• Samsung Electronics Co., Ltd v. Mojo Mobility Inc.Institution denied
  PTAB · Feb 13, 2024 · IPR2023-01086 · APJ Kara L Szpondowski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 or 18 were obvious, including because it did not adequately support the proposed current-modulation modification.

  RulingsInstitution decision

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

    “We agree with Patent Owner. Petitioner does not explain or address sufficiently how Nakamura performs current modulation. Although Nakamura discloses modulating the carrier wave transmitted from the power transmission apparatus 1 and transmitting that modulated wave (the “information signal”) to primary side coil 11 (e.g., Ex. 1005 ¶¶ 77, 78, 80), we find persuasive Patent Owner’s arguments that Petitioner has not established that this discloses modulating the power transfer current induced by the base unit. See Prelim. Resp. 18–22. Petitioner cites to testimony from Dr. Baker that the “information signals (which have current) are modulated . . .” (Ex. 1002 ¶ 215), but this testimony does not establish current modulation. That is, simply because the information signals may have current fails to establish that current modulation is performed as recited in the claim. Therefore, on this record, we are not persuaded that Petitioner has sufficiently shown that Nakamura alone teaches this limitation for purposes of institution.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denialNot reached

    “Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Harmonic, 815 F.3d at 1367 (same). Patent Owner argues that we should exercise our discretion and deny the Petition based on the district court litigation and based on the multiple related petitions filed by Petitioner. Prelim. Resp. 6–17. We need not address Patent Owner’s contentions concerning discretionary denial because, as discussed below, we determine that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’208 patent.” slip op. at 10

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21, 22–64). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not challenge Petitioner’s definition. Prelim. Resp. 6. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 10

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

    “Petitioner states that “no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 6 (citing Ex. 1002 ¶ 67). Patent Owner “does not dispute Petitioner’s statement on claim construction.” Prelim. Resp. 6. We determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,948,208
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Feb 9, 2024 · IPR2023-01098 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution on claims 1, 2, 5, 8, and 12, finding the Fintiv factors favored denial and the petition did not present compelling evidence of unpatentability.

  RulingsInstitution decision

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

    “We agree with Patent Owner’s analysis based on the schedule in the district court’s docket control order. Ex. 2007. The fact that the time-to-trial statistics cited by Petitioner predict that a trial in May 2024 (Pet. 89), a date even earlier than the trial date set in the court’s docket control order, confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 89. As the Texas Litigation is scheduled to go to trial in August 2024, approximately six months before a final written decision would be entered, we determine that Factor 2 weighs in favor of discretionary denial.” slip op. at 8

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

    “Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinarily skilled artisan”) as one having “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002, Declaration of Dr. R. Jacob Baker (“Baker Decl.”) ¶¶ 20–21). Petitioner further states that slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,462,942
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Feb 6, 2024 · IPR2023-01099 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution on claims 21–26 because the Fintiv factors favored discretionary denial and the petition did not present compelling evidence of unpatentability.

  RulingsInstitution decision

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

    “It strikes us as inefficient to conduct, in parallel with the Texas Litigation, numerous inter partes reviews of the same seven patents. This is particularly the case here where the best available evidence indicates that the Texas Litigation will go to trial approximately six months prior to when a final written decision would be entered if inter partes review were to be instituted. Thus, this additional reason weighs in favor of discretionary denial. G. Fintiv Conclusion As a whole, the Fintiv factors weigh in favor of discretionary denial of the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard.” slip op. at 16

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

    “III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges 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.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 17

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

    “The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26

  • Obviousness (§103) › KSR rationalesNot reached

    “The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,462,942
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Feb 6, 2024 · IPR2023-01096 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution on claims 20–23 and 30 because the Fintiv factors favored denial and the petition lacked a compelling unpatentability challenge.

  RulingsInstitution decision

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

    “NHK applies to the situation where the district court has set a trial date to occur earlier than the Board’s deadline to issue a final written decision in an instituted proceeding. In a case where, in contrast to the facts present in NHK, the district court has set a trial date after the Board’s deadline to issue a final written decision in an instituted proceeding, the Board may be less likely to deny institution under 35 U.S.C. § 314(a) based on district court trial timing depending on other factors as set forth below. Fintiv at 3. The instant situation is the former one described above by Fintiv and to which “NHK applies.”” slip op. at 11

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

    “Here, Petitioner argues that a person of ordinary skill in the art would have “modif[ied] the Okada system to use ‘a receiver coil which has a substantially planar shape and is located parallel to a surface of the portable device’ (and complimented such a design with corresponding planar primary coil).” Pet. 21 (quoting claim 20). Petitioner states that the skilled artisan would have done so “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices.” Id. (citing Ex. 1002 ¶135). The cited declaration testimony repeats this statement and adds that the modification could reduce size and/or weight of a device and, due to the “close proximity of coupling,” could improve power transmission efficiency, reduce energy waste, and shorten charging time. Ex. 1002 ¶135.” slip op. at 22

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

    “the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard. III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” CommScope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges 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.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’371 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,316,371
• Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution denied
  PTAB · Dec 18, 2023 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would be obvious, including a reasonable expectation of success in adding a distinguishing second tag.

  RulingsInstitution decision

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

    “In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16

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

    “In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16

  § 103 obviousnesscites Graham
  Patents in suitUS 10,240,197
• Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution denied
  PTAB · Dec 13, 2023 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached

    “In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16

  § 103 obviousnesscites Graham
  Patents in suitUS 10,697,013
• Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Sep 11, 2017 · IPR2017-00935 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

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

    “requesting inter partes review of claims 1, 4, 8–11, 13, 17–24, 26–28, 43, 46, 49, 50, and 52–62 of U.S. Patent No. 8,354,726 B2 (Ex. 1001, “the ’726 patent”) pursuant to 35 U.S.C. § 311(a). Patent Owner Godo Kaisha IP Bridge 1 filed a Preliminary Response (Paper 8, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “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.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2

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

    “limitation of claim 1. Petitioner does not point to any express disclosure in the Intel 90 nm Report of the relevant distance and thicknesses, instead relying on averages of various measurements made by Dr. Fair. See Pet. 39–40; Ex. 1003 ¶¶ 93–99. Petitioner and Dr. Fair, however, do not explain any basis for why it is appropriate to rely on averages of measurements of different components at different locations—as opposed to actual measurements of each component asserted to be the “first gate electrode,” “auxiliary pattern,” “first side-wall insulating film,” “second side-wall insulating film,” and “stress-containing insulating film” recited in the claim—for purposes of calculating the distance limitation. For example, Petitioner does not contend that a person of ordinary skill in the art would have calculated averages and understood the reference to disclose certain values based on such a methodology. “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference,” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989), and that the claim limitations be “arranged or combined in the same way as recited in the claim[],” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Petitioner’s reliance on averages of various measurements, without any supporting explanation, is insufficient to show that the Intel 90 nm Report discloses the distance limitation of claim 1.” slip op. at 13

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

    “D. Other Asserted Grounds (Claims 20, 22, 54, and 56) Petitioner contends that claims 20 and 54 are unpatentable over the Intel 90 nm Report and the Intel IEEE Paper, claims 22 and 56 are unpatentable over the Intel 90 nm Report and Doris, and claims 22 and 56 are unpatentable over the Intel 65 nm Report and Doris, under 35 U.S.C. § 103(a). Pet. 77–83. Claims 20 and 22 depend from claim 1, and claims 54 and 56 depend from claim 43. Petitioner does not argue that the distance limitation of claims 1 and 43 is taught by the Intel IEEE Paper or Doris, alone or in combination with the Intel reports. Id. We are not persuaded that Petitioner has established a reasonable likelihood of prevailing on its asserted grounds for the reasons explained above with respect to parent claims 1 and 43. See supra Sections II.B, II.C.” slip op. at 18

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

    “E. Claim Interpretation The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard as the claim interpretation standard to be applied in inter partes reviews). The parties do not provide proposed interpretations for any claim terms, but Petitioner refers to a district court decision interpreting certain terms. See Pet. 11 (citing Ex. 1008). For purposes of this Decision, we conclude that no claim terms require interpretation.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,354,726
• Amneal Pharmacuticals LLC v. Hospira Inc.Institution denied
  PTAB · Feb 3, 2017 · IPR2016-01580 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 obvious over any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is denied.” slip op. at 2

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

    “In sum, Petitioner has not shown that the relied-upon prior art teaches “wherein the liquid pharmaceutical composition when stored in the glass container for at least five months exhibits no more than about 2% decrease in the concentration of dexmedetomidine,” or that it is inherent. That limitation is recited by claim 1 and incorporated by all other challenged claims via their dependency on claim 1. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in challenging any of claims 1–9 as unpatentable over 2010 Precedex Label and Palmgren. C. The Remaining Grounds Petitioner challenges claims 1–9 as unpatentable over Aantaa, the 2010 Precedex Label, and Palmgren as well as over the 2010 Precedex Label, De Giorgi, Eichhorn, Palmgren, and Lavoisier. Pet. 11–12. In both of these additional grounds, Petitioner relies on the same flawed inherency argument. See Pet. 37–38, 56. Accordingly, there likewise is not a reasonable likelihood of Petitioner prevailing in challenging claims 1–9 on either of these remaining grounds.” slip op. at 9

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

    “In sum, Petitioner has not shown that the relied-upon prior art teaches “wherein the liquid pharmaceutical composition when stored in the glass container for at least five months exhibits no more than about 2% decrease in the concentration of dexmedetomidine,” or that it is inherent. That limitation is recited by claim 1 and incorporated by all other challenged claims via their dependency on claim 1. Accordingly, there is not a reasonable likelihood of Petitioner prevailing in challenging any of claims 1–9 as unpatentable over 2010 Precedex Label and Palmgren. C. The Remaining Grounds Petitioner challenges claims 1–9 as unpatentable over Aantaa, the 2010 Precedex Label, and Palmgren as well as over the 2010 Precedex Label, De Giorgi, Eichhorn, Palmgren, and Lavoisier. Pet. 11–12. In both of these additional grounds, Petitioner relies on the same flawed inherency argument. See Pet. 37–38, 56. Accordingly, there likewise is not a reasonable likelihood of Petitioner prevailing in challenging claims 1–9 on either of these remaining grounds.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “It is irrelevant that the 2010 Precedex Label does not explicitly disclose this inherent property of the Precedex® solutions therein.” Pet. 22. But, like its “stable for two years” argument, Petitioner’s inherency argument speaks to the concentrated form of dexmedetomidine-HCl disclosed in the 2010 Precedex Label, which is outside the scope of claim 1, and not to a “ready to use” diluted form. Moreover, the stated basis for Petitioner’s inherency assertion is that “the Precedex™ solutions disclosed in the 2010 Precedex Label were stored under identical conditions – sterile, in a sealed glass container – as those in Example 1 of the ’106 patent which exhibited no more than about 2% decrease in the concentration.” Id. at 22 (citing Ex. 1001, 13:35–43; Ex. 1007, ll. 207–08, 697–701). But, the conditions were not identical; they employed different concentrations and temperatures. More specifically, the 2010 Precedex Label discloses glass vial storage of dexmedetomidine-HCl at a concentration of 100 mcg/mL concentration and a temperature of “25°C (77°F) with excursions allowed from 15 to 30°C (59 to 86°F),” whereas Example 1 of the ’106 patent presents five-month stability data for dexmedetomidine-HCl at a concentration of just 4 mcg/mL and at a temperature of 40°C. Compare Ex. 1007, lines 697–701, with Ex. 1001, 13:28–37, 45–47, 14:4–14. slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,648,106
• Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentable
  PTAB · May 11, 2016 · IPR2015-00300 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 27, 28, 88, 101, and 108 are unpatentable as obvious over Dell, Sweere, and Allan, with Planar additionally applied to claim 108.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (internal citations omitted). Generally, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed.” Id.” slip op. at 8

  • ExcludeMotion to exclude, grantedGranted

    “IV. MOTIONS TO EXCLUDE Petitioner filed a Motion to Exclude Exhibits 2003–2006. Paper 33. Each of Exhibits 2003–2005 is a license agreement, and Exhibit 2006 is a Declaration by Robert A. Sobie. All of this evidence was submitted by Patent Owner as objective evidence of secondary considerations. Because we do not rely on any of that evidence in a manner adverse to Petitioner, we dismiss the Motion as moot. Patent Owner filed a Motion to Exclude Exhibit 1007, which is a declaration by T.E. Schlesinger, Ph.D., which Petitioner filed with its Reply. Paper 35. Because we do not rely on Exhibit 1007 in any manner, we dismiss the Motion as moot.” slip op. at 28

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “entity. It was filed without our authorization because it was filed with Patent Owner’s Opposition to Petitioner’s Motion to Exclude despite that Exhibit 202316 is not responsive to the Motion to Exclude. Paper 42 (“Opp. to Pet. Mot. to Excl.”). In fact, Patent Owner’s Opposition requests that we enter into the record “new Exhibit 2023, which was finalized subsequent to Patent Owner’s Response.” Opp. to Pet. Mot. to Excl. 1. A request for relief should not be made in an opposition brief. It should be made in a motion. 37 C.F.R. § 42.20(a) (“Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion.”). Further, a motion (and, thus, a request for relief) may be filed only if authorization has been obtained. 37 C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.”). Consequently, Exhibit 2023 shall be expunged because it was filed without our authorization. See 37 C.F.R. § 42.7.” slip op. at 29

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

    “No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 6–7 (offering only one proposed construction, which was not material to the patentability challenge);8 PO Resp. 11 (“Patent Owner agrees that the claim terms involved in the [instituted Grounds] do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 7

  Patent outcomesUS 6,721,178 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,721,178
• Leggett & Platt, Inc. v. Dreamwell, Ltd.Institution denied
  PTAB · Feb 22, 2016 · IPR2015-01757 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1–9 under the asserted obviousness ground.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Claim Construction In an inter partes review, the Board interprets claim terms in an unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes a construction for “high-carbon steel.” Pet. 21. We, however, determine that an explicit construction of “high-carbon steel” or any other claim term is not necessary for the purposes of our Decision.” slip op. at 4

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

    “Absent other evidence or another articulated rationale with logical underpinning, combining Gladney, Kochi, and Magrab to arrive at the a spring for a cushioning article made from the specifically claimed alloy of high-carbon steel appears to be improper hindsight. “A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” See KSR, 550 U.S. at 421. Petitioner fails to establish a sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness (In re Kahn, 441 F.3d at 988) and, thus, fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. iii. Dependent Claims 2–9 Claims 2–9 depend from claim 1, and, like for claim 1, Petitioner contends that claims 2–9 are unpatentable over Gladney, Kochi, and Magrab (Pet. 40–47). For the same reasons as discussed above, we determine that Petitioner fails to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “The evidence of record does not establish sufficiently that the prior art alloyed high-carbon steel is an inexpensive material suitable for springs of a mattress or other cushioning article. Gladney’s general disclosure that springs made from high-carbon spring steels are inexpensive (see Ex. 1003, 5:1–3), fails to establish sufficiently that the prior art alloyed high-carbon steel is inexpensive or suitable for springs of a mattress or cushioning article. Likewise, Magrab’s general disclosures that high-carbon steel is inexpensive and used for springs (see Ex. 1005, 155, 161–162) and Kochi’s brief mention of “spring steel” (Ex. 1004 ¶ 1) does not demonstrate such. Dr. O’Malley’s testimony also does not cure the deficiencies of the prior art because Dr. O’Malley discusses cost with regards to carbon steel generally, but not the cost of the prior art alloyed high-carbon steel. See Ex. 1002 ¶¶ 68, 85. We also acknowledge that Gladney and Magrab disclose that the cost of materials is a factor to be considered when choosing an alloy. Pet. 38 (citing Ex. 1003, 1005). Such disclosure, however, does not demonstrate that claim 1 would have been obvious based on Gladney, Kochi, and Magrab. And Petitioner’s reliance on Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) does not persuade us otherwise. In Dystar, decided prior to KSR, the Federal Circuit emphasized a flexible approach to considering whether an invention would have been obvious. DyStar, 464 F.3d at 1367 (“It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly.”). As noted by the Court, “[o]bviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test.” Id. Moreover, as discussed above, there is no persuasive evidence that the alloyed high-carbon steel spring recited in the claim is less expensive or more efficient than prior art springs. See Prelim. Resp. 17 (pointing out there is no “list of materials costs or any manufacturing cost analysis that would substantiate Petitioner’s statement in the context of combining Gladney with Kochi with Magrab to allegedly come up with the claimed invention.”). The evidence of record fails to demonstrate, sufficiently, that the prior art alloyed high-carbon steel is an inexpensive material suitable for a spring for a mattress or cushioning articles and, thus, Petitioner fails to establish that one of ordinary skill in the art would make the proposed modification because the alloyed high-carbon steel required by claim 1 is a well-known inexpensive material that is suitable for springs.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “C. Availability of Magrab as Prior Art Patent Owner argues that Petitioner fails to establish that Magrab was publically accessible prior to April 18, 2008. Prelim. Resp. 34–36. As discussed above, we determine that Petitioner fails to demonstrate that claims 1–9 are unpatentable over Gladney, Kochi, and Magrab and, thus, we need not address whether Petitioner has established sufficiently that Magrab is prior art for the purposes of our Decision.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,919,752

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.