- Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–21 because the petition did not show a reasonable likelihood that Belanger-Halevy taught limitation [1B].
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “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, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“variable data database’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 94; Ex. 2001 ¶¶ 68, 70). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties.” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties based on the SO-class identified for the form would have been recognized by a POSA as what the ’342 patent refers to as a universal variable map.” Ex. 1003 ¶ 98 (citing Ex. 1001, 17:48– 52). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers from multiple different websites to each other in the form database, because field identifiers are mapped to the same SO-properties associated with an SO-class.” Id. (emphasis omitted). We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’342 patent. In column 17, lines 48–52, the ’342 patent explains that fields or variables may be part of forms, and variations of the data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:48–52. While this portion of the ’342 patent indicates that forms may include variations on fields or variables, it does not describe linking or mapping variables to one another. Ex. 2001 ¶ 75 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’342 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1B]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1B] of the ’342 patent.” slip op. at 5
NonePatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “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, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[m]issing, however, from Halevy’s disclosure is any teaching or suggestion that a ‘plurality of computer-readable field identifiers’ are mapped ‘to one another’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7
Claim constructionPatents in suitUS 9,633,378 - Hamilton Beach Brands, Inc. v. F’Real Foods, LLCRehearing deniedPTAB · Sep 25, 2017 · IPR2017-00756 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving institution denied on all grounds; Petitioner did not show an abuse of discretion in the Board’s finding that the Sato–Oberg combination was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Petition is ambiguous as to whether Petitioner relies on Sato or Oberg to teach a “rinse chamber.” On the one hand, Petitioner asserts that a “PHOSITA would have understood that Sato suggests rinsing within an enclosure” ([Pet.] 42) and “Sato discloses ‘a rinse chamber’” (id. at 43). On the other hand, Petitioner’s claim chart relies on Oberg alone as disclosing a “rinse chamber.” Id. at 47–48.” slip op. at 3
NonePatents in suitUS 7,144,150 - PTAB · Aug 1, 2017 · IPR2016-01565 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Mylan’s rehearing request, leaving claims 6–8, 10–18, 24, and 25 uninstituted because the Petition did not show the Januvia Label and Huettner were printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party “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.” Id. 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 may be determined 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. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“a trial is based on “the information presented in the petition.” 35 U.S.C. § 314(a). Under 35 U.S.C. § 311(b), in an inter partes review, a petitioner may only challenge the claims of a patent based on “prior art consisting of patents or printed publications,” and the petitioner has the initial burden of production to show that an asserted reference is prior art to the challenged claims under a relevant subsection of 35 U.S.C. § 102. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015); Dec. 16. As explained in our Decision, we have often required a petitioner to make a threshold showing that the reference relied upon was publicly accessible as a printed publication prior to the effective filing date of a challenged patent to satisfy the initial burden of production. See, e.g., Apple Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 5 (PTAB Aug. 12, 2015) (Paper 14) (noting that petitioner has the burden to make a threshold showing that a reference is “printed publication” prior art under 35 U.S.C. §§ 102 and 311(b)); Frontier Therapeutics, LLC v. Medac Gesellschaft Für Klinische Spezialpräparate MBH, Case IPR2016-00649, slip op. at 22 (PTAB September 1, 2016) (Paper 10). We further explained that “[a] given reference is ‘publicly accessible’ ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)); Dec. 17.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“To the extent Petitioner now argues that “the declaration testimony of Dr. Davidson and the facial indicia on Huettner are sufficient” to make a threshold showing that Huettner was publically accessible as of the relevant date (Reh’g Req. 13), we are not persuaded. We note that Dr. Davidson testifies, without elaboration, that “Huettner was published in June 2007.’” Ex. 1002 ¶ 56. Petitioner, however, did not rely on Dr. Davidson’s testimony on this issue in the Petition. Moreover, even if Dr. Davidson’s testimony had been relied on, Petitioner does not point to any evidence—nor can we discern any in Dr. Davidson’s Declaration—that would reasonably suggest that Dr. Davidson has personal knowledge as to when and how Huettner was made available to the public. Accordingly, Dr. Davidson’s conclusory declaration of Huettner’s publication date is entitled to little or no weight. See Dell, Inc. v. Selene Commc’n Techs., LLC, Case IPR2014- 01411, slip op. at 22–23 (PTAB Feb. 26, 2015) (Paper 23) (explaining that an expert declaration is not enough to prove a prior art reference’s publication date where the expert declaration merely repeats assertions made by the petitioner).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied merits
“Decision on Institution, and Petitioner’s Request for Rehearing, we are not persuaded that we erred in declining to institute trial on claims 6–8, 10–18, 24, and 25. Petitioner, having failed to meet its burden of providing a threshold showing that the Januvia Label and Huettner are printed publications under 35 U.S.C. §§ 102 and 311(b), did not demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claims 6–8, 10–18, 24, and 25 of the ’156 patent would have been obvious over the Januvia Label, Huettner, and Mikhail or the Knowledge of one of ordinary skill in the art..” slip op. at 8
§ 102 anticipationPatents in suitUS 8,853,156 - Wombat Security Technologies v. Phishme, Inc.Rehearing deniedPTAB · Jul 20, 2017 · PGR2017-00009 · APJ Jennifer S Bisk · PGR · Rehearing
The Board denied Wombat’s rehearing request, leaving institution of PGR denied because the petition did not show the patent was eligible for PGR.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently shown that the ’038 patent was eligible for post-grant review. Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that the challenged claims were not entitled to the benefit of the filing date of Application No. 13/785,252 (“the ’252 application”) to which the ’038 patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This finding was based on the following deficiencies of the Petition: (1) the Petition did not discuss the relevant disclosure of the application to which the ’038 patent claims priority—Application No. 13/785,282 (“the ’252 application”)—as originally filed, citing instead to the ’940 patent, which issued from the ’252 application; (2) the Petition did not address the Examiner’s statements in the Notice of Allowability that “[t]he present application is being examined under the pre-AIA first to invent provisions”; and (3) Petitioner did not satisfy its burden to show that a person of ordinary skill in the art would not have understood the inventor to have possession of “providing feedback to the individual confirming that the identified email was a simulated phishing attack” (“the feedback limitation”). Id. For the third deficiency, we found the feedback limitation supported by at least paragraphs 5 and 18 of the ’252 application, which discuss training individuals who receive simulated phishing attacks such that users are better able to recognize and thwart a real phishing attack. Id. at 11–12.” slip op. at 2
- BurdenDecided for patent owner
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
§ 112 disclosurePatents in suitUS 9,398,038 - PTAB · Apr 21, 2017 · IPR2016-01566 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied Mylan’s rehearing request, finding no abuse of discretion in denying institution because the petition did not show a reasonable likelihood that the cited combination rendered claims 1–22 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In sum, in the Petition, Petitioner did not establish a reasonable likelihood that it would prevail in showing the combination of the ’510 publication and Ahrén, Hughes, and/or Brazg would have rendered the subject matter of the challenged claims obvious. On rehearing, we see no error in our findings of fact or conclusions of law. Thus, we conclude that Petitioner has not demonstrated that we abused our discretion in denying institution of the challenged claims. IV. ORDER Accordingly, it is ORDERED that Petitioner’s request for rehearing is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, in the Petition, Petitioner did not establish a reasonable likelihood that it would prevail in showing the combination of the ’510 publication and Ahrén, Hughes, and/or Brazg would have rendered the subject matter of the challenged claims obvious. On rehearing, we see no error in our findings of fact or conclusions of law. Thus, we conclude that Petitioner has not demonstrated that we abused our discretion in denying institution of the challenged claims. IV.” slip op. at 6
- BurdenDecided for patent owner
“as it argues now in its request for rehearing, that we should apply a legal presumption of obviousness. In fact, the Petition did not cite Galderma, or numerous other opinions of the Federal Circuit, district courts, and the Board, which Petitioner now relies on in its request for rehearing. The Board could not have misapprehended or overlooked an argument that was not made and case law that was not cited in the Petition. In addition, we reiterate, as we stated in our Decision denying institution, in an inter parte review, Petitioner has the ultimate burden of persuasion to prove unpatentability. Dec. 8 (citing 35 U.S.C. § 316(e); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015)). According to Petitioner, Galderma holds “Patent Owner has burden of overcoming obviousness presumption ‘where there is a range disclosed in the prior art, and the claimed invention falls within that range.’” Req. Reh’g 1 (quoting Galderma, 737 F.3d at 737–38). To the extent Petitioner argues for a presumption of obviousness that shifts the burden of persuasion to Patent Owner, such an argument is misplaced. See In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (stating that the “burden-shifting framework does not apply in the adjudicatory context of an IPR”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In contrast, here, Petitioner relies solely on the teachings of the ’510 publication—a preferred dose of 1 to 100 mg administered “1 to 4 times a day”— to arrive at the claimed dosage of 2.5 mg or 5 mg. The Petition simply does not provide the same type of evidence and context as those in Galderma, sufficient for us to apply the requested presumption.1” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,173,859 - Google, Inc. v. Personal Audio LLCRehearing deniedPTAB · Mar 28, 2017 · IPR2015-00846 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Google's rehearing request and left in place its ruling that claims 1–4, 9, and 13 are unpatentable and claims 5–8, 14–17, 28, and 29 are not unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD FOR RECONSIDERATION The party filing a request for rehearing of a final written decision has the burden of showing that the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place at which each matter was previously addressed in its papers during the trial. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner’s argument is unpersuasive. The agreed upon interpretation of the skip back algorithm to which Petitioner refers states: Specifically, this algorithm includes the following steps: (1) if the currently playing audio program file has played for a predetermined amount of time, resetting the playback position to the beginning of the audio program file; and (2) playing the audio program file from its beginning.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“properly before us now, Petitioner’s argument is unpersuasive on its merits. Petitioner’s argument presupposes that it is irrelevant that Inazawa only sets a reference point in time for tracking durations t2 and t3 when the user first presses the back button after playback has started. Inazawa’s system does not react to a first back button press as required by claim 5 because before Inazawa’s first button press, Inazawa does not measure any duration at all. Stated another way, Inazawa’s system always reacts to the initial press of its back button by restarting playback at the beginning of the currently playing track regardless of when that initial button press occurs. Ex. 1009, 6:17–60. Petitioner’s expert, Dr. Walker agrees as he explains in the following testimony: When the program selecting key 11 is initially manipulated (producing the signal Ts illustrated in Fig. 2A), a reverse program selection mode is entered where: 1) a timer is started (duration of t1 in Fig. 2B); and 2) a skip to the beginning of the current audio program (identified at address N) is performed that includes moving the optical head to the area according to address N (the beginning of the current audio program) and playing the audio program therefrom. * * * Using the program selecting key 11 once again while the program is playing and within the duration t3, would cause a skip backward to the beginning of the preceding program identified at address N-1, the previous track. But manipulating the program selecting key 11 when the duration t3 has expired would cause a skip to the beginning of the current audio program identified at address N, the current track. Ex. 1002 ¶¶ 112–13 (citing Ex. 1009, 6:17–7:56) (internal citations omitted) (emphasis added). Essentially, Dr. Walker explains that Inazawa does not measure any durations of time until after a skip back button is pressed and that the first press of a back button always restarts playback from the beginning of the currently selected audio program. 1. Claim 5 Claim 5 requires monitoring the duration of playback from the beginning of playback and comparing that duration to a predetermined amount of time to evaluate how to respond to every issuance of a “skip backward program selection command.” Inazawa fails to meet this requirement for its first press of a back button, and meeting the requirement in connection with the second of two consecutive presses of a back button is insufficient to meet the claimed skip back algorithm.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 7,509,178 - PTAB · Mar 17, 2017 · IPR2016-01563 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Mylan’s rehearing request, leaving trial instituted only for claims 1 and 10; it found the Petition lacked reasoned obviousness analysis for claims 2–9 and 11–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if the requesting party “specifically identif[ies] . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Petitioner’s Rehearing Request, our Decision, and the evidence currently of record, Petitioner’s Rehearing Request is denied.” slip op. at 2
- BurdenNot shown unpatentable
“See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3), requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim.”). In Harmonic, the Federal Circuit held that “it was Harmonic’s burden to explain to the Board how Haskell combined with Rossmere rendered the challenged claims unpatentable. With respect to claim 11 of the ’291 patent, Harmonic did not do so.” Id. Petitioner here also did not meet its burden with respect to claims 2–9 and 11–26 of the ’927 patent.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In Galderma, for example, the claim recited a “topically applicable pharmaceutical composition comprising 0.3% by weight of [adapalene] . . . Shroot patents disclosed topical adapalene compositions for treating acne “in a preferred range of 0.01%–1%,” including exemplary formulations containing 0.001%, 0.1%, and 1%. Id. at 735–36. The court noted the Shroot patents were listed in the FDA’s Orange Book for “prior art Differin® 0.1% Gel as well as Differin® Gel, 0.3%.” Id. at 735. The court further noted that other prior art references disclosed the use of 0.3% adapalene lotion in an animal model for acne treatment and taught the use of 0.3% adapalene for other skin conditions “without intolerable irritability.” Id. It was in the foregoing context that the court framed the issue as “whether there was motivation to select the claimed 0.3% adapalene composition in the disclosed range.” Id. at 737–38. The Petition here simply does not provide the same type of context and analysis with regard to the claimed linagliptin dosages, sufficient for us to apply the requested presumption.3” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,673,927 - Mylan Laboratories Limited v. Aventis Pharma S.A.Rehearing deniedPTAB · Jan 26, 2017 · IPR2016-00627 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Mylan’s rehearing request, leaving in place the denial of institution on claims 1 and 2 because its arguments did not show the Board misapprehended or overlooked matters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests 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 we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc. et al., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). Petitioner’s Rehearing Request amounts to a re-argument of the contentions raised in the Petition and rejected by the Board. We briefly address Petitioner’s rehearing contentions below.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“Kant alone provide motivation to modify Compound 20 in order to select it as a lead compound.” Req. Reh’g 4–5. Our Decision cited and applied the law that governs Petitioner’s lead compound theory. Dec. 11 (citing Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1291–92 (Fed. Cir. 2012); Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d 1346, 1354 (Fed. Cir. 2010) (“[T]he attribution of a compound as a lead compound after the fact must avoid hindsight bias; it must look at the state of the art at the time the invention was made to find a motivation to select and then modify a lead compound to arrive at the claimed invention.”) (emphases added); Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007)). In particular, Daiichi Sankyo provides that a patent challenger must first establish a motivation for a person of ordinary skill in the art (“POSA”) “to select” a lead compound without hindsight bias, an issue addressed at length in our Decision. Dec. 12–14. The motivation to select a lead compound for further modification must be supported with persuasive evidence, whether it be the teachings of the Kant reference, the Klein reference, the knowledge of a POSA reflected in other prior art references, expert testimony, or some combination thereof. We did not “require” a motivation be found in Kant alone. Id. Petitioner misconstrues our Decision” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner
“Graham factor 3 analysis as improper hindsight,” is based on the curious argument that “nowhere does the Petition argue that Compound 20 should be selected as a lead because of its structural similarity to cabazitaxel.” Req. Reh’g 8–9. Yet, the Petition begins, ends, and overflows with characterizations of cabazitaxel as 7,10-dimethoxy docetaxel, and repeatedly points to the structural similarities between docetaxel, Kant Compound 20, and 7,10-dimethoxy docetaxel (cabazitaxel) as the basis for selecting Kant Compound 20 as a lead compound for further modification in view of Klein. See Pet. 1–2 (“the only difference between the two [Kant Cpd 20 and cabazitaxel] is the methyl group on the C-7 hydroxyl”), 6–7 (“Kant discloses 10-methoxy docetaxel (compound 20), which contains the same methoxy group at the C-10 position as 7,10-dimethoxy docetaxel. . . . Compound 20, which is methylated at the C-10 hydroxyl is shown below on the left, adjacent to 7,10-dimethoxy docetaxel for comparison [of the chemical structures]”), 30–31 (“The structure disclosed in Kant [Compound 20] is shown below, adjacent to the compound of claim 1 of the ’170 patent and adjacent to docetaxel. For ease of comparison, the identical portions of the molecules have been depicted in grey.”). We reiterate our determination that Petitioner “errs by starting with a hindsight-biased structural comparison of docetaxel, Kant Compound 20, and cabazitaxel in side-by-side fashion.” Dec. 12.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“paragraphs 54–55 and 93–94 of Dr. Jacobsen’s Declaration in our Decision (Req. Reh’g 10), that testimony establishes only that known taxanes could be formulated for intravenous administration by using Cremophor EL. Ex. 1002 ¶¶ 54–55, 93–94. Having further considered the cited Declaration testimony of Dr. Jacobsen, we re-state that it “does not address why a POSA would have simultaneously modified the C-7 and C-10 positions in Kant Compound 20 to optimize lipophilicity [of an unknown taxane], thereby minimizing aqueous solubility, when a POSA would have known docetaxel and paclitaxel were highly lipophilic and insoluble in water, which made their commercial formulation challenging.” Dec. 13 (citing Prelim. Resp. 21–24; Ex. 1006; Ex. 1011, 495; Ex. 1015; Ex. 1019, 1:64–67; Ex. 1020, 206; Ex. 2004, 2:42–44; Ex. 2015, 648; Ex. 2024, 45; Ex. 2025, 91; Ex. 2026, 996). The cited testimony is not inconsistent with the knowledge that docetaxel and paclitaxel were highly lipophilic and challenging to formulate, based on the extensive documentary evidence cited by Patent Owner, which we credited. In short, there was no error in crediting Patent Owner’s cited documentary evidence. See Virnetx Inc. v. Apple Inc., 2016 WL 7174130, at *3 (Fed. Cir. Dec. 9, 2016) (“[T]he PTAB must weigh [expert] testimony against other record evidence in reaching its conclusion, and it may give that testimony less weight, so long as it supports its decision with substantial evidence.”). We also do not agree that we overlooked Dr. Jacobsen’s cited Declaration testimony or that it is inconsistent with Patent Owner’s documentary evidence.” slip op. at 6
§ 103 obviousnessPatents in suitUS 5,847,170 - PTAB · Dec 22, 2016 · IPR2015-00554 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving intact its determination that claims 1–11 are unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests 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 the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Expert testimonyDecided for patent owner
“and 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45–49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“We made clear that the controlling description of the specification outweighed Patent Owner’s argument and supporting evidence that specific types of information are required to be read into the “identifying” element of the claims. Id. (“Thus, we construe ‘prescription requests [for GHB] containing information identifying patients’ to refer to information identifying a patient, which may include [Patent Owner’s specifically listed information], but is not limited to that information nor requires all of that information.”) (emphasis added). We also cited to all of the expert testimony on which Patent Owner relied for its claim construction, as an indication that we considered the testimony. Id. at 18 (citing Ex. 2044, 97:11–98:5, 99:18–100:10; Ex. 2046 ¶¶ 39–44). We did the same for the “information identifying . . . any and all medical doctors” language, concluding that: The specification does not suggest that failing to include on the prescription one or more pieces of information from the list of a “medical doctor’s name, license number, DEA number, and physician specialty,” as proposed by Patent Owner, means that a prescription fails to contain information regarding “various credentials,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,668,730
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.