- Pfenex Inc. v. Glaxosmithkline Biologicals SAInstitution deniedPTAB · Nov 13, 2019 · IPR2019-01027 · APJ Richard J Smith · IPR · Institution
The Board denied institution on claims 1, 2, 4, 6, 8, 12–14, 17–19, and 21, exercising § 314(a) discretion because the concurrent petition did not justify its added burden.
RulingsInstitution decision- Parallel petitionsDenied
“challenge the same claims of the same patent, i.e., the ’345 patent. See Paper 2; Pfenex, IPR2019-01028, Paper 2. Moreover, we do not find the asserted differences between the ’028 Petition and ’027 Petition, as explained by Petitioner, to be sufficiently material to outweigh the inefficiencies and costs to the Board and Patent Owner that would result from instituting on both the ’027 Petition and the ’028 Petition. See TPG July 2019 Update, 26 (“Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.”). The ’028 Petition advances two obviousness challenges that rely on art regarding CRM197 and art regarding “a vector that directs the export of the mutant proteins into the periplasmic space.” Paper 10, 4. Although the ’027 Petition advances an anticipatory challenge based on Mekada, Petitioner relies on Mekada for its teachings of CRM197, similar to its reliance on Davis and Zhou in the ’028 Petition. Id. As for the signal peptide “capable of directing transport of said bacterial toxin polypeptide to the bacterial periplasm,” Petitioner points to the disclosure of expression vector pET-22b in Mekada to argue that “the periplasmic secretion function of pET-22b is an inherent property, regardless of whether this function is discussed in Mekada.” Pet. 26–27. Petitioner characterizes its two obviousness challenges in the ’027 Petition as relying on Mekada and art “which present[s] vector maps that encode a signal peptide for potential periplasmic location,” similar to Petitioner’s reliance on Inouye and Ikemura for “a vector that directs the export of the mutant proteins into the periplasmic space” in the ’028 Petition. Paper 10, 4. We thus agree with Patent Owner that “the redundancy of Petitioner’s references and the similar manner in which Petitioner relies on them is evident from Petitioner’s own characterization of their teachings.” Paper 11, 2. Although Petitioner describes some differences between the ’028 Petition and ’027 Petition, it fails to persuasively explain “why the issues addressed by the differences are material.” TPG July 2019 Update, 27. We are not persuaded on this record that merely arguing that different art is cited, or that the ’027 Petition includes an anticipation challenge, explains “why the issues addressed by the differences are material.” See id.; Paper 10, 4.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Accordingly, we institute an inter partes review on all grounds presented in the ’028 Petition (see IPR2019-01028), and exercise the Director’s discretion under 35 U.S.C. § 314(a) to deny institution of the present Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 1, 2, 4, 6, 8, 12–14, 17–19, and 21 of the ’345 patent is denied and no inter partes review is instituted.” slip op. at 14
Discretionary denialPatents in suitUS 9,422,345 - Agilent Technologies, Inc. v. Bio-Rad Laboratories, Inc.Rehearing deniedPTAB · Oct 23, 2019 · IPR2019-00268 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied Agilent’s rehearing request, leaving in place the denial of institution because it had not shown Kordunsky was prior art or provided a specific motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A rehearing request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Kordunsky. Pet. 39–49. According to Petitioner, Kordunsky qualifies as prior art because the priority application fails to provide written-description support for the limitations “heater” and “a plurality of openings,” recited in claim 1. Id. at 20–24. In our Decision denying the Petition, we determined Petitioner has not met its burden in showing that Kordunsky qualifies as prior art. Dec. 7–14.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Kordunsky. Pet. 39–49. According to Petitioner, Kordunsky qualifies as prior art because the priority application fails to provide written-description support for the limitations “heater” and “a plurality of openings,” recited in claim 1. Id. at 20–24. In our Decision denying the Petition, we determined Petitioner has not met its burden in showing that Kordunsky qualifies as prior art. Dec. 7–14.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obvious over various combinations of prior art teachings. Pet. 49–72. In our Decision denying the Petition, we found “Petitioner merely offer[ed] general statements regarding the reason to combine the teachings of the prior art,” and those “‘generic motivations with no specificity’ fall short of the articulated rationale required.” Dec. 19 (quoting Prelim. Resp. 41). In its rehearing request, Petitioner argues that we overlooked and misapprehended the strong evidence of motivation to combine presented in the Petition. Reh’g Req. 2–3. We are not persuaded.” slip op. at 7
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,835,118 - Agilent Technologies, Inc. v. Bio-Rad Laboratories, Inc.Rehearing deniedPTAB · Oct 23, 2019 · IPR2019-00266 · APJ Michelle N Ankenbrand · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution because Petitioner failed to show a reasonable likelihood of prevailing on its anticipation and obviousness challenges to claims 1–22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A rehearing request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION In sum, we determine that, in its Petition, Petitioner did not establish a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claims. On rehearing, Petitioner does not persuade us that our decision was based on an erroneous conclusion of law or clearly erroneous factual findings. Accordingly, we conclude that Petitioner has not demonstrated that we abused our discretion in denying institution of the challenged claims.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“In our Decision, we agreed with Patent Owner that “a patent applicant need not describe information that is ‘well-known in the art’ in order to satisfy the written description requirement.” Dec. 14 (citing Prelim. Resp. 31 (quoting Boston Sci., 647 F.3d at 1366)). We further explained that the Federal Circuit had set forth a number of factors for evaluating the adequacy of the disclosure for generic claims, including “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. at 14 (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). And we noted that Petitioner did not address the factors, whereas Patent Owner directed us to evidence in the record “indicating that the broader category of heaters was well-known before 2003, given the existing knowledge in the field, the extent and content of the prior art, and the maturity of the technology.” Id. at 15. Based on that evidence, we concluded, “the disclosure in the priority applications of a lid heater reasonably conveys to those of ordinary skill in the art that the inventor was in possession of the broader genus of a ‘heating element’/‘heater.’” Id. at 16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“to improve similar and related devices.” Id. at 4 (quoting Pet. 57). But a generalized desire to improve existing devices is different from a specific reasoning to combine the prior art asserted in this proceeding. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004) (“Recognition of a need does not render obvious the achievement that meets that need.”).” slip op. at 7
§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,236,504 - Mylan Pharmaceuticals Inc. / Teva Pharmaceuticals USA, Inc. et al. v. Saint Regis Mohawk Tribe And Allergan, Inc.All claims unpatentablePTAB · Sep 27, 2019 · IPR2016-01129 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–20 are unpatentable based on collateral estoppel from the final judgment that materially similar claims were obvious.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“and 37 C.F.R. § 42.73. Mylan Pharmaceuticals Inc., Teva Pharmaceuticals USA, Inc., and Akorn Inc. (collectively, “Petitioner”) bears the burden of proving unpatentability of the challenged claims, and that burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). For the reasons that follow, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1–20 of U.S. Patent No. 8,642,556 B2 (Ex. 1001, “the ’556 patent”) are unpatentable.” slip op. at 2
- ExcludeMotion to exclude, grantedOther
“Owner opposed (Paper 51) and Petitioner submitted a reply in support of its motion (Paper 58). Petitioner moves to exclude a) Ex. 2008; b) portions of the Declarations of Dr. Sheppard (Ex. 2024) and Dr. Loftsson (Ex. 2025); c) Exhibit 2038, d) portions of Exhibit 2028; and e) Exhibit 2077–2079. Paper 50, 1. Because we do not rely on any of the exhibits or portions of exhibits sought to be excluded by Petitioner to reach the final decision, we dismiss Petitioner’s motion to exclude as moot.” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsNot reached
“claimed composition and methods in view of Patent Owner’s assertion that the Restasis formulation covered by the claims exhibited unexpected results compared to the prior art, which is the same argument Patent Owner has asserted in this case. Compare Ex. 1167, 34–108, with PO Resp. 21–35. Accordingly, we find that the district court in the prior case, Allergan v. Teva, considered the identical issue before us in this case, i.e., the obviousness of the subject matter in light of Ding ’979, Sall, and Acheampong as well as Patent Owner’s arguments of unexpected results.” slip op. at 19
Patent outcomesUS 8,642,556 unpatentable§ 103 obviousnessPatents in suitUS 8,642,556 - Mylan Pharmaceuticals Inc. / Teva Pharmaceuticals USA, Inc. et al. v. Saint Regis Mohawk Tribe And Allergan, Inc.All claims unpatentablePTAB · Sep 27, 2019 · IPR2016-01130 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–24 are unpatentable as obvious under collateral estoppel because materially similar claims were finally adjudged obvious after full litigation.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“(1) a prior action presents [the] identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party.8” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsNot reached
“matter claimed by the Representative Claims in view of Ding ’979,11 Sall, and Acheampong, which are the same references asserted in this case. Ex. 1164, 34–108. The district court also considered the obviousness of the claimed composition and methods in view of Patent Owner’s assertion that the Restasis formulation covered by the claims exhibited unexpected results compared to the prior art, which is the same argument Patent Owner has asserted in this case. Compare Ex. 1167, 34–108, with PO Resp. 21–35. Accordingly, we find that the district court in the prior case, Allergan v. Teva, considered the identical issue before us in this case, i.e., the obviousness of the subject matter in light of Ding ’979, Sall, and Acheampong as well as Patent Owner’s arguments of unexpected results.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“c) Exhibit 2038; d) portions of Exhibit 2028; and e) Exhibit 2077–2079. Paper 50, 1. Because we do not rely on any of the exhibits or portions of exhibits sought to be excluded by Petitioner to reach the final decision, we dismiss Petitioner’s motion to exclude as moot.” slip op. at 27
Patent outcomesUS 8,633,162 unpatentable§ 103 obviousnessPatents in suitUS 8,633,162 - PTAB · Jun 21, 2019 · IPR2019-00158 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no misapprehension or oversight in its preliminary § 112(f) construction of “tool” for institution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with plus-function limitation having the function of imparting a deforming force on the deformable member, and the corresponding structure is a wedge, swage, shoulder, cone, ramp, mandrel, plug, and dart, as exemplified by tools 102, 122 and 142 disclosed in the ’439 patent.” Id. at 17–18. In its Preliminary Response, other than disputing Petitioner’s proposed construction, Patent Owner did not advance its own construction of tool. Prelim. Resp. 21–45. Now, Patent Owner’s stated basis for requesting rehearing is that we erred in preliminarily interpreting tool as a means-plusfunction (“MPF”) term. Req. Reh’g. 1.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 1, “Petition” or “Pet.”) requesting an inter partes review of claims 1–23 (“the challenged claims”) of U.S. Patent No. 9,080,439 B2 (Ex. 1003, “the ’439 patent”). Baker Hughes Oilfield Operations, LLC, (“Patent Owner”) filed a Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”). On April 15, 2019, we entered a Decision on Institution (Paper 9, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’439 patent. Dec. 33. Patent Owner timely filed this Request for Rehearing of the Decision. Paper 12 (“Request” or “Req. Reh’g.”).” slip op. at 2
Claim constructionPatents in suitUS 9,080,439 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCRehearing deniedPTAB · Jan 30, 2019 · IPR2014-01558 · APJ James T Moore · IPR · Rehearing
The Board denied Volkswagen’s rehearing request, leaving claims 3, 16, and 20 not shown unpatentable because Saito, read in context, did not establish the claimed regeneration limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We find Petitioner’s position to be lacking in substance. The quotation provided by Petitioner is only a partial quotation. The complete quotation from Saito, with appropriate following context italicized, is as follows: The method of reducing NOx using a reducing agent such as hydrogen is widely known as a nonselective catalytic reduction method, but in this method, if large amounts of oxygen are present in the exhaust gas [amounts of] reducing agent sufficient to react with the oxygen will be added and the NOx will be reduced, which is not economical in so much as large amounts of reducing agent are consumed, and thus the use of nonselective catalytic reduction methods was limited to situations in which oxygen was not present, or situations in which the oxygen concentration had been greatly lowered. In the method of the present invention, the amount of reducing agent consumed is the amount necessary to reduce and remove the NOx that has been absorbed by the catalyst, which is a very small amount, and therefore this is very economically advantageous. Ex. 1008A, 3 column 1, lines 38–54 (emphasis added). The italicized language, to us, indicates that this discussion in Saito is not that simply of one nonpreferred specific embodiment of catalyst renewal taught, but rather a discussion of the reasons why nonselective catalytic reduction methods of exhaust gas directly were not generally used due to their prohibitive costs. Moreover, it is a stretch to say that catalytic reduction methods are the same as renewing a devitalized catalyst as alleged in Petitioner’s request for rehearing. In this we agree with the Patent Owner that this disclosure of a prior art “non-selective catalytic reduction method does not render claims 3, 16, and 20 obvious.” Paper 75, 10. To the extent that Petitioner asserts we did not consider this argument, we have again considered it and again find it to be unpersuasive based upon Saito itself, when taken in complete context. As noted before, Saito’s example is explicit that Saito uses two catalyst beds and regenerates each catalyst bed independently of each other. PO Resp. 21, 24. By the use of valving, the reducing agent is introduced into the catalyst bed through which exhaust gas is not flowing. Id. at 21 (citing Ex. 1008B, 3). As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d). The request for rehearing is therefore DENIED.” slip op. at 12
- Strike new argumentNew argument disregardedOther
“As to the several pages of additional argument and evidence provided in the request for rehearing beyond that originally found in the Petition and Reply, we shall not consider it, as it is an improper use of the rehearing process. See 37 C.F.R. § 71(d).” slip op. at 13
- Expert testimonyNot reached
NonePatents in suitUS 5,599,758
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.