- Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Dec 21, 2020 · IPR2017-01753 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied Gilead’s rehearing request, leaving institution denied because Petitioner did not show the Board abused its discretion or misapprehended the obviousness record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. Instead, an abuse of discretion occurs 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5
- BurdenDecided for patent owner
“Under Rule 42.108(c), The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Thus, under the Rule, it is only genuine issues of material fact created by testimonial evidence provided by a patent owner with its preliminary response that we view “in the light most favorable to the petitioner.” 37 C.F.R. § 42.108(c) (2017).2 Because Patent Owner did not provide testimonial evidence in this proceeding, there is no “genuine issue of material fact created by such testimonial evidence.” Accepting Petitioner’s argument that we must always resolve any genuine dispute of material fact in the light most favorable to the petitioner would compel institution in every case where a petitioner presents unrebutted expert testimony. But a patent owner has no obligation to rebut the petitioner’s contentions or to submit an expert declaration rebutting the petitioner’s expert testimony. See 37 C.F.R. §§ 42.107(a) (“The patent owner may file a preliminary response to the petition.” (emphasis added)); 42.108(c) (“The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” (emphasis added)). And the Board is not required to accept every statement made by a petitioner’s expert as established fact simply because the patent owner does not submit contradictory expert testimony. Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020). Instead, “it is the Board’s duty to independently assess the strength of a petitioner’s argument and evidence.” Id., see also id. (“[I]n every case, it remains the Board’s essential function to make factual findings based on its view of the record.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“In the Decision denying institution, we concluded that the evidence before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,815,830 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Satco Products, Inc. v. Seoul Viosys Co., Ltd.Rehearing deniedPTAB · Dec 2, 2020 · IPR2020-00655 · APJ Erica A Franklin · IPR · Rehearing
The Board denied Satco’s rehearing request and maintained denial of institution for claims 1, 2, 6, and 7 because Satco did not show the Board misapprehended or overlooked its petition arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” Id. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” Id. § 42.71(d). Because Petitioner has not met its burden, as discussed below, the Rehearing Request is denied.” slip op. at 3
- BurdenDecided for patent owner
“misapprehended Petitioner’s argument relating to the meaning of the word “continuous” not based upon what it presented in the Petition, but instead based upon newly raised arguments regarding what it asserts is the ordinary and customary meaning of the term. That showing is misplaced as a Rehearing Request does not provide an opportunity to raise additional arguments or supplement information set forth in the Petition. Thus, Petitioner has not shown that we have misapprehended any matter raised in” slip op. at 7
NonePatents in suitUS 9,627,435 - Satco Products, Inc. v. Seoul Semiconductor Co., Ltd.Rehearing deniedPTAB · Nov 9, 2020 · IPR2020-00151 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Satco’s rehearing request, leaving in place the denial of institution on claims 1–7 because the petition did not adequately show Wang disclosed the different-shape limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we determined that Petitioner failed to demonstrate adequately that Wang discloses the different shape limitation. Dec. 17–19. In particular, we noted that the images from Wang Petitioner relied upon offered insufficient information to determine whether the separation region between first and second top leads has a different shape than the separation region between the first and second bottom leads. Dec. 17–19. For example, we stated that Petitioner never presented views comparing the top and bottom portions of the separation region to demonstrate adequately that the top and bottom portions have different shapes. Dec. 19.” slip op. at 3
- BurdenDecided for patent owner
“Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Wang’s figures to the claim language itself in our Decision. In doing so, we determined that Wang’s figures provided insufficient information to determine whether Wang discloses the “different shape” limitation. Dec. 17–19. Our discussion of the figures in the ’919 patent merely highlighted the deficiencies in Petitioner’s reliance on the figures in Wang by providing an example of information that could be used to determine whether the top and bottom portions of the separation regions have different shapes. At no point did we import any specific features from the Specification into the “different shape” limitation or “require shapes similar to the ‘exemplary embodiment’ of FIG. 5A of the ’919 patent.” Req. Reh’g 4. Rather, we merely compared the type of information presented in the ’919 patent with the type of information presented in Wang to reinforce our determination that Petitioner failed to direct us to evidence in Wang that would allow a person of ordinary skill in the art to determine that Wang discloses a separation region that has a different shape between the top leads and the bottom leads. In view of the foregoing, we are not persuaded that we committed any legal errors, or that we narrowed the plain meaning of “different shape.”” slip op. at 7
Claim constructionPatents in suitUS 9,978,919 - Volvo Cars Of North America / Volvo Car Corporation A/K/A Volvo Personvagnar AB v. Watlow Electric Manufacturing CompanyAll claims unpatentablePTAB · Oct 22, 2020 · IPR2019-01100 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–4 and 8–11 are unpatentable under § 103 over the decided Toyota-based grounds; the Board did not reach the Brook-Levinson-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’869 patent “would have had a Bachelor’s degree in mechanical engineering, materials science, electrical engineering, or a similar discipline, as well as two or more years of relevant industry or research experience.” Pet. 7 (citing Ex. 1003 ¶¶ 13–15). Alternatively, according to Petitioner, a person of ordinary skill in the art would have had “a Master’s degree in mechanical engineering, materials science, electrical engineering, or a similar discipline, as well as one year of industry experience.” Id. Petitioner further contends that a person of ordinary skill in the art “would have been familiar with layered heating systems and/or the components and underlying technology used therein.” Id. at 8. Patent Owner does not address the level of skill in the art. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the prior art of record and the ’869 patent.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Patent Owner, in turn, argues that a complex contour pattern “requires a structure having an outer shape that combines parts of multiple simple shapes such that it is complex.” PO Resp. 14 (citing Ex. 2011, 371; Ex. 2012, 465; Ex. 2013). Patent Owner agrees “that Figs. 2 and 3 of the ’869 Patent each illustrate an example of a ‘complex contour pattern.’” Id. at 17 n.4. We note that Figures 2 and 3 illustrate a spiral pattern on a cylindrical substrate. Ex. 1001, Figs. 2, 3. Patent Owner also contends that Figure 4 of the ’869 Patent discloses a “complex contour pattern . . . in the form[] of a meandering electrically conductive resistive material layer.” PO Resp. 5. Although Patent Owner contends its proposed construction is supported by the Specification of the ’869 patent (id. at 15), Patent Owner does not persuasively explain how either a spiral pattern or meandering pattern as shown in Figures 2–4 of the ’869 patent have outer shapes that “combine parts of multiple simple shapes,” as would be required by its proposed construction. See generally PO Resp. Consequently, we do not adopt Patent Owner’s construction. For the purposes of resolving the dispute between the parties, we determine that a “complex contour pattern” encompasses at least a spiral pattern on a cylinder and a meandering pattern.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededOther
“With respect to Patent Owner’s proposed constructions, Patent Owner contends and Petitioner agrees that these limitations are written in product-by-process format. See PO Resp. 8–18; Sur-reply 4–5; Pet. Reply 2–7. We do not need to construe these limitations to resolve this dispute but, due to the nature of the product-by-process limitations, we address Patent Owner’s claim construction arguments below in the context of analyzing the patentability of these claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Strike new argumentNew argument consideredDecided for petitioner
“exceed the proper scope of a Reply. Our Trial Practice Guide provides that “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability. A party also may submit rebuttal evidence in support of its reply.” Consol. TPG,9 73 (Nov. 2019) (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). The Federal Circuit has explained that “[a]s we have regularly held, ‘the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Apple, Inc. v. Andrea Elec. Corp., 949 F.3d 697, 706–707 (Fed. Cir. 2020) (citation omitted). In the Patent Owner Response, Patent Owner refers to the testimony of Dr. McDonald and Mr. Selvy to support its argument that a skilled artisan “would not have been led by Toyota’s reference to ‘metallizing’ to use a thermal spray process to create the resistive layer of Toyota’s heater.” PO Resp. 31. Patent Owner further argues a skilled artisan “would not have considered Toyota’s reference to ‘metallizing’ to suggest the use of a thermal spray process to create an active resistive heating element, because such processes were understood at that time to be primarily, and nearly exclusively, used for passive protection against surface degradation.” Id. at 31–32. In the Reply, Petitioner contends that “Toyota cites prior art disclosing thermal spray processes in describing how ‘a 9 Available at www.uspto.gov/trialpracticeguideconsolidated. conventional heating roller’ was made.” Pet. Reply 13 (citing Ex. 1008, 2:34–48; Ex. 1078, 3). Petitioner does not rely on this evidence to establish its prima facie case but rather to rebut Patent Owner’s argument that Toyota’s reference to metallizing does not suggest thermal spraying as contended in the Petition. Consequently, Exhibit 1078 and 1079 constitute legitimate reply evidence in response to evidence introduced by Patent Owner.” slip op. at 25
Patent outcomesUS 7,361,869 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,361,869 - PTAB · Oct 14, 2020 · IPR2020-00131 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Medtronic’s rehearing request and left in place its denial of institution for claims 25-39, finding no overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD FOR REHEARING 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
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Other
“ANALYSIS The Petition in IPR2020-00131 was the fourth filed by Petitioner against the ’380 patent and is identified by Petitioner as “Petition 2B.” Paper 2, 2. The other three petitions are identified by Petitioner as “Petition 1A,” “Petition 1B,” and “Petition 2A” and assigned case numbers IPR2019- 00128, IPR2019-00129, and IPR2019-00130, respectively. Id. In its papers, Petitioner asserted that the fourth petition challenging claims of the ’380 patent was justified because Petitions 1A and 1B rely on a primary reference to which Patent Owner has “raised a priority date issue” and Petition 2B, in contrast to Petition 2A, addresses claims that are in means-plus-function format. Id. at 2–4 (quoting Microsoft Corp. v. IPA Techs., Inc., IPR2019- 00810, Paper 12 at 15 (PTAB Oct. 16, 2019)).” slip op. at 2
Discretionary denial - PTAB · Sep 21, 2020 · IPR2019-00846 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 3 and 4 are cancelled, and substitute claims 12 and 13 are added; Petitioner did not prove the substitute claims obvious over the asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Dr. Ducharme testifies that a person of ordinary skill in the art “would have had at least an undergraduate degree in mechanical engineering, or equivalent education, training, or experience, with at least two years of experience with [Unmanned Aeriel Vehicles (UAV)].” Ex. 1003 ¶ 72. Dr. Reinholtz testifies that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering and at least two years of experience designing mechanisms and mechanical structures of the type used in releasable couplings and locking devices. Additional education could substitute for professional experience and significant work experience could substitute for formal education.” Ex. 2001 ¶ 28. Dr. Reinholtz acknowledges that he does not view “Dr. Ducharme’s proposed definition as substantially different from [his own].” Ex. 2001 ¶ 30. We agree and note that our consideration of the issues presented does not turn on which proposed definition is applied. Dr. Ducharme and Dr. Reinholtz also acknowledge that their respective testimony would remain the same regardless of which of these definitions of a person of ordinary skill in the art is applied. See Ex. 1028 ¶ 23; Ex. 2001 ¶ 30. In any event, for purposes of this Final Written Decision, we adopt Petitioner’s description of a person of ordinary skill in the art, while maintaining our prior determination (Inst. Dec. 10) that the prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “lugs” and “notches” Claim 1 recites, inter alia, “the shaft lock portion defining notches configured to engage corresponding lugs on the blade lock portion.” Ex. 1001, 6:7–9 (emphasis Petitioner’s (Pet. 23)). In the Institution Decision, we construed “lugs” and “notches,” in accordance with Petitioner’s proposal, as “projections” and “indentations,” respectively. See Inst. Dec. 12; Pet. 24; Ex. 1003 ¶ 86. The parties do not dispute this construction in their subsequent briefing, and we discern no reason to change this construction based on the complete record of this proceeding. Therefore, we maintain our prior construction for purposes of this Final Written Decision.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes two substitute claims in place of two challenged claims. Revised Mot. Amend 1, 27. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. Therefore, we determine that the amendments propose a reasonable number of substitute claims.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“screwed onto the wrong driveshaft, when using a conventional threaded attachment mechanism (such as that described in Sasaki) is actually “mistake-proof.” Based on the evidence of record, we determine that it is not. Or, in other words, we determine that the conventional threaded attachment mechanism taught by Sasaki does not teach the Engagement Limitation (i.e., it does not prevent the clockwise lock mechanism from “be[ing] engaged in” the counterclockwise lock mechanism). According to Patent Owner, “the conventional screw-on type blade attachment mechanism does not prevent the attachment of a blade to the wrong drive.” Revised Mot. Amend 15 (citing Ex. 2001 ¶¶ 52–54, 59). Patent Owner contends that “it is relatively easy to attach a blade on the wrong drive on a UAV that utilizes the conventional screw-on type connection mechanism.” Id. (citing Ex. 2001 ¶¶ 52–54); see also Ex. 2006 (video created by Dr. Reinholtz demonstrating that a blade can be attached to the wrong drive using a screw-on type attachment mechanism). In its Reply, Patent Owner argues, again relying on the testimony of Dr. Reinholtz, that “[w]ith a conventional threaded attachment mechanism, when a blade is screwed onto the wrong driveshaft, the blade becomes engaged in the lock mechanism.” Reply 2 (citing Ex. 2016 ¶¶ 20–24). Petitioner, on the other hand, relying on the testimony of Dr. Ducharme, contends that “[w]hen a blade is forced onto the driveshaft and the threads are ‘stripped’, the blade is not, and cannot be, ‘engaged’ with the lock mechanism”; “[r]ather, the metal threads on the shaft lock portion are likely carving out new notches in the blade lock portion.” Opp. 12 (citing Ex. 1028 ¶ 49). According to Patent Owner, however, the “[i]ntent of the UAV designer is not a part of the Engagement Limitation.” Reply 2; see id. (noting that “Petitioner’s position appears to be premised on the incorrect notion that the Engagement Limitation requires the engagement of lock mechanism components in the precise way that is intended by the designer of the UAV”). Patent Owner contends that to “be engaged in,” as properly construed, “include[s] the type of connection between threads when a blade is screwed onto the wrong driveshaft.” Id. at 3. As we have construed it, to “be engaged in” merely requires “being interlocked.” See supra Section II.C.2. Relying on testimony of Dr. Reinholtz, Patent Owner further contends that “when a blade is screwed onto the wrong driveshaft, the threads on the blade mate or interlock with the threads on the driveshaft.” Reply 3 (citing Ex. 2016 ¶¶ 20, 23–24); see also Tr. 31:8–12 (“[A]s Dr. Reinholtz explains [at Ex. 2016 ¶ 23], that when a blade is misthreaded, a mechanical connection is created by engagement between the threads either because threads on the blade are deformed around threads on the shaft or threads on the shaft carved through threads on the blade.”). As shown in Dr. Reinholtz’s video, when the blades are screwed onto the wrong driveshaft, the blade and shaft are locked together (i.e., “interlocked” or “engaged”). Ex. 2006; see also Ex. 2001 ¶ 54 (describing the video, and indicating that the incorrectly installed blades “do not fall off” and are “securely attached”).” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,260,184 - Satco Products, Inc. v. Seoul Viosys Co., Ltd.Institution deniedPTAB · Sep 16, 2020 · IPR2020-00655 · APJ Erica A Franklin · IPR · Institution
Institution was denied for claims 1, 2, 6, and 7 because the petition did not show a reasonable likelihood that the cited art disclosed or suggested the required continuous inclined surface.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on that required positioning of the active layer, in view of Petitioner’s identified first and second semiconductor layers, we agree with Patent Owner that Petitioner has not shown that Yang’s Figure 8 depicts an inclined surface that is continuous, as required by claim 1. Instead, Figure 8 shows only an inclined surface on what Petitioner considers to be the first semiconductor layer. As discussed above, it is Petitioner’s own position that for an inclined surface to be continuous as claimed, the incline must continue along the first semiconductor layer, the active layer, and the second semiconductor layer. We do not see, nor has Petitioner shown, that Yang discloses that feature. Insofar as Petitioner asserts, in the alternative, that it would be obvious to make the sidewalls in Yang’s Figures 6a-6b to have beveled sidewalls that are continuous, Petitioner has failed to set forth its obviousness rationale sufficiently for institution. Pet. 61. In particular, Petitioner does not explain sufficiently how and why a person of ordinary skill in the art would have modified Yang’s Figures 6a-6b embodiment to have continuous sidewalls. What is missing from the Petition is, for example, the identification of some teaching or suggestion in the prior art or some knowledge in the art that it would have been obvious to modify Yang’s structure to extend the inclined surface on the first semiconductor layer upward along the surface of the upper active layer and further along the surface of the second semiconductor layer, and to do so such that the resulting incline is continuous and has a slope within the recited degree range. Instead, Petitioner relies on an unsupported assertion that Yang depicts a continuous sidewall in Figure 8. Pet. 61. Indeed, Petitioner’s obviousness contention as to the required “continuous” feature of the first inclined surface is presented in one sentence: “It would further be obvious to make such sidewalls continuous, as shown in FIG. 8, and preferably with a slope of 30.” Id. (citing Ex. 1004 ¶ 63, and Figs. 10–11).” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on that required positioning of the active layer, in view of Petitioner’s identified first and second semiconductor layers, we agree with Patent Owner that Petitioner has not shown that Yang’s Figure 8 depicts an inclined surface that is continuous, as required by claim 1. Instead, Figure 8 shows only an inclined surface on what Petitioner considers to be the first semiconductor layer. As discussed above, it is Petitioner’s own position that for an inclined surface to be continuous as claimed, the incline must continue along the first semiconductor layer, the active layer, and the second semiconductor layer. We do not see, nor has Petitioner shown, that Yang discloses that feature. Insofar as Petitioner asserts, in the alternative, that it would be obvious to make the sidewalls in Yang’s Figures 6a-6b to have beveled sidewalls that are continuous, Petitioner has failed to set forth its obviousness rationale sufficiently for institution. Pet. 61. In particular, Petitioner does not explain sufficiently how and why a person of ordinary skill in the art would have modified Yang’s Figures 6a-6b embodiment to have continuous sidewalls. What is missing from the Petition is, for example, the identification of some teaching or suggestion in the prior art or some knowledge in the art that it would have been obvious to modify Yang’s structure to extend the inclined surface on the first semiconductor layer upward along the surface of the upper active layer and further along the surface of the second semiconductor layer, and to do so such that the resulting incline is continuous and has a slope within the recited degree range. Instead, Petitioner relies on an unsupported assertion that Yang depicts a continuous sidewall in Figure 8. Pet. 61. Indeed, Petitioner’s obviousness contention as to the required “continuous” feature of the first inclined surface is presented in one sentence: “It would further be obvious to make such sidewalls continuous, as shown in FIG. 8, and preferably with a slope of 30.” Id. (citing Ex. 1004 ¶ 63, and Figs. 10–11).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based upon our review of the arguments and evidence, we agree with Patent Owner that Petitioner has not identified a disclosure in Salam wherein the light emitting device comprises a first inclined surface that is continuous. Even if Petitioner had explained how a person of ordinary skill in the art would have at once envisaged the chip depicted in Petitioner’s alternative version of Salam’s Figure 3, Petitioner has not shown that such alternative version of the chip includes a first inclined surface that is continuous. Indeed, Petitioner’s alternative version does not even show that what it refers to as the first semiconductor layer having a first inclined surface that is continuous. As seen in Petitioner’s alternative version of Salam’s Figure 3, the first semiconductor layer 6 (colored light purple) has a step at side wall 26 (colored red). Pet. 82; Prelim. Resp. 74; see also Ex. 1005, 9:46–47 (“Track 16 makes electrical contact with n-layer 6 at side wall 26.”). Because Petitioner has failed to show that Salam discloses a light emitting device comprising a first inclined surface that is continuous, as required by independent claim 1, we determine that Petitioner has not shown a reasonable likelihood of prevailing on its assertion that independent claim 1 is anticipated by Salam. For at least the same reasons, we also determine that Petitioner has not shown a reasonable likelihood of prevailing on its assertion that dependent claim 7 is anticipated by Salam.” slip op. at 28
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,627,435 - Pharmacosmos A/S v. American Regent, Inc.Institution deniedPTAB · Aug 14, 2020 · PGR2020-00009 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution of PGR challenging claims 1–22, finding substantially the same art and arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“instituted “unless . . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” But even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, institution of review remains discretionary. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). In exercising that discretion, we are guided by the statutory requirement, in promulgating regulations for post-grant review, to consider the effect of any regulations on “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings,” 35 U.S.C. § 326(b), as well as the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). Office guidance, issued June 5, 2018, also explains that the Board “will evaluate the challenges and determine whether § 325(d) is sufficiently” slip op. at 28
Discretionary denialPatents in suitUS 10,478,450 - PTAB · Aug 12, 2020 · PGR2019-00032 · APJ David Cotta · PGR · Final written decision
The Board granted cancellation of claim 8 and denied entry of substitute claim 11 because Petitioner showed it would have been obvious over Omura, Tsuji, and the knowledge of a person of ordinary skill.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we agreed with the position Patent Owners took in their Preliminary Response – i.e, that the focus of the challenged claims was enzyme-based biosensors and thus the POSA would have more than just a familiarity with enzyme-based biosensors and protein chemistry. Inst. Dec. 8–9. Accordingly, based on the record before us at the time, we accepted the definition provided in Patent Owners’ Preliminary Response, which was consistent with the level of skill reflected in the asserted prior art references and in the specification of the ‘987 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). Neither party challenges the identification of the POSA set forth in our Institution Decision. See generally, R. Mot.; Opp.; Reply; Sur-reply. Additionally, we find that the fully developed trial record supports the POSA identification we made in our Institution Decision. Accordingly, in this decision, we apply the identification of the POSA set forth in our Institution Decision. Inst. Dec. 9.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this decision, we need not expressly construe any claim terms.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“first, substitute claim 11 would have been obvious over Omura in view of the knowledge of the POSA, and second, substitute claim 11 would have been obvious over the combination of Omura and Tsuji in view of the knowledge of the POSA. Opp. 7–24. We have considered the question of patentability in view of all the evidence and arguments presented in this proceeding. Based on the record developed during this proceeding, we determine that Petitioner has shown by a preponderance of the evidence that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA. Because Petitioner has proven that substitute claim 11 would have been obvious, as discussed in detail below, we do not consider whether Patent Owners’ motion otherwise complies with the statutory and regulatory requirements for a motion to amend. See, 35 U.S.C. § 326(d)(1)(B) (requiring that the amendment propose a “reasonable number of substitute claims” and requiring that the substitute claims do “not enlarge the scope of the claims of the patent or introduce new matter”); 37 C.F.R. § 42.221 (additionally providing, inter alia, that a motion to amend “may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial”). Similarly, because we have determined that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA, as discussed in detail below, we do not reach the question of whether substitute claim 11 would also have been obvious over only Omura in view of knowledge of the POSA.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“includes “research experience and/or knowledge in enzymology . . . and biosensors,” we agree with Petitioner that it would have been obvious to a POSA to substitute FAD-conjugated glucose dehydrogenase derived from the claimed strain of Aspergillus oryzae for FAD-conjugated glucose dehydrogenase derived from Aspergillus terreus as disclosed in Omura.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,976,125
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.