do not require a dual-fuel system. The Federal Circuit’s decision was based on several determinations. Id. at 4–7. The Federal Circuit determined that “[t]here is nothing in the claim language that requires the use of different fuels in the direct-injection system and the portinjection system.” Id. at 4. It further determined that “[t]he asserted patents’ specifications do not impose a single-fuel requirement either.” Id. at 5. Accordingly, we adopt the Federal Circuit’s claim construction as our own.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“uses portion fuel injection.” Ex. 1001, 17:05. Petitioner asserts that “Miura discloses an ECU,11 PI, and DI.” Pet. 22 (citing Ex. 1008 ¶¶ 15–16; Ex. 1003 ¶¶ 159, 163). Petitioner asserts further that “A POSITA12 would have modified Schray to include a port fuel injector as well as its disclosed direct fuel injector, as is taught by Miura, to provide the engine of Schray with additional benefits relating to mixing and stable combustion at low loads.” Pet. 20 (citing Ex. 1003 ¶ 147).” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 10,781,760 - Caterpillar Inc. v. Wirtgen America, Inc.Rehearing grantedPTAB · Jul 11, 2019 · IPR2017-02185 · APJ Barry L Grossman · IPR · Rehearing
The Board granted Patent Owner’s rehearing request, vacated the original final written decision, and will issue a corrected decision grouping claims 18–20 and 30–32 with claims 17 and 29.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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).” slip op. at 2
NonePatents in suitUS 7,828,309 - Fisher & Paykel Healthcare Limited v. Resmed LimitedRehearing grantedPTAB · Jul 25, 2018 · IPR2017-00062 · APJ Barry L Grossman · IPR · Rehearing
Granted rehearing of claims 46, 51, 53–56, and 65 under SAS, with supplemental briefing and a supplemental patentability determination; the prior final written decision remains in place.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“request for rehearing, and also before the deadline for filing an appeal of the final written decision to the Federal Circuit, the Supreme Court issued its decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). In SAS, the Supreme Court held that a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims challenged in the petition. SAS, 138 S. Ct. at 154 (“So when [35 U.S.C.] § 318(a) says the Board's final written decision ‘shall’ resolve the patentability of ‘any patent claim challenged by the petitioner,’ it means the Board must address every claim the petitioner has challenged.”) Our final written decision did not comply with this requirement.” slip op. at 3
NonePatents in suitUS 9,119,931
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.