• Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution denied
  PTAB · Apr 24, 2025 · PGR2025-00001 · APJ James A Tartal · PGR · Institution

  The Board denied institution of post-grant review of claims 1–22, exercising its discretion under § 324(a) based on the Fintiv factors.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv 5−6. We consider these factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “parties, we do not find the merits to be particularly strong on the current record. For example, limitation [1-4] recites, in part, “a locking nut having . . . an external thread on an outside surface of the locking nut.” Ex. 1001, 9:46–47. In alleging obviousness based in part on Orphanos, Petitioner equates the claimed “locking nut” to Orphanos’s collet 230 in a first embodiment of Orphanos, or Orphanos’s collet portion 1052 in a second embodiment of Orphanos. Pet. 37–38. Petitioner acknowledges that the collet and collet portion do not have external threads, but rather are designed to have a snap-fit engagement with the inner sidewall of the baseplate’s central throughbore. Id. at 38. Petitioner argues that modifying the collet and collet portion to have external threads would have been obvious to the skilled artisan in view of Orphanos’s teachings and the knowledge of a person having ordinary skill in the art. Pet. 38–42 (arguing, inter alia, that it would have been “a substitution of a known part for a known problem” and “obvious as a matter of design choice”). Petitioner does not allege that replacing the snap-fit coupling with external threads would either: (1) result in any advantages; or (2) preserve any of Orphanos’s stated benefits of its snap-fit arrangement. See Pet. 34–37. That Petitioner describes no advantages to making its proposed modification potentially undermines Petitioner’s case that the skilled artisan would have done so. Cf. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”).” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “Petitioner’s arguments regarding the central post and locking nut include an implicit claim construction argument that these components need not be separate structures. Pet. 74, 76–81. Patent Owner, on the other hand, would have us interpret the claim to require that they be separate structures. Patent Owner raises credible evidence to support its theory. Specifically, Patent Owner directs us to the language of claim 1, which separately recites “a central screw” and “a locking nut.” Prelim. Resp. 51; see Ex. 1001, 9:44–53. Patent Owner further contends, in view of the claim language, that the claimed central post and locking nut are separate and distinct components. According to Patent Owner, however, Lefebvre’s main head and anchor rod portions are parts of a single monolithic anchoring screw. Prelim. Resp. 53–58. Where a claim lists elements separately, there is a rebuttable presumption that these elements have separate and distinct physical structures. See Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1058 (Fed. Cir. 2024) (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–1232 (Fed. Cir. 2011)). The presumption may be rebutted by the intrinsic record. Id. At this stage, however, Petitioner does not address that claim 1 appears to separately recite a central post and a locking nut, and does not direct us to any portion of the intrinsic record that might rebut the presumption that these elements are, therefore, separate and distinct structures. See Pet. 73–77. Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77.” slip op. at 17

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached

    “Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77. In sum, even if Petitioner’s contentions show it is more likely than not that at least one of the claims challenged in the Petition is unpatentable, we find Patent Owner’s arguments identify credible weaknesses in Petitioner’s contentions. Accordingly, we find that that the sixth Fintiv factor is neutral and does not weigh against discretionary denial.” slip op. at 18

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 12,023,254
• Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution denied
  PTAB · Mar 19, 2025 · IPR2024-01426 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show Morris or the Hiniker Webpage was prior art for claims 16–22, and declined institution for claim 23 in view of efficiency.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7

  • Other 314aInstitution denied discretionary otherInstitution denied

    “The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14

  § 102 anticipationDiscretionary denial
  Patents in suitUS 8,967,940
• TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution denied
  PTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,089,443
• Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution denied
  PTAB · Dec 19, 2024 · PGR2024-00042 · APJ Lisa L Tsang · PGR · Institution

  The Board denied institution of PGR challenging claims 1–16, finding the first five Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “during the conference and in the Minute Entry, and in the court’s subsequent Order Regarding Schedule. We also note that the evidence shows the district court may intend to reschedule the trial to a date substantially earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1029, 10−11. However, given that the Order does not unambiguously set a trial date for December 1, 2025, or even sometime in December 2025 or January 2026 (see Ex. 1028), we decline to speculate as to what date the court may ultimately select for trial. Moreover, the record shows that Petitioner has consistently opposed moving the trial to a date earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1026, 2−4; Ex. 1029, 11. We view Petitioner’s opposition as creating yet more ambiguity as to the trial date in the co-pending litigation. Therefore, we find that factor 2 is neutral because the exact trial date in district court is uncertain.” slip op. at 14

  • BurdenNot reached

    “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. This standard is only met “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (Vidal Oct. 4, 2022) (precedential) (citing Guidance Memo 4). We have reviewed Petitioner’s challenges and Patent Owner’s arguments. For the reasons explained below, we determine that Petitioner’s challenges have not risen to the threshold of compelling merits. Before addressing the parties’ arguments regarding the asserted grounds, we address: (a) the level of ordinary skill in the art, (b) claim construction, and (c) relevant principles of law; and we provide (d) overviews of the asserted art.” slip op. at 18

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that its proffered additional level of ordinary skill in the art appears consistent with the experience Petitioner describes. See Pet. 16. For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner and supplemented by Patent Owner, because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’561 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In this regard, Mr. Fallin testifies that I have decades of experience working directly with joint replacement systems, including hip joint replacement systems, knee replacement systems, and facet joint replacement systems. My work on these joint replacement systems included my direct engagement or supervision of and professionals in the inventing, designing, fabricating, testing, obtaining regulatory approvals, ensuring regulatory compliance, commercializing, and patenting of these systems. Ex. 1002 ¶ 10. Mr. Fallin also testifies that his experience “includes working directly with supervising professionals whose responsibilities included designing, developing, and commercializing joint replacement systems and similar device[s].” Id. ¶ 67 As such, Mr. Fallin identifies “decades” of experience with joint replacement systems. Ex. 1002 ¶ 10. Moreover, Patent Owner does not persuasively explain why Mr. Fallin’s “direct engagement” and “working directly with,” as well as “supervision” of, other individuals designing joint replacement systems, does not at least imply personal design experience. See Prelim. Resp. 10–11. Therefore, we determine that the current record reflects that Mr. Fallin is qualified to testify as to the knowledge of a person of ordinary skill in the art.” slip op. at 20

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,771,561
• Reed Semiconductor Corp. v. Monolithic Power Systems, Inc.Institution denied
  PTAB · Nov 26, 2024 · IPR2024-00871 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim; it also found institution inefficient based on Ground 1 alone.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Unpatentability of Claims 1, 11, and 12 as Anticipated by TI,” slip op. at 13

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “establishing the unpatentability of any of the challenged claims of the ’608 patent. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 39

  • PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied

    “Here, Petitioner advances five challenges with four directed to the same three independent claims. Pet. 3. We, for the reasons discussed below, determine that Petitioner has failed to show a reasonable likelihood of prevailing on Grounds 2 through 5. We further determine that, based on the particular facts of this proceeding, instituting a trial with respect to all grounds and all the challenged claims based on evidence and arguments directed only to Ground 1 would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, even if Petitioner met the requisite burden for institution as to Ground 1, we would exercise our discretion and not institute an inter partes review. E. The Alleged Anticipation of Claims 1, 11, and 12 by Galinski (Ground 2)” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,590,608
• Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution denied
  PTAB · Sep 20, 2024 · IPR2024-00822 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5‒6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. There is some overlap among these factors and some facts may be relevant to more than one factor. Id. In evaluating the factors, the Board takes a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review. Id.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “from his Declaration cited on page 17 of the Petition, however, Dr. Harwell essentially repeats verbatim the conclusions from the Petition quoted above: 98. As such, Ayers discloses that subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid. For example, fracturing fluid containing polyacrylamide, a common polymer additive to fracturing fluid, may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex with metal ions naturally present in the formation. Harwell Decl. ¶ 98, cited at Pet. 17. Dr. Harwell provides no additional scientific or technical basis for these conclusory restatements of Petitioner’s assertions, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15– 17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 31 (arguing that paragraph 98 of the Harwell Declaration “repeats the Petition essentially verbatim and fails to provide any further evidence or explanation on how Ayers discloses (or even suggests) the claimed subject matter”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also view Petitioner’s and Dr. Harwell’s conclusions as lacking because they fail to demonstrate that a “subterranean-formed metal-polymer complex” would necessarily have been present in Ayers’s subterranean formations. Instead, as noted by Patent Owner, both Petitioner and Dr. Harwell can muster only that “subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid” and that “fracturing fluid containing polyacrylamide . . . may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex . . . .” Pet. 17; Harwell Decl. ¶ 98 (emphasis added); see Prelim. Resp. 31–32 (presenting this argument). Even assuming these statements to be accurate, and even if the statements are unrebutted at trial, they are not sufficient on the record here to demonstrate compelling merits of anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).9” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner states—without any supporting evidence—that Patent Owner (assumedly in the Parallel Litigation) has described a person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the [challenged p]atent [as having] at least a bachelor’s degree in chemistry, chemical engineering, petroleum engineering, geology, or the equivalent, and at least two years of experience in oil and natural gas well treatments, or an equivalent amount of relevant work and/or educational experience. Pet. 5. Petitioner “is prepared to adopt” this definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10–11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner does not propose constructions for any claim terms. See Pet. 11–12. In response, Patent Owner “agrees to accept the construction for any claim terms from the [challenged] patent it presented in district court . . . [,] none of which require a construction different from the plain import of the claim language itself.” Prelim. Resp. 12. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,697,282
• Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution denied
  PTAB · Sep 20, 2024 · IPR2024-00815 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution of review of claims 1–13 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “currently scheduled to begin on January 14, 2025. Prelim. Resp. 55 (citing Ex. 2003 (Specialized Scheduling Order in the Parallel Litigation) at 2). Based on the date of issuance of this Decision, the beginning of the trial in the Parallel Litigation is over eight months before any final decision would have been due had inter partes review been instituted. This large length of time from the trial in the Parallel Litigation to the due date of the final decision in this proceeding weighs strongly in favor of discretionary denial. As stated in the Guidance Memo, “when considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.” Guidance Memo 3. Patent Owner provides median time-to-trial statistics for the Oklahoma District Court, which predict a trial date approximately 26.9 months after the Parallel Litigation’s filing date of April 13, 2023. See Prelim. Resp. 56 (citing Ex. 2005 at 2). Because the predicted trial date—approximately July 17, 2025—still precedes by two months the due date of any final decision had inter partes review been instituted, the statistics provided also weigh in favor of denial of institution. Given the proximity of the current trial date—less than four months from the date of this Decision—and the lack of any indication from the parties that the trial date will not hold or that either party seeks a later trial date, we view this factor as strongly favoring discretionary denial.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied

    “in which the evidence, if unrebutted in trial,” show it is “highly likely that the petitioner would prevail with respect to at least one challenged claim.” Guidance Memo 4; OpenSky, Paper 102 at 49. For the reasons above, Petitioner’s arguments and evidence do not satisfy the “compelling merits” standard as to any ground presented. D. Overall Balancing of the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. As discussed above, we have determined that the first five Fintiv factors overall weigh in favor of discretionary denial of institution. Moreover, we have further determined that the Petition does not show compelling merits under the sixth Fintiv factor. We therefore conclude that the evidence of record favors exercising our discretion to deny institution. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is hereby: ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 29

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Harwell Decl. ¶¶ 167–169); see also Prelim. Resp. 28–29 (presenting this argument). In the three relevant paragraphs from his Declaration cited on page 18 of the Petition, Dr. Harwell, however, merely restates, word for word, two disclosures from Frenier8 quoted from the same page of the Petition, and contends (essentially repeating verbatim the statement from the Petition quoted at the beginning of this paragraph): “It would have been obvious to [one of ordinary skill in the art] in light of Frenier to apply the methods and compositions disclosed therein to ‘subterranean formation[s] having low permeability,’ including nano-darcy shale formations.” Harwell Decl. ¶ 169.9 Dr. Harwell provides no additional scientific or technical basis for this conclusory restatement of the Petition’s assertion, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 28–29 (“The Harwell Declaration repeats the same conclusory arguments presented in the petition without further evidence or 8 Page 18 of the Petition quotes column 1, lines 6–9 and column 1, lines 39–54 of Frenier. 9 Paragraphs 167–169 of the Harwell Declaration ostensibly address “Ground II: Claims 1–13 are obvious under 35 U.S.C. § 103(a) over Frenier alone and/or in combination with Reyes.” See Harwell Decl. pp. 40–41. In the discussion of “Ground I: Claims 1, 2, 4, 5, 7, and 13 are Anticipated by Frenier,” however, paragraphs 75–77 include the same or substantially similar statements from Dr. Harwell. Thus, the analysis would be the same even if Petitioner had cited paragraphs 75–77. explanation.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). This inadequate showing as to a requirement in limitations 1[b] and 1[c] reveals a lack of compelling merits.” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 10. Petitioner “does not fully concur” with this definition of one of ordinary skill in the art but “is prepared to adopt” the definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,944,843
• Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology LimitedInstitution denied
  PTAB · Sep 22, 2023 · IPR2023-00587 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution for claims 1–17 under § 314(a), finding the parallel litigation favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel proceeding the grounds advanced in the petition. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 11–12, 12 n.5 (June 16, 2020) (informative). “The PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo, 7–8 (emphasis added); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A). Here, Petitioner’s stipulation extends to the same grounds raised in the Petition, but does not extend to any ground “that could have been reasonably raised,” pursuant to Sotera. Patent Owner points to the narrowness of the proffered stipulation in the Sur-Reply and asserts this factor “only marginally weighs in favor of institution.” Sur-Reply 3. Because Petitioner’s stipulation obviates some potential for duplication or redundancy with respect to the patentability of the challenged claims (albeit not to the extent a full Sotera-type stipulation would have) and the parallel litigation does not include claims 10–16, we determine that the fourth Fintiv factor weighs against denial of institution.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)). “[T]he reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “As discussed above, “[c]ompelling, meritorious challenges are 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.” Fintiv Memo 4. While the Petition and Dr. Gido provide an explanation for the full range in which Iwai’s D90 necessarily would be found, the Petition and Dr. Gido identify only a single value for the adhesive porous layer thickness of Iwai’s Example 7 and Comparative Example 2. Pet. 48, 51; Ex. 1003 ¶¶ 165, 174. The Petition and Dr. Gido direct us to the average thickness “a” of Iwai’s adhesive porous layer without taking into account Iwai’s disclosure of the ratio of the average thickness layer “a” to the volume average particle diameter “r.” Iwai describes the volume average particle diameter “r” being “projected at a proper height . . . formed on a surface of the adhesive porous layer.” Ex. 1006 ¶ 43. Thus, the evidence of record purportedly mapping claim 1’s recited “thickness of the porous layer” to Iwai does not plainly lead to a conclusion that Iwai necessarily discloses to a POSA the claimed “ratio of Dv90 of the inorganic particles to the thickness of the porous layer is in a range from 0.3 to 3.0.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as anticipated by Iwai.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “In addition to the lack of support in the record for the Petition and Dr. Gido’s assumption that the porous layer thicknesses of Examples 4 and 5 are the same as the porous layer thickness of Example 1 discussed above in connection with the anticipation challenge of claim 1, the cited record does not plainly support Petitioner’s assertion that Nishikawa teaches or suggests claim 10’s recited “uniform coating solution.” The Petition acknowledges that Nishikawa teaches a mixed solvent containing DMAc and TPG to provide a coating slurry. Pet. 31; Ex. 1003 ¶ 64; Ex. 1005, 22:26–33 (Example 4), 22:46–51 (Example 5). Nishikawa teaches that the solvent mixture includes a polar solvent (DMAc preferred) and a poor solvent (such as TPG) that “induces a microscopic phase separation structure to facilitate formation of pores upon providing the heat resistant porous layer.” Ex. 1005, 11:1–5. The Petition does not sufficiently explain why such a phase separation structure produced by Nishikawa’s mixed solvent meets claim 10’s recited “uniform coating solution.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 10 as obvious over Nishikawa’s teachings.” slip op. at 25

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,964,987
• Ideavillage Products Corp. v. Koninklijke Philips N.VInstitution denied
  PTAB · Oct 25, 2022 · IPR2022-00904 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution on the sole claim, finding the obviousness challenges inadequate and exercising discretion to deny the marginal anticipation challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An obviousness analysis involves two steps; first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; second, “once this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” High Point Design, 730 F.3d at 1311 (internal quotation and citations omitted). Even when secondary references are not used, however, the analysis still requires an explanation as to how and why the primary reference (something having design characteristics basically the same as the claimed design) would have been modified to arrive at a design that has the same overall visual appearance as the claimed design. See, e.g., In re Nalbandian, 661 F.2d at 1217 (involving single-reference obviousness rejection and addressing the differences between the reference and the claimed design); In re Lamb, 286 F.2d 610, 611 (CCPA 1961) (affirming the Board in a case involving a single-reference obviousness rejection where “the board observed that it is conventional to use relatively slimmer handles with slim blades and that therefore, ‘it would be expected that a designer skilled in the cutlery art would use a somewhat narrower or slimmer handle with a slim blade’”). None of the 42 obviousness challenges advanced in the Petition is supported by an adequate analysis of those two steps. See id. at 64–88. In particular, none sufficiently discusses both the differences between the been modified (alone or in view of any other reference) to have the same visual appearance as the claimed design. Id.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “An obviousness analysis involves two steps; first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; second, “once this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” High Point Design, 730 F.3d at 1311 (internal quotation and citations omitted). Even when secondary references are not used, however, the analysis still requires an explanation as to how and why the primary reference (something having design characteristics basically the same as the claimed design) would have been modified to arrive at a design that has the same overall visual appearance as the claimed design. See, e.g., In re Nalbandian, 661 F.2d at 1217 (involving single-reference obviousness rejection and addressing the differences between the reference and the claimed design); In re Lamb, 286 F.2d 610, 611 (CCPA 1961) (affirming the Board in a case involving a single-reference obviousness rejection where “the board observed that it is conventional to use relatively slimmer handles with slim blades and that therefore, ‘it would be expected that a designer skilled in the cutlery art would use a somewhat narrower or slimmer handle with a slim blade’”). None of the 42 obviousness challenges advanced in the Petition is supported by an adequate analysis of those two steps. See id. at 64–88. In particular, none sufficiently discusses both the differences between the been modified (alone or in view of any other reference) to have the same visual appearance as the claimed design. Id.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “Specifically, on that crucial issue, Mr. Peyser testifies “that the multiple perspective views are informative enough to prov[id]e me an understanding of what the front and rear views of the shaver head would look like.” Ex. 1003 ¶ 60 (emphasis added). Mr. Peyser neither explains why the perspective views are sufficient to disclose the missing front and rear views of the Philips OneBlade shaver head, nor keys his testimony, with sufficient clarity, to the understanding of an ordinary observer. Ex. 1003 ¶ 60 (referring to “me,” not the ordinary observer). When Mr. Peyser does turn to the relevant inquiry, therefore, focusing on the ordinary observer, his opinions are not tethered adequately to supporting facts. Ex. 1003 ¶ 61. Stated somewhat differently, his ultimate opinion is conclusory. See id.; see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (a petitioner’s burden of proving obviousness cannot be satisfied by employing “mere conclusory statements”).” slip op. at 15

  • Expert testimonyPetitioner expert discountedOther

    “Specifically, on that crucial issue, Mr. Peyser testifies “that the multiple perspective views are informative enough to prov[id]e me an understanding of what the front and rear views of the shaver head would look like.” Ex. 1003 ¶ 60 (emphasis added). Mr. Peyser neither explains why the perspective views are sufficient to disclose the missing front and rear views of the Philips OneBlade shaver head, nor keys his testimony, with sufficient clarity, to the understanding of an ordinary observer. Ex. 1003 ¶ 60 (referring to “me,” not the ordinary observer). When Mr. Peyser does turn to the relevant inquiry, therefore, focusing on the ordinary observer, his opinions are not tethered adequately to supporting facts. Ex. 1003 ¶ 61. Stated somewhat differently, his ultimate opinion is conclusory. See id.; see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (a petitioner’s burden of proving obviousness cannot be satisfied by employing “mere conclusory statements”).” slip op. at 15

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
• Ideavillage Products Corp. v. Koninklijke Philips N.VInstitution denied
  PTAB · Mar 24, 2022 · PGR2021-00116 · APJ Ken B Barrett · PGR · Institution

  The Board denied institution because eight grounds failed the threshold showing and the remaining lack-of-ornamentality ground was marginal, making trial inefficient.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Here, Petitioner advances nine challenges against the claim of the ’346 patent. Pet. 8. As discussed above, we determine that, on this record, Petitioner has not met its burden for institution under eight grounds—an on-sale bar ground, six obviousness grounds, and an indefiniteness ground. Additionally, we determine that the ninth ground— the challenge based on the alleged lack of ornamentality—is marginal, at 5 We acknowledge that SAS and Harmonic address inter partes reviews, but see no reason to interpret differently § 324(a), the statute governing post-grant reviews. 6 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 7 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf best. Based on the particular facts of this proceeding, instituting a trial with respect to all grounds based on evidence and arguments directed only to the one ornamentality ground would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, we do not institute a post-grant review.” slip op. at 26

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Under the Office Guidance, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).6 When a petition fails to satisfy the “more likely than not” institution standard as to some challenges, the Board evaluates “all the challenges and determine[s] whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” Patent Trial and Appeal Board Consolidated Trial Practice Guide7 64 (Nov. 2019) (citing 37 C.F.R. §§ 316(b), 326(b)). Here, Petitioner advances nine challenges against the claim of the ’346 patent. Pet. 8. As discussed above, we determine that, on this record, Petitioner has not met its burden for institution under eight grounds—an on-sale bar ground, six obviousness grounds, and an indefiniteness ground. Additionally, we determine that the ninth ground— the challenge based on the alleged lack of ornamentality—is marginal, at 5 We acknowledge that SAS and Harmonic address inter partes reviews, but see no reason to interpret differently § 324(a), the statute governing post-grant reviews. 6 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 7 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf best. Based on the particular facts of this proceeding, instituting a trial with respect to all grounds based on evidence and arguments directed only to the one ornamentality ground would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, we do not institute a post-grant review.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The POSITA relating to the subject matter of the D’346 patent would possess [a] Bachelor’s degree in industrial design (or a related or equivalent field) and at least ten (10) years of research or work experience related to designing, developing, specifying, testing or analyzing multi-component consumer products (or supervising the same), with experience related to handheld consumer electronic products. Pet. 14. For purposes of this decision, we assume Petitioner is referring to the designer of ordinary skill in the art. See In re Nalbandian, 661 F.2d 1214, 1216 (CCPA 1981) (“In design cases we will consider the fictitious person identified in § 103 as ‘one of ordinary skill in the art’ to be the designer of ordinary capability who designs articles of the type presented in the application.”). Patent Owner has not filed a preliminary response and therefore, at this stage, does not disagree or propose a different definition of the designer of ordinary skill in the art. Based on the limited record in front of us, we determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the designer of ordinary skill in the art.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “incorrect standard, but also lacks credibility because it is internally inconsistent with other parts of his testimony. Mr. Fletcher testifies that it is his understanding that indefiniteness is viewed through the perspective of the ordinary observer, stating the following: I understand that an ordinary observer must be able to understand the scope of an invention with reasonable certainty. If not, a design is indefinite under 35 U.S.C. § 112. It is my understanding that errors and inconsistencies between drawings of a design patent can be indefinite, and thus invalid, if an ordinary observer cannot discern the overall appearance of the claimed design without resorting to conjecture or speculation. Ex. 1003 ¶ 27 (emphasis added). However, his opinions regarding indefiniteness all are in terms of the “POSITA.” Ex. 1003 ¶¶ 32–58; see, e.g., id. ¶ 32 (“The D’346 Patent is indefinite due to the inclusion of conflicting views, which would prevent a POSITA from understanding the claimed design as drawn. . . . A POSITA cannot discern from the D’346 Patent figures what design is actually being claimed.”). Casting further doubt on the reliability of his testimony, Mr. Fletcher does not articulate any definition for the POSITA, which is a necessary foundation for his opinions.4 Mr. Fletcher does not refer to the perspective of the ordinary observer (or even one skilled in the art, viewing the design as would an ordinary observer) in his opinions regarding indefiniteness (Ex. 1003 ¶¶ 32– 58), and we decline to assume his references to the unadorned “POSITA” implicitly encompass the perspective of the ordinary observer. Thus, Mr. Fletcher’s testimony regarding indefiniteness is unhelpful because it utilizes the incorrect perspective.” slip op. at 20

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips

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.