• Lifescan Global Corporation v. PHC Holdings CorporationInstitution denied
  PTAB · Nov 18, 2019 · IPR2019-01127 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted prior art.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2018). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we deny the Petition, and do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “We agree with Patent Owner that the Petition lacks requisite clarity and does not satisfy Petitioner’s burden of identifying “how the construed claim is unpatentable under the statutory ground on which petitioner challenges the claims, . . . [by] specify[ing] where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4); see also 37 C.F.R. § 42.22(a)(2) (requiring “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.”). According to our Trial Practice Guide, “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Here, Petitioner dedicates two pages to its discussion of how the challenged claims would have been obvious over the combined teachings of eight references. Pet. 68–69. Petitioner does not detail how each of the eight references are to be combined or which teachings from each reference are relied upon to suggest each limitation of the claims.13 Furthermore, neither Petitioner nor Petitioner’s declarants provide a reason that the skilled” slip op. at 29

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Figure 3 of Heller, however, does not show an “assembled sensor.” Instead, it provides an exploded view of a sensor, and does not show spacer 28 actually covering sensing layer 32. Thus, Petitioner and its declarants do not even rely on the actual figure in Heller, but instead rely on an imaginary adaptation (an unexploded version) of the figure. Furthermore, Dr. Smith and Mr. McGarraugh offer little more than a conclusory sentence that spacer 28 covers part of sensing layer 32. See Ex. 1008 ¶ 30; Ex. 1009 ¶ 29. Neither declarant offers any evidence to support the conclusion that spacer 28 in Heller actually covers sensing layer 32. Although Dr. Smith discusses possible benefits of having a spacer that covers part of a reagent layer, he directs us to no evidence sufficient to determine that spacer 28 in Heller actually does cover the reagent layer. Ex. 1008 ¶ 30. Such unsupported conclusions are entitled to little weight. 37 C.F.R. § 42.65(a). In sum, Petitioner does not show that Figures 1 and 3 disclose the “spacer layer” of claim 1 with anticipatory specificity.” slip op. at 12

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

    “claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2018). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Petitioner proposes constructions for four terms, “vertical,” “wettability index,” “air hole,” and “correcting unit.” Pet. 19–20. Patent Owner argues that the Board does not need to construe any claim terms at this time. Prelim. Resp. 5. After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,480,878
• Trans Ova Genetics, LC v. Xy, LLCNo claims unpatentable
  PTAB · Jun 26, 2019 · IPR2018-00250 · APJ David Cotta · IPR · Final written decision

  Claims 1–16 were not proven unpatentable because Petitioner failed to establish that Lu, relied on in every asserted obviousness ground, was prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable

    “Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); In re Katz, 687 F.2d 450, 454 (Fed. Cir. 1982). “The question of whether a reference is a work of others for the purposes of § 102(a) is, like that of inventorship, a question of law based on underlying facts.” Allergan, 754 F.3d at 969 (citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). In determining whether a reference is the work of the named inventor(s), the inquiry focuses on whether the relevant content of the reference – which includes “the design, trial, and analysis of results” – was solely the work of the inventor(s). See Allergan, 754 F.3d at 969; Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003) (“What is significant is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.”).” slip op. at 14

  • Expert testimonyPatent owner expert creditedOther

    “9 We acknowledge that Mr. Miles, as a former board member of XY, as well as XY’s long-time patent counsel and the filer of the ’769 priority provisional applications, may have some interest in the outcome of this IPR and that Mr. Miles is being compensated by XY for time spent relating to his testimony. Ex. 2003 ¶¶ 4–7; Ex. 1033, 21:7–14, 158:8–22. However, we note that Mr. Miles’ testimony was under oath and subject to cross-examination. We find Mr. Miles’ testimony to be credible as to the facts for which it is cited herein.” slip op. at 10

  • ExcludeMotion to exclude, deniedMixed

    “Exclude. Paragraph 12 of the Miles Declaration reads as follows: “Also[,] in the late 1990s, XY had a collaborative research agreement with a bull stud called Cogent in the United Kingdom.” Ex. 2003 ¶ 12.11 This statement is not itself hearsay because it was asserted by Mr. Miles while testifying in this proceeding, i.e., “at the current trial.” See Fed. R. Evid. 801(c). Petitioner contends that paragraph 12 is inadmissible because it is based, at least in part, on statements contained in Exhibits 2001 and 2002. We are not persuaded by this argument because paragraph 12 does not rely on Exhibits 2001 and 2002. See Ex. 2003 ¶ 12; Ex. 1033, 59:22–62:18 (Mr. Miles’ testimony on basis and meaning of paragraph 12 of his declaration). Petitioner also argues that paragraph 12 should be excluded as improper opinion testimony because it is based on Exhibits 2001 and 2002, to which, according to Petitioner, Mr. Miles is not competent to testify. Mot. 13–14. We are not persuaded by Petitioner’s argument because, as discussed, paragraph 12 does not rely on Exhibits 2001 and 2002.” slip op. at 22

  Patent outcomesUS 8,652,769 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,652,769
• Nanya Technology Corporation / Nanya Technology Corporation U.S.A. et al. v. Lone Star Silicon Innovations LLCAll claims unpatentable
  PTAB · May 15, 2019 · IPR2018-00063 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1, 3, 4, 11, 13, and 14 are unpatentable as anticipated by and obvious over Anderson; claims 1, 3, 11, and 13 are also unpatentable over Tanaka and Furukawa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Petitioner asserts that an ordinarily skilled artisan “would have had at least a Bachelor of Science degree in electrical engineering, physics, chemistry, chemical engineering, material science, or a closely related field and at least 5 years of experience in semiconductor fabrication. Additional appropriate graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 16–17; see Ex. 1003 ¶ 47. Patent Owner agrees generally with Petitioner’s proposed level of ordinary skill in the art. See Resp. 11 (citing Ex. 2006 ¶ 31). We adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill reflected in the specification of the ’061 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect the appropriate level of ordinary skill in the art).” slip op. at 10

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

    “Those disclosures expressly confine the use of separate channel dopants to certain, but not all, individual embodiments of the invention, and persuade us that the patentee did not disavow other ways of creating the claimed “channel region.” Nor does the patentee expressly redefine the disputed claim phrase to exclude a channel region formed as a region of the substrate where current flows between the source and drain regions when a voltage is applied to the gate. Resp. 5 (Patent Owner, acknowledging that “an induced channel with a length defined by the distance between the source and drain is created when the current flows between the source and drain regions”). “The standards for finding lexicography and disavowal are exacting” and it may be “improper to import limitations even from [a] sole embodiment.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). In Thorner, moreover, our reviewing court reversed a decision that narrowed the plain and ordinary meaning of a claim term to comport with the manner in which the term was “consistently use[d]” in “the embodiments in the specification.” Thorner, 669 F.3d at 1365. The principles set forth in the Thorner decision guide our resolution of the correct construction of the disputed claim phrase. See id. There, “the district court improperly limited” the claim terms in view of embodiments described in the specification. Id. at 1369. We decline to do so here. The patentee did not, through “lexicography or disavowal” (id. at 1367–68), narrow the plain and ordinary meaning of the phrase “a channel region formed in the semiconductor substrate.” We recognize that the specification repeatedly describes a channel region characterized by separate channel dopants—and, to be sure, a separately doped channel region may fall within the scope of the challenged claims. But we cannot ignore that the patentee consistently describes a channel region implanted with separate channel dopants as merely “one embodiment” or a “preferred embodiment” of the claimed invention. Ex. 1001, 1:58, 61–64, 3:20–23, 5:40–42, 7:28– 29, 7:40–41. That circumstance, combined with the breadth of the claim language itself, persuades us that the patentee set forth in the specification a preferred embodiment that is “exemplary in nature,” but did not convey, with sufficient clarity or deliberateness, an intent to “define the outer limits of the claim term.” Phillips, 415 F.3d at 1323.” slip op. at 14

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

    “Pet. 17–19; Resp. 27–30. For example, Patent Owner argues that “the word ‘contiguous’ means ‘being in actual contact: touching along a boundary or at a point.’” Resp. 27. We determine, however, that, except for the disputed claim phrase discussed above, no other claim term requires express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only 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)). To the extent any other claim term requires discussion, however, we provide it in our analysis of the patentability challenges.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Those cited passages persuasively demonstrate that Anderson discloses “a channel region formed in the semiconductor substrate” (Ex. 1001, claims 1 and 11) that is created by defining an area—delineated by source, drain, gate, and gate oxide—designed to accommodate a channel. That area is created at the time of manufacture of the MOS transistor (by Anderson’s annealing step) and Anderson’s channel 5 exists whether the transistor is idle or in use. See, e.g., Ex. 1004, Fig. 1b, Fig. 6. We are persuaded, therefore, that Anderson’s channel 5 meets the disputed claim phrase. See Pet. 24–25, 33–34 (claim charts). Patent Owner does not dispute those facts. Resp. 33–41. Instead, Patent Owner argues, “Anderson must be proven to have a channel region formed in the semiconductor substrate” that is “defined by a region with additional dopants.” Id. at 37–38. For reasons stated above, however, claim 1 does not require a “channel region” defined by separate channel dopants. Anderson defines a region by the spatial arrangement of source, drain, gate, and gate oxide, and that region is designed to accommodate the flow of current when a voltage is applied to the transistor during normal use. Petitioner also persuasively maps the features of the dependent challenged claims (namely, claims 3, 4, 13, and 14) to disclosures in Anderson, and Patent Owner raises no persuasive evidence refuting those points. Compare Pet. 28–36 (claim charts), with Resp. 30–32, 35–41 (offering no countervailing information, except to argue that “Anderson’s channel 5 is not a doped region formed in the semiconductor substrate” and, therefore, “Anderson does not anticipate” any challenged claim). Accordingly, we find Petitioner shows by a preponderance of the evidence that Anderson anticipates claims 1, 3, 4, 11, 13, and 14 of the ’061 patent.” slip op. at 24

  Patent outcomesUS 6,097,061 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,097,061
• Renesas Electronics Corporation / Renesas Electronics America, Inc. v. Lone Star Silicon Innovations, LLCAll claims unpatentable
  PTAB · Apr 8, 2019 · IPR2017-01872 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–5, 8–12, and 15 are unpatentable as obvious over the Admitted Prior Art and Dummy Gate References.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “are persuaded that Petitioner has identified with sufficient particularity where and how the limitations of the claims are taught by the prior art, and that the Petition complies with § 312(a)(3). See Pet. 21–43. Petitioner’s case is premised for the most part on the disclosures of the APA. Petitioner, however, relies on Yonemaru and Haribuchi to teach uniformly positioned gates. Petitioner’s claim chart identifies the portions of the APA that Petitioner asserts meet the limitations of the challenged claims, and the portions of Yonemaru and/or Haribuchi that meet the remaining limitations of the challenged claims. See id. at 23–43. We are also persuaded that Petitioner has articulated with sufficient particularity its contention as to why one of ordinary skill in the art would have been prompted to combine the references in the manner proposed by Petitioner. Pet. 21–22 (citing Ex. 1004 ¶¶ 73–75). We, thus, are not persuaded by Patent Owner’s argument that the Petition fails to identify adequately the evidence that supports the challenge, or otherwise fails to comply with § 312(a)(3). Petitioner has made its case by a preponderance of the evidence, by clearly identifying the portions of the respective references on which it relies, and also by articulating “specific reasoning, based on evidence of record, to support the legal conclusion” that one of ordinary skill in the art, given the teachings of the APA, would have appreciated that more uniform distribution of gates explicitly shown by Yonemaru and Haribuchi is advantageous. See Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Yonemaru and Haribuchi have oxide beneath the spacers (id. at 32). Petitioner, however, argues that all three references “recognize a desire to fabricate transistors with uniform characteristics” (Pet. 21 (citing Ex. 1001, 1:37–39; Ex. 1006, 122 (Problem to be Solved); Ex. 1008, Abstract)), and Yonemaru and Haribuchi teach generally that “[u]niformity among spacers leads to uniform transistor characteristics.” Id. (citing Ex. 1006, 123 (Benefits of Invention); Ex. 1008 ¶ 23). We find that Petitioner’s reliance on Yonemaru and Haribuchi is directed to their teachings of spacing arrangements, which Petitioner has shown are applicable to the APA’s gate formation process. More particularly, Petitioner has demonstrated by a preponderance of the evidence that the “uniformity among spacers” teachings of Yonemaru and Haribuchi are directly applicable to the gate formation process of the APA, and that one of ordinary skill in the art would have been motivated to apply these teachings in the manner proposed by Petitioner. Pet. 21–22; Ex. 1004 ¶¶ 73–75 (describing fabrication of dummy gates in the proposed combination); Reply 3–4 (citing Ex. 1006, 122; Ex. 1008 ¶ 22). We also find that Petitioner has demonstrated that the gate oxide beneath the spacers is not critical for Yonemaru’s and Haribuchi’s teachings as they pertain to the proposed combination, because one of ordinary skill would have understood that spacers do not necessarily need to be isolated from a substrate by a gate oxide layer, as shown in the APA. Pet. 9 (citing Ex. 1004 ¶¶ 36–38); 21–22; annotated Figs. 2a, 2b; Reply 6. Petitioner also has demonstrated that neither Yonemaru nor Haribuchi place any specific emphasis on having a gate oxide layer between the spacers and the substrate vis-à-vis solving the problem of uniformly-sized spacers. Tr. 6:11–24; Reply 6–7 (citing Ex. 1006, 121; Ex. 1008 ¶¶ 19, 22). We further find that Petitioner demonstrates that one of ordinary skill in the art would have been motivated to improve the APA design with the techniques taught by Haribuchi and Yonemaru, namely, providing dummy gates as a solution to non-uniform sidewall sizing in operational transistors, and that this combination proposed by Petitioner would result in the claimed invention. Pet. 21–22; Reply 3; Ex. 1004 ¶¶ 73–75. Thus, we find that Petitioner has proven by a preponderance of the evidence that Yonemaru and Haribuchi teach the limitations not provided by the APA, and that one of ordinary skill in the art would have been prompted to combine them with reasonable expectation of success. Pet. 21.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Additionally, we find that Haribuchi does not teach away from forming non-operable gate arrangements having spacers directly contacting the substrate. Specifically, we find that while Haribuchi does convey a particular method of forming operable and non-operable gates, it does not expressly criticize, discredit, or otherwise discourage forming non-operational gates having spacers directly contacting the substrate, as required for a “teaching away.” “A reference does not teach away ‘if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.’” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)).” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We note that, during this proceeding, the parties did not direct our attention to any objective evidence of non-obviousness.” slip op. at 15

  Patent outcomesUS 6,103,611 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,103,611
• Nikon Corporation v. Carl Zeiss AG And ASML Netherlands B.V.Rehearing denied
  PTAB · Feb 1, 2019 · IPR2018-00686 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Nikon’s rehearing request, leaving institution denied for claims 1–5, 7–10, 16, 24, and 30–33 based on § 325(d) and the priority-date analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a 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 1 The Petition, in an apparent typographic error, omits claim 5 from its listing of challenged claims on page 1. identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

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

    “In the Institution Decision, we denied institution of Ground 1 based on our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we determined that the Kaifu reference relied on by Petitioner was considered during prosecution. Id. Petitioner asserts that we misapprehended or overlooked its arguments regarding why its contentions as to Kaifu were not considered by the Examiner.” slip op. at 3

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “written description. To satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must reasonably convey to those skilled in the art that the inventor possessed, at the time of filing, the subject matter that he or she has claimed. Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. Whether a specification complies with the written description requirement is a question of fact. Id. at 1351, 1355. Entitlement to a filing date extends only to subject matter that is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We determine that because the open ended term “comprising” was used in the original claim reciting “a” signal, the recitation of “a” signal and “one or more” signals would have the same scope. An indefinite article, such as “a,” in patent parlance encompasses “one or more” when used, as here, in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as amended, which removes the open ended preface “comprising” and changes the modifier of “select signals” from “a” to “one or more,” does not change the scope of the claim in that respect. It merely is a different phrasing. Thus, as we stated in the Institution Decision, any description of a system with one signal would necessarily support a claim to one or more signals. Inst. Dec. 28. Additionally, the claim, as amended, does not suggest there is choice between alternatives that would meet this claim. For example, the claim does not require a choice between a first type of signal and a second type of signal. The claim recites “one” signal, which can be optionally accompanied (“or”) by “more” signals.” slip op. at 8

  Claim construction§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,728,574
• Hologic, Inc. v. Biomérieux, Inc.Rehearing denied
  PTAB · Jan 31, 2019 · IPR2018-00569 · APJ Kristi L R Sawert · IPR · Rehearing

  The Board denied Hologic’s rehearing request, leaving in place the denial of institution under § 325(d) for claims 1–6.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

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

    “The Board determined that these factors weighed in favor of denying institution because, inter alia: the Examiner considered the same prior art or prior art cumulative to Petitioner’s prior art during prosecution, id. at 12–13; the Examiner thoroughly considered the patentability of the ’352 patent’s claims over the lengthy period of prosecution, id. at 13–15; Petitioner’s arguments were substantially the same as the findings the Examiner made with respect to prior-art reference Montagnier, which is a strong (if not stronger) reference than the prior art Petitioner asserted in these Petitions for inter partes review, id. at 15–18; Petitioner failed to address §325(d) in the Petition, id. at 18; and Petitioner failed to persuade the Board that the Examiner erred in relying on the unexpected results shown in the Laayoun Declaration, id. at 18–21; see also id. at 21–22 (weighing the factors). As to the final finding, the Board considered Petitioner’s argument that the Laayoun Declaration is not persuasive evidence of non-obviousness because the Declaration compares the claimed invention to Bell’s prior-art primers, rather than Backus’s “closest prior art” primers. Id. at 20–21. The Board explained that Petitioner bears the burden to prove unpatentability in an inter partes review, and had failed, in this case, to provide “some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers.” Id. at 21. The Board noted that the Examiner was aware of Backus, but nevertheless “accepted Bell as the closest prior art.” Id. The Board “decline[d] to revisit that decision,” because “Petitioner d[id] not persuade us that the Examiner erred in accepting that evidence as showing unexpected results.” Id. at 21–22.” slip op. at 4

  Discretionary denial
  Patents in suitUS 8,697,352
• Hologic, Inc. v. Biomérieux, Inc.Rehearing denied
  PTAB · Jan 31, 2019 · IPR2018-00568 · APJ Kristi L R Sawert · IPR · Rehearing

  The Board denied Hologic’s rehearing request, leaving in place the § 325(d) denial of institution for claims 1–6 because Hologic did not show the Board abused its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

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

    “The Board determined that these factors weighed in favor of denying institution because, inter alia: the Examiner considered the same prior art or prior art cumulative to Petitioner’s prior art during prosecution, id. at 12–13; the Examiner thoroughly considered the patentability of the ’352 patent’s claims over the lengthy period of prosecution, id. at 13–15; Petitioner’s arguments were substantially the same as the findings the Examiner made with respect to prior-art reference Montagnier, which is a strong (if not stronger) reference than the prior art Petitioner asserted in these Petitions for inter partes review, id. at 15–18; Petitioner failed to address §325(d) in the Petition, id. at 18; and Petitioner failed to persuade the Board that the Examiner erred in relying on the unexpected results shown in the Laayoun Declaration, id. at 18–21; see also id. at 21–22 (weighing the factors). As to the final finding, the Board considered Petitioner’s argument that the Laayoun Declaration is not persuasive evidence of non-obviousness because the Declaration compares the claimed invention to Bell’s prior-art primers, rather than Backus’s “closest prior art” primers. Id. at 20–21. The Board explained that Petitioner bears the burden to prove unpatentability in an inter partes review, and had failed, in this case, to provide “some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers.” Id. at 21. The Board noted that the Examiner was aware of Backus, but nevertheless “accepted Bell as the closest prior art.” Id. The Board “decline[d] to revisit that decision,” because “Petitioner d[id] not persuade us that the Examiner erred in accepting that evidence as showing unexpected results.” Id. at 21–22.” slip op. at 4

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for patent owner

    “Here, Petitioner attempted to show that Bell is not the closest prior art by presenting schematics comparing the nucleotide sequences of Backus’s primers to Bell’s primers and repeating Dr. Linnen’s statements that he considered the Backus primer set “closer” to the claimed primer set than the Bell primer set. Pet. 52–54 (citing Ex. 1020 ¶¶ 317–327). But neither Petitioner nor Dr. Linnen attempted to explain—or present any evidence— that Backus’s primers would have achieved the same results as the claimed primers. See Instit. Dec. 21. Put differently, Petitioner’s bare assertions failed to establish a reasonable likelihood that Patentee’s unexpected results would have been any different when compared to Backus. See Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006) (calling patent challenger Unilever’s argument that patentee Kao’s unexpected results were not compared to the closest prior art “not sustainable”: “Even if we were to conclude that Gangadharan was clearly the closest prior art, Unilever has not demonstrated, or even alleged, that Gangadharan achieved [the unexpected results] reported by Kao. . . . In the absence of such an allegation, any error made by the trial court in using Gueret for its comparison would be harmless.”). Third, we note that Petitioner’s case appears to rely on an overly mechanical application of the “closest prior art.” See Reh’g Req. 6–12. Although unexpected results must be shown to be unexpected compared to the closest prior art, the Federal Circuit has warned against applying that requirement “so rigidly as to require [patentee] to identify and focus on just one prior art product when multiple, similar” products “existed or were described in the prior art.” Tris Pharma, Inc. v. Actavis Labs. FL, Inc., 2019 WL 254418, at *7 (Fed. Cir. Jan. 16, 2019). Thus, as we stated in the Institution Decision, we decline to revisit the Examiner’s decision to accept the Laayoun Declaration absent some persuasive evidence that the claimed primers would not have been unexpectedly better than Backus’s primers. Instit. Dec. 21.” slip op. at 8

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 8,697,352

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.