- US Conec Ltd. v. Senko Advanced Components, Inc.Rehearing grantedPTAB · Sep 16, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Rehearing
The Board granted the petitioner's request to withdraw its rehearing request and granted the joint motion to terminate the proceeding.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties. III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that Petitioner’s request for withdrawal of its Request for Rehearing (Paper 8) is granted; and” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties.” slip op. at 2
NonePatents in suitUS 11,061,190 - Infineon Technologies AG v. Amatech Group LimitedRehearing grantedPTAB · Apr 3, 2024 · IPR2022-00951 · APJ Stacey G White · IPR · Rehearing
On rehearing, the Board held claim 3 unpatentable as obvious over Eray-WO799, revising the final written decision’s outcome for that claim.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“As stated in our Final Written Decision, we adopted Petitioner’s definition of the person of ordinary skill in the art and found that the person of ordinary skill in the art would have possessed “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Dec. 6–7 (citing Pet. 8; PO Resp. 18). Petitioner’s declarant, Dr. Daniel van der Weide, supported Petitioner’s definition, which was adopted for this proceeding. Ex. 1003 ¶ 25. Dr. van der Weide defined himself as “a person of more than ordinary skill in the art during the relevant timeframe” because “[b]y 2010, [he] held a Ph.D. in electrical engineering, and [he] had at least” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
§ 103 obviousnessPatents in suitUS 9,165,240 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing grantedPTAB · Oct 19, 2022 · IPR2022-00862 · APJ Sheila F Mcshane · IPR · Rehearing
On Director remand, the Board instituted inter partes review of claims 1, 2, 6–11, 13, and 15–24 on all petitioned grounds and granted joinder with IPR2021-01493.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Commerce for Intellectual Property and Director of the United States Patent and Trademark Office vacating our previous decision denying institution, remanding for further proceedings, and ordering us to reconsider joinder after reconsidering the decision denying institution. Paper 18 (“Remand Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1493 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1493 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,484,510 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing grantedPTAB · Oct 19, 2022 · IPR2022-00861 · APJ Sheila F Mcshane · IPR · Rehearing
On remand, the Board instituted review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 on all petitioned grounds and granted joinder with IPR2021-01492.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“General Plastic, and clarified General Plastic by stating that, “[w]here the first-filed petition . . . was discretionarily denied or otherwise was not evaluated on the merits,” a finding favoring discretionary denial under General Plastic’s factors 1–3 is limited to “when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Remand Dec. 5. The Director noted that in this case, the Board had found “no evidence of road-mapping.” Id. at 5 (citing Dec. 13). The Director added that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from later developments.” Id. at 5. The Director agreed with the panel’s finding that General Plastic’s factors 2, 4, and 5 “have limited relevance.” Id. at 6. The Director similarly found factor 7 to “have limited relevance” because the one-year statutory time period may be adjusted for a joined case under 35 U.S.C. § 316(a)(11). Id. (citing Dec. 16). Further, the Director disagreed with the panel’s determination on factor 6 in view of potential inefficiencies, with the Director determining that “the Board’s mission ‘to improve patent quality and restore confidence in the presumption of validity that comes with issued patents’ outweighs the impact on Board resources needed to evaluate the merits of a petition.” Id. In accordance with the evaluation of the factors, the Director found that “the Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Id. The Director remanded the case to the panel for further proceedings, with direction to reconsider the institution decision and joinder. Remand Dec. 7. The Director directed that the panel “consider the Patent Owner’s remaining arguments, including those for discretionary denial under Fintiv and against the merits of the Petitioner’s patentability challenges.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner is correct that its previously-filed 1266 IPR was not considered on the merits, and we note that this previous IPR challenged claims of the ’319 patent based on the same primary prior art—Crowds, Border, and MorphMix—as that asserted in the instant action. See Code200, UAB v. Luminati Networks Ltd., IPR2020-01266, Paper 5, 5–6. We agree with Petitioner that Uniloc is distinguishable from this case here because Uniloc addressed a situation after a denial of an earlier petition on the merits. Reply 2; Uniloc, 6. As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1492 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1492 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 39
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,257,319 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00032 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Patent Owner’s request for rehearing to authorize a request for Director rehearing of the final written decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Given the particular circumstances of this proceeding, particularly that the Request for Rehearing was filed prior to the Supreme Court’s Arthrex decision, we construe Patent Owner’s Request for Rehearing as requesting authorization to file a Request for Rehearing by the Director of the Final Written Decision and grant this request. Patent Owner is authorized to file a Request for Rehearing by the Director of the Final Written Decision within 30 days of the date of this decision. See 37 C.F.R. §§ 42.5, 42.71(d).” slip op. at 3
- Director reviewDirector review, grantedGranted
“Given the particular circumstances of this proceeding, particularly that the Request for Rehearing was filed prior to the Supreme Court’s Arthrex decision, we construe Patent Owner’s Request for Rehearing as requesting authorization to file a Request for Rehearing by the Director of the Final Written Decision and grant this request. Patent Owner is authorized to file a Request for Rehearing by the Director of the Final Written Decision within 30 days of the date of this decision. See 37 C.F.R. §§ 42.5, 42.71(d).” slip op. at 3
NonePatents in suitUS 7,933,827 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00030 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Nasdaq’s rehearing request and authorized it to seek Director rehearing of the final written decision within 30 days.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“STANDARD A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Director reviewDirector review, grantedGranted
“The United States Patent and Trademark Office subsequently implemented an interim procedure1 whereby review of a final written decision by the Director may be requested by a party to a post-grant review proceeding.” slip op. at 3
NonePatents in suitUS 7,921,051 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00029 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Nasdaq’s rehearing request and authorized it to seek Director rehearing of the final written decision within 30 days.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Given the particular circumstances of this proceeding, particularly that the Request for Rehearing was filed prior to the Supreme Court’s Arthrex decision, we construe Patent Owner’s Request for Rehearing as requesting authorization to file a Request for Rehearing by the Director of the Final Written Decision and grant this request. Patent Owner is authorized to file a Request for Rehearing by the Director of the Final Written Decision within 30 days of the date of this decision. See 37 C.F.R. §§ 42.5, 42.71(d).” slip op. at 3
NonePatents in suitUS 7,747,506 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Ften, Inc.Rehearing grantedPTAB · Jan 27, 2022 · CBM2018-00020 · APJ Meredith C Petravick · CBM · Rehearing
The Board granted Patent Owner’s request for rehearing and authorized it to seek Director rehearing of the final written decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“STANDARD A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Director reviewDirector review, grantedGranted
“Arthrex, Inc., 141 S. Ct. 1970 (2021). The Supreme Court held “that 35 U.S.C. § 6(c) is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own. The Director may engage in such review and reach his own decision.” Arthrex, 141 S. Ct. at 1987. The Supreme Court “conclude[d] that the appropriate remedy is a remand to the Acting Director for him to decide whether to rehear the petition.” Id. The United States Patent and Trademark Office subsequently implemented an interim procedure1 whereby review of a final written decision by the Director may be requested by a party to a post-grant review proceeding.” slip op. at 3
NonePatents in suitUS 8,386,371 - Avx Corporation v. Greatbatch Ltd.Rehearing grantedPTAB · Jan 13, 2016 · IPR2015-00710 · APJ Jon B Tornquist · IPR · Rehearing
The Board granted rehearing in part and instituted review of claims 1, 2, 5–7, 10, 11, 16, 17, and 20 on anticipation and obviousness grounds; it denied rehearing on the remaining claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When the Petition and Dr. Irazoqui’s testimony are considered in view of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45). Accordingly, for the reasons discussed below, we grant-in-part and deny-in-part Petitioner’s Request for Rehearing and institute inter partes review on the grounds set forth below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. Conclusion Based on the foregoing, we are persuaded that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 5–7, 10, 11, 16, 17, and 20 of the ’553 patent are anticipated by Fraley; we are not persuaded that claims 3, 4, 8, 9, 12–15, 18, and 19 of the ’553 patent are anticipated by Fraley.” slip op. at 12
- BurdenMixed
“of the Request for Rehearing, we agree that we overlooked Petitioner’s argument that the “gas flow passage” of Figure 2 extends from the upper surface of insulator 122 to the upper exterior of feedthrough 100, i.e., traverses the space between insulator 122 and washer 124. Pet. 35 (citing Ex. 1003, 7:18–21, 7:27–29). Given this evidence associating the “minute” gaps with the space between insulator 122 and washer 124, and in light of our current construction of “laminar delamination gap” requiring no specific dimensions for a “very thin gap,” we are persuaded that the evidence of record sufficiently supports Dr. Irazoqui’s testimony that one of ordinary skill in the art would understand that Fraley discloses a “laminar delamination gap,” under a construction requiring a “very thin space.” 3 Pet. 37–38; Ex. 1002 ¶ 52 (p. 45).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded by Patent Owner’s argument because Exhibit 2008, relied upon by Patent Owner to support its argument, instructs that “[a] braze fillet should ideally be very small.” Ex. 2008, 1; see also id. at 2 (“Keep the fillet small. Remember, all the good things about a braze joint are happening INSIDE the joint, not in the outside fillets.”). Thus, on this record, regardless of any variation in the size of the braze-fillet, Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and washer 124 would be “substantial.” Based on the foregoing, and upon review of Petitioner’s and Patent Owner’s arguments, the evidence of record, and the supporting testimony of Dr. Irazoqui, we are persuaded that Petitioner demonstrates a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,327,553 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00171 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part, instituting review of claims 42–44, 47–51, 53, 55, and 56 for anticipation and claim 57 for obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 99. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 99 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 101–102. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 42 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 43, 44, 47–51, 53, 55, and 56, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 27–35. In sum, at this stage of the proceeding, Petitioner has established a reasonable likelihood that it would prevail on the merits in showing claims 42–44, 47–51, 53, 55, and 56 are anticipated by the ’095 patent. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“terms, and we agree, for purposes of this decision, that claim 42 does not require a specific quantity of DME in the distillation overhead. We do not agree with Petitioner, however, that the Singh and ’507 patent disclosures are identical with respect to the addition of water to distillation column 22. As indicated in our Decision, both Singh and the ’507 patent describe adding small amounts of water to column 22 for the purpose of inhibiting impurity formation. See Dec. 5–6. The ’507 patent, however, includes additional description of adding water to column 22 for the purpose of producing DME in the distillation overhead. See id. at 7 (citing Ex. 1002, col. 11). This additional description of adding water to produce DME in the distillation overhead does not refer back to the description of adding water as an inhibitor (see Ex. 1002, 10:9–32), or otherwise indicate that the small amounts of water used to inhibit impurity formation in the ’507 patent and Singh processes would produce DME in a distillation overhead. In addition, for the reasons explained in our Decision (Dec. 25–26), Petitioner has not persuaded us that the prosecution history of the ’507 patent includes an admission by Patent Owner that the addition of any amount of water to the distillation step would result in DME in an overhead stream. See Req. Reh’g 10. In sum, Petitioner has not convinced us that our Decision was based on an erroneous claim interpretation or that we overlooked evidence that the addition of any amount of water in the steps common to the Singh and the ’507 patent processes would necessarily result in the presence of DME in a distillation overhead. With respect to Petitioner’s assertions regarding Akinori, we note the Petition relied on Akinori as evidence that DME was necessarily produced in the ’095 patent process. See Pet. 43. Petitioner did not explain how Akinori was relevant to show the presence of DME in the distillation overhead of Singh. For the above reasons, the Request for Rehearing is denied as to the challenge based on Singh in view of the ’095 patent and Akinori.” slip op. at 7
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents 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.