Final Written Decision Finding Challenged Claim Not Unpatentable IPR2014-01002

Takeaway: In an obviousness analysis, (1) to rely on inherency to establish the existence of a missing claim limitation the limitation necessarily must be present or the natural result of the combination of elements explicitly disclosed by the prior art, and (2) a party must avoid analyzing the prior art through the prism of hindsight and not imbue one of ordinary skill in the art with knowledge of the claimed invention when there is insufficient evidence of record to convey or suggest that knowledge.

In its Final Written Decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that claim 10 of the ’509 patent is unpatentable. The ’509 patent “is directed to aluminum-lithium based alloy products displaying a combination of high strength and high fracture toughness.” Inter partes review of claim 10 had been instituted on three grounds of unpatentability based on obviousness. Continue reading

Denying Institution of Inter Partes Review IPR2015-01439

Takeaway: Evidence of what was well known in the art and evidence of a rationale for modifying the teachings of a reference in accordance with that knowledge may be required because an obviousness analysis requires more than an ipse dixit assertion that everything in a reference was also well known in the art.

In its Decision, the Board denied institution of inter partes review of claim 43 of the ‘453 patent. The ‘453 patent “relates generally to methods and apparatuses for acquiring and certifying physical measurements. . . . [and,] [m]ore particularly, . . . to acquiring and cryptographically certifying a measurement representative of a physical parameter, such that the measurement can be verified at a later time.” Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-01165

Takeaway: A showing of inherency has a high bar. 

In its Final Written Decision, the Board determined that all challenged claims (8-12, 14, 15, 17, 25-29, 31, 32, 34, and 35) of the ’359 Patent are unpatentable.  The ’359 Patent relates to notification systems for use in a wireless network that use network resources and infrastructure to provide location specific notifications. Continue reading

Claim Language Found Limiting in Denying Institution IPR2015-00858

Takeaway: Institution denied where the challenged claim language “without loss of efficacy” was found to be a claim limitation, which was not an inherent property of a known prior art method.

In its Decision, the Board did not institute inter partes review because Petitioner had not established that there is a reasonable likelihood that it would prevail with respect to claim 4 of the ‘149 patent under 35 U.S.C. § 103(a). The ‘149 patent “is directed to the topical ophthalmic use of brimonidine in combination with timolol for the treatment of glaucoma or ocular hypertension.” Continue reading

Final Written Decision Finding Claim Limitation Not Inherently Disclosed IPR2014-00360

Takeaway: To establish inherent disclosure of a limitation in a prior art reference, a petitioner must show that the limitation is necessarily present in the prior art.

In its Final Written Decision, the Board found that Petitioner had not established by a preponderance of the evidence that any challenged claim of the ’216 patent is unpatentable, and therefore dismissed the contingent Motion to Amend. The Board also denied the parties’ Motions to Exclude Evidence, granted Patent Owner’s Motion for Entry of Protective Order, granted-in-art Patent Owner’s First Motion to Seal, and granted Patent Owner’s Second Motion to Seal. Continue reading

Final Written Decision Finding Claims Unpatentable as Obvious Over Evidence of Copying

Square, Inc. v. REM Holdings 3, LLC

Takeaway: More than mere copying is necessary to make the action significant to the determination of obviousness.

In its Final Written Decision, the Board held that claims 1, 2, 6, 7, and 10-17 of the ’946 patent are unpatentable and that Petitioner had not shown the requisite burden of proof regarding the unpatentability of claims 3-5, 8, and 9. Continue reading

Denying Institution for Not Providing Sufficient Evidence of Inherency IPR2015-00255

Takeaway: Petitioner’s anticipation argument based on inherency failed because Petitioner did not establish that the allegedly inherent feature is necessarily present in the anticipating reference while Patent Owner presented evidence that the allegedly inherent feature is not necessarily produced each and every time by Petitioner’s reference.

In its Decision, the Board denied institution of inter partes review of claims 1-13 and 17-20 of the ’723 patent, because Petitioner did not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims. Continue reading

Denying Institution Where Prior Art Provided Only a Possibility of a Claimed Feature IPR2015-00001

Takeaway: Prior art stating a mere possibility of a claimed feature is, by itself, insufficient to form the basis of §§ 102 or 103 rejections for institution of trial.

In its Decision, the Board denied institution of inter partes review claims 1-2 and 5-8 of the ’987 patent because Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to claims 1-2 and 5-8. The ’987 patent relates to a method for sorting sperm cells to enrich a population thereof for a particular characteristic such as an X or a Y chromosome. The enriched population is produced by uptake of a dye that results in a mixture of cells with differential fluorescence intensity depending on the sex chromosome present in each sperm cell. A photodetector distinguishes the differential fluorescence of the cells, thereby classifying the cells according to their X or Y content. Continue reading

Denying Institution IPR2014-01515

Takeaway: An experiment to demonstrate an inherent property of a claimed method should closely reproduce the claimed method or it may be insufficient to demonstrate inherency.

In its Decision, the Board denied institution of inter partes review claim 1 of the ’866 patent because Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to claim 1. The ’866 patent relates to an improved process for removal of permanganate reducing compounds (“PRCs”) and alkyl iodides formed by the carbonylation of methanol in the presence of a Group VIII metal carbonylation catalyst. Continue reading