- Viasat, Inc. v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00795 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place denial of institution on claims 1–9, 13–21, 29–50, 67–82, 104, 105, 107, and 110 because it had not shown motivation to combine Norand with the Eng …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 20–21.” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00796 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because the petition did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 26–27. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of “TCP/IP networks.” Indeed, this is a new argument improperly raised for the first time in the Request. See id. When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00629 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because ViaSat did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Petition, Petitioner’s arguments that Norand and the Eng references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also contends that the Eng patent “clearly teaches that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Indeed, this is a new argument improperly raised for the first time in the Request. See id. Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of TCP/IP newtowrks.” When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00628 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving the denial of institution on claims 1–13, 28–37, 41–61, 91–107, 123, 126, 128–157, 160–167, 169, and 171 unchanged because the petition did not show motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 24. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“explain[ed] sufficiently why a person of skill in the art would have used the TCP/IP protocols with the network architecture taught in Norand” overlooks “the prior art and evidence of record which provides ample explanation as to ‘why’ a POSITA would find incorporating TCP/IP into Norand desirable.” Req. Reh’g. 14. With respect to this assertion, Petitioner does not identify the place in the Petition where Petitioner previously addressed such matters pursuant to 37 C.F.R. § 42.71(d), other than the matter we addressed above, namely that Norand and Eng share a common goal of linking together mobile users. Id. at 14–15. slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Amerigen’s rehearing request, leaving claims 1–3, 5, 8, 9, and 11 uninstituted because Mehta did not disclose the claimed release limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See 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). “The burden of showing that a decision should be modified lies with 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, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Amerigen’s arguments with these principles in mind.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“These arguments are not persuasive. First, Petitioner cites no authority for the proposition that a generic disclosure, such as that discussed above, is an express disclosure of every possible permutation of that generic disclosure. Second, even if we were to accept, for the sake of argument, that Mehta’s combined disclosures constitute an express disclosure of a composition capable of delayed release of “essentially all [of the drug] . . . within about 60 minutes,” non-instituted claims 1–3, 5, 8, 9, and 11 further require that the delayed release is enteric (i.e., the composition releases the second dose of the drug in the intestines, not the stomach). As we noted in the Decision, however, Mehta does not use the word “enteric,” nor does Mehta discuss delivery of the delayed dose to the intestines. Dec. 28. Nevertheless, we considered the possibility that Mehta might inherently disclose a composition that releases into the intestine not less than 80% of the second dose of the drug within about 60 minutes of the delayed release. Accordingly, we turned to Mehta’s Examples 1–5, but determined that not one of the exemplified delayed release compositions achieved a release of “essentially all” of the drug from a delayed release coating within about 60 minutes—regardless of whether the delay was long enough to be considered enteric.3 Id. at 24. As we noted in the Decision,” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“This argument is not persuasive. We considered, for example, Dr. Elder’s testimony that one of ordinary skill in the art would expect “that the number of variables and number of experimental runs to optimize the coating for the amphetamine would present no unusual problems of technology or expense” because one “can use statistical experimental design to optimize a formulation within the 21 trials that Mehta discloses to design one for amphetamine salts” (Ex. 1005 ¶ 471), as well as Dr. Elder’s testimony that one would expect “that routine optimization of the coating using the parameters identified by Mehta would provide enough guidance for controlling the release timing” (id. ¶ 512). Nevertheless, we found the actual results reported by Mehta to be more compelling. As we stated in the Decision: [N]one of Mehta’s delayed release formulations that could be considered to be enteric by virtue of their delay periods (i.e., those with delays of 4 or 5 hours) had release rates of “essentially all” of the drug anywhere near the required time period. Even if Mehta could be read to suggest that a delay of 4 or 5 hours followed by a release of essentially all of the delayed dose within 60 minutes would be desirable, we are not persuaded that Mehta’s disclosure that “the amount of drug released is influenced by: amount of coating, ratio of the two 4 Amerigen supported its challenges with the Declaration of Edmund J. Elder, Jr., Ph.D., R.Ph., executed September 30, 2015 (“Elder Declaration”) (Ex. 1005). polymers, amount of talc, and curing time” is adequate guidance for one of ordinary skill in the art to achieve such a dosage form. In general, Mehta demonstrates that longer delays are accompanied by longer release times, with formulations that could be considered to provide enteric release (i.e., a release after a 4 or 5 hour [delay]) having 85% release times of 8 or more hours. Dec. 33–34 (citing Ex. 1003, Table 1).” slip op. at 8
§ 102 anticipation§ 103 obviousness - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Shire’s rehearing request and confirmed claim 25 is in the trial only through its dependency from claims 18–20, not claims 2 or 13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded and decline to alter the Order concluding the Decision of April 19, 2016 in any way. Claim 25 would fall should Petitioner prevail in its obviousness challenge—so long as claim 25’s dependency from claims 18–20 remains. However, we take this opportunity to confirm that claim 25 is part of the trial only to the extent it depends from claims 18–20, and not to the extent it depends from non-instituted claims 2 and 13.” slip op. at 4
None - PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Dec 28, 2016 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the institution denials because Petitioner did not show that Su was publicly accessible before the patents’ critical dates.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). 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 reply. Id. For the reasons discussed below, the Request for Rehearing is DENIED.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
§ 102 anticipationPatents in suitUS 8,327,011 - PTAB · Dec 22, 2016 · IPR2015-00554 · APJ Brian P Murphy · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving intact its determination that claims 1–11 are unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party who requests rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Expert testimonyDecided for patent owner
“and 9; Ex. 2044, 181:1–23; Ex. 2046 ¶¶ 45–49). Though we did not discuss the expert testimony, we considered it. For example, on the same page of testimony cited by Patent Owner, Dr. Valuck testified that the information sufficient to identify a patient is “whatever the pharmacist believes is required to sufficiently identify the patient in their professional judgment.” Ex. 2044, 98:2–16. Even so, our Decision puts primary emphasis on the claim language and relevant description of the “identifying” element in the specification, not the extrinsic expert testimony relied upon by Patent Owner. See Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1012–13 (Fed. Cir. 2016) (“The legal part of claim construction is the determination of the meaning of the term in the claim in light of the patent’s intrinsic record.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc) (stating that sources outside the specification should not be “used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“We made clear that the controlling description of the specification outweighed Patent Owner’s argument and supporting evidence that specific types of information are required to be read into the “identifying” element of the claims. Id. (“Thus, we construe ‘prescription requests [for GHB] containing information identifying patients’ to refer to information identifying a patient, which may include [Patent Owner’s specifically listed information], but is not limited to that information nor requires all of that information.”) (emphasis added). We also cited to all of the expert testimony on which Patent Owner relied for its claim construction, as an indication that we considered the testimony. Id. at 18 (citing Ex. 2044, 97:11–98:5, 99:18–100:10; Ex. 2046 ¶¶ 39–44). We did the same for the “information identifying . . . any and all medical doctors” language, concluding that: The specification does not suggest that failing to include on the prescription one or more pieces of information from the list of a “medical doctor’s name, license number, DEA number, and physician specialty,” as proposed by Patent Owner, means that a prescription fails to contain information regarding “various credentials,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,668,730 - PTAB · Dec 22, 2016 · IPR2015-00547 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Jazz Pharmaceuticals’ rehearing request, leaving claims 1–6 unpatentable as obvious over the Advisory Committee Art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. “A Request for Rehearing is not an opportunity to re-argue old arguments.” Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-00779, slip op. at 4 (PTAB Oct. 16, 2014) (Paper 9). With the aforementioned principles in mind, we address the rehearing arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“nothing in the specification suggests that excluding one or more pieces of information in the list of a “patient’s name, social security number, date of birth, sex, and complete address information, including city, state and zip code,” as proposed by Patent Owner, means that a prescription fails to contain “information identifying the patient,” as recited in the claims.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 7,765,107
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.