- 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 - Cardiovascular Systems, Inc. v. Shockwave Medical, Inc.Rehearing grantedPTAB · Feb 2, 2023 · IPR2019-00405 · APJ Mitchell G Weatherly · IPR · Rehearing
On rehearing, the Board held claims 1–4 and 6–17 unpatentable as obvious, claim 5 not shown unpatentable, and denied both motions.
RulingsRehearing decision- RehearingGranted in part
“preponderance of evidence that claims 1–4 and 6–17 are unpatentable, but for the reasons expressed below rather than those expressed in our Decision. Additionally, we maintain our prior conclusion that Petitioner has failed to demonstrate that claim 5 is unpatentable without any modification to our reasoning expressed in the Decision. We repeat our prior analysis of claim 5 from our Decision so that this single paper contains the substance of our analysis of all of Petitioner’s challenges to the claims. Accordingly, for the reasons set forth below, we determine that Petitioner has demonstrated by a preponderance of evidence that claims 1–4 and 6–17 are unpatentable but has failed to show that claim 5 is unpatentable.” slip op. at 6
- ExcludeMotion to exclude, deniedDenied
“FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits 2002–2004, 2006, 2008, 2016, 2017, 2124, 2125, 2126, 2132, 2133, 2139, 2141, 2149, 2152, 2161, 2162, 2163, 2164, 2170–2176, 2196, and 2100 (¶¶ 18, 19, 59, 60, 66, 132, 143, 144, 165, 170, 175, 199, 201, 205, 217, 218, 220, 221, 222, and 229) is denied;” slip op. at 96
- Additional discoveryAdditional discovery, deniedDenied
“FURTHER ORDERED that Patent Owner’s Motion for Additional Discovery is denied; and” slip op. at 96
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“laser as enough of a concern that its balloon could be cooled by circulating liquid through the balloon. Pet. 18, 29 (citing Ex. 1002 ¶¶ 96, 120); Reply 31 (citing Ex. 1003, 3–5). However, Petitioner fails to adduce evidence that an EHL shockwave generator produces less heat than a laser-based shockwave generator such as Levy’s. Accordingly, we determine that Petitioner has failed to prove by a preponderance of evidence that an ordinarily skilled artisan would have been motivated to substitute an EHL probe for Levy’s laser probe to reduce heat generated by the probe.” slip op. at 38
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,956,371 - Neenah, Inc. / Avery Products Corporation v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Rehearing deniedPTAB · Nov 6, 2020 · IPR2020-00636 · APJ Michelle N Ankenbrand · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding the petition failed to show a reasonable likelihood of prevailing on the challenged obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute a petition, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, 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 Petition. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“argument in the Petition. Rather, as we highlighted in the Decision, Petitioner’s entire reason to combine argument was: Not only are Oez-PCT and Oez-US authored by the same inventor, but also both are specifically directed to image transfer sheets with white layers for improving the quality of image transfer onto dark fabrics. Accordingly, a [person of ordinary skill in the art] would have been motivated to combine the teachings of Oez-PCT and Oez-US, such as to use the transfer sheet application process taught by Oez-US. Dec. 21 (quoting Pet. 48–49 (section titled “Introduction [to Oez-PCT] and Motivation to Combine”)). The Petition did not contain any other reason to combine discussion for this particular ground. Petitioner’s Rehearing Request, however, directs us to additional portions of the Petition that Petitioner now contends we should have considered as supporting its argument for reason to combine. Req. 6–7. Here, Petitioner’s post hoc attempt to cobble together a reason to combine discussion does not persuade us that that we overlooked or misapprehended any rationale to combine set forth in the Petition.” slip op. at 3
- BurdenNot shown unpatentable
“independent claim 1: (1) limitation [A2] “a titanium oxide or other white or luminescent pigment,” and (2) limitation [A6] “the titanium oxide or other white or luminescent pigment present in a concentration and configurations sufficient to provide an opaque background for indicia received by the ink receptive portion.” Pet. 12 (Petitioner’s numbering of claim 1’s elements from [Pre] through [A6]), 29–32 (Petitioner’s arguments as to how Oez-US and another reference teach limitations 1[A2] and 1[A6], in which Petitioner discusses the requirement that the polymer melts and mixes with another layer or layers during application). For the ground based on Kronzer and Oez-US, Petitioner argued that “Kronzer in view of Oez-US teaches 1[A2]” and that “Kronzer in view of Oez-US teaches 1[A6].” Id. at 62, 64. For its substantive argument, however, Petitioner referred back to the section of the Petition in which Petitioner argued that Oez-US discloses the “white layer.” See id. (referring to Pet. § VII.A.2.d, which describes Oez-US and another reference as disclosing the melt and mix requirement of the white layer). Thus, it was not clear from the Petition which reference Petitioner was relying on to teach the “white layer” that melts and mixes with another layer. Even if we agree with Petitioner that we misapprehended or overlooked that the Petition relies on Kronzer as teaching the layers and Oez-US as teaching only the white pigment, the Petition does not discuss how the combined teachings of Kronzer and Oez-US disclose a white layer that melts and mixes with another layer or layers. As we explained in the Decision, although Petitioner asserted that Kronzer teaches the melting temperatures of various polymers used in its layers and discloses examples of applying heat transfer sheets to fabrics with an iron set at about 163°– 177° C, that general statement failed “to explain sufficiently how a white layer of the asserted Kronzer and Oez-US combination would melt with another layer.” Dec. 23–24. Further to that point, we note that the Petition in this case does not contain an analysis in the Kronzer and Oez-US ground that discusses the melt and mix requirement, unlike the Petitions in the related cases Petitioner cites in its Rehearing Request. Compare Pet. 59–70, specifically 62, 64, with e.g., IPR2020-00634, Paper 2 at 71–72 (Petitioner explaining how “Kronzer and Oez-US further teach the ‘melt and mix’ requirement”). Petitioner appears to acknowledge as much in the Rehearing Request, arguing that its Kronzer and Oez-US ground in this case demonstrates that layers in contact with one another will melt and mix, but citing only to the portions of the Petition addressing how Oez-US and another reference allegedly disclose the “melt and mix” requirement. Reh’g Req. 15 (citing Pet. 31 and § VII.A.2.d; Ex. 1020 ¶¶ 112–115, 38–60). We could not have overlooked or misapprehended an argument about Kronzer and Oez-US disclosing the melt and mix requirement because Petitioner did not make such an argument in the Petition. Accordingly, Petitioner does not persuade us that we abused our discretion in denying to institute an inter partes review.” slip op. at 6
§ 103 obviousnesscites KSRPatents in suitUS 7,771,554 - PTAB · Jun 30, 2020 · IPR2019-01517 · APJ Jennifer Meyer Chagnon · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show a reasonable likelihood that claims 21–28 and 31 were obvious over Voyksner, Watson, and Rainbow.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). 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. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). III. ANALYSIS” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“precursor of 25-hydroxvitamin D2 having a molecule weight of 412.7 g/mol.” Id. (citing Pet. 27; Ex. 1002 ¶ 57). Petitioner’s arguments explain what a skilled artisan could have done, i.e., select an appropriate precursor ion. However, as discussed in the Decision, the Petition, even when considered along with Dr. Fitzgerald’s testimony, “does not describe specifically why one of ordinary skill in the art would have selected the specific precursor ion” (Dec. 19), when as discussed above, multiple precursors are possible.5 See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“prior art teaches determining the presence or amount of 25-hydroxyvitamin D2 in a sample. However, as discussed in the Decision, claim 21 “requires more than merely determining the presence or amount of 25-hydroxyvitamin D2 in a sample.” Id. at 18. Petitioner does not argue that our interpretation of the plain meaning of claim 21 is incorrect or that we should disregard the step of generating “protonated and dehydrated precursor ion of said 25-hydroxyvitamin D2 with a mass to charge ratio (m/z) of 395.30±0.5.” See id. Accordingly, we are not persuaded that we overlooked Petitioner’s arguments. Further, we agree with Patent Owner that the Petition lacks sufficient explanation of why a person of ordinary skill in the art “would have chosen to [specifically] investigate 25-hydroxyvitamin D2 using Voyksner’s methods in the first place, particularly since Voyksner only discusses ‘dihydroxyvitamin D3’ for the purposes of evaluating the orientation of certain mass spectrometry equipment.” Opp. 5 (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362–63 (Fed. Cir. 2016) (noting that it is error to accept general knowledge in the art without evidence on the record for limitations that are “not evidently and indisputably within the common knowledge of those skilled in the art”) (emphasis in original)).” slip op. at 9
§ 103 obviousnessPatents in suitUS 7,972,867 - 3M Company v. Westech Aerosol CorporationRehearing deniedPTAB · Feb 4, 2020 · IPR2018-00576 · APJ Avelyn M Ross · IPR · Rehearing
The Board denied 3M’s rehearing request, leaving claims 3 and 4 not shown unpatentable under § 103 over the Carnahan Publication and Braud.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71 (d) (emphasis added). A request for rehearing is not an opportunity to present new arguments or evidence.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“preponderance of the evidence that the subject matter of claims 3 and 4 would have been obvious over the combined disclosures of the Carnahan Publication and Braud, because Petitioner’s arguments that “[i]t was within POSA knowledge to lower the 220–250 psi range disclosed in Braud to about 200 psi as part of routine optimization” (Pet. 34), lacked adequate support in the record. Decision 64. In particular, we determined that “Petitioner has offered no reason for the skilled artisan to depart from Braud’s express teachings to adopt a pressure lower than the minimum satisfactory amount” of 220 psi as part of “routine optimization.”3 Id. at 36.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,705,056
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.