- U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Volvo Cars Of North America / Volvo Car Corporation A/K/A Volvo Personvagnar AB v. Watlow Electric Manufacturing CompanyAll claims unpatentablePTAB · Oct 22, 2020 · IPR2019-01100 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–4 and 8–11 are unpatentable under § 103 over the decided Toyota-based grounds; the Board did not reach the Brook-Levinson-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’869 patent “would have had a Bachelor’s degree in mechanical engineering, materials science, electrical engineering, or a similar discipline, as well as two or more years of relevant industry or research experience.” Pet. 7 (citing Ex. 1003 ¶¶ 13–15). Alternatively, according to Petitioner, a person of ordinary skill in the art would have had “a Master’s degree in mechanical engineering, materials science, electrical engineering, or a similar discipline, as well as one year of industry experience.” Id. Petitioner further contends that a person of ordinary skill in the art “would have been familiar with layered heating systems and/or the components and underlying technology used therein.” Id. at 8. Patent Owner does not address the level of skill in the art. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the prior art of record and the ’869 patent.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Patent Owner, in turn, argues that a complex contour pattern “requires a structure having an outer shape that combines parts of multiple simple shapes such that it is complex.” PO Resp. 14 (citing Ex. 2011, 371; Ex. 2012, 465; Ex. 2013). Patent Owner agrees “that Figs. 2 and 3 of the ’869 Patent each illustrate an example of a ‘complex contour pattern.’” Id. at 17 n.4. We note that Figures 2 and 3 illustrate a spiral pattern on a cylindrical substrate. Ex. 1001, Figs. 2, 3. Patent Owner also contends that Figure 4 of the ’869 Patent discloses a “complex contour pattern . . . in the form[] of a meandering electrically conductive resistive material layer.” PO Resp. 5. Although Patent Owner contends its proposed construction is supported by the Specification of the ’869 patent (id. at 15), Patent Owner does not persuasively explain how either a spiral pattern or meandering pattern as shown in Figures 2–4 of the ’869 patent have outer shapes that “combine parts of multiple simple shapes,” as would be required by its proposed construction. See generally PO Resp. Consequently, we do not adopt Patent Owner’s construction. For the purposes of resolving the dispute between the parties, we determine that a “complex contour pattern” encompasses at least a spiral pattern on a cylinder and a meandering pattern.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededOther
“With respect to Patent Owner’s proposed constructions, Patent Owner contends and Petitioner agrees that these limitations are written in product-by-process format. See PO Resp. 8–18; Sur-reply 4–5; Pet. Reply 2–7. We do not need to construe these limitations to resolve this dispute but, due to the nature of the product-by-process limitations, we address Patent Owner’s claim construction arguments below in the context of analyzing the patentability of these claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Strike new argumentNew argument consideredDecided for petitioner
“exceed the proper scope of a Reply. Our Trial Practice Guide provides that “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability. A party also may submit rebuttal evidence in support of its reply.” Consol. TPG,9 73 (Nov. 2019) (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). The Federal Circuit has explained that “[a]s we have regularly held, ‘the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Apple, Inc. v. Andrea Elec. Corp., 949 F.3d 697, 706–707 (Fed. Cir. 2020) (citation omitted). In the Patent Owner Response, Patent Owner refers to the testimony of Dr. McDonald and Mr. Selvy to support its argument that a skilled artisan “would not have been led by Toyota’s reference to ‘metallizing’ to use a thermal spray process to create the resistive layer of Toyota’s heater.” PO Resp. 31. Patent Owner further argues a skilled artisan “would not have considered Toyota’s reference to ‘metallizing’ to suggest the use of a thermal spray process to create an active resistive heating element, because such processes were understood at that time to be primarily, and nearly exclusively, used for passive protection against surface degradation.” Id. at 31–32. In the Reply, Petitioner contends that “Toyota cites prior art disclosing thermal spray processes in describing how ‘a 9 Available at www.uspto.gov/trialpracticeguideconsolidated. conventional heating roller’ was made.” Pet. Reply 13 (citing Ex. 1008, 2:34–48; Ex. 1078, 3). Petitioner does not rely on this evidence to establish its prima facie case but rather to rebut Patent Owner’s argument that Toyota’s reference to metallizing does not suggest thermal spraying as contended in the Petition. Consequently, Exhibit 1078 and 1079 constitute legitimate reply evidence in response to evidence introduced by Patent Owner.” slip op. at 25
Patent outcomesUS 7,361,869 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,361,869 - PTAB · Oct 14, 2020 · IPR2020-00131 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Medtronic’s rehearing request and left in place its denial of institution for claims 25-39, finding no overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Other
“ANALYSIS The Petition in IPR2020-00131 was the fourth filed by Petitioner against the ’380 patent and is identified by Petitioner as “Petition 2B.” Paper 2, 2. The other three petitions are identified by Petitioner as “Petition 1A,” “Petition 1B,” and “Petition 2A” and assigned case numbers IPR2019- 00128, IPR2019-00129, and IPR2019-00130, respectively. Id. In its papers, Petitioner asserted that the fourth petition challenging claims of the ’380 patent was justified because Petitions 1A and 1B rely on a primary reference to which Patent Owner has “raised a priority date issue” and Petition 2B, in contrast to Petition 2A, addresses claims that are in means-plus-function format. Id. at 2–4 (quoting Microsoft Corp. v. IPA Techs., Inc., IPR2019- 00810, Paper 12 at 15 (PTAB Oct. 16, 2019)).” slip op. at 2
Discretionary denial - Pharmacosmos A/S v. American Regent, Inc.Institution deniedPTAB · Aug 14, 2020 · PGR2020-00009 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution of PGR challenging claims 1–22, finding substantially the same art and arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“instituted “unless . . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” But even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, institution of review remains discretionary. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). In exercising that discretion, we are guided by the statutory requirement, in promulgating regulations for post-grant review, to consider the effect of any regulations on “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings,” 35 U.S.C. § 326(b), as well as the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). Office guidance, issued June 5, 2018, also explains that the Board “will evaluate the challenges and determine whether § 325(d) is sufficiently” slip op. at 28
Discretionary denialPatents in suitUS 10,478,450 - PTAB · Jun 12, 2020 · IPR2019-01544 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because Petitioner did not show abuse of discretion in the findings on analogous art or motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is analogous prior art (1) if it is from the same field of endeavor regardless of the problem addressed, or (2) if it is not within the field of the inventor’s endeavor, it is reasonably pertinent to the particular problem with which the inventor is involved. Id. Petitioner argues that we erred in applying both prongs of the Bigio test. Req. Reh’g 1–7.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 9,017,488 - PTAB · Jun 12, 2020 · IPR2019-01540 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show error in the finding that its obviousness grounds lacked adequate analogous-art and motivation-to-combine support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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” slip op. at 2
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is analogous prior art (1) if it is from the same field of endeavor regardless of the problem addressed, or (2) if it is not within the field of the inventor’s endeavor, it is reasonably pertinent to the particular problem with which the inventor is involved. Id. Petitioner argues that we erred in applying both prongs of the Bigio test. Req. Reh’g 1–7.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“Petitioner does not show that we overlooked or misapprehended any argument or evidence sufficient to show a persuasive reason why a POSA would have modified Foutsitzis’s contaminant removal method by using selected ones of the carrier gases disclosed by Allen and by delivering the solvent as a vapor. Merely pointing out the differences between the two references (or the absence of differences) is not enough to show a reason to modify one reference’s method in view of the teachings of another reference. Metalcraft of Mayville, Inc. v. Toro Co., 848 F. 3d 1358, 1367 (Fed. Cir. 2017) (To show obviousness, “[o]ne needs to provide an explanation or reasoning for concluding that one of skill in the art would have combined these particular references to produce the claimed invention.”).” slip op. at 9
- BurdenDecided for patent owner
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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” slip op. at 2
§ 103 obviousnesscites KSRPatents in suitUS 8,480,812 - Nof Corporation v. Nektar TherapeuticsRehearing deniedPTAB · Jun 10, 2020 · IPR2019-01396 · APJ Zhenyu Yang · IPR · Rehearing
The Board denied NOF Corporation’s rehearing request, leaving institution denied on all challenged claims because the petition did not show Bentley taught or suggested using its star molecules for biological applications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion 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). A rehearing request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“How much we credit an expert’s testimony, however, depends on whether the opinion adequately addresses the disclosures of a reference as a whole and adequately provides the justification for its conclusions. See TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359–60 (Fed. Cir. 2019). Here, Dr. Yamamoto did not adequately explain why Bentley’s disclosure of being able to conjugate nearly any polymer to nearly any amine-containing material teaches or suggests the specific polymer identified at column 7, lines 14–20 of Bentley, would be useful when conjugated to biologically active molecules. Moreover, Bentley generally teaches that activated PEG polymers can be conjugated to molecules or surfaces and specifically incorporates by reference Merrill, which discloses conjugating “star” molecules to the support surface of an affinity column. Ex. 1015, 6:12–13; Ex. 2020, 2:5–8. Dr. Yamamoto did not address these disclosures or explain adequately why one of ordinary skill in the art would have sought to conjugate the specific activated PEG molecule disclosed in Bentley (Ex. 1015, 7:14–20) to a biologically active molecule, as opposed to the support surface of an affinity column (Ex. 2020, 2:5–8). Indeed, Dr. Yamamoto did not persuasively identify any actual properties of the specific activated PEG molecule of Bentley relied upon in the Petition. As a result, although we considered Dr. Yamamoto’s testimony, we accorded it proper weight. Petitioner has not established that we erred in doing so.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for patent owner
“The level of ordinary skill in the art asserted by Petitioner is high. A high level of skill in the art tends to favor an obviousness conclusion. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness, and thus the patentee, while a higher level of skill favors the reverse.”). Despite so, to meet its burden for institution, Petitioner still must adequately explain why the art and such a high skill level would have led to the claimed invention. As noted above, we do not find that Petitioner and Dr. Yamamoto did so. Thus, Petitioner has not established that we overlooked its argument as to this issue.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In other words, Bentley does not teach that all of the PEG conjugates would be useful for all possible purposes. Nor does it describe how to determine which conjugates will be useful for any particular desired application. Instead, Bentley discloses a tool that can be used to conjugate a broad variety of polymers to nearly any amine-containing substance or surface. Petitioner does not persuasively explain why such a general disclosure teaches or suggests a conjugate of any particular PEG polymer to any particular type of amine-containing substance.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,809,453 - Chemco Systems, L.P. v. RDP Technologies, Inc.Rehearing deniedPTAB · Jun 4, 2020 · IPR2019-01562 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Chemco’s rehearing request, leaving institution denied for claims 1, 2, 10, and 15 over Muzik because the petition did not construe claim 1(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A petition must set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). This is particularly important when a claim term is ambiguous. Petitioner did not provide an express construction of claim 1(b) in the petition, or specifically address the interplay between this claim limitation and the other limitations of the claim. Thus, we could not have overlooked or misapprehended the claim construction arguments made in the request for rehearing. Accordingly, we deny Petitioner’s request for rehearing on this ground.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“slurry tank via a delivery line and extracting a portion of the slurry delivered from the slurry tank via the delivery line and discharging said extracted portion of the slurry from said delivery line.” Ex. 1002, 5:29–32. Neither party proposed an express construction for this claim term. Dec. 5. In the Decision, we analyzed the language of claim 1(b), as well as “the interplay between claims 1(b) and 1(c),” and construed claim 1 to require that the “extracted portion” be discharged from “the delivery line” separate from “the rest of the slurry.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 8,133,401 - Nof Corporation v. Nektar TherapeuticsRehearing deniedPTAB · Apr 21, 2020 · IPR2019-01395 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied NOF’s rehearing request, leaving institution denied for claims 1–6 because Bentley did not sufficiently teach or suggest the claimed conjugations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“these conjugates would be useful for all possible purposes. Dec. 11–12. Nor does it describe how to determine which conjugates will be useful for any particular desired application. At most, Bentley discloses a tool that can be used to conjugate a broad variety of polymers to nearly any amine-containing substance or surface. Petitioner does not persuasively explain why a disclosure that a particular tool may be used to conjugate polymers to amine-containing materials is a teaching or suggestion to conjugate any particular PEG polymer to any particular type of amine-containing substance.” slip op. at 4
- Expert testimonyDecided for patent owner
“We need not credit expert testimony that does not adequately address the disclosures of a reference as a whole or adequately provide the justification for certain conclusions. See TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359–60 (Fed. Cir. 2019); Ashland Oil, Inc. v. Delta Resins & Refractories, 776 F.2d 281, 294–95 (Fed. Cir. 1985). As discussed above, Petitioner and Dr. Yamamoto did not adequately explain why Bentley’s disclosure of being able to conjugate nearly any polymer to nearly any amine-containing material is a teaching or suggestion that nearly any polymer, or the specific polymer identified at column 7, lines 14–20, would be useful when conjugated to any amine-containing substance identified in Bentley, including biologically active molecules. Moreover, Bentley generally discloses that activated PEG polymers can be conjugated to molecules or surfaces and specifically incorporates by reference Merrill, which discloses conjugating “star” molecules to the support surface of an affinity column. Ex. 1015, 6:12–13; Ex. 2020, 2:5–8. Dr. Yamamoto does not address these disclosures or explain adequately why one of ordinary skill in the art would have sought to conjugate the specific activated PEG molecule disclosed in Bentley (Ex. 1015, 7:14–20) to a biologically active molecule, as opposed to the support surface of an affinity column. Ex. 2020, 2:5–8. Indeed, Dr. Yamamoto does not persuasively identify any actual properties of the specific activated PEG molecule of Bentley relied upon in the Petition.” slip op. at 6
- Skill levelDecided for patent owner
“A high level of skill in the art tends to favor an obviousness conclusion. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness, and thus the patentee, while a higher level of skill favors the reverse.”). Even when the level of skill is high, to meet its burden for institution, Petitioner must still adequately explain why the art and such high skill would have led to the claimed invention. As noted above, we do not find that Petitioner and Dr. Yamamoto did so. Thus, Petitioner has not established that we overlooked its argument as to this issue.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,872,072 - Nof Corporation v. Nektar TherapeuticsInstitution deniedPTAB · Feb 10, 2020 · IPR2019-01396 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–18 would have been obvious over any asserted prior-art ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not directed us to disclosures in Bentley or Merrill of using the dendritic “star” molecules for the biologic applications discussed in the Petition. Nor has Petitioner persuasively explained why one of ordinary skill in the art would have attached the specific dendritic “star” molecule of Bentley to a biologically active molecule using the disclosed aldehyde hydrate moiety, as opposed to using active groups on the polymer arms for this purpose. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to claim 1 over Bentley. Because Petitioner’s arguments with respect to dependent claims 2–18 do not cure the deficiencies identified above, Petitioner has also not demonstrated a reasonable likelihood of prevailing with respect to those claims either.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Petitioner fails to explain why an ordinary artisan would have selected and modified the variables in formula (1) to arrive at the claimed structure, including the variables m, AO(m), Y, R1, R2, R3. Id. at 44–46. We agree. In formula (14) of JP-542, each of the potential variables identified in formula (1) are predetermined. Ex. 1017 ¶ 52. Petitioner does not explain sufficiently why one of ordinary skill in the art, seeking to increase the molecular weight of different conjugated PEG compounds, would have maintained (AO)m, R1, R2, and R3 as shown in figure (14) and only modified the variable “n.” And to the extent these other variables would have been modified, Petitioner does not explain sufficiently why one of ordinary skill in the art would have selected these variables in a manner that would result in a conjugate that satisfies all of the structural limitations of claim 1. Accordingly, Petitioner’s proposed modification appears to be based on a hindsight desire to arrive at the claimed invention, and not on what one of ordinary skill in the art would have been motivated to do based on the prior art and the general knowledge in the art at the time of the invention. As a result, we determine that Petitioner has not demonstrated a reasonable likelihood that claim 1 would have been obvious over JP-542. Because Petitioner’s arguments with respect to dependent claims 2–18 do not cure the deficiencies identified above, Petitioner has also not demonstrated a reasonable likelihood of prevailing with respect to those claims either.” slip op. at 15
- PTAB / AIA Trials › Real party in interest / privityNot reached
“1 As authorized, the Reply and the Sur-reply are limited to the issue of real party in interest. We do not reach that issue in this Decision, as we decline to institute for other reasons.” slip op. at 2
§ 103 obviousnesscites PhillipsPatents in suitUS 8,809,453
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.