- PTAB · Nov 24, 2014 · PGR2014-00010 · APJ Jon B Tornquist · PGR · Order
The Board granted the parties’ joint motion and terminated PGR2014-00010 without a final decision; it also granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Patent Owner’s preliminary response is not yet due. On November 20, 2014, the parties filed a joint motion to terminate the proceeding (Paper 7) and a copy of their written settlement agreement (Ex. 2001). Along with the motion to terminate, the parties also filed a joint motion to treat the settlement agreement as business confidential information and keep it separate from the file of U.S. Patent No. 8,598,219 (“the ’219 patent”) pursuant to 35 U.S.C. § 327(b) and 37 C.F.R § 42.74(c). Paper 8, 1.” slip op. at 2
NonePatents in suitUS 8,598,219 - PTAB · Oct 28, 2014 · IPR2013-00266 · APJ Christopher L Crumbley · IPR · Final written decision
The Board denied entry of substitute claims 20–26 as obvious, and granted cancellation of challenged claims 1, 2, 4, 11, 12, 17, 18, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“1. the cleavable linker and the protecting group are cleavable under identical conditions Proposed substitute claim 20 recites, inter alia, “a base that is linked to a detectable label via a cleavable linker,” a “protecting group attached via the 3' oxygen atom” of the nucleotide, and a step of “removing the label and the protecting group of the nucleotide . . . under a single set of chemical cleavage conditions.” Mot. 2 (emphasis added). These limitations are similar to those present in original claim 1, which we construed in our Decision on Institution. Specifically, we construed removal of the label and the protecting group under a single set of conditions “to mean what its plain language indicates: removal of the label and the protecting group under a single set of conditions.” Dec. 6. Neither of the parties contested this construction subsequent to institution, and we discern no reason to modify our initial construction for the purposes of this decision. Proposed claim 20 also requires that the cleavable linker comprise a disulfide linkage, but does not specify the protecting group. Thus, “a single set of chemical cleavage conditions,” under the broadest reasonable interpretation standard, limits the structure of the protecting group to one which can be cleaved under the same conditions as a disulfide linkage, but does not require a specific structure, such as a disulfide linkage.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2004 ¶ 84. There is no testimony, however, that the stated results were due to the claimed nucleotide rather than the reducing agent. While Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, he does not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir. 2013). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable over the prior art considered in this Decision. The Motion to Amend is DENIED to the extent that it requests entry of substitute claims 20–26.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,346 - Butamaxtm Advanced Biofuels LLC v. Gevo, Inc.All claims unpatentablePTAB · Sep 23, 2014 · IPR2013-00214 · APJ Zhenyu Yang · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over English, Hess, and D’Amore, and over Maiorella, Hess, and D’Amore.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“ANALYSIS A. Real-Party-in-Interest Analysis In the Decision to Institute, the Board found that Gevo had not set forth persuasive evidence to establish E.I. Dupont de Nemours and Co. as a real party in interest. Dec. 3–4. In the Patent Owner’s Response, Gevo “renews its arguments” on this issue because it believes the Board erred in its conclusion “for the reasons stated previously.” PO Resp. 29. Our Rules do not permit incorporating arguments from one document into another document. 37 C.F.R. § 42.6(a)(3). We, therefore, do not revisit the real-party-in-interest issue in this Decision. 1 English et al., U.S. Patent No. 4,349,628 (Ex. 1002) (“English”). 2 Glenn Hess, BP and DuPont Plan ‘Biobutanol,’ CHEMICAL & ENGINEERING NEWS June 26, 2006, at 9 (Ex. 1003) (“Hess”). 3 D’Amore et al., U.S. Patent Pub. No. 2008/0132741 Al (Ex. 1004) (“D’Amore”). 4 B. L. Maiorella et al., Biotechnology Report Economic Evaluation of Alternative Ethanol Fermentation Processes, 26 BIOTECHNOLOGY AND BIOENGINEERING, 1003 (1984) (Ex. 1005) (“Maiorella”).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Both claims 1 and 14 use the open-ended transition “comprising” and allow for additional method steps. See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). Thus, when construing the claim term “fermentation medium” under the broadest reasonable interpretation standard, we may consider an additional step between steps (d) and (e) of claim 1 (as well as between steps (d) and (h) of claim 14) to remove the microorganisms.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingTerm construed board ownDecided for petitioner
“retrofit ethanol production plant The preamble of claims 1 and 14 each recites a method for “producing isobutanol in a retrofit ethanol production plant.” In the Decision to Institute, the Board determined that the term “retrofit ethanol production plant” is limiting and construed it to mean an ethanol production plant that is adapted to a new purpose or need. Dec. 9–11. Gevo argues that the term “denotes an existing, functioning ethanol plant reconfigured for producing isobutanol.” PO Resp. 31. According to Gevo, the Specification supports its position. Id. at 31–32. We disagree. Claims 11–13 and 21–23, which depend from claims 1 and 14, respectively, recite the output of the retrofit plant as a certain percentage of the isobutanol equivalent of the “ethanol maximum output of the plant before retrofit.” The Specification explains that “[t]he term ‘ethanol maximum output of the plant before retrofit’ refers to the maximum amount of ethanol produced by a plant or for which the plant was engineered before it is retrofit to produce a C3–C6 alcohol.” Ex. 1001, 28:64–67 (emphasis added). In other words, contrary to Gevo’s assertion, the plant output before retrofit does not necessarily require an actual capacity. Instead, under the broadest reasonable interpretation, it also includes output designed for the plant. As a result, we conclude that the claims and the Specification do not support Gevo’s narrow construction of “retrofit ethanol production plant.”” slip op. at 8
- Expert testimonyPetitioner expert creditedOther
“Gevo asserts that some opinions presented in the Daugulis Declaration are unsupported by underlying data. PO Resp. 6. Gevo also argues that portions of Dr. Daugulis’s deposition testimony “reflect a misunderstanding of the fundamental differences in separation methodologies between homogeneous mixtures (e.g., ethanol-water) and heterogeneous mixtures (e.g., isobutanol-water).” Id. at 7. As a result, according to Gevo, Dr. Daugulis’s analysis and opinions regarding the cited references are not credible. Id. at 11. Butamax disputes these allegations. Reply 12–14. Despite challenging Dr. Daugulis’s credibility, Gevo does not seek to disqualify Dr. Daugulis. Thus, we note Gevo’s contentions, but shall consider and assign appropriate weight to the Daugulis Declaration and his deposition testimony.” slip op. at 9
Patent outcomesUS 8,304,588 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,304,588 - Butamaxtm Advanced Biofuels LLC v. Gevo, Inc.All claims unpatentablePTAB · Sep 23, 2014 · IPR2013-00215 · APJ Zhenyu Yang · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over the four instituted combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Butamax and DuPont asserted in the declaratory judgment complaint that they sought the declaration because Gevo sued them as co-defendants for allegedly infringing the parent of the ’505 patent. Ex. 2005 ¶¶ 10–12. Viewed in this context, DuPont being a co-plaintiff with Butamax in a civil action does not demonstrate that DuPont does or is able to exercise control over Butamax in this inter partes review proceeding. It also does not serve as a basis to effectively distinguish the reexamination decision the Board cited in the Decision to Institute.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review, the Board interprets a claim term in an unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b). Under this standard, we assign claim terms their ordinary and customary meaning, as understood by a person of ordinary skill in the art, in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Here, the parties do not propose and we see no need for any express claim construction.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“because Dr. Daugulis receives funding from DuPont, “his objectivity is suspect.” Tr. 11:23–12:5. Substantively, Gevo asserts that some opinions presented in the Daugulis Declaration are unsupported by underlying data. PO Resp. 6. Gevo also argues that portions of Dr. Daugulis’s deposition testimony “reflect a misunderstanding of the fundamental differences in separation methodologies between homogeneous mixtures (e.g., ethanol-water) and heterogeneous mixtures (e.g., isobutanol-water).” Id. at 7. As a result, according to Gevo, Dr. Daugulis’s analysis and opinions regarding the cited references are not credible. Id. at 11. Butamax disputes these allegations. Reply 9–13. Despite making these arguments, Gevo does not seek to disqualify Dr. Daugulis. See, e.g., Tr. 12:12–15. Thus, we note Gevo’s contentions, but shall consider and assign appropriate weight to the Daugulis Declaration and his deposition testimony.” slip op. at 8
- Skill levelOther
“2. Level of Skill in the Art The parties agree that one skilled in the art would have a Ph.D. in chemical engineering and would have experience in distillation or fermentation and/or alcohol production. Ex. 1007 ¶ 16; Ex. 2021 ¶ 7.” slip op. at 8
Patent outcomesUS 8,283,505 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,283,505 - PTAB · Sep 12, 2014 · IPR2013-00555 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without issuing final written decisions.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
None - PTAB · Sep 12, 2014 · IPR2013-00557 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five related inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Sep 12, 2014 · IPR2013-00554 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
None - PTAB · Sep 12, 2014 · IPR2013-00556 · APJ Christopher L Crumbley · IPR · Order
The Board granted the joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id. 1 Unless otherwise noted, citations are to the record of IPR2013-00554; similar papers may be found in the records of the other related proceedings. Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 6,607,803 - PTAB · Sep 12, 2014 · IPR2013-00558 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
NonePatents in suitUS 7,047,705 - Google, Inc. v. Whitserve LLCAll claims unpatentablePTAB · Sep 9, 2014 · IPR2013-00249 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–9 are unpatentable under §103 as obvious over WF Site, Seybold, and Guck, and over Schrader and Guck.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded by Whitserve’s attempt to narrow the scope of the term Internet-based data further than our prior construction. Whitserve has not explained adequately why the “updating and deleting data” functions stated in the specification are requirements, as opposed to merely an exemplary set of functions that a data processing system may perform. Indeed, Whitserve’s position is undercut by the fact that the sentence in the specification describes software for” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“references disclose these elements, and the lack of dispute over these elements, we conclude that Google has shown by a preponderance of the evidence that these undisputed elements are present in the combined disclosures of WF Site, Seybold, and Guck. The parties’ dispute centers on whether WF Site, Seybold, and Guck teach the three elements construed above: Internet-based data, data backup, and software executing on said central computer for retrieving said data backup. Whitserve also argues that a person of ordinary skill would not have combined Guck with WF Site and Seybold. We address these issues in turn below.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Reason to Combine Google argues that a person of ordinary skill in the art would have had reason to combine the teachings of WF Site, Seybold, and Guck. Both WF Site and Seybold, Google contends, discuss the features and implementation of the wellsfargo.com website, and it would have been obvious to combine these references discussing the same system. Pet. 11. Further, Google contends that it would have been obvious to combine WF Site with Guck, as WF Site teaches transformation of data according to user requests, and Guck discloses techniques for transformation of stored data into desired formats. Id. A person of ordinary skill in the art would not have combined Guck with” slip op. at 27
Patent outcomesUS 6,981,007 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,981,007
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.