- Twi Pharmaceuticals, Inc. v. Merck Serono SARehearing grantedPTAB · Dec 20, 2023 · IPR2023-00050 · APJ Ulrike W Jenks · IPR · Rehearing
The Board granted rehearing and instituted IPR on claims 17, 19, 20, and 22–29 on all petitioned grounds, finding a reasonable likelihood of success and declining § 325(d) denial.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was 1 US 7,888,328 B2, issued Feb. 15, 2011 (Ex. 1029, “Bodor”). 2 Rice et al., Cladribine and progressive MS: Clinical and MRI outcomes of a multicenter controlled trial, NEUROLOGY, 54(5):1145–1155 (2000) (Ex. 1008, “Rice”). addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review 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 the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reconsidered the record before us, we are persuaded that Petitioner has met its burden under 37 C.F.R. §§ 42.71(c) and (d) and presented sufficient evidence to support a reasonable likelihood that Bodor either alone or in combination with Rice renders obvious the method of treating relapsing-remitting multiple sclerosis or early secondary progressive multiple sclerosis by administering cladribine to a patient in the same claimed total amounts for both induction and the maintenance period to support Petitioner’s challenge to claim 17.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Having considered the record, we agree with Petitioner that the Office erred in its evaluation of the cited art (now asserted) as required by Advanced Bionics. Advanced Bionics cautions that “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Paper 6, 9. Here, both Examiner and Patent Owner interpret Bodor to disclose administering the same dose of cladribine in both the induction and maintenance phase. Claim 17 encompasses administering the same dose of cladribine – 1.7 mg/kg – in both the induction and maintenance phase. By interpreting claim 17 as requiring a maintenance dose that is lower than the induction dose, we agree with Petitioner that Examiner misapprehended the scope of claim 17. We, therefore, decline to exercise our discretion to deny institution under § 325(d).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“the claims. “All that is required is that the total dose reach a stated level in each period, and Bodor discloses a total dose within that range for what a person of ordinary skill in the art would understand to be an average patient.” Req. Reh’g 14 (emphasis omitted) (citing Pet. 42–50). Dr. Greenberg testifies that Bodor’s total dosage of cladribine ranges from 100–140 mg in the two-month treatment period. Ex. 1005 ¶ 104. The issue, as presented by Petitioner, is that the ’903 patent claims simply use a different way of reciting a total dose of cladribine administered during the treatment phase when compared to the methods and dosage taught by Bodor. We agree with Petitioner that the method and cladribine dosage in the ’903 patent claims overlap with the method and dosage taught by Bodor. To determine the total amount of cladribine administered as claimed in the ’903 patent requires knowledge of the weight of the patient. In the Petition, Petitioner relied on a patient weighing 70 kilograms (≈ 154 pounds) to be an acceptable average human weight as understood in the medical community. Pet. 32 (citing Ex. 1005 ¶ 105). Patients, however, come in all shapes and sizes as recognized in the ’903 patent disclosure and further supported by Dr. Greenberg’s testimony and referenced exhibit. See Ex. 1001, 3:8 (“patients of about 52 and about 75 kilos); see also Ex. 1005 ¶ 106 (“the average weight of individuals in the United States is higher than the global average, with an overall average weight (men and women combined) of roughly 177 lbs in 2002.”); Ex. 1030 (“the average weight for men aged 20-74 years rose dramatically from 166.3 pounds in 1960 to 191 pounds in 2002, while the average weight for women the same age increased from 140.2 pounds in 1960 to 164.3 pounds in 2002.”). To arrive at the average weight of 177 pounds means that there are patients in the population that are above and below that average. See generally Ex. 1030.” slip op. at 6
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,377,903 - Twi Pharmaceuticals, Inc. v. Merck Serono SARehearing grantedPTAB · Dec 20, 2023 · IPR2023-00049 · APJ Ulrike W Jenks · IPR · Rehearing
The Board granted rehearing and instituted IPR on claims 36, 38, 39, and 41–48 on all petition grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review 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 the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 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).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner has met its burden under 37 C.F.R. §§ 42.71(c) and (d) and presented sufficient evidence to support a reasonable likelihood that Bodor either alone or in combination with Rice renders obvious the method of treating multiple sclerosis by administering cladribine to a patient in the same claimed total amount for both the induction period and maintenance period to support Petitioner’s challenge to claim 36.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“To summarize, Bodor teaches two treatment regimens for treating multiple sclerosis with a cladribine-cyclodextrin complex. 10 mg of cladribine in the instant complex cladribine-cyclodextrin complex . . . would be administered [orally] once per day for a period of five to seven days in the first month, repeated for another period of five to seven days in the second month, followed by ten months of no treatment. Alternatively the patient would be treated with 10 mg of cladribine in the instant complex cladribine-cyclodextrin complex in the instant dosage form once per day for a period of five to seven days per month for a total of six months, followed by eighteen months of no treatment. Ex. 1029, 13:20–30. Petitioner acknowledges that Bodor does not explicitly suggest applying the same regimen again after a cladribine-free period but finds that repeating the treatment protocol is reasonably inferred. Pet. 33 (citing Ex. 1005 ¶¶ 109, 111–113), see id. at 48 (citing Ex. 1005 ¶¶ 168–170); Ex. 1029, 18:45–19:3, 20:1–20 (Examples 4 and 5 each describing that treatment days are separated by cladribine-free days); Ex. 1003 at 389; Ex. 1004 at 141. Bodor also teaches that the dosing regimen can be tailored to suit the needs of the patient. Specifically, Bodor teaches that “one of skill will appreciate that the therapeutically effective amount of cladribine administered . . . may be lowered or increased by fine tuning and/or by administering cladribine . . . with another active ingredient.” Ex. 1029, 13:31–35, see also id. 13:37–40 (“Therapeutically effective amounts may be easily determined . . . empirically by starting at relatively low amounts and by step-wise increasing with concurrent evaluation of beneficial effect.”). Based on these disclosures, we agree with Petitioner that it would be reasonable to infer from Bodor’s teachings in conjunction with the knowledge of the ordinary artisan that the cladribine dosing protocol in Bodor is repeated. Pet. 33; see also Ex. 1005 ¶¶ 109–123, 119 (“common practice in the industry when prescribing a second round of an” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“(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.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,713,947 - Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.Rehearing grantedPTAB · Aug 10, 2023 · PGR2022-00023 · APJ Jeffrey N Fredman · PGR · Rehearing
On Patent Owner’s rehearing request, the Board held claim 25 unpatentable under § 112(a) because it depends from claim 14, which lacks written description support.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We therefore agree with Petitioner that we overlooked the correct dependency of claim 25. Claim 25, as a claim dependent from claim 14, lacks written descriptive support because claim 25 fails to cure the absence of descriptive support for claim 14.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“In the Final Written Decision, we determined that claim 14 lacked descriptive support. We noted that Claim 14, in particular, recites a GDC-0199 dosing regimen “compris[ing] a dose of 20 mg per day for one week, a dose of 50 mg per day for one week, a dose of 100 mg per day for one week, a dose of 200 mg of GDC-0199 per day for one week, and a dose of 400 mg per day.” Unlike for claim 1, such disclosure is not found in a single example, but results from picking and choosing three separate selections from column 24. “The written description requirement is not met when, as here, the specification provides at best disparate disclosures that an artisan might have been able to combine in order to make the claimed invention.” Flash-Control, LLC v. Intel Corp., 2021 WL 2944592 *4 (Fed. Cir. 2021) (citing Ariad, 598 F.3d at 1352.)” slip op. at 3
§ 112 disclosurePatents in suitUS 10,993,942 - PTAB · Feb 14, 2023 · PGR2021-00030 · APJ Christopher M Kaiser · PGR · Rehearing
The Board granted Petitioner’s third rehearing request and instituted PGR of claims 1–5, 9, and 10, finding the petition presented compelling evidence of unpatentability.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“The Guidance Memo defines “[c]ompelling, meritorious challenges” as “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.” Guidance Memo 4. The phrase “plainly lead to a conclusion that one or more claims are unpatentable” was further clarified in the Director’s precedential decision in OpenSky Industries, LLC v. VLSI Technology, LLC, as only satisfied when “it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” IPR2021-01064, Paper 102 at 49–50 (PTAB Oct. 3, 2022) (Decision by the Director) (precedential). Thus, a compelling challenge is one “in which the 8 evidence, if unrebutted in trial, would” render it “highly likely that the petitioner would” show “that one or more claims are unpatentable by a preponderance of the evidence.” Id.; Guidance Memo 4.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitutedInstituted
“one claim is unpatentable and that one of Petitioner’s challenges presents strong merits—are sufficient to show that the likelihood of Petitioner’s success at trial falls within the uncertain bounds of “highly likely.”5 Accordingly, we determine that the Petition “presents compelling evidence of unpatentability” as that phrase is defined in the Guidance Memo and the OpenSky decision. For this reason, we erred by “discretionarily deny[ing] institution in view of [the] parallel district court [proceeding].” Guidance Memo 2. We grant Petitioner’s request for rehearing and do not exercise discretion to deny institution. We acknowledge that instituting review in this proceeding when the district court already has reached its result requires the parties to duplicate the efforts they have put into the district court proceeding and requires us to duplicate the efforts of the district court and its jury. We are not insensitive to the fact that such a situation “can increase, rather than limit, litigation costs,” contrary to what “Congress designed the America Invents Act (AIA) 5 Our determination that Petitioner is “highly likely” to succeed in proving at least one claim unpatentable on at least one ground should not be understood to mean that we have prejudged the outcome of the trial. In particular, under OpenSky and the Guidance Memo, a compelling challenge is one “in which the evidence, if unrebutted in trial, would” render it “highly likely that the petitioner would” show “that one or more claims are unpatentable by a preponderance of the evidence.” OpenSky, IPR2021-01064, Paper 102 at 49–50; Guidance Memo 4. Thus, in making our compelling-challenge determination, we are not permitted to consider any rebuttal evidence that has been entered, let alone any rebuttal evidence that may be entered during the trial. Our final determination will not be so limited and will be made based upon the full arguments and evidence developed during the trial. 11 post-grant proceedings” to accomplish. Guidance Memo 1. But the Guidance Memo is unequivocal: “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.” Id. at 2. In the absence of such discretionary denial, we institute trial for the reasons discussed in the Institution Decision. Inst. Dec. 16–41.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likely” one, are not entirely clear, and this case likely falls somewhere near that boundary. We note first that the standard for instituting trial in a post-grant review requires a showing that “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.” 35 U.S.C. § 324(a). We previously held that this standard had been met in the present case. Inst. Dec. 3. In particular, we determined that Petitioner had made the necessary “threshold showing” as to its arguments that (1) “the claimed subject matter [was] not enabled for the full scope as claimed,” and (2) “Ogitani anticipates at least one of the challenged claims.” Id. at 26, 40. Moreover, “[w]e previously described ‘Petitioner’s argument that the claims lack enablement’ as presenting ‘strong merits.’” Second Denial Dec. 6 (quoting Inst. Dec. 3). slip op. at 9
Discretionary denialPatents in suitUS 10,808,039 - PTAB · Jul 15, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Patent Owner’s rehearing request was granted, and institution was denied for all challenged claims based on changed circumstances in the parallel district court proceeding under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Having considered the parties’ positions and evidence of record, summarized above, we agree with Patent Owner that a rehearing of our prior institution decision is appropriate due to the changed circumstances of: (1) the statutory disclaimer of claims 6–8 of the ’039 patent, (2) Patent Owner’s request for adverse judgment of related proceeding PGR2021-00042, and (3) the additional investment in the parallel proceeding by the district court and the parties, including the completion of a jury trial that resulted in a jury verdict not finding invalidity of the challenged claims. We further agree with Patent Owner that “[c]ontinuing with this proceeding would result in duplicative efforts and potentially conflicting results between the district court and the Board.” Reh’g Req. 9. It is the combination of these changed circumstances, rather than any one of them individually, that compels the result we reach.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In considering the parties’ positions and the evidence of record, we note that we have been instructed not to exercise discretion to deny a petition when “the information presented at the institution stage presents a compelling unpatentability challenge.” Guidance Memo 4–5. We previously described “Petitioner’s argument that the claims lack enablement” as presenting “strong merits.” Paper 17, 3. Despite that determination, we believe the record as it stands currently does not “present[] a compelling unpatentability challenge” on the lack-of-enablement issue. Guidance Memo 4–5. The district court already has substantially completed its review of the enablement issue, and a jury has determined that the claims do not lack enablement. Given this new information, we cannot conclude that Petitioner’s enablement case is compelling.” slip op. at 6
- Adverse judgmentOther
Discretionary denialPatents in suitUS 10,808,039 - PTAB · Apr 7, 2022 · PGR2021-00042 · APJ Sheridan K Snedden · PGR · Rehearing
The Board granted rehearing, reversed its discretionary denial, and instituted PGR on claims 6–8 based on the threshold showing of likely lack of enablement and anticipation.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree with Petitioner that a rehearing of our prior decision to deny institution is appropriate due to the changed circumstances of claims 6–8 of” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution is appropriate due to the changed circumstances of claims 6–8 of” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 324(a) provides that a post-grant review may not be instituted “unless the Director determines that the information presented in the petition filed under section 321, 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.” After considering the Petition and the Preliminary Response, and the evidence cited therein, we determine that Petitioner has shown that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Therefore, we grant institution of a post-grant review.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we accept Petitioner’s proposed definition, which is supported by Dr. Lambert’s testimony (Ex. 1002 ¶ 20) and is consistent with the scope and content of the ’039 patent and the asserted prior art.” slip op. at 17
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,808,039 - PTAB · Apr 7, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Granted Petitioner’s rehearing request and instituted PGR on claims 1–5, 9, and 10 based on the more-likely-than-not enablement showing and efficiency considerations.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Analysis “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366. Having considered the parties’ positions and evidence of record, summarized above, we determine that Petitioner has established that it is more likely than not that claims 1–5, 9, and 10 of the ’039 patent lack enablement. In particular, we are persuaded based on the record at this stage of the proceeding that the Specification does not enable the full scope of the claims. The Specification focuses on dolastatin/auristatin derivatives and does not describe novel ADCs having non-dolastatin/auristatin derivative drug moieties. Ex. 1001, Abstract. For example, the Specification states that “there is a clear need in the art for dolastatin/auristatin derivatives having significantly lower toxicity, yet useful therapeutic efficiency [sic]” and purports that “[t]hese and other limitations and problems of the past are addressed by the present invention.” Id. at 4:25–29 (emphasis added). Moreover, each embodiment, example, figure, and assay disclosed in the Specification appears to use a drug moiety that is a dolastatin/auristatin derivative. See, e.g., Ex. 1001, Abstract, 4:22–29, 50:56–52:30, 71:19–22, 131:23–48, Figs. 1–19, Examples 2–16. Claim 1, however, recites ADCs” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Instituted
“skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,808,039 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing grantedPTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing
The Board granted the petitioner’s rehearing request, vacated the final written decision, and will issue a revised decision after overlooking Varenna 2012 in Grounds 5–7.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2
NonePatents in suitUS 9,820,999 - Samsung Electronics Co., Ltd. v. Nucurrent, Inc.Rehearing grantedPTAB · Feb 7, 2020 · IPR2019-00861 · APJ Wesley B Derrick · IPR · Rehearing
The Board granted Samsung’s rehearing request and instituted review on all challenged claims and all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“in an unusual place in time. As noted, the Petition was filed (March 22, 2019), and the Preliminary Response submitted (June 26, 2019), before promulgation of our 2019 Trial Practice Guide Update (July 16, 2019). At the time of filing, Petitioner could not have known of the guidance set forth in the 2019 Trial Practice Guide Update concerning multiple petitions. Although Petitioner “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner, acting on the guidance available to it at the time of filing, “determined that filing two separate IPR petitions allowed each asserted ground of unpatentability to be presented in a more clear and comprehensive manner.” Req. 4. Thereafter, the 2019 Trial Practice Guide Update issued on the same day as our conference call to discuss the parties’ requests for additional briefing (July 16, 2019), and these concurrent events would not have allowed the parties time to review and apply the guidance in a manner that would have permitted them to tailor their requests for additional briefing or their filing strategy to accommodate the newly-issued guidance. In the subsequent briefing by both parties, the impact of the 2019 Trial Practice Guide Update, although discussed briefly, was not the primary focus. See generally Reply; Sur-Reply. This is understandable, given the breadth of the complex estoppel issues raised in this case as well as the contemporaneous issuance of the guidance in the 2019 Trial Practice Guide Update. Thus, on account of the timing of the Petition filed in this case relative to other events, and based on the reasoning presented by Petitioner in the Request, which we discuss in more detail below, we are persuaded that we should reconsider whether to allow institution of inter partes review based on the arguments presented in the Petition.” slip op. at 11
- Parallel petitionsInstitutedInstituted
“review, addresses Lee-based grounds rooted in anticipation (and obviousness over Lee and secondary references). IPR2019-00859, Paper 1. The petition in IPR2019-00861 addresses Partovi-based grounds rooted in obviousness. IPR2019-00861, Paper 1. In the Request, Petitioner argues that there is “almost no overlap” between the Partovi-based Petition in this case and Petitioner’s Lee-based petition in IPR2019-00859 (Req. 3), noting that “all grounds of the instant Petition rely on Partovi as the primary reference while the ’859 proceeding grounds rely on Lee as the primary reference” (id. at 2). In support, Petitioner provides a table depicting the various grounds presented in the two cases, and the differences between the two. Id. at 3. Petitioner also argues that “Partovi’s teachings are not redundant of Lee’s” because the references “disclose the claimed features of the ’046 patent in different ways.” Id. More particularly, Petitioner explains that “Lee is generally focused on an inductor structure” while “Partovi contains a more complete and clear disclosure of methods and circuitry for operating inductors,” which is important because the “dependent claims involve additional circuitry used in an inductor’s operation.” Id. at 4. Although Petitioner acknowledges that it “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner contends that “doing so would have resulted in a reduction in the thoroughness and completeness of the analysis presented due to the large number of challenged claims.” Id. Specifically, Petitioner argues that “NuCurrent chose to assert 98 claims from four patents against Samsung in a parallel district court litigation” and that Petitioner had to file two petitions in order to address “the sheer number of claims at issue.” Id. at 5. On this record, we are persuaded that Petitioner’s arguments concerning the differences between the petitions, and Petitioner’s reasons for presenting its arguments in two petitions, as it did, merit reconsideration of our denial of institution. The differences between the petitions in this instance, as explained by Petitioner, support its position that there is a need for the Partovi reference to distinctly address certain limitations of the dependent claims. The number of claims asserted against Petitioner in corresponding litigation, as well, is a factor enumerated in the 2019 Trial Practice Guide Update as a circumstance in which more than one petition may be necessary. 2019 Trial Practice Guide Update, 26 (“circumstances in which more than one petition may be necessary” include “when the patent owner has asserted a large number of claims in litigation”). We note again that although Patent Owner was authorized to file a ten-page response to Petitioner’s Request (Dec. 5), in which it could have addressed, inter alia, Petitioner’s arguments about the differences between these Petitions or the number of claims at issue, Patent Owner did not file a response to the Request, leaving Petitioner’s contentions regarding rehearing undisputed on the present record.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)InstitutedInstituted
“Rehearing, on this record, we do not agree that proceeding to trial would be an inefficient use of Board resources. The number of Patent Owner’s patents that are being challenged is not a reason to deny institution. “[R]ecogniz[ing] the potential for abuse of the review process by repeated attacks on patents,” the Board has enumerated factors that guide its discretion as to whether to deny institution under § 314(a), “especially as to ‘follow-on’ petitions challenging the same patent as challenged previously in an IPR . . . proceeding.” Trial Practice Guide Update 9 (August 2018) (quoting General Plastic, slip op. 16–17). Although a multiplicity of grounds relying on a number of principal references addressed in a number of separate petitions may raise concerns regarding fairness in some instances, we find no such concerns here, for largely the same reasons articulated above with respect to our disposition of the Request for Rehearing. In these circumstances, as discussed above, we are not persuaded that defending against both challenges is unfair, abusive, or unduly burdensome for Patent Owner. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a). See Comcast Cable Communications, LLC v. Veveo, Inc., IPR2019-00237, Paper 15 at 14–15 (PTAB Jul. 5, 2019) (instituting inter partes review on two petitions addressing the same patent).” slip op. at 29
- BurdenInstitutedInstituted
“and 28, we discern no deficiency in Petitioner’s characterization of the cited references and the knowledge in the art, or in Petitioner’s assertions as to the reasonable inferences an ordinary artisan would have made from those references, to the extent the ground relies on AC current and voltage and the inherent characteristics of inductors for the limitation “wherein when an electrical current is propagated within at least the first conductor layer, a magnetic flux is generated within the inductor when a change occurs in at least one of a frequency, a magnitude, or a waveform shape of the propagated electrical current.” Because this showing is sufficient to demonstrate teaching of this claim element was in the prior art as alleged, we need not reach Petitioner’s alternative reasoning grounded on changes in the duty cycle as to frequency and waveform shape meeting this particular claim limitation. Thus, based on the information presented at this stage of the proceeding, Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in establishing the unpatentability of independent claims 1 and 28 as obvious over Partovi in view of Chiang.” slip op. at 44
Claim constructionDiscretionary denialcites Phillips · KSRPatents in suitUS 9,300,046 - Samsung Electronics Co., Ltd. v. Nucurrent, Inc.Rehearing grantedPTAB · Feb 7, 2020 · IPR2019-00860 · APJ Kristina M Kalan · IPR · Rehearing
The Board granted Samsung’s rehearing request and instituted review of claims 1–8, 10, 12, 13, 15–22, and 24–30 on every asserted obviousness ground.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On this record, we are persuaded that Petitioner’s arguments concerning the differences between the Petitions, and Petitioner’s reasons for presenting its arguments in two Petitions, as it did, merit reconsideration of our denial of institution. The differences between the Petitions in this instance, as explained by Petitioner, evince a need for the Partovi reference to distinctly address certain limitations of the dependent claims. The number of claims asserted against Petitioner in corresponding litigation, as well, is a factor enumerated in the 2019 Trial Practice Guide Update as a circumstance in which more than one petition may be necessary. 2019 Trial Practice Guide Update, 26 (“circumstances in which more than one petition may be necessary” include “when the patent owner has asserted a large number of claims in litigation”). We note again that although Patent Owner was authorized to file a ten-page response to Petitioner’s Request (Dec. 5), in which it could have addressed, inter alia, Petitioner’s arguments about the differences between these Petitions or the number of claims at issue, Patent Owner did not file a response to the Request, leaving Petitioner’s contentions regarding rehearing undisputed on the present record.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Rehearing, on this record, we do not agree that proceeding to trial would be an inefficient use of Board resources. We also do not agree that the number of Patent Owner’s patents that are being challenged is a reason to deny institution. “[R]ecogniz[ing] the potential for abuse of the review process by repeated attacks on patents,” the Board has enumerated factors that guide its discretion as to whether to deny institution under § 314(a), “especially as to ‘follow-on’ petitions challenging the same patent as challenged previously in an IPR . . . proceeding.” Trial Practice Guide Update 9 (August 2018) (quoting General Plastic, slip op. 16–17). Although a multiplicity of grounds relying on a number of principal references addressed in a number of separate petitions may raise concerns regarding fairness in some instances, we find no such concerns here, for largely the same reasons articulated above with respect to our disposition of the Request for Rehearing. In these circumstances, as we have already discussed above, we are not persuaded that defending against both challenges is unfair, abusive, or unduly burdensome for Patent Owner. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a). See Comcast Cable Communications, LLC v. Veveo, Inc., IPR2019-00237, Paper 15 at 14–15 (PTAB Jul. 5, 2019) (instituting inter partes review on two petitions addressing the same patent).” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100 (2019)). Under Phillips, claim terms are generally afforded “their ordinary and customary meaning,” read “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1312–13. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner does not propose a construction for any of the limitations of the claims. Pet. 13 (citing Ex. 1002 ¶ 37). Patent Owner also declines to address the construction of the claims. See generally Prelim. Resp. We decline to construe any claim term of the ’960 patent because it is not necessary to do so in reaching our decision that Petitioner has established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’960 patent. Thus, we institute an inter partes review. IV. ORDER Accordingly, it is: ORDERED that Petitioner’s Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on each of the grounds asserted in the Petition; and” slip op. at 49
Claim constructionDiscretionary denialcites Phillips · KSRPatents in suitUS 8,680,960
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.