- Sony Corporation v. Fujifilm CorporationRehearing grantedPTAB · Dec 18, 2017 · IPR2017-00618 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board granted rehearing and instituted review of claims 1–3 on anticipation by Hennecken and obviousness over Hennecken with Albrecht II, with or without Dugas, under Basis 1.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the Decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “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 Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2002) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Albrecht Declaration that a POSA would have understood Hennecken to be disclosing “a plurality of servo bands on each of which is written a different servo signal for tracking control of the magnetic head” as required by independent claim 1, and Patent Owner provides evidence in the Messner Declaration that a POSA would have understood that Hennecken does not teach that a different servo signal is written on each servo band for tracking control. See, e.g., Pet. 22–25; Ex. 1016 ¶¶ 105–113, 174–177; Prelim. Resp. 29–33; Ex. 2003 ¶¶ 88–98. This conflicting expert testimony creates a genuine issue of material fact regarding how a POSA would have understood Hennecken. For purposes of deciding whether to institute an inter partes review, we must view any issues of material fact created by testimonial evidence in the light most favorable to Petitioner. See 37 C.F.R. § 42.108(c). Thus, for purposes of this Decision, we must resolve the dispute between Dr. Albrecht and Dr. Messner regarding how a POSA would have understood Hennecken in Petitioner’s favor.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“reasons as to why a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II. Pet. 39–41; Ex. 1016 ¶¶ 231–237. In the Preliminary Response, Patent Owner argues that “a POSA would not have been motivated to use the techniques of embedding information in the low frequency transitions, as disclosed in Albrecht II, in order to embed a servo stripe number, as disclosed in Hennecken for the simple reason that Hennecken plainly teaches away from such a combination.” Prelim. Resp. 38. Patent Owner relies on Dr. Messner’s testimony to support its contentions. Id. at 38–41; Ex. 2003 ¶¶ 109–116. The conflicting expert testimony creates a genuine issue of material fact regarding whether a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II as Petitioner proposes. For purposes of this Decision, we must resolve this dispute between Dr. Albrecht and Dr. Messner in Petitioner’s favor. See 37 C.F.R. § 42.108(c). The parties will have the opportunity to further develop these facts and” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayInstituted
“reasons as to why a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II. Pet. 39–41; Ex. 1016 ¶¶ 231–237. In the Preliminary Response, Patent Owner argues that “a POSA would not have been motivated to use the techniques of embedding information in the low frequency transitions, as disclosed in Albrecht II, in order to embed a servo stripe number, as disclosed in Hennecken for the simple reason that Hennecken plainly teaches away from such a combination.” Prelim. Resp. 38. Patent Owner relies on Dr. Messner’s testimony to support its contentions. Id. at 38–41; Ex. 2003 ¶¶ 109–116. The conflicting expert testimony creates a genuine issue of material fact regarding whether a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II as Petitioner proposes. For purposes of this Decision, we must resolve this dispute between Dr. Albrecht and Dr. Messner in Petitioner’s favor. See 37 C.F.R. § 42.108(c). The parties will have the opportunity to further develop these facts and” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,355,805 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rosetta-Wireless CorporationRehearing deniedPTAB · Oct 20, 2017 · IPR2016-00622 · APJ John A Hudalla · IPR · Rehearing
The Board denied Rosetta’s rehearing request, finding it had not shown the Board overlooked or misapprehended its § 318(a) and constitutional arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“should be modified, which includes specifically identifying all matters the party believes we 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).” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes review is an adjudicatory proceeding which, as in this case, may result in extinguishment of a patentee’s property rights by action of the Board and without the right to trial by jury.” Id. at 3. According to Rosetta, this violates the Seventh Amendment and Article III of the Constitution. Id. Rosetta cites to a pending case before the U.S. Supreme Court that has taken up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate our Final Written Decision. Id. at 6. Rosetta never made arguments during trial about the purported unconstitutionality of inter partes review. Nor does Rosetta’s request for rehearing attempt to identify such arguments in the trial record. As such, we could not have misapprehended or overlooked this issue.” slip op. at 4
NonePatents in suitUS 7,149,511 - Sony Corp. v. Fujifilm Corp.Rehearing deniedPTAB · Oct 20, 2017 · IPR2017-00625 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Sony’s rehearing request, leaving institution denied for claims 1, 4–9, 11, and 14 because the petition did not show the claimed cluster size was inherent in Yamazaki.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“As Petitioner points out, we did consider Petitioner’s performance data rationale in the Decision. Req. Reh’g 10; Dec. 14. Petitioner is correct, however, that we did not consider it separate and apart from Petitioner’s identical powder rationale. Rather, based on certain statements in the Petition and the Declaration of Mr. Saliba (Ex. 1006), we considered these rationales to be integrated components of Petitioner’s inherency argument. For example, Petitioner stated that “[t]he example media in Yamazaki discussed below, produced using the identical materials and processing steps used in the ‘891 Patent other than milling time, could not have their disclosed good noise characteristics if their average magnetic cluster sizes were not within the range claimed in the ‘891 Patent.” Pet. 14–15 (emphasis added); Ex. 1006 ¶ 52 (“The noise characteristics of Yamazaki’s media confirm that their average cluster sizes necessarily fall within the claimed range.”) (emphasis added); see also Pet. 3 (indicating that Yamazaki inherently discloses the average magnetic cluster size limitation in view of “Yamazaki’s use of the identical materials and identical processing steps . . . and the fact that Yamazaki meets the noise characteristics the ‘891 Patent states are indicative of a ‘good’ recording medium”). In view of this language, we are not persuaded by Petitioner’s argument that it presented the identical powder rationale and the performance data rationale as separate and independent rationales in the Petition. Therefore, we disagree that we overlooked or misapprehended Petitioner’s independent performance data rationale. In any case, we have considered Petitioner’s performance data rationale anew, as an independent rationale, and determine that Petitioner fails to demonstrate inherency.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“considered Petitioner’s performance data rationale anew, as an independent rationale, and determine that Petitioner fails to demonstrate inherency. Petitioner cites to McCann2 to support its assertion that C/N and S/N values are “indicative” of cluster size. Pet. 39–40, 45–47. However, as we noted in our Decision, “although McCann explains that stacking introduces noise, McCann does not mention the size of these stacks, or disclose or suggest any correlation between the average size of these stacks and noise characteristics of magnetic recording media.” Dec. 24. Furthermore, McCann presents information regarding a correlation between milling time and noise power, but is silent regarding S/N and C/N ratios, which involve signal power and carrier power, in addition to noise power. PO Resp. 47; Dec. 22. We also note that the data in the ’891 patent itself undermines Petitioner’s contentions that T1, T2, D1, and D2 could not have their respective C/N and S/N ratios if their average cluster sizes did not fall within the range recited in claim 1. See Pet. 39 (“T1 could not have a C/N ratio of 0.0 dB if its average cluster size did not fall within claim 1’s range.”), 40 (“T2 could not have a C/N ratio of 1.3 dB if its average cluster size did not fall within claim 1’s range[ ].”), 45 (“D1 could not have a S/N ratio of 24.0 dB if its average cluster size did not fall within claim 1’s range.”), 46–47 (“D2 could not have a S/N ratio of 25.0 dB if its average cluster size did not fall within claim 1’s range.”). Tables 2 and 3 of the ’891 patent both demonstrate that a magnetic disk or tape can have “good” sound 2 S.M. McCann et al., Noise characterisation of barium ferrite dispersions, J. MAGNETISM & MAGNETIC MATERIALS 193, 366–369 (1999) (Ex. 1003, “McCann”). characteristics without having an average cluster size within the range recited in claim 1. In particular, Embodiment 13 in Table 2 has a C/N ratio of 0.0 and meets all limitations of claim 1 (magnetic layer size, coercivity, particle size) except for average cluster size. Ex. 1001, col. 28, Tables 2 and 3. Embodiment 13 has an average magnetic cluster size equal to 5.5×104 nm2 – which falls outside of claim 1’s range of “equal to or higher than 0.5×104 nm2 and less than 5.5×104 nm2.” Id. at 31:47–49 (emphasis added). The same is true for Embodiment 6, which also has an average magnetic cluster size equal to 5.5×104 nm2, but otherwise meets all limitations of claim 1, and has an S/N ratio of 20.5. Id. at col. 28, Tables 2 and 3. These data demonstrate that a magnetic disk or tape can have an average cluster size that falls outside of the claimed range and still provide “good” noise characteristics.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Decision (Paper 8, “Dec.”) denying institution of an inter partes review of claims 1, 4–9, 11, and 14 of U.S. Patent No. 6,641,891 B2 (Ex. 1001, “the ’891 patent”). Paper 9 (“Req. Reh’g”). In our Decision, we determined that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of the challenged claims of the ’891 patent. See 35 U.S.C. § 314(a).” slip op. at 2
§ 102 anticipationPatents in suitUS 6,641,891 - PTAB · Oct 6, 2017 · IPR2017-01353 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, 11–13, 15, and 18 were unpatentable over either asserted obviousness combination.
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). 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.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 904 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’904 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
§ 103 obviousnesscites PhillipsPatents in suitUS 8,500,904 - PTAB · Oct 6, 2017 · IPR2017-01351 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, and 4–7 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“well as the testimony of Mr. Harlos and Dr. Bruce, we conclude that Petitioner has not demonstrated a reasonable likelihood that claims 1, 2, and 4–7 are unpatentable over the recited prior art references. Accordingly, we do not institute inter partes review with respect to any of the asserted grounds. IV. ORDER It is hereby ORDERED that inter partes review is not instituted.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Because the reaction of STMP and potato starch in Graux occurs before the starch is added to the gypsum and water mixture, and because the reaction converts the starch and STMP into di-starch orthophosphate and tetrasodium pyrophosphate, i.e., STMP is consumed during Graux’s reaction process, we are not persuaded that Graux expressly teaches or suggests a set gypsum that is “formed from”12 calcined gypsum, water, and sodium trimetaphosphate, as required by claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded by Petitioner’s argument that one of ordinary skill in the art would have looked to Hjelmeland to determine the amount of STMP to use in Graux. Pet. 21 (asserting that an ordinary artisan would have found it obvious to use the amount of condensed phosphate specified by Hjelmeland in the plaster composition of Graux). Although, as noted by Petitioner, Graux and Hjelmeland both disclose the use of a condensed phosphate, the references use this material in different ways. In particular, Graux uses the condensed phosphate (STMP) to crosslink a potato starch, whereas Hjelmeland discloses adding the condensed phosphate to a gypsum suspension to act as a retarding agent. Ex. 1006, 5:39–50; Ex. 1008, 3:60–4:16. Petitioner does not explain why the concentration of STMP used to retard the setting of a gypsum suspension is in any way related to the amount of STMP required to effectively crosslink a starch. Nor does Petitioner explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink its starch, would have then sought to add STMP to Graux’s mixture in view of Hjelmeland’s genus disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the same fashion as recited in the claims of the ’980 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Based on the foregoing, Petitioner has not demonstrated that Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teach or suggest every limitation of independent claim 1. As dependent claims 2 and 4–7 depend directly from claim 1, we are likewise not persuaded that the combination of Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teaches or suggests the subject matter of these claims.” slip op. at 13
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,758,980 - PTAB · Oct 6, 2017 · IPR2017-01350 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that challenged claims 1–7, 10–15, 18, 22, 26, 29, 32–34, and 40 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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.” After considering the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“After reviewing the parties’ positions, we are not persuaded that Petitioner has demonstrated sufficiently that the prior art references teach or suggest including an enhancing material in the mixture of Graux in an amount such that, when the mixture is cast in the form of a ½ inch gypsum board, the board has a sag resistance of less than about 0.1 inch per two feet in length, as determined according to ASTM C473-95. Petitioner has not directed us to any sag resistance values for gypsum boards made using the ingredients disclosed in Graux and measured according to ASTM C473- 95,13 or evidence sufficient to establish that the claimed sag resistance value is an inherent property of a gypsum-containing product formed from the mixture disclosed in Graux. See Trintec Indus., Inc. v. Top–U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.”) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). With regard to Petitioner’s argument that the ’284 patent discloses prior art gypsum boards having a sag resistance of less than 0.1 inch, we note that Petitioner has not directed us to any evidence demonstrating that these products contain the enhancing materials recited in independent claims 1, 2, 4, 5, 10, 34, or 40. Further, we agree with Patent Owner that the mere fact that a person of ordinary skill in the art would have been aware of the test methods set forth in ASTM C473-95 does not establish that boards tested according to 13 Even if we were to agree with Petitioner that Graux discloses a mixture of calcined gypsum, water, and a claimed enhancing material––which, for the reasons discussed above, we do not––Petitioner’s argument still suffers from this deficiency. those test methods would have a particular sag resistance value, or that a person of ordinary skill in the art would have been able to produce a board having a particular sag resistance value. Under the heading “Significance and Use” in the section discussing Humidified Deflection (i.e., sag resistance), ASTM C473-95 states only that “[t]his test method covers a procedure for evaluating the deflection of gypsum board.” Ex. 1009, 8 (Section 49.1) (emphasis added). We are not persuaded that such a disclosure would have taught or suggested combining the components of Graux to achieve a gypsum board having a sag resistance of less than about 0.1 inch per two foot length of said board. Based on the foregoing, Petitioner has not demonstrated that Graux discloses every limitation of independent claims 1, 2, 4, 5, 10, 34, or 40, or that one of ordinary skill in the art would have sought to modify Graux in view of ASTM C473-95, or any of the other recited prior art references, to arrive at the subject matter of the challenged claims. And, as each of the challenged dependent claims depends, directly or indirectly, from one of independent claims 1, 5, and 10, we are also not persuaded that these claims would have been obvious over Graux, ASTM C473-95, Hjelmeland, Sucech, Baig, and Summerland.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP to Satterthwaite’s mixture. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’284 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 18
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,342,284 - PTAB · Oct 6, 2017 · IPR2017-01352 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–4, 6, 8, and 10 were unpatentable over either asserted obviousness combination.
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). 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.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDenied
“comprising calcined gypsum, water, an accelerator, and one or more enhancing materials selected from a group that includes STMP. Ex. 1038, 32:2–9. Petitioner does not direct us to any embodiment or teaching in Graux in which STMP is added directly to a mixture of gypsum, water, and an accelerator. Instead, Petitioner relies on the addition of a cross-linked starch in Graux as satisfying the requirement that the claimed matrix of set gypsum is prepared from a mixture comprising sodium trimetaphosphate. Pet. 33. On this record, we are not persuaded that this disclosure is sufficient to show that STMP is present in the mixture of gypsum, water, and an accelerator in Graux.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’914 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 20
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,142,914 - PTAB · Oct 3, 2017 · IPR2017-01088 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 2 was unpatentable under any of the three § 103 grounds.
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). 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.” After considering the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed board ownDecided for patent owner
“materials,” for purposes of this Decision we need only resolve whether the proper construction of the term “enhancing materials” is broad enough to encompass boric acid. Example 2 of the ’236 patent states that samples were prepared by mixing beta calcium sulfate hemihydrate, an accelerator, and water with either “0 g additive (control samples), 3 g of STMP (inventive samples), or 3 g of other additives (comparative samples).” Ex. 1030, 13:41–46. According to Table 2 of the ’236 patent, boric acid is one of the “other additives” used in making the “comparative samples.” Id. at 14:22. The ’236 patent explains that “[t]he additives employed in the comparative samples (outside the scope of the invention) are representative of other materials that have been employed to attempt to improve resistance of gypsum board to sagging under conditions of high humidity.” Id. at 14:8–13 (emphasis added). As Patent Owner points out, the ’236 patent further characterizes the board made using boric acid as one of the “noninventive comparative boards.” Id. at 14:28–32. We find this discussion of comparative examples as being outside the scope of the invention constitutes a clear indication that the “patentee disavow[ed] the full scope of a claim term . . . in the specification.” Thorner, 669 F.3d at 1365. As a result, these comparative examples, including a composition comprising gypsum, water, an accelerator, and boric acid, are “outside the reach of the claims of the patent.” SciMed, 242 F.3d at 1341; see also Prelim. Resp. 32–34 (Patent Owner referring to boric acid as a “conventional additive[]”). Therefore, when viewed in the context of the specification, the correct construction of “enhancing material” cannot include boric acid.” slip op. at 8
- BurdenNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,425,236 - PTAB · Oct 3, 2017 · IPR2017-01086 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 7–9, and 54–57 were unpatentable over either asserted obviousness combination.
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). 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.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Claims of a patent that will expire within 18 months from the Notice of Filing Date, however, are construed using “a district court-type claim construction approach,” provided a motion under 37 C.F.R. § 42.20 is filed within 30 days from the filing of the petition. 37 C.F.R. § 42.100(b). Patent Owner timely filed such a motion, and Petitioner does not dispute that the ’550 patent expired shortly after the Petition was filed. Paper 6, 2; Pet. 9. Thus, to the extent necessary, we will construe the claims of the ’550 patent using “a district court-type claim construction approach.” 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Petitioner provides proposed constructions for the terms “accelerator,” “set gypsum-containing product,” and “enhancing material(s).” Pet. 11–15. Patent Owner responds to Petitioner’s proposed constructions with its own proposed constructions of these terms. Prelim. Resp. 21–28. Upon review of Petitioner’s and Patent Owner’s arguments and supporting evidence, however, we determine that no claim terms require express construction for purposes of this Decision. See 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP or condensed phosphate to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP or other condensed phosphate to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’550 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
- Expert testimonyOther
“pyrophosphate. Id. Consistent with Mr. Harlos’ testimony, Patent Owner’s declarant, Dr. Bruce, testifies that the STMP of Graux is “consumed” during the crosslinking reaction.9 Ex. 2001 ¶ 110.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,632,550
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.