• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · May 12, 2023 · IPR2023-00122 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable on the proposed obviousness grounds.

  RulingsInstitution decision

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

    “We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing.” slip op. at 11

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

    “establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1016, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Id. at 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery, and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5 (citing Ex. 1003 ¶¶ 39–41). Petitioner further 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Petitioner argues, and Patent Owner does not contest, that the pre- AIA statutory provisions apply to this case. See Pet. 5 n.1. Neither party indicates the result would change based on which version of the statute the Board applies for purposes of deciding whether to institute review. 2 Brown, US 3,748,182, issued July 24, 1973 (Ex. 1016). 3 Higuchi, Chinese Patent App. Pub. CN101286572 A, published October 15, 2008 (Exs. 1009 (English translation), 1010 (original Chinese)). 4 Okochi, EP 0829105 B1, published May 21, 2003 (Ex. 1013). 5 Brenner, DE 102005058132 A1, published June 6, 2007 (Ex. 1014, with English translation). 6 Kubota, US 5,654,114, issued August 5, 1997 (Ex. 1015). of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 5

  • Expert testimonyPetitioner expert discountedOther

    “In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,258,092
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · May 12, 2023 · IPR2023-00161 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would have been obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

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

    “We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries:” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 23 (citing Ex. 1003 ¶ 67–68); see Ex. 1010, 1:17–18, 2:38–46, 3:2–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Compare Ex. 1003 ¶¶ 67–68, with Pet. 22–23. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther

    “(‘POSITA’) would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, materials or chemical engineering, physics, chemistry or a related discipline.” Pet. 19. In addition, Petitioner argues that a person of ordinary skill in the art would have had “at least five years of experience in the design of lithium-ion button cell battery structures.” Id. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and vice-versa. Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. at 11–12 (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 6

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,024,869
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01486 · APJ Christopher L Crumbley · IPR · Institution

  The Board denied institution for claims 14–25 because Petitioner did not show a reasonable likelihood that either asserted obviousness combination taught the force-fitting connection limitation.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • BurdenDenied

    “top casing in an overlapping area, the top casing is disposed radially inward of the cup casing in the overlapping area, and the housing cup and the housing top are held together by a force-fitting connection.” Ex. 3001, 1:37–41. Independent claim 23 recites an identical limitation. Id. at 2:55– 59. The remaining challenged claims each depend, directly or indirectly, from one of these two claims. Id. at 1:47–2:29, 4:1–16. Accordingly, all of the challenged claims include a limitation requiring that “the housing cup and the housing top [be] held together by a force-fitting connection.” See 37 C.F.R. § 1.75(c). To show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests a “housing cup” and a “housing top” that “are held together by a force-fitting connection.” As discussed above, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 13

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

    “ANALYSIS A. Claim Construction Petitioner does not propose an express construction of any claim term, and contends that the claims “should be given their ordinary and customary meaning.” Pet. 20. Patent Owner agrees that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without expressly construing any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 9

  • Expert testimonyPetitioner expert discountedOther

    “cites to four paragraphs of Mr. Juzkow’s declaration, without discussing the testimony or providing any statement of its relevance. Pet. 31 (citing Ex. 1002 ¶¶ 402–405). It is unclear whether the cited testimony is intended to support the Kobayashi argument, the Brenner argument, or both. Id. In any case, the first cited paragraph does not contain any testimony supporting either of Petitioner’s arguments, instead merely directing the reader to “§X.A.1.f” of Mr. Juzkow’s declaration, without specifying the page numbers or paragraph numbers where that section can be found. Ex. 1002 ¶ 402. Section IX.A.1.f appears to include eleven additional paragraphs covering six pages and mostly to discuss a reference, Kaun, that is not at issue in this proceeding. Id. ¶¶ 125–135. The other three paragraphs cited in the Petition generally just parrot the conclusory language in the Petition and are of limited persuasive value. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Mr. Juzkow’s testimony addresses only whether there is a force-fitting connection, not whether the button cell is held together by the forces. Ex. 1002 ¶¶ 403–405.” slip op. at 15

  Claim construction
  Patents in suitUS 9,496,581
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01487 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 9–16 were obvious over either 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) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • BurdenNot shown unpatentable

    “crimping or beading-over process of closing a battery casing, Petitioner offers only attorney argument for the proposition that such a process creates a battery casing that is “held together by a force-fitting connection.” Id. But “[a]ttorney argument is not evidence.” Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)).” slip op. at 15

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

    “27–28. Patent Owner responds that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without construing “insulating means,” so we do not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 9

  Claim construction
  Patents in suitUS 9,799,913
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show that the asserted combinations taught or suggested the claimed force-fitting connection holding the housing cup and top together.

  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) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

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

    “top” that “are held together by a force-fitting connection.” Ex. 3001, 1:28– 29 (claim 1), 2:51–52 (claim 23). The parties disagree about whether the references on which Petitioner relies teach or suggest this limitation. Pet. 28–32, 64–66; Prelim. Resp. 53–61. As discussed more completely below, we are able to determine whether to institute trial without deciding precisely what the ’835 patent means when it describes two parts as “held together by a force-fitting connection.” Accordingly, we need not, and do not, construe this term expressly. See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Although we need not decide the precise meaning of “held together by a force-fitting connection” in order to decide whether to institute trial, we note (1) that, without some evidence to the contrary, a battery casing whose half-parts are “held together by” a particular condition must be a battery casing whose half-parts would no longer be held together if the condition were not present, and (2) that neither party has directed us to any evidence to the contrary. Accordingly, whatever a “force-fitting connection” is, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 11

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

    “Even if we accept Petitioner’s position that Kaun suggests radial forces around its seal, Petitioner has not presented sufficient evidence that such forces hold a housing cup and housing top together. With respect to the key “held together” recitation, Petitioner’s only argument or evidence in the Petition is a sole quote purportedly from Patent Owner’s expert, Dr. Peckerar:” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,153,835
• Guangdong Mic-Power New Energy Co. Ltd. / Peag LLC et al. v. Varta Microbattery GmbHInstitution denied
  PTAB · Jan 5, 2022 · IPR2021-01206 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were obvious over the asserted combinations.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any challenged claim of the ’776 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “agree with Patent Owner that Petitioner fails to adequately explain why one of ordinary skill in the art would have sought to use the welding technique of Martin when assembling the battery of Comparative Example 1. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)). Nor has Petitioner demonstrated sufficiently that one of ordinary skill in the art would have had a reasonable expectation of success in combining Kannou and Martin to arrive at the subject matter of claim 1. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (explaining that a petitioner must demonstrate that one of ordinary skill in the art would have had a reasonable expectation of success in combining the identified references to meet the limitations of the claimed invention).” slip op. at 15

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

    “Neither party asserts that any terms of the ’776 require construction for purposes of this Decision. Pet. 24; Prelim. Resp. 12. And, upon review of the parties’ arguments and supporting evidence, we agree that no terms of the ’776 patent require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7

  Claim construction§ 103 obviousness
  Patents in suitUS 10,971,776
• A123 Systems, LLC v. Long Hua Technology Co., Ltd.Institution denied
  PTAB · Oct 18, 2021 · IPR2021-00894 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any of claims 1–19 under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any claim of the ’484 patent. Thus, we decline to institute inter partes review.” slip op. at 2

  • BurdenNot shown unpatentable

    “Hisamitsu’s outermost layer collectors 105 as corresponding to the claimed positive and negative electrodes.” Prelim. Resp. 35. However, Petitioner does not specifically indicate that the outermost layer collectors 105 correspond to the claimed positive electrode and negative electrode, particularly in its arguments regarding limitations 1.b., 1.c., 1.d., 1.e., 1.g., or 1.i., and we decline to make and analyze that argument on Petitioner’s behalf. If Petitioner intended to choose a single one of Hisamitsu’s bipolar electrodes or sandwiching separators in stack 101 to furnish the anticipating elements, Petitioner has not sufficiently indicated or explained that, either.” slip op. at 12

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

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2020). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 4

  • Skill levelSkill level board ownOther

    “ordinary skill in the art “would be a chemist having at least a Bachelor’s degree with at least 5 years of experience in lithium ion battery chemistry.” Pet. 19 (citing Ex. 1013 ¶¶ 13–15). Patent Owner asserts that one of ordinary skill in the art “would be a chemist or other material scientist having a doctoral degree, or at least a Bachelor’s degree with at least 5 years of experience in lithium ion battery development.” Prelim. Resp. 17. Petitioner’s definition and Patent Owner’s definition overlap significantly, and neither party asserts that adopting one definition or other would change the outcome. Considering the two proposals, we regard a fair hybrid definition of a person of ordinary skill in the art to be “a chemist or other material scientist having at least a Bachelor’s degree with at least 5 years of experience in lithium ion battery chemistry and development.” This level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 7,803,484
• Extrusion Group, LLC / Extrusion Group Services, LLC et al. v. Kimberly-Clark Global Sales, LLCInstitution denied
  PTAB · May 12, 2021 · IPR2021-00202 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 5, 7, 9, and 18 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], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Osswald’s testimony, Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had a Bachelor of Science degree in mechanical engineering, chemical engineering, fluid mechanics, and/or polymer processing or equivalent, and at least two years of practical experience working with dies and other equipment used in polymer processing, such as meltblowing dies, or in lieu of work experience, additional education and/or coursework exposing them to polymer processing and equipment, including meltblowing dies. Pet. 11; Ex. 1002” slip op. at 8

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

    “For purposes of this proceeding, the parties do not dispute the meaning of any claim term. See Pet. 11–15 (for purposes of this proceeding, Petitioner adopts Patent Owner’s claim construction positions from the related district court litigation); Prelim. Resp. 11–14 (discussing claim construction and not disputing constructions on which Petition is based). Accordingly, we do not need to resolve any claim construction disputes for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of inter partes review).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “passages formed by the first side of the die tip and the first air plate, and (ii) a series of passages are formed by the second side of the die tip and the second air plate. For purposes of this proceeding, the parties agree that “series” means “two or more.” Pet. 14–15 (adopting Patent Owner’s claim construction positions from the related district court litigation, including Patent Owner’s contention that a “series” is “two or more” things); Prelim. Resp. 14.6 6 Patent Owner states: “For the purposes of this IPR proceeding, both parties have agreed that ‘series’ means ‘two or more.’” Prelim. Resp. 14. (citing Pet. 15). Patent Owner directs us to the district court’s claim construction order, which construes “series” as meaning “two or more.” Prelim. Resp. 14; Ex. 2009, 27, 37. The district court relied on dictionary definitions and “normal usage,” for example, in the context of baseball. Ex. 2009, 26–27. We note that the parties’ agreed construction is consistent with the claims of the ’104 Patent, which recite the word “series” in various contexts, including a “series of passages,” a “series of raised portions,” a “series of channels,” a “series of polymer ports,” and a “series of capillaries.” Ex. 1001, 12:19, 12:23, 12:31, 12:33, 12:42, 12:44, 12:64–65, 13:2–3, 13:20–14:1, 14:6, 14:11–13. In each case, the meaning “two or more” is consistent with the claim language. The parties’ agreed construction is also supported by the Specification, which shows and” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,972,104
• Beckman Coulter, Inc. v. Sysmex Corporation And Sysmex America, Inc.Institution denied
  PTAB · Feb 22, 2021 · IPR2020-01501 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 3–16, and 18–28 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], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As compared with Patent Owner’s definition of a POSA, we find that Petitioner’s definition is more complete and more consistent with the disclosure of the ’350 Patent and the scope and content of the asserted prior art because Petitioner’s definition requires familiarity with “the design and operation of hematology analyzers available in the market, including Patent Owner’s XE-Series analyzers, the Coulter LH-700 analyzers, and other commercially available hematology analyzers.” Pet. 13. We find that such familiarity is consistent with the ’350 Patent, which discloses that a blood cell analyzer capable of measuring cells in body fluid was known in the art and that “the functions of the present invention can be realized in a conventional blood cell analyzer by installing the computer program in a conventional blood cell analyzer.” Ex. 1001, 1:45–61, 15:52–58. The parties’ definitions of a POSA differ in additional respects, including the duration of a POSA’s practical experience, whether such practical experience is in addition to or possibly as a substitute for an educational component, and whether a POSA’s practical experience could be merely using hardware and/or software for an analyzer, as opposed to developing such hardware and/or software. In each of these respects, we find that Petitioner’s proposal is more reasonable than Patent Owner’s. Accordingly, apply Petitioner’s definition of a POSA.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “See, e.g., Ex. 1001, 16:49–55 (emphasis added). We find that this claim language supports Patent Owner’s proposed constructions for two reasons. First, we agree with Patent Owner that, by separately reciting “a blood measuring mode” and “a body fluid measuring mode,” the claim language implies that the two modes are distinct. Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see Prelim. Resp. 48–49. Second, the above-quoted claim language supports Patent Owner’s contention that “a blood measuring mode” and “a body fluid measuring mode” should each be construed as “a sample analyzer operation mode . . . used for measuring cells.” Prelim. Resp. 48. Independent claims 1 and 12 include the following “wherein” clause: wherein a respective sequence of operations for measuring cells in the blood sample and in the body fluid sample comprises (a) a sensing operation comprising: operations of preparing for measurement and operating a detector to sense the cells in the sample and (b) an analyzing operation comprising operations of analyzing sample measurements and displaying analysis results,” slip op. at 14

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

    “mode, different from the blood measuring mode, used for measuring cells in a body fluid sample.” These constructions were proposed by Patent Owner no later than July 6, 2020, in the Delaware case. See Ex. 1043, Appendix A-2, 2–3. Despite receiving Patent Owner’s proposed constructions more than a month before the August 8, 2020, filing date of the Petition, Petitioner does not address those constructions. Nor does Petitioner show sufficiently that CL4 would have been obvious under those constructions. More particularly, Petitioner does not show sufficiently that it would have been obvious to a POSA to program the controller of the XE-2100 analyzer to selectively operate the sample analyzer in two different operation modes, one for measuring cells in a blood sample and the other for measuring cells in a body fluid sample. Petitioner also does not show sufficiently that, even when combined, XE2100, LH700, LH-BFA, and a POSA’s general knowledge teach or suggest “a controller programmed to selectively operate the sample analyzer in a blood measuring mode or a body fluid measuring mode,” as recited in the challenged claims. Nor does Petitioner present argument or evidence sufficient to show how or why a POSA would have modified the XE-2100 analyzer to include such a programmed controller. Missing from Petitioner’s argument addressing CL4 is any discussion of modifying or reprogramming the controller of the XE-2100 analyzer so that it selectively operates the sample analyzer in two different operation modes, one for blood and another for body fluid.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,401,350
• Beckman Coulter, Inc. v. Sysmex Corporation And Sysmex America, Inc.Institution denied
  PTAB · Feb 22, 2021 · IPR2020-01500 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–16, and 18–28 were unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when presented, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Bachelor’s or Master’s degree in biologic science, biomedical engineering, and/or electrical engineering or a related field” and “at least five years of experience in developing hardware and/or software for hematology analyzers.” Pet. 12. Petitioner further contends that such a person “would have been familiar with the design and operation of hematology analyzers available in the market, including Patent Owner’s XE-Series analyzers, the Coulter LH-700 analyzers, and other commercially available hematology analyzers.” Id. Patent Owner states that a POSA “would have possessed a Bachelor’s or Master’s degree in biological science, biomedical and/or electrical engineering, or a related field, or would have had at least three years of experience in developing or using hardware and/or software for analyzers for blood or other body fluids.” Prelim. Resp. 46–47. Patent Owner further states that “[t]he difference between the level of ordinary skill in the art proposed by Patent Owner and Petitioner’s level does not affect the arguments” in the Preliminary Response. Id. at 47. Petitioner’s definition is more complete and more consistent with the disclosure of the ’350 Patent and the scope and content of the asserted prior art because Petitioner’s definition requires familiarity with “the design and operation of hematology analyzers available in the market, including Patent Owner’s XE-Series analyzers, the Coulter LH-700 analyzers, and other commercially available hematology analyzers.” Pet. 13. We find that such familiarity is consistent with the ’350 Patent, which discloses that a blood cell analyzer capable of measuring cells in body fluid was known in the art and that “the functions of the present invention can be realized in a conventional blood cell analyzer by installing the computer program in a conventional blood cell analyzer.” Ex. 1001, 1:45–61, 15:52–58. The parties’ definitions of a POSA differ in additional respects, including the duration of a POSA’s practical experience, whether such practical experience is in addition to or possibly as a substitute for an educational component, and whether a POSA’s practical experience could be merely using hardware and/or software for an analyzer, as opposed to developing such hardware and/or software. In each of these respects, we find that Petitioner’s proposal is more reasonable than Patent Owner’s. Accordingly, for purposes of determining whether to institute an inter partes review, we apply Petitioner’s definition of a POSA.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “language supports Patent Owner’s proposed constructions for two reasons. First, we agree with Patent Owner that, by separately reciting “a blood measuring mode” and “a body fluid measuring mode,” the claim language implies that the two modes are distinct. Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see Prelim. Resp. 49. Second, the above-quoted claim language supports Patent Owner’s contention that “a blood measuring mode” and “a body fluid measuring mode” should each be construed as “a sample analyzer operation mode . . . used for measuring cells.” Prelim. Resp. 48. Independent claims 1 and 12 include the following “wherein” clause: wherein a respective sequence of operations for measuring cells in the blood sample and in the body fluid sample comprises (a) a sensing operation comprising: operations of preparing for measurement and operating a detector to sense the cells in the sample and (b) an analyzing operation comprising operations of analyzing sample measurements and displaying analysis results, the sensing operation performed in the body fluid measuring mode being different, at least partially, from the sensing operation performed in the blood measuring mode. Ex. 1001, 16:55–65, 18:31–41 (emphasis added). We find that this claim language is consistent with Patent Owner’s constructions for “a blood measuring mode” and “a body fluid measuring mode.” In our view, the above-quoted claim limitation provides one example of a possible difference between the body fluid measuring mode and the blood fluid measuring mode. It does not suggest that, in the absence of this limitation, the body” slip op. at 14

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

    “Petitioner shows that XE2100 (Ex. 1004) describes a hematology analyzer having a controller and that XE-BFA (Ex. 1005) describes a “Body Fluid Application” for the same analyzer. But Petitioner does not show sufficiently that these documents, even when combined with a POSA’s knowledge, disclose or suggest “a controller programmed to selectively operate the sample analyzer in a blood measuring mode or a body fluid measuring mode,” as recited in the challenged claims. Nor does Petitioner present argument or evidence sufficient to show that a POSA would have modified the XE-2100 analyzer to include such a programmed controller. Missing from Petitioner’s argument addressing CL4 is any discussion of modifying or reprogramming the controller of the XE-2100 analyzer so that it selectively operates the sample analyzer in two different operation modes, one for blood and another for body fluid. There is no dispute that XE2100 does not teach “a controller programmed to selectively operate the sample analyzer in a blood measuring mode or a body fluid measuring mode,” as recited in the independent claims. XE2100 describes the operation of a hematology analyzer to measure blood samples, not body fluid samples. Petitioner argues that “XE-BFA describes . . . operation of the XE-2100 analyzer in the body fluid measuring mode.” Pet. 34. Under our claim construction for “body fluid measuring mode,” we are not persuaded by Petitioner’s argument. We agree with Patent Owner that “XE-BFA does not disclose a separate body fluid measuring mode; it XE2100.” Prelim. Resp. 57. Although Petitioner directs us to XE-BFA’s disclosure of “Principles & Technologies” as “WBC: Fluorescent Flow Cytometry; RBC: DC-sheath flow” (Ex. 1005, 2), XE2100 discloses these same principles and technologies for measuring blood samples. Ex. 1004, 7- 2, 7-3, 7-7. XE-BFA discloses: “The XE Series analyzers with XE pro software now brings the power of fluorescent flow cytometry to body fluid analysis.” Ex. 1005, 2. Petitioner does not argue that the “XE pro software” introduces a different mode of operation—a body fluid measuring mode—to the XE- 2100 analyzer. Patent Owner presents evidence that the “XE pro software” predates the introduction of the “Body Fluid Application.” Prelim. Resp. 58 (citing Ex. 2018; Ex. 2042, 3; Ex. 2043, 1). Patent Owner’s evidence reinforces our finding that Petitioner’s arguments and evidence are insufficient to show a controller programmed as recited in the challenged claims. We have considered the paragraphs of the Roche Declaration relied” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,401,350

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.