- Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
Patent outcomesUS 9,868,985 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,868,985 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution deniedPTAB · Apr 16, 2019 · IPR2018-01660 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR on claims 1 and 10, exercising § 314(a) discretion because the General Plastic factors favored denying the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“challenged claims 1 and 10 of the ’899 patent in the ’392IPR. Prelim. Resp. 10. With respect to factor 2, Patent Owner asserts that Petitioner knew of the two references asserted in its sole ground for challenge in the present proceeding (see Pet. 4–5, 17) at the time of filing the ’392IPR in December of 2017. Prelim. Resp. 11. Patent Owner argues that, at the time of filing the earlier ’392IPR and ’376IPR, “not only was Petitioner aware of both Slemmer and Cohen, it had already developed the obviousness argument based on those references that it relies on in this petition.” Id. According to Patent Owner, in the ’392IPR, Petitioner challenged the ’899 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Prelim. Resp. 11–12 (alteration in original) (citing Ex. 2001, 5, 16, 23). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 10, and we are persuaded that factors 1 and 2 weigh in favor of exercising discretion to deny institution of the present proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’899 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,725,899 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution deniedPTAB · Apr 16, 2019 · IPR2018-01668 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution on claims 1 and 24, finding the General Plastic factors favored discretionary denial of the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Patent Owner, in the ’376IPR, Petitioner challenged the ’266 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Id. at 11–12 (citing Ex. 2001, 5, 20, 28). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 24, and we are persuaded that factors 1 and 2 weigh in favor of exercising our discretion to deny institution of the present proceeding on the basis of 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’266 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,266,266
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.