- PTAB · Dec 23, 2014 · IPR2014-00673 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied rehearing of the decision declining institution on claims 23–27, 29, 30, 32, 33, and 36–40 because the Petition did not adequately explain its prior-art arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In its request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- BurdenInstitution denied merits
“declaration in the claim charts at pages 19, 21, 25, 27, 28, and 30 of the Petition. Pet. 19, 21, 25, 27, 28, and 30. The citations to the specific paragraphs of the Declaration appear in the claim chart, and take the form of “(See Ex. 1001, ¶¶ 105-107),” “(See Ex. 1001, ¶¶ 114–117),” “(See Ex. 1001, ¶¶ 143–146),” “(See . . . Ex. 1001, ¶¶ 154–157),” “(See Ex. 1001, ¶¶ 165–169),” “(See Ex. 1001, ¶¶ 178–180),” and “(See . . . Ex. 1001, ¶¶ 196–199).” Id. The Petition does not include a detailed explanation of the significance of Mr. Rosenblatt’s Declaration, as required by 37 C.F.R. § 42.22(a)(2). See id. Nor does Mr. Rosenblatt’s testimony explain how the relied upon language in Digibox discloses the limiting access to unprotected data limitation. Based on Petitioner’s arguments in its Request for Rehearing, Petitioner alleges that we overlooked the evidence in Mr. Rosenblatt’s declaration because we did not incorporate the arguments and explanations from the cited paragraphs of Mr. Rosenblatt’s declaration into the Petition. Contrary to Petitioner’s arguments, however, our rules state that arguments must not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). Because the Petition did not include a detailed explanation of the significance of paragraphs 105–107, 114–117, 143–146, 154–157, 165–169, 178–180, and 196–199 of Mr. Rosenblatt’s declaration, and because arguments must not be incorporated by reference from Mr. Rosenblatt’s declaration into the Petition, we did not abuse our discretion in denying institution of inter partes review of claims 24, 25, 30, 32, 33, 36, and 38 as anticipated by Digibox.” slip op. at 4
NonePatents in suitUS 6,314,409 - PTAB · Dec 23, 2014 · IPR2014-00672 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied IBM’s rehearing request, leaving institution denied for claims 1–11 and 13–21 because the petition did not adequately explain how Digibox disclosed the disputed limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“21, the Petition does not explain how Digibox’s disclosure of access rules that can designate who may unlock a DigiBox, together with Digibox’s disclosure of encrypted (i.e., protected) digital information contained in the Digibox, discloses limited or controlled access to an unprotected (i.e., unencrypted) form of the protected portions of the data, as required by claims 1 and 21. In effect, Petitioner’s arguments in the Request for Rehearing allege that we misapprehended the evidence in the Petition because we did not fit together Petitioner’s dispersed puzzle pieces of quotations and disclosures from Digibox. Contrary to Petitioner’s arguments, however, our rules state that each petition must include a detailed explanation of the significance of the evidence, and must specify where each element of the claim is found in the prior art relied upon. 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). The Petition does not include a detailed explanation of the significance of Digibox’s disclosure of access rules that can designate who can unlock the Digibox, and does not specify where the disputed limitations of claims 1 and 21 are found in Digibox. But, as we discussed above, even if Digibox did include sufficient disclosure, we do not see how the newly cited portions of Digibox meet the disputed limitations of claims 1 and 21. Thus, we did not abuse our discretion in denying institution of inter partes review of the claims based on Digibox.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Contrary to Petitioner’s apparent invitation, the members of the Board deciding an institution matter do not, under 35 U.S.C. § 6(c), select themselves, and, similarly are not granted authority to select other Board members to decide the matter, upon request of a party or otherwise. See Apple Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). As indicated in the Standard Operating Procedure, the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates “internal norms for the administration of the Board” but “does not create any legally enforceable rights.” Id. Accordingly, we cannot grant Petitioner’s request for rehearing by an expanded panel. We further note that our application of 37 C.F.R. §§ 42.6(a)(3), 42.22(a)(2) and 42.104(b)(4) in the case before us is bound to the specific facts of this case, and is consistent with the application of these rules in the expanded panel decision in Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12). II. DECISION ON REHEARING Petitioner’s request for rehearing is denied and request for panel expansion is dismissed.” slip op. at 6
NonePatents in suitUS 6,314,409 - Canon Inc. v. Intellectual Ventures I LLCRehearing deniedPTAB · Nov 5, 2014 · IPR2014-00537 · APJ James A Tartal · IPR · Rehearing
The Board denied Canon’s rehearing requests, finding no overlooked or misapprehended matter in declining to institute review of claims 1–31 in IPR2014-00536 and IPR2014-00537.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a 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, opposition, or a reply.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“and IPR537 we relied on 35 U.S.C. §315(d) and 37 C.F.R. §42.1, but “misapprehended” the applicability of each of those provisions to Petitioner’s multiple Petitions. (Paper 10, 5 in both cases.) Petitioner’s argument is unavailing as we did not base our decision on those cited provisions. Instead, we based our decision on 35 U.S.C. §314(a) and 37 C.F.R. § 42.108(b). Thus, our Decision states: We decline to institute an inter partes review of claims 1–31 on the grounds Petitioner advances based on Kaneko or Chizawa in IPR2014- 00536, and Hayashi in IPR2014-00537. See 35 U.S.C. §314(a); 37 C.F.R. § 42.108(b). Paper 9, 19. Although we also stated that our Decision was “consistent with the authority granted under 35 U.S.C. §315(d),” and with “the objective” of 37 C.F.R. § 42.1, we did not rely upon those provisions.” slip op. at 3
Discretionary denialPatents in suitUS 7,315,406 - Canon Inc. v. Intellectual Ventures I LLCRehearing deniedPTAB · Nov 5, 2014 · IPR2014-00536 · APJ James A Tartal · IPR · Rehearing
The Board denied Canon’s rehearing request, leaving in place the denial of institution on claims 1–31 in IPR2014-00536 and IPR2014-00537 under § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a 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, opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“and IPR537 we relied on 35 U.S.C. §315(d) and 37 C.F.R. §42.1, but “misapprehended” the applicability of each of those provisions to Petitioner’s multiple Petitions. (Paper 10, 5 in both cases.) Petitioner’s argument is unavailing as we did not base our decision on those cited provisions. Instead, we based our decision on 35 U.S.C. §314(a) and 37 C.F.R. § 42.108(b). Thus, our Decision states: We decline to institute an inter partes review of claims 1–31 on the grounds Petitioner advances based on Kaneko or Chizawa in IPR2014- 00536, and Hayashi in IPR2014-00537. See 35 U.S.C. §314(a); 37 C.F.R. § 42.108(b). Paper 9, 19. Although we also stated that our Decision was “consistent with the authority granted under 35 U.S.C. §315(d),” and with “the objective” of 37 C.F.R. § 42.1, we did not rely upon those provisions. Petitioner recognizes that “[c]iting to 35 U.S.C. §314(a), the Board asserted that Congress has ‘given the Office discretion whether to institute a review, or not institute a review.’” (Paper 10, 4 in each case.) Petitioner, however, makes no argument that we misapprehended 35 U.S.C. §314(a), and makes no mention of 37 C.F.R. § 42.108(b). That rule provides that “the Board may deny some or all grounds for unpatentability for some or all of the challenged claims.”” slip op. at 3
NonePatents in suitUS 7,315,406 - Iron Dome LLC v. Chinook Licensing De LLCRehearing deniedPTAB · Nov 4, 2014 · IPR2014-00674 · APJ William V Saindon · IPR · Rehearing
The Board denied Iron Dome’s rehearing request, finding no overlooked or misapprehended matter regarding Chen arguments or the use of a 2001 dictionary to construe “contemporaneous.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A reconsideration 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.” 37 C.F.R. § 42.71(d). Petitioner sets forth two matters it believes the Board overlooked or misapprehended. First, Petitioner acknowledges that we “looked at the portions of Chen that Petitioner had cited” but that we “overlooked other portions of Chen that are now made more relevant” in view of our claim construction. Req. Reh’g 1–2; see also id. at 2–5 (setting forth the various portions in Chen that Petitioner asserts are now made relevant). We could not have overlooked arguments not presented, however, and Petitioner has the burden of demonstrating a reasonable likelihood of success. 35 U.S.C. § 314(a).” slip op. at 2
NonePatents in suitUS 7,047,482 - PTAB · Oct 16, 2014 · IPR2014-00779 · APJ Scott E Kamholz · IPR · Rehearing
The Board denied Histologics’s rehearing request, leaving the institution denial based on the § 315(b) time bar in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition. We gave Histologics’s Petition full consideration and explained the reasoning underlying our determinations. A request for rehearing is not a second chance for a party to present its case. We are not persuaded of an abuse of discretion. IV.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“We gave Histologics’s arguments and evidence complete consideration and addressed them fully in the Decision. As we explained, the issue in this case was whether service of SMR’s complaint was nullified by the Court’s dismissal of the ’612 action. Dec. 5. We explained that service was not nullified, because Histologics remained answerable to the Court for the allegations made in the original ’612 action complaint, and that the parties were not left in the same legal position as if the ’612 action had never been filed. Id. Histologics does not address this determination or explain how it was in error, other than by advancing alternative legal theories.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition.” slip op. at 4
Discretionary denialPatents in suitUS 6,258,044 - Catapult Innovations Pty Ltd v. Adidas AGRehearing deniedPTAB · Oct 15, 2014 · DER2014-00006 · APJ Jameson Lee · DER · Rehearing
The Board denied Catapult’s rehearing request, leaving in place denial of the derivation petition because Catapult failed to show originality and align its disclosed invention analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“is incorrect that mere possession of an invention, however obtained, even if received via another source, constitutes conception of invention. We are aware of no such authority, and no authority cited by Petitioner supports Petitioner’s contention. Petitioner cites to this sentence in Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985): “It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception.” Req. Rhg. 6. The statement is focused on expressing that every feature must be accounted for, and not that possession alone is sufficient to demonstrate conception of invention. As we stated in the Decision, derivation addresses originality—who invented the subject matter at issue, not mere possession. Paper 19, 17.” slip op. at 2
- BurdenDecided for patent owner
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned. In the context of 37 C.F.R. § 42.405(a)(2), there is just one disclosed invention, i.e., “the disclosed invention.” That does not change as one shifts focus from one of Petitioner’s claims to another or from one of Respondent’s claims to another. We explained in the Decision how Petitioner evidently regards the entire collection of communicated information as its disclosed invention. Paper 19, 10. As is noted in the above-quoted text, Petitioner has not identified any of its own claims as being the same or substantially the same as all of that communicated information. Petitioner’s P to D and D to R analysis are not aligned. Also, we explained that, apart from the requirements of 37 C.F.R. § 42.405(a)(2), the law on derivation requires a showing of prior conception and communication of that prior conception. Paper 19, 4, 17–18.” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“3. In its Request for Rehearing, Petitioner argues that the events of October 19–20, 2010, constitute an actual reduction to practice that was communicated to adidas Wearable Sports Electronics. Req. Rhg. 7, 9. The argument, however, is new. Per 37 C.F.R. § 42.71(c), a rehearing request must identify the place where each matter was previously addressed. We could not have overlooked an argument that was not presented. The new argument is not entitled to consideration. In any event, shifting the issue to “actual reduction to practice” does not help the Petitioner. That which allegedly is actually made or performed still must be the invention of Petitioner’s inventor. There is no escaping from the issue of originality, whether the subject is conception or actual reduction to practice.” slip op. at 4
NonePatents in suitUS 9,141,759 - Catapult Innovations Pty Ltd v. Adidas AGRehearing deniedPTAB · Oct 15, 2014 · DER2014-00005 · APJ Jameson Lee · DER · Rehearing
The Board denied Catapult’s rehearing request, leaving institution of the derivation proceeding denied because Catapult failed to show aligned derivation analyses or prior conception and communication of its invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“is incorrect that mere possession of an invention, however obtained, even if received via another source, constitutes conception of invention. We are aware of no such authority, and no authority cited by Petitioner supports Petitioner’s contention. Petitioner cites to this sentence in Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985): “It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception.” Req. Rhg. 6. The statement is focused on expressing that every feature must be accounted for, and not that possession alone is sufficient to demonstrate conception of invention. As we stated in the Decision, derivation addresses originality—who invented the subject matter at issue, not mere possession. Paper 13, 18.” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“October 19–20, 2010, constitute an actual reduction to practice that was communicated to adidas Wearable Sports Electronics. Req. Rhg. 6, 7, 9. The argument, however, is new. Per 37 C.F.R. § 42.71(c), a rehearing request must identify the place where each matter was previously addressed. We could not have overlooked an argument that was not presented. The new argument is not entitled to consideration. In any event, shifting the issue to “actual reduction to practice” does not help the Petitioner. That which allegedly is actually made or performed still must be the invention of Petitioner’s inventor. There is no escaping from the issue of originality, whether the subject is conception or actual reduction to practice.” slip op. at 4
- BurdenNot shown unpatentable
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned. In the context of 37 C.F.R. § 42.405(a)(2), there is just one disclosed invention, i.e., “the disclosed invention.” That does not change as one shifts focus from one of Petitioner’s claims to another or from one of Respondent’s claims to another. We explained in the Decision how Petitioner evidently regards the entire collection of communicated information as its disclosed invention. Paper 13, 10–11. As is noted in the above-quoted text, Petitioner has not identified any of its own claims as being the same or substantially the same as all of that communicated information. Petitioner’s P to D and D to R analysis are not aligned. Also, we explained that, apart from the requirements of 37 C.F.R. § 42.405(a)(2), the law on derivation requires a showing of prior conception and communication of that prior conception. Paper 13, 4, 18–19.” slip op. at 3
NonePatents in suitUS 9,317,660 - Catapult Innovations Pty Ltd v. Adidas AGRehearing deniedPTAB · Oct 15, 2014 · DER2014-00002 · APJ Jameson Lee · DER · Rehearing
The Board denied Catapult’s request for rehearing of the decision denying institution of a derivation proceeding because its derivation analysis did not identify a consistent disclosed invention and failed to establish originality.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“is incorrect that mere possession of an invention, however obtained, even if received via another source, constitutes conception of invention. We are aware of no such authority, and no authority cited by Petitioner supports Petitioner’s contention. Petitioner cites to this sentence in Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985): “It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception.” Req. Rhg. 6. The statement is focused on expressing that every feature must be accounted for, and not that possession alone is sufficient to demonstrate conception of invention. As we stated in the Decision, derivation addresses originality—who invented the subject matter at issue, not mere possession. Paper 19, 18.” slip op. at 2
- Strike new argumentNew argument disregardedDenied
“October 19–20, 2010, constitute an actual reduction to practice that was communicated to adidas Wearable Sports Electronics. Req. Rhg. 7, 9. The argument, however, is new. Per 37 C.F.R. § 42.71(c), a rehearing request must identify the place where each matter was previously addressed. We could not have overlooked an argument that was not presented. The new argument is not entitled to consideration. In any event, shifting the issue to “actual reduction to practice” does not help the Petitioner. That which allegedly is actually made or performed still must be the invention of Petitioner’s inventor. There is no escaping from the issue of originality, whether the subject is conception or actual reduction to practice.” slip op. at 4
- BurdenDecided for patent owner
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned. In the context of 37 C.F.R. § 42.405(a)(2), there is just one disclosed invention, i.e., “the disclosed invention.” That does not change as one shifts focus from one of Petitioner’s claims to another or from one of Respondent’s claims to another. We explained in the Decision how Petitioner evidently regards the entire collection of communicated information as its disclosed invention. Paper 18, 11. As is noted in the above-quoted text, Petitioner has not identified any of its own claims as being the same or substantially the same as all of that communicated information. Petitioner’s P to D and D to R analysis are not aligned. Also, we explained that, apart from the requirements of 37 C.F.R. § 42.405(a)(2), the law on derivation requires a showing of prior conception and communication of that prior conception. Paper 18, 4, 18–19.” slip op. at 3
NonePatents in suitUS 9,767,257 - Lenroc Company v. Enviro Tech Chemical Services, Inc.Rehearing deniedPTAB · Sep 10, 2014 · IPR2014-00382 · APJ Linda M Gaudette · IPR · Rehearing
The Board denied Lenroc’s rehearing request, leaving in place the denial of inter partes review of claims 1–12 because the Board did not err in construing “wetcake” to exclude free-flowing powder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Challenged independent claims 7, 11, and 12 recite “method[s] for preparing a dry, solid monoalkali metal cyanurate.” Ex. 1001, claims 7, 11, 12 (emphasis added). Method claims 7, 11, and 12 recite a first step of forming a monoalkali metal cyanurate wetcake by “blending cyanuric acid” (id., claims 11, 12) or “cyanuric acid wetcake” (id., claims 7, 11, 12) “with a monoalkali metal base” (id.). The ’132 patent specifies the cyanuric acid starting material may be either a “dry, virgin material or . . . by-product material . . . available as a water-washed wetcake” (Ex. 1001, 4:40-48, 6:53-62, 8:66-9:8 (emphasis added), quoted in Dec. 8). Dooney confirms that prior to the effective date of the ’132 patent, cyanuric acid was commercially available in powder and granular forms, or in cake/wetcake form. Ex. 1004, 1:17-20, 28-29, cited in Dec. 9. Given the evidence that cyanuric acid starting materials were available in either wetcake or powder/dry forms, it is not clear whether Dr. Howarth viewed the terms “wetcake” and “powder” as synonymous, or was unconsciously using terms which describe two different forms of cyanuric acid starting materials encompassed by the claimed method. On this record, even if we consider the new evidence that was not raised in the Petition, we are not persuaded that Petitioner shows sufficiently that Dr. Howarth’s declaration testimony controls the proper construction of claims 7, 11, and 12 in this proceeding. Each of claims 7, 11, and 12 also recites a second step of drying the monoalkali metal cyanurate wetcake. Ex. 1001, claims. With respect to the drying step, claim 12 recites: “(b) Drying the formed wetcake of monoalkali metal cyanurate by allowing heat of neutralization caused by a reaction of the blended cyanuric acid or cyanuric acid wetcake and the monoalkali metal base to remove water from the monoalkali metal cyanurate wetcake as steam and by allowing the steam to escape.” The process described in the Howarth Declaration includes the drying step recited in claim 12. Compare Ex. 1001, claim 12(b) with Ex. 1009, ¶ 10. A process which meets the limitation of claim 12 produces a “dry, solid monoalkali metal cyanurate” (Ex. 1001, claim 12). Dr. Howarth stated that “Picture 8 shows the sodium cyanurate wetcake product being conveyed from an opening at the bottom of the ribbon blender.” Ex. 1009, ¶ 13 (emphasis added). Dr. Howarth then described the product exiting the ribbon blender in picture 8 as a “sodium cyanurate wetcake [that] is a free-flowing powder” (Ex. 1009, ¶ 13). However, we are not convinced Dr. Howarth’s statement was based on an understanding that the term “wetcake” encompasses a free-flowing powder, as opposed to an assumption that the reader appreciated that the sodium cyanurate material in the described process transitioned from a wetcake to a dry solid product (a free-flowing powder) during the drying step in the ribbon blender. With respect to the Amendment, Petitioner has not explained clearly how arguments distinguishing a wetcake from a slurry based on relative dryness support their contention that we erred in interpreting the term “wetcake” as not encompassing a free-flowing powder. See Dec. 8, 1st para. (indicating the term “wetcake,” as used in the ’132 patent, describes a material that is not a slurry and noting the dry-blending process described in the ’132 patent forms a semi-dry solid cake). In sum, Petitioner has not convinced us that the intrinsic evidence of record as a whole, taking into account the Howarth Declaration and Amendment, supports an interpretation of the claim term “wetcake” as encompassing a free-flowing powder. Therefore, we are not persuaded that we erred in interpreting the claims as excluding Stephen’s free flowing powder of monosodium cyanurate monohydrate containing 89.35% monoalkali metal cyanurate and 10.65% water by weight. Petitioner has not met its burden to show that the decision should be modified.” slip op. at 5
Claim constructionPatents in suitUS 7,728,132
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.