- Apple Inc. v. THL Holding Company, LLCRehearing deniedPTAB · Sep 27, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–19 despite the later disclaimer of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“be treated as never having existed, and because claim 1 is the only claim on which Petitioner has shown a reasonable likelihood of prevailing, we should overturn our decision instituting review. As noted above, when rehearing a decision on petition, we review the decision for an abuse of discretion, and 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.” 37 C.F.R. § 42.71(c); PPG Indus. Inc., 840 F.2d at 1567. But Patent Owner has not explained how we erred in any way in reaching our decision instituting review. Instead, Patent Owner’s argument is new and was not presented previously, and Patent Owner bases its rehearing argument on circumstances having changed since we issued our decision. Req. Reh’g 4 (stating statutory disclaimer was “filed following, and in view of, the Board’s guidance in the [decision on institution]”). For this reason, the Rehearing Request does not “identify [any] matters [Patent Owner] believes [we] misapprehended or overlooked,” nor does it “identify . . . the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). For this reason, we deny Patent Owner’s Request for Rehearing. In addition, we note that statutory disclaimers are “considered as part” slip op. at 4
- Adverse judgmentOther
“proposition that “[c]laims disclaimed under § 253(a) are treated as though they never existed.” Prelim. Resp. 3 (citing Vectra Fitness, 162 F.3d at 1383; Guinn, 96 F.3d at 1422). Neither Guinn nor Vectra Fitness involved a situation in which a determination about the patent, once made, was required to be unwound in light of a subsequent statutory disclaimer. Instead, Vectra Fitness related to a question of how to resolve post-disclaimer proceedings, and Guinn dealt with whether to apply a rule treating the disclaimer of all claims involved in an interference proceeding as a request for adverse judgment against the disclaiming party. Vectra Fitness, 162 F.3d at 1381 (disclaimer filed Feb. 16, 1990; reissue application at issue filed May 9, 1991; reissue patent issued Mar. 29, 1994; infringement suit filed Dec. 4, 1996); Guinn, 96 F.3d at 1420–21. In fact, contrary to the result that Patent Owner urges here of reversing our institution of review, Guinn held that it was appropriate to resolve an interference even after all the involved claims had been disclaimed. 96 F.3d at 1422 (“We hold that the Board had the authority and the responsibility pursuant to 35 U.S.C. § 135(a) to resolve the interference and render judgment against Guinn as a result of his disclaimer of claim 9 of the ’812 patent.”).” slip op. at 5
NonePatents in suitUS 11,350,246 - Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Rehearing deniedPTAB · Aug 12, 2024 · IPR2024-00267 · APJ Avelyn M Ross · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show a reasonable expectation of success for the proposed § 103 combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW 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
“green, left), placed inside the housing between the housing and heating element (red), and surrounding the heating element and portions of the liquid storage portion (blue). Otherwise, Combined Figure 4 is nearly the same as Annotated Figure 4. Compare Combined Fig. 4, with Ann. Fig. 4. Thus, Petitioner does not propose a simple substitution to include the mouthpiece housing of Thorens231 in the device of Thorens788 in the same manner as used in Thorens231. Rather, Petitioner proposes including the mouthpiece housing of Thorens231 in the device of Thorens788 and then further modifying its placement by inserting it into the housing. See Combined Fig. 4. Neither Petitioner nor Dr. Janet persuasively explain why this arrangement would be expected to be successful nor do they allege that such a modification would have been within the skill set of the ordinarily skilled artisan. In contrast, Patent Owner explains that Petitioner’s [Combined] Figure 4 appears to block any airflow through the device and out of the mouthpiece. Petitioner and its expert do not account for how the mouthpiece would be secured to the liquid storage portion in Thorens788. Moreover, as drawn by Petitioner, the wick touches what is presumably the air inlet for the mouthpiece (although Petitioner does not discuss where the air inlet is), which could adversely impact performance or user experience, such as draw resistance[.] Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have been obvious, including that the skilled artisan would have had a reasonable expectation of success in achieving the claimed invention”).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 11,134,722 - LG Electronics, Inc. v. Constellation Designs, LLCRehearing deniedPTAB · Aug 15, 2023 · IPR2022-01549 · APJ Brent M Dougal · IPR · Rehearing
The Board denied LG Electronics’ rehearing request, leaving in place its decision denying institution because the Petition did not explain how De Gaudenzi teaches maximizing parallel decode capacity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. With this in mind, we address the arguments presented in turn.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“In our Decision, we faulted the Petition for “not sufficiently identify[ing] how De Gaudenzi1 teaches the ‘maximize’ limitation in the independent claims.” Dec. 17. For example, the Petition asserts that De Gaudenzi1 teaches constellation optimization by assignment of labels, but then when explaining how, only states that De Gaudenzi1 “discloses a labelling rule,” that “can be ‘Gray labelling’/‘Gray mapping,’ or ‘the pseudo-Gray labellings.’” Pet. 61; see also Dec. 13–14 (summarizing and quoting the positions in the Petition). As a result, we determined that the Petition “does not sufficiently explain why the existence of a labeling rule maximizes parallel decode capacity,” and that “the record lacks evidence of, and it is Petitioner’s burden to explain, how predetermined constellation point labels are assigned to maximize parallel decode capacity as required by the claim.” Dec. 16, 17.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“attempts to improperly supplement the Petition by advancing two new arguments in the Request: 1) that Gray mapping is “the only specific example labeling scheme disclosed by the ’980 Patent as ‘maximize[ing] the PD capacity’ used in ‘[a]ll the PD optimized PAM constellations.’ EX1001, 10:18-20;” and 2) that “Patent Owner’s expert, Dr. Caire, in his own work (EX1013 cited by De Gaudenzi1 and Petition) states that ‘we conjecture that Gray labeling maximizes BICM capacity.’ EX1013, 6.” Req. 12. Neither of these arguments are in the Petition. The Request does not cite to the Petition in making these arguments. The Request does later cite to pages 14 and 63 of the Petition, implying support for these arguments. However, neither page makes these arguments, or even cites to the portions of the references cited in the Request. Thus, we do not consider these new arguments, as Petitioner has not shown they were previously presented in the Petition.” slip op. at 3
NonePatents in suitUS 10,567,980 - Berkeley Lights, Inc. v. The University Of British ColumbiaRehearing deniedPTAB · Jul 20, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Berkeley Lights’ rehearing request, finding no abuse of discretion in its prior decision that claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(d) (2022). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a 1 We further refer to Patent Owner’s Response (Paper 18, “PO Resp.”), Petitioner’s Reply to the Patent Owner Response (Paper 22, “Pet. Reply”), and Patent Owner’s Sur-reply (Paper 29, “PO Sur-reply”). decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“light of the background knowledge in the art. In particular, we found that Petitioner had not adequately shown that the background knowledge in the art would have been sufficient to inform a person of ordinary skill in the art how to apply the techniques such as “laser tweezers” that Dimov mentions briefly, in a way that would have allowed further analyses of cells outside Dimov’s device. See Dec. 29–31. We also found that Petitioner had not persuasively shown that modifying Dimov’s device to make its trenches accessible with a micropipette was within the background knowledge in the art at the time of the claimed invention. See Dec. 31–34.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner points to only one brief mention, in its Petition, of piercing the top layer of Dimov’s device to retrieve cells with a micropipette. Id. at 6 (citing Pet. 40). That argument was not backed by any evidence other than a conclusory statement by Dr. Meinhart repeating the argument in the Petition. Pet. 40; Ex. 1002 ¶ 120. We do not credit that testimony because it lacks factual support. Xerox Corp v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (the testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight). In particular, to the extent that Petitioner argues on rehearing that Dimov’s top layer could have been pierced successfully by a micropipette because it was only 40 microns thick, Petitioner did not properly make this argument during trial or provide adequate evidentiary support.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Although Dr. Meinhart briefly mentions this in his declaration (see Ex. 1039 ¶ 192), Petitioner has not shown that it made this argument during trial, except to the extent that Petitioner improperly incorporated it by reference from Dr. Meinhart’s declaration. See Reply 24 (citing Ex. 1039 ¶¶ 190–196); 37 CFR § 42.6(a)(3). In any event, we do not credit Dr. Meinhart’s testimony on this point because he provides no factual support. See Ex. 1039 ¶ 192; 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.”). As Patent Owner pointed out in its Sur-Reply, Dr. Meinhart acknowledged at deposition that increasing the spot size would have reduced the lateral gradient force of the levitation laser. PO Sur-reply 23 (citing Ex. 2013, 344:18–345:5). We agree with Patent Owner that “Dr. Meinhart . . . did not consider how this reduction in force would have affected the laser’s ability to levitate a cell in Park’s well successfully (especially with cultured cells through Park’s recirculation pattern).” Id.” slip op. at 12
§ 103 obviousnessPatents in suitUS 10,087,408 - Liquidia Technologies, Inc. v. United Therapeutics CorporationRehearing deniedPTAB · Feb 2, 2023 · IPR2021-00406 · APJ Christopher M Kaiser · IPR · Rehearing
Rehearing was denied; claims 1–8 remain unpatentable because conference distribution established Voswinckel JESC and Voswinckel JAHA as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the abuse of discretion standard. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “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, reply, or a sur-reply.” Id. An abuse of discretion may be found where a decision “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)). D. We Overlooked Patent Owner’s Argument Patent Owner is correct that its argument that the Ghofrani and Sulica research aids were dated after May 15, 2005, appeared in the Sur-Reply. Sur-Reply 9–11. Patent Owner also is correct that we overlooked this argument in relying on these research aids as supporting that Petitioner had established that Voswinckel JESC and Voswinckel JAHA were prior art to the ’793 patent. Final Dec. 11–12; Paper 81, 2 (“the Board’s analysis did not consider whether the research aids themselves were available prior to the critical date”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Under at least some circumstances, a reference may be a printed publication under § 102(b) if it was “displayed to the public,” even if it “was not later indexed in any database, catalog, or library.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). There are several factors relating to whether such a display is sufficient to constitute a printed publication, including “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. In addition, distribution of a reference at a professional conference may, under at least some circumstances, constitute sufficient dissemination to show public accessibility. Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1375–80 (Fed. Cir. 2018); Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380–83 (Fed. Cir. 2018).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether the Voswinckel JESC and Voswinckel JAHA references qualify as prior art” and in particular “whether the Voswinckel JESC and Voswinckel JAHA references were publicly accessible by way of their presentation and/or inclusion in distributed materials, such as at a conference.” Paper 81, 3. As discussed above, we find that both references were distributed sufficiently at professional conferences to be publicly accessible at the time of those conferences. By virtue of this public accessibility, both Voswinckel JESC and Voswinckel JAHA were printed publications early enough to qualify as prior art under 35 U.S.C. § 102(b). G. Asserted Obviousness over ’212 Patent, Voswinckel JESC, and Voswinckel JAHA Petitioner argues that claims 1–8 would have been obvious over the combination of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA. Pet. 30–46. As discussed above, Petitioner has shown by a preponderance of the evidence that both Voswinckel JESC or Voswinckel JAHA qualify as prior art. Accordingly, we do not disturb the obviousness analysis in the Final Written Decision, which relies on the prior-art status of Voswinckel JESC and Voswinckel JAHA. Final Dec. 12–35. slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,716,793 - Apple Inc. v. Identity Security LLCRehearing deniedPTAB · Dec 15, 2022 · IPR2022-00171 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving the denial of institution for claims 1–4, 12, and 13 unchanged because Apple showed no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “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, a reply, or a surreply.” Id. 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.”” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“conclusions on the basis that Dr. Russ’s testimony is conclusory. Id. at 11. We disagree. We indicated in the Decision Denying Institution that Dr. Neuman’s testimony is conclusory. Dec. 22. For instance, Dr. Neuman testifies that the modifications that would have been needed for Petitioner’s proposed combination would have been “straightforward.” Ex. 1003 ¶ 81. Dr. Neuman’s testimony, however, is simply a conclusory statement without persuasive, supporting explanation or evidence. Id. As we indicated in the Decision Denying Institution, “Petitioner does not indicate or provide evidence supporting that the proposed modifications would have been made without introducing complexities.” Dec. 24. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Decision to Institute as relating to only convenience. Req. 1–2, 8–11. In the Decision Denying Institution, we explained that Petitioner’s reasons to combine are insufficient because “Petitioner does not address the full teachings of Gullman.” Dec. 22, 25. We stated “[c]ontrary to Petitioner’s assertion (Pet. 33; Ex. 1003 ¶ 81) and consistent with Patent Owner’s position and Dr. Russ’s testimony that Gullman’s system eliminates the risk of the biometric template and input from being stolen during transmission (Ex. 2001 ¶ 119), Gullman describes its system as ‘secure,’ providing ‘secure identification,’ and, importantly, as providing ‘[t]ransmission security.’” Dec. 22–23 (citing Ex. 1004, 6:46–56). We particularly noted (id. at 23) Gullman’s teachings as follows: The method and apparatus of the present invention have significant advantages over known security systems. Reliable and secure identification is provided which eliminates the need for the user to memorize a code or carry a printed memorandum of the code. Transmission security is provided which is convenient, secure and useful on existing access devices of host systems in current use. In particular, the method and apparatus obviate the need for specially-designed hardware additions or modifications to existing access devices. Ex. 1004, 6:46–56. As we noted in the Decision to Institute, the Petition did not address Gullman’s teaching that its system provides “significant advantages” over known, more complex systems, which might have led an ordinarily skilled artisan away from using Padgett’s more complicated hashing process. Dec. 23–24.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,020,008 - 10x Genomics, Inc. v. Bio-Rad Laboratories, Inc.Rehearing deniedPTAB · Jul 28, 2021 · IPR2020-00088 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied 10X Genomics’ rehearing request, leaving intact the finding that claims 15–17 were not shown unpatentable over Ismagilov 091 and US Pub. No. 2002/0058332 A1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Petitioner had the burden of proving that the challenged claims are unpatentable. There is no requirement for the Board to provide notice to Petitioner and an opportunity to fill gaps in its case before issuing a final decision that Petitioner did not meet its burden of proof. Allowing Petitioner to submit new evidence under the circumstances presented here would be inconsistent with the standard applicable to a request for rehearing, which” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“emulsion-breaking would have been either necessary or desirable when synthesizing biological compounds, pharmaceuticals, or nanoparticles, as disclosed in Ismagilov 091. Dr. Fair’s testimony that Ismagilov 091’s uses “would require breaking the emulsions” is conclusory and unexplained. Ex. 1008 ¶ 191 (testifying without explanation that Ismagilov’s “uses would require breaking the emulsions to aggregate sufficient quantities of reaction product”). In addition, Petitioner did not cite even this conclusory testimony in its argument that emulsion-breaking was necessary. Pet. 51. Meanwhile, Ismagilov 091 provides numerous examples of uses of its methods and devices, but no suggestion that emulsion-breaking would be necessary or desirable. Accordingly, we determined that Petitioner did not “direct us to evidence sufficient to establish that it would have been obvious to place the droplets onto a second continuous phase carrier fluid comprising a destabilizing surfactant to destabilize the droplets, as recited in claims 15–17.” Dec. 63. As discussed more fully below, none of Petitioner’s arguments for rehearing persuades us that we erred in determining that the evidence of record failed to show a reason why a person of ordinary skill in the art would have used PFO to break the emulsions in Ismagilov 091.” slip op. at 13
§ 103 obviousnessPatents in suitUS 9,896,722 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · Nov 10, 2020 · PGR2019-00003 · APJ Sheridan K Snedden · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–14 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3
§ 102 anticipationPatents in suitUS 9,867,839 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing deniedPTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving unpatentable claims 1-4, 9, 10, 12, 14, 16-18, 23-25, and 27-29 based on Varenna 2012 anticipation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“acknowledged Acceleration Bay and addressed with particularity the evidence of record tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 15. Specifically, in our Decision, we credited indicia on the face of Verrena 2012, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including “the statement ‘Advance Access publication 30 November 2012,’” and a conventional edition identifier from the journal Rheumatology. Dec. 17 (quoting Ex. 1005). Patent Owner advanced no” slip op. at 4
- Strike new argumentNew argument consideredDecided for petitioner
“We are not persuaded by Patent Owner’s contentions and note that we addressed these same arguments in our Order denying Patent Owner’s motion to strike. Paper 24; see also Paper 13, 1 (Patent Owner contending that “Exhibit 1044 and related argument are new evidence and argument regarding the alleged accessibility of Varenna 2012 (Ex. 1005) that Petitioner could have submitted with the Petition, but chose not to.”). Rather than pointing out any matters that the panel misapprehended or overlooked, Patent Owner expresses disagreement with that decision, and attempts to offer additional reasoning and argument not advanced during trial. Req. Reh’g, 12–15. That effort is ineffective to establish reversible error. Furthermore, in our Final Written Decision, we noted that Even if we set aside Dr. Robinson’s Declaration, . . . we are persuaded that the indicia of publication on the face of Varenna 2012 are sufficient to establish that Varenna 2012 was “sufficiently accessible to the public interested in the art” and “disseminated or otherwise made available” to the interested public before the critical date, and consequently, a printed publication. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). Dec. 19 n.4. For that reason also, Patent Owner shows no reversible error in our Final Written Decision holding that Dr. Robinson’s testimony bolsters” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
§ 102 anticipationPatents in suitUS 9,820,999 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-01203 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving intact its decision allowing joined petitioner LGE to oppose CyWee’s revised motion to amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsDecided for petitioner
“In our Rehearing Decision, we determined that “the adversarial system is better served if we allow a Petitioner to raise [statutory, regulatory, or patentability] issues in response to CyWee’s Revised Motion to Amend.” Reh’g Dec. 8. Therefore, we held that LGE may present arguments and evidence, independently from ZTE, in response to CyWee’s Revised Motion to Amend, and that LGE may request an oral hearing limited solely to the issues raised in the Revised Motion to Amend. Id. at 9.” slip op. at 3
NonePatents in suitUS 8,441,438
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.