- Shenzhen Root Technology Co., Ltd. v. Chiaro Technology Ltd.Institution deniedPTAB · Dec 16, 2024 · IPR2024-00953 · APJ Amee A Shah · IPR · Institution
The Board denied institution of IPR on claims 1–46 under § 314(a), finding the petitioner had not justified parallel petitions challenging the same claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“parallel petitions challenging claims 1–46 of the ’380 patent are warranted. The mere fact that different references are asserted in this proceeding and the ՚1296 IPR is not justification for a parallel petition under the circumstances presented here. Weighing all the circumstances here, including Patent Owner’s acknowledgment of Petitioner’s preference of the ՚1296 IPR in arguing for denial of this proceeding and in its objection to the dismissal request, we deny this proceeding in favor of evaluating institution of inter partes review in the ՚1296 IPR to reduce the unnecessary burden on the Board and on the Patent Owner and for fairness and efficiency concerns. Based on these circumstances, we find that the reasons provided by Petitioner do not show that parallel petitions are warranted. However, we emphasize that the denial of institution of this proceeding in favor of the ՚1296 IPR does not impact the merits of the ՚1296 IPR. In other words, the denial of institution of this proceeding does not address the substance of the ՚1296 IPR nor does it affect the denial or grant of institution of the ՚1296 IPR.” slip op. at 10
Discretionary denialPatents in suitUS 11,413,380 - Ideavillage Products Corp. v. Koninklijke Philips N.VInstitution deniedPTAB · 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 deniedPTAB · 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 - Tietex International, Ltd. v. Precision Fabrics Group, Inc.Institution deniedPTAB · Feb 11, 2016 · IPR2015-01671 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution on both asserted § 103 grounds, finding no reasonable likelihood of success and exercising § 314(a) discretion for the Radwanski, Rowan, and Murch ground.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“We approach our discretion to deny a petition on a case-by-case basis. There are sufficient reasons under the specific facts of this case to exercise our discretion to deny institution on Petitioner’s asserted ground that claims 1–30 of the ’162 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Notably, in this proceeding, the claims of the ’162 patent are so similar in scope and content to those in the ’639 patent that Petitioner is relying on the same arguments that we found to be unpersuasive in the 1248 Final Decision. See Pet. 29; 1248 Final Dec. 22. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting an inter partes review in this proceeding when the same prior art references and arguments are asserted against substantially the same claim limitations as in the 1248 IPR.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“terminology as the claims in related US patent 8,501,639, which is the subject of [the] previously instituted [1248 IPR]” and argues “that for purposes of this proceeding, the same definitions should apply.” Pet. 7. In the 1248 IPR, we determined that the broadest reasonable interpretation of the term “intumescent” in light of the specification is “a substance that swells and chars upon exposure to heat or flame.” Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., Case IPR2014-01248, slip op. at 5–6 (PTAB Jan. 30, 2015) (Paper 14); see id., slip. op. at 4–5 (PTAB Jan. 27, 2016) (Paper 39). Petitioner and Patent Owner agree that “intumescent” as used in claim 1 of the ’162 patent should be interpreted the same way in this proceeding. Pet. 7; Prelim. Resp. 17. Therefore, for purposes of this Decision, we interpret “intumescent” to mean “a substance that swells and chars upon exposure to heat or flame.” B.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,796,162
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.