IPR obviousness decision affirmed; Board’s real-party-in-interest determination not appealable under § 314(d)


ESIP Series 2, LLC v. Puzhen Life USA, LLC

Docket No. 2019-1659 (IPR2019-02197)
LOURIE, REYNA, HUGHES
May 19, 2020

Brief Summary: Board IPR obviousness decision affirmed. Board’s real-party-in-interest determination not appealable under § 314(d).

Summary: ESIP appealed Board IPR decision finding the claims of US 9,415,130 relating to systems and methods for “germicidal protection and aromatic diffusion in enclosed habitable spaces” (“[a] method for introducing a scent into breathable air”) invalid for obviousness in view of two different combinations of prior art (Sevy and Cronenberg, Sevy and Giroux). The Board determined that “Sevy discloses every element of the challenged claims except for the ‘arcuate channel’ limitation of the ‘separating’ claim element” which are disclosed by the other references and that “a skilled artisan would have been motivated to combine the teachings”. ESIP argued Sevy does not teach the “separator” but the FC panel found “no error with the Board’s decision to credit the opinion of one expert over another” (Impax, FC 2018). The FC also found no error with the Board’s finding that ESIP’s expert testimony was “‘conclusory and unsupported’ and thus ‘unhelpful and unpersuasive’”. ESIP also argued that “a skilled artisan would have been motivated to substitute” the methods of Sevy with those of Cronenberg since, e.g., this “would require ‘substantial reconstruction’”. But the FC panel explained that for this proposition ESIP “relies solely on the discredited testimony of Dr. Bell”, found no error with the Board’s reliance on “the disclosures” per se and another expert’s testimony, and concluded that “[s]ubstantial evidence supports the Board’s finding” of a motivation to combine the references. For similar reasons, the FC panel agreed with the Board’s obviousness conclusions regarding the combination of Sevy and Giroux. ESIP also argued the Board erred “by failing to expressly define the applicable level of ordinary skill in the art” but the FC panel explained that “ESIP fails to make the requisite showing that there are ‘any meaningful differences’ between the parties proposed definitions or that ‘the outcome of [the] case would have been different based on which definition the Board used” (Genyzme, FC 2016) and reached a similar conclusion regarding ESIP’s claim construction arguments (Fresenius, FC 2009 (“no record support regarding why a modified claim construction would affect the [judgment]”)). ESIP also argued “that Puzhen failed to identify ‘all real parties in interest’ and the Board erred” in instituting the IPR but the FC panel explained that “the Board’s § 312(a)(2) real-party-in-interest determination is final and non-appealable” (Cuozzo Speed, US 2016 (§ 314(d) bars appellate review of…decision to initiate” IPR); Thryv/Click-To-Call, US 2020 (§ 314(d) also precludes judicial review of the…one-year time bar”)), and found “no principled reason why preclusion of judicial review under § 314(d) would not extend to…the ‘real parties in interest’ requirement of § 312(a)(2).” The Board decision was therefore affirmed.

This entry was posted in Appeal, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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