- PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner has not demonstrated an abuse of discretion. Accordingly, we deny the request for rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,969,539 - Innovative Environmental Technologies, Inc. v. Peroxychem LLCRehearing deniedPTAB · Jul 25, 2016 · IPR2016-00198 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claims 1, 2, 4, 5, 10, 11, and 13 based on Chowdhury anticipation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision to Institute. Notably, we did not agree with Patent Owner’s argument that Petitioner failed to show anticipation by Chowdhury; instead, we found that, given the information before us and the standards for institution of inter partes review, “Petitioner has demonstrated that Chowdhury is reasonably likely to anticipate the challenged claims.” Dec. 15. Patent Owner’s attempt to read into our Decision to Institute its own conclusion on express anticipation is unwarranted. In rendering a Decision to Institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability; rather, we determine whether the record, at the time, establishes a reasonable likelihood of success. The standard for institution of an inter partes review requires nothing more. In reaching our determination in the Decision to Institute, we acknowledged Patent Owner’s arguments regarding both express anticipation and inherent anticipation and found that the anticipation ground based on Chowdhury, as presented in the Petition, met the standard required for institution of an inter partes review. Dec. 13– 15. We did not overlook these arguments, and Patent Owner has not shown that the Board misapprehended or overlooked any matter in instituting trial in this proceeding.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner did not propose an express construction of the phrase “composition comprising a water soluble persulfate compound and zero valent iron” in its Preliminary Response. See Dec. 6. In our Decision to Institute, we determined that this phrase required no express construction. Id. Although Patent Owner avers that there is no material dispute regarding claim construction, it urges in its Request for Rehearing a construction that Patent Owner has not previously raised. Req. 4–5. A Request for Rehearing is not an opportunity to present a new argument about claim construction, notwithstanding its framing as a matter that is not in dispute.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Decision to Institute. Notably, we did not agree with Patent Owner’s argument that Petitioner failed to show anticipation by Chowdhury; instead, we found that, given the information before us and the standards for institution of inter partes review, “Petitioner has demonstrated that Chowdhury is reasonably likely to anticipate the challenged claims.” Dec. 15. Patent Owner’s attempt to read into our Decision to Institute its own conclusion on express anticipation is unwarranted. In rendering a Decision to Institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability; rather, we determine whether the record, at the time, establishes a reasonable likelihood of success. The standard for institution of an inter partes review requires nothing more. In reaching our determination in the Decision to Institute, we acknowledged Patent Owner’s arguments regarding both express anticipation and inherent anticipation and found that the anticipation ground based on Chowdhury, as presented in the Petition, met the standard required for institution of an inter partes review. Dec. 13– 15. We did not overlook these arguments, and Patent Owner has not shown that the Board misapprehended or overlooked any matter in instituting trial in this proceeding.” slip op. at 4
Claim construction§ 102 anticipationPatents in suitUS 7,785,038 - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing
Denied Patent Owner’s rehearing request; review remains instituted for claims 42–44, 47–51, 53, 55, and 56 as anticipated by the ’095 patent and claim 57 as obvious over the ’095 patent and JP ’712.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a 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 party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“granting-in-part Daicel Corporation’s (“Petitioner”) Request for Rehearing (Paper 12) and instituting inter partes review of claims 42–44, 47–51, 53, and 55–57 of U.S. Patent No. 8,076,507 B2 (Ex. 1002, “the ’507 patent”). In Petitioner’s Request for Rehearing, Petitioner persuaded us that, in our initial decision denying institution of inter partes review (Paper 11, “Init. Dec.”), we overlooked testimony in the declaration of its expert, Mr. Cooper (Ex. 1003, “Cooper Declaration”). See Reh’g Dec. 9. Upon reconsideration of the Petition (Paper 2, Petition for Inter Partes Review (“Pet.”)) in light of Petitioner’s Request for Rehearing, we determined the information presented in the Petition was sufficient to support a reasonable likelihood that Petitioner would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by U.S. Patent No. 5,625,095 (Ex. 1010, “the ’095 patent”), and in showing claim 57 would have been obvious over the ’095 patent and Japanese Patent Application No. 2000-72712 (Ex. 1020 (English Translation), “JP ’712”). See Reh’g Dec. 3–5, 9–10. Accordingly, we instituted an inter partes review based on these grounds of unpatentability. Id. at 10. We were not persuaded, however, that we abused our discretion in declining to institute an inter partes review of claims 42–44, 47–51, 53, 55, and 56 based on obviousness over Singh1 (Ex. 1011) in view of the ’095 patent and Akinori2 (Ex. 1013), and claims 42–44, 47–51, 53, and 55–57” slip op. at 2
- BurdenDecided for petitioner
“Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to support its patentability challenge based on anticipation by the ’095 patent. See 37 C.F.R. § 42.22(a)(2) (requiring that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); id. at § 42.104 (requiring that the full statement in the Petition identify the specific portions of the supporting evidence relied upon to support the challenge, and state the relevance of the evidence to the challenge raised). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left instituted claims 58–60, 67, 69, and 71–72 on anticipation grounds and claim 73 on anticipation and obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a 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 party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Therefore, we are not persuaded that we erred in determining Petitioner’s arguments and evidence are sufficiently persuasive, at this stage of the proceeding, to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 59 and 67 as anticipated by the ’095 Patent. III. CONCLUSION Patent Owner has not convinced us that we abused our discretion in our decision to institute an inter partes review of claims 58–60, 67, 69, 71, and 72 based on anticipation by the ’095 patent and claim 73 based on obviousness over the ’095 patent and JP ’712.” slip op. at 13
- BurdenDecided for petitioner
“support of the presence of DME are limited to the following sentence: “It is well known that such a mixture will produce at least some amount of DME through equilibrium processes,” PO Req. Reh’g 2 (quoting Pet. 22–23). On page 4 of our Rehearing Decision, we quote Petitioner’s arguments explaining why DME necessarily would be present in the reactor and distillation overheads in the ’095 patent process. Reh’g Dec. 4 (quoting Pet. 22–23). Patent Owner has not explained why these arguments from the Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to support its patentability challenge based on anticipation by the ’095 patent. See 37 C.F.R. § 42.22(a)(2) (requiring that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); id. at § 42.104 (requiring that the full statement in the Petition identify the specific portions of the supporting evidence relied upon to support the challenge, and state the relevance of the evidence to the challenge raised). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing deniedPTAB · Sep 1, 2015 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and maintained institution on claims 1–4, 6–11, and 13 for obviousness over Singh, the ’095 patent, and Akinori.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a 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 party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In support of its challenge as to claims 11 and 13, Petitioner cited column 7, lines 25–27 of the ’095 patent, which read: “When distillation for separation is carried out in one distillation column, water may be charged into the distillation column.” Pet. 59–60. Petitioner also cited column 5, lines 1–5 of Singh, which describe adding water to the distillation column. Id. at 58–59. Petitioner cited paragraphs 71 and 78–80 of Mr. Cooper’s declaration (id. at 34, 41), wherein Mr. Cooper testified that adding water to the distillation columns in the ’095 patent and Singh processes would generate DME (Ex. 1003 ¶¶ 71, 80). Further, as discussed in Section II.A., above, Petitioner explained why one of ordinary skill in the art would have understood from Akinori that DME would be produced in the distillation column and present in the overheads in the ’095 patent and Singh processes, and identified testimony in the Cooper Declaration in support thereof. See e.g. Pet. 27 (citing Ex. 1003 ¶¶ 97–103); Ex. 1003 ¶101 (concluding, after discussing Akinori’s disclosure of the equilibrium side reactions in a Monsanto process, that “[t]he expected result is that DME forms where water and methyl iodide are present under distillative conditions, and that the amount of DME can be increased by feeding water to the distillation column”). As is apparent from the citations in the paragraph above, Petitioner has identified evidentiary support for its contentions that DME would be formed during the distillation steps in Singh and the ’095 patent processes, and that the second overhead would comprise an amount of DME in excess of any DME present in the first overhead, as recited in claims 11 and 13. Patent Owner’s unsupported attorney argument fails to convince us that Mr. Cooper’s testimony is unreasonable, or unsupported by the evidence he relies upon.1 Therefore, we are not persuaded that we erred in determining Petitioner’s arguments and evidence are persuasive, at this stage of the proceeding, to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 11 and 13 over Singh, the ’095 Patent, and Akinori.” slip op. at 10
- BurdenDecided for petitioner
“Our rules require that the Petition include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence. 37 C.F.R. § 42.22(a)(2). The full statement in the Petition must identify the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. Id. at § 42.104. Patent Owner has not explained why the above statements from the Petition, that include specific citations to the Cooper Declaration and Akinori as supporting evidence, are insufficient to satisfy these rules. With regard to Exhibits 1029 and 1030, Patent Owner has not identified language in the rules or case law to support its contention that the Petition must cite and/or explain the relevance of evidence relied upon in an expert declaration. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In sum, Patent Owner has not persuaded us that our decision to institute trial was based on consideration of arguments and evidence that were improperly incorporated by reference into the Petition.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nonetheless, Patent Owner’s arguments regarding the alleged deficiencies in Mr. Cooper’s testimony are not persuasive at this stage of the proceeding, because they are based primarily on attorney argument. In other words, because Patent Owner has not given us a reason to doubt the veracity of Mr. Cooper’s testimony, at this stage of the proceeding, it is premature for us to conclude that his opinion is entitled to little or no weight. During trial, Patent Owner will have an opportunity to further address Mr. Cooper’s testimony, and present new testimony evidence to support its assertions as to the sufficiency of Mr. Cooper’s testimony. In sum, Patent Owner has not persuaded us that we erred in according weight to Mr. Cooper’s Testimony that DME is inherently present in an overhead distillation stream of the ’095 patent process.” slip op. at 7
Claim constructionPatents in suitUS 8,076,507
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.