- Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.Rehearing deniedPTAB · Dec 21, 2017 · IPR2017-01313 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Petitioner’s rehearing request and left in place its § 325(d) denial of institution for claims 1–8 because materially the same prior art had been considered by the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing it should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“As an initial matter, we note that Petitioner states that, for purposes of its Request, it “do[es] not argue Uchida and Uchida II are not materially the same.” Req. Reh’g 3. Because we have discretion to reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office,” see 35 U.S.C. § 325(d) (emphasis added), Petitioner has not established that we abused our discretion in denying the Petition. Given that Uchida (asserted here) and Uchida II (previously presented to the Office) are “materially the same,” substantially the same prior art was previously before the Office. Indeed, the presence of Uchida in the Petition and the materially-identical Uchida II in the prosecution history alone is a sufficient basis to exercise our discretion under Section 325(d).” slip op. at 3
Discretionary denialPatents in suitUS 6,527,874 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.Institution deniedPTAB · Nov 6, 2017 · IPR2017-01313 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution for claims 1–8 under § 325(d), finding the petition relied on substantially the same prior art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the same prior art and arguments as those previously presented to the Office, we now decide whether to exercise our discretion to deny institution under § 325(d). Our discretion under § 325(d) involves a balance between several competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11). “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016- 01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, there are the interests of giving petitioners the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id. For the following reasons, we deny the Petition. The disclosures of the primary references asserted by Petitioner were previously presented to, and considered by, the Office. Specifically, the disclosures in Uchida and Kaneko II upon which Petitioner relies were presented to the Office in Uchida II and Kaneko III, both of which were considered by the Office during prosecution of the ’104 application. Petitioner is thus asking the Board to readjudicate the Office’s previous decision on substantially the same issues, without providing any arguments distinguishing the Examiner’s prior consideration of Uchida II and Kaneko III, or any compelling reason why we should re-evaluate substantially the same prior art as that presented during prosecution and considered by the Examiner. Moreover, although we acknowledge that Petitioner has a direct interest in pursuing the instant Petition, we also acknowledge the burden and expense to Patent Owner in having to defend the ’874 patent based on substantially the same prior art or arguments already considered by the Office. We are not persuaded that adjudicating disputes on already-considered issues is an efficient use of Board or party resources. See Unified Patents Inc. v. John L. Berman, Case IPR2016-01571, slip. op. at 12 (PTAB Dec. 14, 2016) (Paper 10) (informative); see also Cultec, Inc. v. StormTech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7) (informative) (denying institution of inter partes review under § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office during prosecution); Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16) (informative) (denying institution of inter partes review under § 325(d) because the Office already decided the dispositive issue of whether the asserted references qualified as prior art with respect to the challenged patent); Juniper Networks, Inc. v. Mobile Telecomm’ns Techs., LLC, Case IPR2017-00642, slip op. at 13 (PTAB July 27, 2017) (Paper 24) (finding that “the Examiner was aware of the contents of [the” slip op. at 15
Discretionary denialPatents in suitUS 6,527,874 - Baker Hughes, A GE Company, LLC (F/K/A Baker Hughes Incorporated) v. Liquidpower Specialty Products Inc. (F/K/A Lubrizol Specialty Products, Inc.)All claims unpatentablePTAB · Nov 1, 2017 · IPR2016-00734 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1, 3, 4, 6, 7, and 11 as anticipated by Eaton; claims 1–7 and 11 as obvious over Eaton and Strausz; claims 8–10 as obvious over Eaton, Strausz, and Naiman.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Eaton discloses that a different size flow loop—not dilution—was utilized to achieve turbulent flow of the Bow River crude oil. Ex. 1002, 14:40–42 (“The 1" flow loop was used to test the . . . BOW RIVER crude oil[], which [is] so viscous that [it] do[es] not generate turbulent flow in a ¼" flow loop.”); see id. at 14:42–55 (describing the flow loop test procedure).11 We decline to credit Dr. Dunn’s testimony over Eaton’s explicit disclosure. Accordingly, we determine that Petitioner establishes, by a preponderance of the evidence, that Eaton discloses the API gravity limitation.” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Eaton discloses that a different size flow loop—not dilution—was utilized to achieve turbulent flow of the Bow River crude oil. Ex. 1002, 14:40–42 (“The 1" flow loop was used to test the . . . BOW RIVER crude oil[], which [is] so viscous that [it] do[es] not generate turbulent flow in a ¼" flow loop.”); see id. at 14:42–55 (describing the flow loop test procedure).11 We decline to credit Dr. Dunn’s testimony over Eaton’s explicit disclosure. Accordingly, we determine that Petitioner establishes, by a preponderance of the evidence, that Eaton discloses the API gravity limitation.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“persuaded by Petitioner’s argument and Dr. Epps’s testimony that the combination of Eaton and Strausz suggests drag reducing polymers having the solubility parameter limitation, because the solubility parameter limitation merely states what one of ordinary skill already knew and would have applied—that the drag reducing polymer must be soluble in the liquid hydrocarbon. See Pet. 41; Ex. 1005 ¶ 32. We also credit Dr. Epps’s testimony setting forth how one of ordinary skill in the art, knowing the target solubility parameter of the liquid hydrocarbon (e.g., for Bow River crude oil, a range of 17.1–19.6 MPa1/2), would have consulted the literature or used calculations to determine which of Eaton’s homopolymers or copolymers would provide a solubility parameter within the target range, and then used Eaton’s disclosed methods to prepare that polymer or polymers. Ex. 1005 ¶¶ 81–92 (citing Ex. 1002, 9:8–18; Ex. 1003, 465–467; Ex. 1007, VII-686, VII-707; Ex. 1012, 1025; Ex. 1037, 252–253). Accordingly, Petitioner establishes, by a preponderance of the evidence, that the combined teachings of Eaton and Strausz disclose the solubility parameter limitation of the challenged claims.” slip op. at 45
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“of ordinary skill in the art would have a reason to combine the teachings of Eaton and Strausz and, in making that combination, a person of ordinary skill would have had a reasonable expectation of success at achieving a drag reducing polymer meeting the limitations of claims 1–7 and 11. That does not end our inquiry, however, because Patent Owner presents arguments and evidence regarding objective indicia of nonobviousness that we must consider before reaching our conclusion on obviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). We consider those arguments and evidence below.” slip op. at 57
Patent outcomesUS 8,022,118 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,022,118 - PTAB · Oct 6, 2017 · IPR2017-01353 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, 11–13, 15, and 18 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 904 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’904 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
§ 103 obviousnesscites PhillipsPatents in suitUS 8,500,904 - PTAB · Oct 6, 2017 · IPR2017-01351 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, and 4–7 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“well as the testimony of Mr. Harlos and Dr. Bruce, we conclude that Petitioner has not demonstrated a reasonable likelihood that claims 1, 2, and 4–7 are unpatentable over the recited prior art references. Accordingly, we do not institute inter partes review with respect to any of the asserted grounds. IV. ORDER It is hereby ORDERED that inter partes review is not instituted.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Because the reaction of STMP and potato starch in Graux occurs before the starch is added to the gypsum and water mixture, and because the reaction converts the starch and STMP into di-starch orthophosphate and tetrasodium pyrophosphate, i.e., STMP is consumed during Graux’s reaction process, we are not persuaded that Graux expressly teaches or suggests a set gypsum that is “formed from”12 calcined gypsum, water, and sodium trimetaphosphate, as required by claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded by Petitioner’s argument that one of ordinary skill in the art would have looked to Hjelmeland to determine the amount of STMP to use in Graux. Pet. 21 (asserting that an ordinary artisan would have found it obvious to use the amount of condensed phosphate specified by Hjelmeland in the plaster composition of Graux). Although, as noted by Petitioner, Graux and Hjelmeland both disclose the use of a condensed phosphate, the references use this material in different ways. In particular, Graux uses the condensed phosphate (STMP) to crosslink a potato starch, whereas Hjelmeland discloses adding the condensed phosphate to a gypsum suspension to act as a retarding agent. Ex. 1006, 5:39–50; Ex. 1008, 3:60–4:16. Petitioner does not explain why the concentration of STMP used to retard the setting of a gypsum suspension is in any way related to the amount of STMP required to effectively crosslink a starch. Nor does Petitioner explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink its starch, would have then sought to add STMP to Graux’s mixture in view of Hjelmeland’s genus disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the same fashion as recited in the claims of the ’980 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Based on the foregoing, Petitioner has not demonstrated that Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teach or suggest every limitation of independent claim 1. As dependent claims 2 and 4–7 depend directly from claim 1, we are likewise not persuaded that the combination of Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teaches or suggests the subject matter of these claims.” slip op. at 13
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,758,980 - PTAB · Oct 6, 2017 · IPR2017-01350 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that challenged claims 1–7, 10–15, 18, 22, 26, 29, 32–34, and 40 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“After reviewing the parties’ positions, we are not persuaded that Petitioner has demonstrated sufficiently that the prior art references teach or suggest including an enhancing material in the mixture of Graux in an amount such that, when the mixture is cast in the form of a ½ inch gypsum board, the board has a sag resistance of less than about 0.1 inch per two feet in length, as determined according to ASTM C473-95. Petitioner has not directed us to any sag resistance values for gypsum boards made using the ingredients disclosed in Graux and measured according to ASTM C473- 95,13 or evidence sufficient to establish that the claimed sag resistance value is an inherent property of a gypsum-containing product formed from the mixture disclosed in Graux. See Trintec Indus., Inc. v. Top–U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.”) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). With regard to Petitioner’s argument that the ’284 patent discloses prior art gypsum boards having a sag resistance of less than 0.1 inch, we note that Petitioner has not directed us to any evidence demonstrating that these products contain the enhancing materials recited in independent claims 1, 2, 4, 5, 10, 34, or 40. Further, we agree with Patent Owner that the mere fact that a person of ordinary skill in the art would have been aware of the test methods set forth in ASTM C473-95 does not establish that boards tested according to 13 Even if we were to agree with Petitioner that Graux discloses a mixture of calcined gypsum, water, and a claimed enhancing material––which, for the reasons discussed above, we do not––Petitioner’s argument still suffers from this deficiency. those test methods would have a particular sag resistance value, or that a person of ordinary skill in the art would have been able to produce a board having a particular sag resistance value. Under the heading “Significance and Use” in the section discussing Humidified Deflection (i.e., sag resistance), ASTM C473-95 states only that “[t]his test method covers a procedure for evaluating the deflection of gypsum board.” Ex. 1009, 8 (Section 49.1) (emphasis added). We are not persuaded that such a disclosure would have taught or suggested combining the components of Graux to achieve a gypsum board having a sag resistance of less than about 0.1 inch per two foot length of said board. Based on the foregoing, Petitioner has not demonstrated that Graux discloses every limitation of independent claims 1, 2, 4, 5, 10, 34, or 40, or that one of ordinary skill in the art would have sought to modify Graux in view of ASTM C473-95, or any of the other recited prior art references, to arrive at the subject matter of the challenged claims. And, as each of the challenged dependent claims depends, directly or indirectly, from one of independent claims 1, 5, and 10, we are also not persuaded that these claims would have been obvious over Graux, ASTM C473-95, Hjelmeland, Sucech, Baig, and Summerland.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP to Satterthwaite’s mixture. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’284 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 18
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,342,284 - PTAB · Oct 6, 2017 · IPR2017-01352 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–4, 6, 8, and 10 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDenied
“comprising calcined gypsum, water, an accelerator, and one or more enhancing materials selected from a group that includes STMP. Ex. 1038, 32:2–9. Petitioner does not direct us to any embodiment or teaching in Graux in which STMP is added directly to a mixture of gypsum, water, and an accelerator. Instead, Petitioner relies on the addition of a cross-linked starch in Graux as satisfying the requirement that the claimed matrix of set gypsum is prepared from a mixture comprising sodium trimetaphosphate. Pet. 33. On this record, we are not persuaded that this disclosure is sufficient to show that STMP is present in the mixture of gypsum, water, and an accelerator in Graux.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’914 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 20
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,142,914 - PTAB · Oct 3, 2017 · IPR2017-01088 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 2 was unpatentable under any of the three § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed board ownDecided for patent owner
“materials,” for purposes of this Decision we need only resolve whether the proper construction of the term “enhancing materials” is broad enough to encompass boric acid. Example 2 of the ’236 patent states that samples were prepared by mixing beta calcium sulfate hemihydrate, an accelerator, and water with either “0 g additive (control samples), 3 g of STMP (inventive samples), or 3 g of other additives (comparative samples).” Ex. 1030, 13:41–46. According to Table 2 of the ’236 patent, boric acid is one of the “other additives” used in making the “comparative samples.” Id. at 14:22. The ’236 patent explains that “[t]he additives employed in the comparative samples (outside the scope of the invention) are representative of other materials that have been employed to attempt to improve resistance of gypsum board to sagging under conditions of high humidity.” Id. at 14:8–13 (emphasis added). As Patent Owner points out, the ’236 patent further characterizes the board made using boric acid as one of the “noninventive comparative boards.” Id. at 14:28–32. We find this discussion of comparative examples as being outside the scope of the invention constitutes a clear indication that the “patentee disavow[ed] the full scope of a claim term . . . in the specification.” Thorner, 669 F.3d at 1365. As a result, these comparative examples, including a composition comprising gypsum, water, an accelerator, and boric acid, are “outside the reach of the claims of the patent.” SciMed, 242 F.3d at 1341; see also Prelim. Resp. 32–34 (Patent Owner referring to boric acid as a “conventional additive[]”). Therefore, when viewed in the context of the specification, the correct construction of “enhancing material” cannot include boric acid.” slip op. at 8
- BurdenNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,425,236 - PTAB · Oct 3, 2017 · IPR2017-01086 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 7–9, and 54–57 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Claims of a patent that will expire within 18 months from the Notice of Filing Date, however, are construed using “a district court-type claim construction approach,” provided a motion under 37 C.F.R. § 42.20 is filed within 30 days from the filing of the petition. 37 C.F.R. § 42.100(b). Patent Owner timely filed such a motion, and Petitioner does not dispute that the ’550 patent expired shortly after the Petition was filed. Paper 6, 2; Pet. 9. Thus, to the extent necessary, we will construe the claims of the ’550 patent using “a district court-type claim construction approach.” 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Petitioner provides proposed constructions for the terms “accelerator,” “set gypsum-containing product,” and “enhancing material(s).” Pet. 11–15. Patent Owner responds to Petitioner’s proposed constructions with its own proposed constructions of these terms. Prelim. Resp. 21–28. Upon review of Petitioner’s and Patent Owner’s arguments and supporting evidence, however, we determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP or condensed phosphate to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP or other condensed phosphate to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’550 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
- Expert testimonyOther
“pyrophosphate. Id. Consistent with Mr. Harlos’ testimony, Patent Owner’s declarant, Dr. Bruce, testifies that the STMP of Graux is “consumed” during the crosslinking reaction.9 Ex. 2001 ¶ 110.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,632,550
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.