- Sata GmbH & Co. KG v. Anest Iwata CorporationAll claims unpatentablePTAB · May 20, 2014 · IPR2013-00111 · APJ Deborah Katz · IPR · Final written decision
Claims 1–14 are unpatentable as anticipated by JP ’950; entry of substitute claims 23–32 is denied.
RulingsFinal written decision- BurdenUnpatentable
“patentability of claims 1-14 in its Preliminary Response Pursuant to 37 C.F.R. § 42.107(a). Paper 11. When we considered these arguments against those SATA presented in the Petition for the unpatentability of claims 1-14 under 35 U.S.C. § 102(b) over JP ’950, we determined it was reasonably likely that SATA would prevail. Dec. 5-13. Iwata has not directed us to further argument or evidence to persuade us that SATA fails to demonstrate that claims 1-14 are unpatentable.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“patentability of claims 1-14 in its Preliminary Response Pursuant to 37 C.F.R. § 42.107(a). Paper 11. When we considered these arguments against those SATA presented in the Petition for the unpatentability of claims 1-14 under 35 U.S.C. § 102(b) over JP ’950, we determined it was reasonably likely that SATA would prevail. Dec. 5-13. Iwata has not directed us to further argument or evidence to persuade us that SATA fails to demonstrate that claims 1-14 are unpatentable.” slip op. at 4
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Iwata’s contingent request to enter proposed, amended claims. As the moving party, Iwata bears the burden of establishing that it is entitled to the relief requested in its Motion to Amend. 37 C.F.R. § 42.20(c). A proposed amendment is not entered automatically and is not subject to an examination by the Office. Instead, the patent owner takes on the burden of presenting evidence that the proposed claims comply with all sections of the patent statutes. During an inter partes review, we enter proposed amended claims only upon a showing that the amended claims are patentable. Idle Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027, slip. op. at 33 (PTAB Jan. 7, 2014)” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“When considering a motion to amend, we look for evidence in support of patentability. This evidence must be significant. A panel of the Board has determined previously, and we agree, that “[a] mere conclusory statement by counsel, in the motion to amend, to the effect that one or more added features are not described in any prior art, and would not have been suggested or rendered obvious by prior art, is on its face inadequate.” Idle Free, Paper 26, at 8. For example, to determine that a claim is patentable under 35 U.S.C. § 103, we need evidence of what an ordinarily skilled artisan would have understood the prior art to have or have not suggested.” slip op. at 7
Patent outcomesUS 6,494,387 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,494,387
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.