- U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Nof Corporation v. Nektar TherapeuticsRehearing deniedPTAB · Apr 21, 2020 · IPR2019-01395 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied NOF’s rehearing request, leaving institution denied for claims 1–6 because Bentley did not sufficiently teach or suggest the claimed conjugations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“these conjugates would be useful for all possible purposes. Dec. 11–12. Nor does it describe how to determine which conjugates will be useful for any particular desired application. At most, Bentley discloses a tool that can be used to conjugate a broad variety of polymers to nearly any amine-containing substance or surface. Petitioner does not persuasively explain why a disclosure that a particular tool may be used to conjugate polymers to amine-containing materials is a teaching or suggestion to conjugate any particular PEG polymer to any particular type of amine-containing substance.” slip op. at 4
- Expert testimonyDecided for patent owner
“We need not credit expert testimony that does not adequately address the disclosures of a reference as a whole or adequately provide the justification for certain conclusions. See TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359–60 (Fed. Cir. 2019); Ashland Oil, Inc. v. Delta Resins & Refractories, 776 F.2d 281, 294–95 (Fed. Cir. 1985). As discussed above, Petitioner and Dr. Yamamoto did not adequately explain why Bentley’s disclosure of being able to conjugate nearly any polymer to nearly any amine-containing material is a teaching or suggestion that nearly any polymer, or the specific polymer identified at column 7, lines 14–20, would be useful when conjugated to any amine-containing substance identified in Bentley, including biologically active molecules. Moreover, Bentley generally discloses that activated PEG polymers can be conjugated to molecules or surfaces and specifically incorporates by reference Merrill, which discloses conjugating “star” molecules to the support surface of an affinity column. Ex. 1015, 6:12–13; Ex. 2020, 2:5–8. Dr. Yamamoto does not address these disclosures or explain adequately why one of ordinary skill in the art would have sought to conjugate the specific activated PEG molecule disclosed in Bentley (Ex. 1015, 7:14–20) to a biologically active molecule, as opposed to the support surface of an affinity column. Ex. 2020, 2:5–8. Indeed, Dr. Yamamoto does not persuasively identify any actual properties of the specific activated PEG molecule of Bentley relied upon in the Petition.” slip op. at 6
- Skill levelDecided for patent owner
“A high level of skill in the art tends to favor an obviousness conclusion. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness, and thus the patentee, while a higher level of skill favors the reverse.”). Even when the level of skill is high, to meet its burden for institution, Petitioner must still adequately explain why the art and such high skill would have led to the claimed invention. As noted above, we do not find that Petitioner and Dr. Yamamoto did so. Thus, Petitioner has not established that we overlooked its argument as to this issue.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,872,072 - Teradata Operations, Inc. v. Berkeley*ieorRehearing deniedPTAB · Nov 5, 2019 · CBM2019-00013 · APJ Jon B Tornquist · CBM · Rehearing
The Board denied rehearing of its decisions denying institution of CBM review of the challenged claims in four proceedings, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner also contends that the Board failed to consider its obviousness arguments. Req. Reh’g 14–15. We considered these arguments, but ultimately found them unpersuasive. Inst. Dec. 13–14. In short, Petitioner presumed a construction of “using the relational database management system to . . . calculate” that we did not adopt, and did not explain sufficiently why the prior art of record would have rendered the challenged claims obvious under the adopted claim construction. A request for rehearing is not an opportunity to remedy these deficiencies.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,882,137 - Teradata Operations, Inc. v. Berkeley*ieorRehearing deniedPTAB · Nov 5, 2019 · CBM2019-00009 · APJ Jon B Tornquist · CBM · Rehearing
The Board denied Teradata’s rehearing requests, leaving in place the denials of CBM review based on the petition’s failure to show the challenged claims unpatentable under the adopted construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 7,882,137
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.