• Avita Medical Limited v. Renovacare Sciences Corp.Institution denied
  PTAB · Dec 18, 2017 · IPR2017-01243 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all grounds, finding the petition relied on the same or substantially the same prior art previously considered by the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Our discretion pursuant to § 325(d) involves a balance between several competing interests. “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, are the interests of giving petitioner the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id.” slip op. at 5

  Discretionary denial
  Patents in suitUS 9,610,430
• International Business Machines Corp. v. Groupon, Inc.Institution denied
  PTAB · Dec 5, 2017 · IPR2017-01452 · APJ James A Tartal · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “1 U.S. Patent No. 7,593,740 B2, issued September 22, 2009 (Ex. 1108, “Crowley”). 2 U.S. Patent App. Pub. No. 2003/0004802 A1, published January 2, 2003 (Ex. 1109, “Callegari”). 3 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. Although Patent Owner asserts that “Petitioner improperly challenges the same claims by filing two Petitions on the same day” that present substantially the same arguments, Patent Owner further asserts that Petitioner has taken “inconsistent positions across each of the Petitions” by equating the claim term “correlating” to “indexing” in one petition and “grouping” in another. Id. at 24–27. We have considered Patent Owner’s arguments and are not persuaded to exercise our discretion to deny institution under the circumstances presented in this case. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19, 15–16) (precedential) (discussing factors considered in determining whether to exercise discretion to decline institution of review). Patent Owner also argues that we should decline institution under 35 U.S.C. § 325(d) because the asserted references are “cumulative of the references specifically referenced by the Examiner during prosecution.” Prelim. Resp. at 30. We have considered Patent Owner’s arguments and are not persuaded that the Examiner’s consideration of prior art alleged to be substantially similar to the references asserted by Petitioner warrants denial of the Petition in this case” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “1 U.S. Patent No. 7,593,740 B2, issued September 22, 2009 (Ex. 1108, “Crowley”). 2 U.S. Patent App. Pub. No. 2003/0004802 A1, published January 2, 2003 (Ex. 1109, “Callegari”). 3 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. Although Patent Owner asserts that “Petitioner improperly challenges the same claims by filing two Petitions on the same day” that present substantially the same arguments, Patent Owner further asserts that Petitioner has taken “inconsistent positions across each of the Petitions” by equating the claim term “correlating” to “indexing” in one petition and “grouping” in another. Id. at 24–27. We have considered Patent Owner’s arguments and are not persuaded to exercise our discretion to deny institution under the circumstances presented in this case. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19, 15–16) (precedential) (discussing factors considered in determining whether to exercise discretion to decline institution of review). Patent Owner also argues that we should decline institution under 35 U.S.C. § 325(d) because the asserted references are “cumulative of the references specifically referenced by the Examiner during prosecution.” Prelim. Resp. at 30. We have considered Patent Owner’s arguments and are not persuaded that the Examiner’s consideration of prior art alleged to be substantially similar to the references asserted by Petitioner warrants denial of the Petition in this case” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “Petitioner states that in district court proceedings Patent Owner contends the preamble language of various claims of the ’360 patent is not limiting, but also proposes constructions if it is limiting. Pet. 12–13. Petitioner, however, fails to state whether Petitioner contends the preambles are limiting. A petition must set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Merely stating Patent Owner’s contentions from a district court proceeding is not sufficient. In this case neither party has shown that any preamble language is limiting. Moreover, in the absence of any dispute over the meaning of any preamble terms, we determine no express construction is necessary for purposes of this decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,856,360
• Smith & Nephew, Inc. v. Conformis, Inc.Rehearing denied
  PTAB · Nov 29, 2017 · IPR2017-00372 · APJ James A Worth · IPR · Rehearing

  The Board denied Smith & Nephew’s rehearing request, leaving institution denied for claims 1–83 because the petition failed to show a reasonable likelihood of obviousness.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • BurdenNot reached

    “II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “combination of Radermacher and Kenna in which a cutting guide (as in Radermacher) is aligned intra-operatively (as in Kenna), but that the Decision did not address a combination of Radermacher and Kenna in which there is angular alignment (as in Kenna) when the cutting guide is planned pre-operatively (which Petitioner argues to have been taught in Radermacher). First, we regard this latter argument to be a new argument. The argument in the Petition is reproduced above. We conclude that the Petition provided inadequate argument and reasoning for combining the references in this manner, i.e., to take the intra-operative teachings of Kenna and apply them pre-operatively. Neither the Petition nor Declaration explain how this would have been accomplished or persuade us that such a combination would have been obvious (without intra-operative adjustment, as taught in Kenna). In particular, the Petition does not explain adequately how a person of ordinary skill would have included Kenna’s angle adjustment teaching in Radermacher’s prosthesis with a patient-specific surface, rather than rotating Kenna’s cutting guide intra-operatively. Although we appreciate Petitioner’s argument that the combination does not require bodily incorporation of one prior art device into another, we are not persuaded that the Petition adequately set forth what that combination would be, or how it would be achieved. See, e.g., Pet. 43–45 (quoting Kenna and asserting it would have been obvious to combine the teachings of the prior art).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s reliance on Exhibits 1051, 1054, 1055, and 1057 is misplaced because the Petition did not contain developed arguments with respect thereto, and we regard this as a new argument. As such, we determine that we did not overlook or misapprehend any arguments with respect to Exhibits 1051, 1054, 1055, and 1057. To the extent that Petitioner relies on Kenna for the argued limitation, we address that contention below.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,377,129
• Smith & Nephew, Inc. v. Conformis, Inc.Institution denied
  PTAB · Sep 12, 2017 · IPR2017-00984 · APJ James A Worth · IPR · Institution

  The Board denied institution after finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14

  • BurdenNot shown unpatentable

    “Thus, the prior art relied upon in the asserted ground does not disclose referencing an osteophyte, expressly or inherently. Additionally, Petitioner does not provide adequate evidence that it would have been obvious to apply the technique of Radermacher in patients with osteophytes to engage (or avoid or reference) the osteophyte, as opposed to performing an alternate technique, such as first removing the osteophytes. In particular, Petitioner has not provided adequate evidence of a reasonable likelihood of success of applying Radermacher’s technique to a bone surface with osteophytes beyond unsupported and conclusory assertions thereof. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that the combination of Radermacher and Alexander renders obvious independent claim 1. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in its assertion that independent claim 1, or dependent claims 2–13, 32, 38, and 44–46, are unpatentable as obvious over Radermacher and Alexander.5” slip op. at 17

  Claim construction§ 103 obviousness
  Patents in suitUS 8,657,827
• Smith & Nephew, Inc. v. Conformis, Inc.Institution denied
  PTAB · Sep 12, 2017 · IPR2017-00983 · APJ James A Worth · IPR · Institution

  The Board denied both petitions and instituted no trial, finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, or 50–64 were unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner requests a construction of the term “references the osteophyte.” Pet. 17–18. Patent Owner does not propose construction of any terms. As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 8,657,827
• Smith & Nephew, Inc. v. Conformis, Inc.Institution denied
  PTAB · Jul 26, 2017 · IPR2017-00307 · APJ James A Worth · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–20 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that claims 1–20 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–20 based on the grounds asserted in the Petition.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner asserts no claim construction is necessary and that it “construes the claim language such that the claims are given their broadest reasonable interpretation in light of the specification of the ’025 patent.” Pet. 19. Patent Owner does not dispute this assertion. See generally Prelim. Resp. Having considered the evidence presented, we determine that express construction of any term is not necessary. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (court construes claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Moreover, while Petitioner seemingly acknowledges that Schuster I and Schuster II are separate and distinct references (see Pet. 21), we agree with Patent Owner that Petitioner has failed to provide an articulated rationale for combining features of Schuster I and those of Schuster II, as required by KSR. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Claim 1 recites that “the patient-specific surface ha[s] at least a portion that is substantially a negative of a corresponding portion of a diseased or damaged cartilage surface of the joint of the patient.” Petitioner asserts that both Schuster I and Schuster II disclose a patient-specific surface. Pet. 27. Yet, Petitioner relies primarily on Figure 2 of Schuster II to describe how “a portion of the patient specific surface is substantially a negative of the cartilage surface.” Id. As discussed below, Petitioner’s arguments and evidence do not demonstrate sufficiently why one of skill in the art would have combined the tool of Schuster I with the tool of Schuster II, which includes a portion that is substantially a negative of the cartilage surface. According to Petitioner, “it would have been obvious to a POSITA to use MRI (as taught by Schuster I & II) to image the patient’s cartilage surface (as was common knowledge) and to make at least a portion of the patient-specific surface of the implantation aid be substantially a negative of the patient’s damaged cartilage surface.” Id. at 29–30 (citing Ex. 1002 ¶¶ 82–85). Relying on the testimony of its declarant, Petitioner proffers several reasons why one of skill in the art would have wanted to match the patient-specific surface to the corresponding cartilage. Id. at 30. For example, Petitioner asserts that “the Schuster references themselves provide the motivation.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046 ¶ 11; Ex. 1002 ¶ 84). In context, Petitioner is relying on the teachings from both Schuster I and Schuster II that the implantation aids are “set on the damaged knee joint.” Id. (citing Ex. 1008, 3:57–67, Fig. 2; Ex. 1046). However, such reasoning lacks rational underpinnings because it does not address the proposed modification of the tool of Schuster I using the tool of Schuster II, in which a portion of the tool is substantially a negative of the patient’s damaged cartilage surface. Petitioner further suggests that the combination would have been obvious as a matter of design choice, or as a choice from a limited number of finite options, to simplify the surgery, or to ensure “very exact positioning on the damaged knee joint.” Pet. 30–31 (citing Ex. 1002 ¶ 84); see also Ex. 1002 ¶ 84 (providing near verbatim discussion). We determine that these statements, as well as the portion of the Mabrey Declaration to which Petitioner refers, are conclusory as well, and do not provide significantly more than an assertion that they are directed to the same problem. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”); see also In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (reviewing case law and explaining that findings must be supported by a reasoned basis).” slip op. at 12

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached

    “likelihood of prevailing on its assertion that claims 1–20 of the ’025 patent are unpatentable. 4 IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied. 4 Because we determine that Petitioner has not established a reasonable likelihood of success of prevailing on its contentions and do not institute an inter partes review, Petitioner’s request for joinder, or a consolidated schedule with, with Case IPR2017-00115 is also moot. See Pet. 24–25; see also id. at 22–24 (arguing lack of redundancy with Case IPR2017-00115).” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,216,025
• Albaad Massuot Yitzhak, Ltd. / Albaad USA, Inc. v. Edgewell Personal Care Brands, LLCInstitution denied
  PTAB · Jul 17, 2017 · IPR2017-00693 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating authority to the Board). Taking into account the arguments presented in the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing claims 1, 2, 4, 7–10, 12, 14–16, 18, 21–23, 25, 27–29, 31, 33–37, and 39 of the ’522 patent are unpatentable. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Second, we are not persuaded by Petitioner’s contention that Wada inherently discloses this limitation. Pet. 43. Petitioner has not shown that the tip of Wada’s tampon 3 necessarily possesses a greater density than a region adjacent the tip. See Continental Can, 948 F.2d at 1268 (explaining that the evidence “must make clear that the missing descriptive matter is necessarily present”). To the contrary, both the Petition and the Hull 2 The cited portions of the Hull Declaration closely mirror the Petition. Declaration lack persuasive technical reasoning to explain how or why “compress-molding” Wada’s tampon would necessarily result in a higher density at the tip region, as compared to adjacent regions of the pledget. Pet. 43; Ex. 1036 ¶¶ 116–117; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Furthermore, the record suggests that compression of a tampon does not necessarily result in a tip with a greater density than adjacent regions. Ex. 1001, 5:45–48. For example, if a tip includes less dense material, compression may result in a tip with the same density as the rest of the pledget. Id. Because Wada does not specify the starting density or distribution of its absorptive fibers, we are not persuaded that compress-molding those fibers would necessarily result in a higher density at the tip region. Although a higher relative density may result, inherency “may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can, 948 F.2d at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 9

  • BurdenNot shown unpatentable

    “Furthermore, the Petition fails to identify clearly what it contends to be the “tapered tip,” such that its length could be compared to the length of the applicator’s cuts to determine whether this claim limitation is met. For example, the Petition at page 44 states that the “tapered tip is shown to be shorter than the barrel’s insertion tip,” but does not define what portion of Wada’s structure is understood to be the “tapered tip.” Pet. 44. The Hull Declaration similarly fails to identify the tapered tip with particularity. Ex. 1036 ¶ 118. Thus, for these reasons, Petitioner has not established that Wada anticipates independent claims 1, 9, 22, 27, 34, or 39, or claims 2, 4, 7, 8, 10, 12, 14, 23, 25, 28, 29, 31, 33, and 35–37, which depend from independent claims 1, 9, 22, 27, 34, or 39.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. The Petition states that the claimed relative densities were “well known in the art before 2003,” but does not provide persuasive evidentiary support for this statement. Pet. 78. Indeed, cited paragraphs 95–98 of the Hull Declaration discuss prior art tampons having petals or tapered designs, and prior art tampons formed by compression, but do not discuss prior art tampons having the claimed density. Ex. 1036 ¶¶ 95–98. Cited paragraph 225 asserts that the claimed density was known, but provides no support for this statement, instead merely citing back to paragraphs 95–98. Id. ¶ 225; see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight” and, here, we assign Mr. Hull’s testimony no weight. 37 C.F.R. § 42.65(a).” slip op. at 14

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,192,522
• Albaad Massuot Yitzhak, Ltd. / Albaad USA, Inc. v. Edgewell Personal Care Brands, LLCInstitution denied
  PTAB · Jul 17, 2017 · IPR2017-00694 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–6 unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating authority to the Board). Taking into account the arguments presented in the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in challenging claims 1–6 of the ’075 patent as unpatentable. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner relies on the testimony of its declarant, Mr. Hull, and contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in engineering, and would have had at least four years of experience designing and building prototype tampons and tampon applicators.” Pet. 12 (citing Ex. 1024 ¶ 57). In its Preliminary Response, Patent Owner does not identify the relevant level of skill in the art. See generally Prelim. Resp. Based on our review of the ’075 patent, the types of problems and solutions described in the ’075 patent and cited prior art, and the testimony of Mr. Hull, at this stage of the proceeding, we apply Petitioner’s definition for purposes of this Decision. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Based on the record before us, we need not provide express constructions for any claim terms to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “general matter, dimensions purportedly reflected in patent drawings are unpersuasive, absent a discussion of those dimensions in the written description of the patent’s specification. Indeed, as our reviewing court instructs, “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” See Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (emphasis added); see also Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (concluding it was error to “not properly apply[] the principles set forth in our prior precedents that arguments based on drawings not explicitly made to scale in issued patents are unavailing”). Petitioner is correct that design patents may serve as prior art for all that they reasonably disclose and suggest to a person of ordinary skill in the art. Pet. 24; In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). However, the cases cited by Petitioner do not stand for the proposition that design patent figures alone may be relied upon to establish specific, particular, quantitative dimensions. See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value.”). To the contrary, as the cases discussed above make clear, specific dimensions inferred from patent drawings are unpersuasive if the specification is silent on the issue. Hockerson-Halberstadt, 222 F.3d at 956; Nystrom, 424 F.3d at 1149. In this case, Koch does not indicate that its sole Figure is drawn to scale. See Ex. 1004. To the contrary, Koch indicates that its Figure presents an “isometric illustration.” Id. at Description. Further, Koch’s limited written description lacks any discussion of the claimed dimensions or ratios. See id. As such, we are unpersuaded by Petitioner’s reliance on dimensions measured with a ruler from Koch’s Figure. Petitioner does not identify, and we do not discern, any other support in Koch for the claimed ratios.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,432,075
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLNo claims unpatentable
  PTAB · May 8, 2017 · IPR2016-00130 · APJ Scott A Daniels · IPR · Final written decision

  The sole claim was not shown unpatentable under the instituted § 103 and § 102 grounds because the brochures did not create the same visual impression or anticipate the claimed design.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDenied

    “The plain language of section 315(e)(1) states that the estoppel applies to grounds a petitioner “reasonably could have raised.” (Emphasis added). The statute is grammatically clear in that the verb phrase or predicate, “reasonably could have raised,” is logically tied to its subject, “petitioner.” The word “reasonably” is not a mandatory word such as, “must,” or “shall.” The word “reasonably” is a qualifier that refers to the discretion applied by a qualified searcher in conducting an adequate search. This is consistent with the legislative history of section 315: The present bill also softens the could-have-raised estoppel that is applied by inter partes review against subsequent civil litigation by adding the modifier ‘reasonably.’ It is possible that courts would have read this limitation into current law’s estoppel. Current law, however, is also amenable to the interpretation that litigants are estopped from raising any issue that it would have been physically possible to raise in the inter partes reexamination, even if only a scorched-earth search around the world would have uncovered the prior art in question. Adding the modifier ‘reasonably’ ensures that could-have-raised estoppel extends only to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover. 157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) at 1375 (stmt. of Sen. Kyl). A reasonable reading of section 315(e)(1) does not mandate estoppel of all prior art in the possession of a petitioner, or prior art which petitioner, e.g. via its employees, may have possessed or known about at some point in time. To the contrary, the prior art estopped is that which “a skilled searcher conducting a diligent search reasonably could have been expected to discover.” Id. Congress easily could have broadened the estoppel provision to extend to “any ground that the petitioner raised or [] could have raised during that inter partes review,” but it did not. See id.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “We determine that the documents are sufficiently authenticated, first, because the marketing, company contact and product information expressly set out in the brochures, along with the witnesses’ corroborating statements, show sufficiently that Exhibits 1004 and 1005 are what they appear to be, that is, advertising brochures that were printed and produced for dissemination to Johns Manville’s customers and sales personnel for unrestricted distribution to the public. Second, we determine that the dates on the brochures are not merely “archival” dates in Mr. Mota’s files as Knauf contends. See Mot. to Exclude, 4 (citing Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369, slip op. at 6 (PTAB August 12, 2015) (Paper 14)). Mr. Mota and Mr. Graves both explain that it was standard practice at Johns Manville to print these dates on the brochures to indicate a first printing of the brochure. Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. This testimony is corroborated, at least circumstantially, by the documents themselves where, for example, Exhibit 1005 states “10/00 (Replaces 12/97),” where 12/97 is the date printed on Exhibit 1004 and Exhibit 1005. We agree with Knauf that hearsay is not admissible under Fed. R. Evid. 802. Mot. to Exclude, 2. However, based on the testimony of Mr. Mota and Mr. Graves, we find that the dates printed on the brochures were a common business practice at James Manville. See Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2. These dates, along with the testimony of Mr. Mota and Mr. Graves, are probative of the authenticity of the documents themselves and their existence and purpose at the relevant time period. Knauf has provided no persuasive evidence that either the December 1997 date or the October 2000 dates as printed on the brochures are untrustworthy, or that either Mr. Mota’s or Mr. Graves’s testimony are inconsistent with this assertion. Also, we do not consider Mr. Mota or Mr. Graves’s declarations to be hearsay, as they are not out-of-court statements. In an inter partes review, direct testimony is typically provided via affidavit, with cross-examination taken via deposition. 37 C.F.R. § 42.53(a) and see Ex. 2019, 20:23–21:24; Ex. 2020, 39:4–40:2, 44:15–20. Thus, we determine on the evidence in this proceeding that Exhibits 1004 and 1005 are properly authenticated and not inadmissible hearsay because they have been shown to be commercial product advertising publications under Fed. R. Evid. 803(17) and include customary date information that, based on the sworn testimony of Mr. Graves and Mr. Mota, was made in the regular course of business and is thus subject to the business records exception under Fed. R. Evid. 803(6).” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “2010, 4). For example, considering the claimed design, we observe a random swirl pattern evident in both the color and black and white images of the claimed design shown above. We find the phrase “variations in a swirl pattern” helpful to objectively describe what we observe as the relative arrangement between the “distinct hues” shown in the photograph. Moreover, both parties have advanced this term in their proposed claim constructions. Compare Pet. 17 with PO Resp. 28. Observing the design as a whole, “swirl pattern” is somewhat less than specific. We agree to an extent with Knauf’s Declarant, Professor Rake, that “swirl pattern” can aptly describe a variety of patterns. Ex. 2012 ¶ 28. Thus, to facilitate a more expressive elocution of this element, we further described the contrast imparted by the “swirl pattern” consistent with the prosecution history of the ’670 patent as having a “cloud-like appearance.” Ex. 1002, 33. Both parties have also included this term in their proposed constructions. Compare Pet. 16 with PO Resp. 28.” slip op. at 28

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “manager who has a technical or engineering background and is familiar with the insulation manufacturing process, but who does not have any specialized training in color, is a designer of ordinary skill. PO Resp. 7–10. This definition has some appeal, mainly because the claimed article of manufacture here is insulation, and it does not appear, based on the testimony of witnesses from both parties, that in the insulation manufacturing process any particular expertise in color of the insulation was generally necessary. Compare Ex. 2004, 3:15–5:7 with Ex. 2008 ¶¶ 14–16. Color, however, is an issue here in this case that involves colored insulation material, specifically because Knauf conceded during prosecution that “color is an integral part of the claimed invention.” Ex. 1002, 13. We agree that a product manager can be “a designer of ordinary skill in the art” as applied to designs because a product manager, in charge of manufacturing insulation, is knowledgeable and sufficiently trained to fabricate such products. PO Resp. 7. That a product manager without certain expertise, such as in color, may be a “designer of ordinary skill” does not explain why such a definition must necessarily exclude another person, with a skill set in color, as a designer of ordinary skill. We find this to be particularly reasonable where an unfamiliar aspect of insulation design, such as color, is a concern. Indeed, James Worden, Knauf’s declarant, confirms that a Product Manager who did not have certain experience, for example with color, would understand that “a color pigment specialist may provide an understanding of coloring various substances.” Ex. 2008 ¶¶ 15–16. Thus, while Dr. Bide’s testimony may not be particularly relevant to all aspects of insulation design, here, where color is an integral part of the design, it is reasonable to include aspects of his particular expertise within the purview of an ordinary designer. See In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981) (“The ‘ordinary designer’ means one who brings certain background and training to the problems of developing designs in a particular field.”) We determine that the designer of ordinary skill in the art for insulation material therefore may be a product manager in the insulation manufacturing industry who has a technical (e.g. engineering) background and, on issues relating to color, may also be a person such as a pigment specialist and/or binder chemist having background and training pertaining to color in development of the insulation design.” slip op. at 40

  Patent outcomesUS D631,670 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
• Adva Optical Networking, Inc. v. Rad Data Communications Ltd.Institution denied
  PTAB · Mar 9, 2017 · IPR2016-01848 · APJ James A Worth · IPR · Institution

  The Board denied institution on all challenged claims because the asserted prior art and arguments were the same or substantially similar to those considered during prosecution under § 325(d).

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “35 U.S.C. § 314(a) is guided, in part, by the further language of 35 U.S.C. § 325(d), which provides: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see generally Integrated Global Concepts, Inc. v. Advanced Messaging Tech., Inc., Case IPR2014- 01027, slip op. 7–8 (Paper 16) (PTAB Dec. 22, 2014) (declining to institute proceeding on claim where same prior art and substantially the same arguments were presented to the Office previously in reexamination). We agree with Patent Owner that the same prior art (i.e., AAPA and Rivaud) and substantially the same arguments were presented in the original prosecution of the ’689 patent. Petitioner’s asserted ground is identical to a rejection that was applied by the Examiner in the course of prosecution. The Examiner cited Admitted Prior Art as disclosing “a primary reference time clock that provides a reference time of day and a reference frequency,” and the Examiner relied upon Rivaud to “show a housing 1112 which houses the primary reference time clock and packet master clock.” Ex. 1007, 4. On this record, we find that the prior art submitted in the Petition is indeed the same as prior art submitted to the Office.” slip op. at 19

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we do not institute an inter partes review for the challenged claims.” slip op. at 2

  Discretionary denialcites KSR
  Patents in suitUS 9,276,689

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.