- Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00476 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–11 unpatentable, principally failing to establish distinct lead wiring lines.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows that there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We deny inter partes review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). For the reasons discussed below, we deny institution of inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“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.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“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.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). 7 Yoneda, JP2000267590A, published Mar. 19, 1999. Ex. 1011. 8 Tanaka, JP2004094020A, published Mar. 25, 2004, with exhibit including certified English language translation. Ex. 1012. 9 Hirosue, US 2003/0189686 A1, published Oct. 9, 2003. Ex. 1013. have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 5 (citing Ex. 1002 ¶¶ 41‒44). Patent Owner, “[f]or purposes of th[e] Preliminary Response . . . does not dispute the level of skill for a person of ordinary skill in the art.” Prelim. Resp. 7. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,335,913 - Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution
Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.
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, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show 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) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,116,390 - Jupiter Research, LLC v. VPR Brands, L.P.Institution deniedPTAB · Jul 12, 2022 · IPR2022-00299 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–18 were unpatentable over the asserted prior-art grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, Petitioner contends that the “airflow sensor having elements (401), (403), (404), (405), and (406)” is “electronic at least in that it includes contact piece (404) and piece (403) that is connected to the integrated circuit board (3),” but does not provide a detailed explanation of the significance of the location of contact pieces 403 and 404, or how elements 401, 403, 404, 405, and 406 form an electric airflow sensor. Pet. 47–48 (citing Ex. 1009, 8), 54–55 (same). Zhu teaches that “integrated circuit board 3 is provided with two fixed contact pieces 403 and 404 that extend toward the elastic ring 401.” Ex. 1009, 8. Zhu further teaches that elastic ring 401 is fixed in plastic base 405, and that “fixed contact pieces 403 and 404 are fixed outside the plastic base 405.” Id. Considering the disclosures in Zhu regarding the arrangement and operation of these elements, Petitioner’s conclusory statement that Zhu teaches an electric airflow sensor simply because contact” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, or a closely related field and one to two years of experience working in the consumer electronics or computer industry in the capacity of a design, application, customer marketing or technical marketing engineer.” Pet. 11 (citing Ex. 1004 ¶ 58). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See generally, Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’622 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The parties stipulated to the construction of many claim terms in their related litigation currently pending in the District of Arizona. Pet. 11–12; Prelim. Resp. 12; Ex. 1006. Based on the parties’ apparent agreement, and considering the record before us, we adopt the parties agreed-upon claim constructions for purposes of this Decision. See Ex. 1006 (stipulated claim construction proposed in the district court). We provide the constructions of “electric airflow sensor” and “detecting an airflow,” which are of particular relevance to this Decision, below. “electric airflow sensor” an electric sensor to detect air movement generated by a user’s inhaling or puffing act “detecting an airflow” determining that a user is inducing airflow into or out of the device Ex. 1006, 2, 3.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner neither directs us to an express disclosure in Cox that air flow detecting device 51 is an electric airflow sensor as required by claim 13, nor adequately explains that a person of ordinary skill in the art would have understood Cox as disclosing an electric airflow sensor, and could have combined Cox’s disclosures with their own knowledge to make the claimed invention. See Helifix Ltd. v. Bloc-Loc, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000) (A reference that does not expressly disclose a claimed limitation “might nevertheless be anticipating if a person of ordinary skill in the art would understand [the reference] as disclosing [the limitation] and if such a person could have combined the [reference’s] description of the invention with his own knowledge to make the claimed invention.”). We also do not understand Petitioner to be arguing that Cox inherently discloses an electric airflow sensor. See In re Montgomery, 667 F.3d 1375, 1379 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). For these reasons, we are not persuaded that Petitioner sufficiently establishes that Cox discloses “an electric air flow sensor that is used to turn on and off the electric power source by way of detecting an airflow” as recited in independent claim 13. Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 13, and claims 14 and 15 that depend therefrom, are anticipated by Cox.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,205,622 - Gamber-Johnson LLC v. National Products Inc.Institution deniedPTAB · Jan 3, 2022 · IPR2021-01159 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim, relying on the same-structure mapping and unsupported obviousness theories.
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, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show 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) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008))). D. Asserted Anticipation by Woud slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art. B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“support surface” (emphasis added). The structure Petitioner relies on as meeting the recited “female connector,” however, encompasses the entirety of the structure relied on as meeting the recited “docking support surface.” Compare Pet. 34–36, with id. at 33–34. As highlighted by Patent Owner, this raises a significant issue. See Prelim Resp. 24, 26–27. Our reviewing court explains that, [w]here a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct component[s]” of the patented invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”). There is nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”). Becton Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Therefore, a single structure in Woud cannot be both the recited female connector and the recited docking support surface, nor meet the requirement that the female connector is disposed within the docking support surface where the entirety of structure relied on as the docking support surface is also the structure relied on as the female connector, as Petitioner contends. Petitioner offers no explanation or elements set forth in the claim. See Pet. Because we find Petitioner relies on the same structure for two distinct components of claim 1, Petitioner fails to establish a reasonable likelihood that it will establish by a preponderance that claim 1 is anticipated by Woud.5” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,026 - PTAB · Oct 21, 2021 · IPR2021-00767 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 7–11, and 14–18 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable electronic devices),” or “five years or more of experience in the design or development of interlocking products.” Pet. 10. At this stage of the definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier, if not deleted, expands the range indefinitely without an upper bound, and thus would preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.2 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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)). 2 Petitioner incorrectly states that claims in an inter partes review are to be construed using the broadest reasonable construction standard, which applied to proceedings filed prior to November 13, 2018. Pet. 10–11; see also 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny”). See Prelim. Resp.; Pet. 10–11. For purposes of this Decision, based on the record before us, we determine that none of the claim terms requires an explicit construction.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“Claim 1 requires that (1) the adapter comprises a contactor and male positioning interface; (2) the contactor comprises a contactor surface and a plurality of contacts exposed and arranged on the surface that are electrically coupleable to the electronic device; (3) the male positioning interface defines a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter; and (4) the rim guides the proper mating of the contactor of the adapter to the external connector. Ex. 1001, 34:3–13. Petitioner identifies components in the images of the Flex 8 taken from GPS 1 that it purports to be an adapter comprising a contactor with contacts, but does not explain why or how those identified components meet GPS 1 from which we can identify, or discern the function of, any component of the device identified in those images. See Pet. 16–18 (Petitioner’s contentions regarding the adapter limitation of claim 1); see also Ex. 1003 (GPS 1, nowhere identifying any feature of the device by reference to the images). Additionally, Petitioner does not identify anything in the images corresponding to the recited “male positioning interface” or “rim surrounding, and in contact with, a perimeter of the contactor surface . . . to guide proper mating of the contactor of the adapter to the external connector” limitations of claim 1. It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence. Specifically, Petitioner fails to explain with any particularity how or why the images reproduced above support its view that GPS 1 discloses “an adapter coupleable to a portable electronic device for mating with an states that “[u]nder PO’s theories of infringement, GPS 1 discloses these recitations” and provides the annotated images reproduced above. Id. Patent Owner’s infringement contentions, however, are directed to a different product (the ATMOS Temperature Controlling Cradle Kit for Samsung Galaxy TAB A 8" Product), and Petitioner does not explain how that product relates, if at all, to the Flex 8 depicted in GPS 1. Moreover, Petitioner’s citation to Patent Owner’s infringement contentions to support conclusory statements not otherwise supported in the Petition amounts to an improper incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Petition, therefore, falls short of adequately establishing the identity or function of any component in the images of the Flex 8 from GPS 1. Petitioner states that, although the Petition primarily focuses on GPS 1 because “webpages are most easily reproduced” therein, “the same analysis applies to each of the AP Publications.” Pet. 16. As was the case with Petitioner’s challenge based on GPS 1, the Petition fails to explain with any particularity how the products depicted in GPS 2, GPS 3, and GPS 4 support its view that GPS 2, GPS 3, and GPS 4 each discloses “an adapter coupleable to a portable electronic device for mating with an external connector” as recited in claim 1. Pet. 18–21. Petitioner provides two still images from each of GPS 2, GPS 3, and GPS 4, which appear to show the Flex 8, without annotations or further explanation. Id. The Petition, therefore, also does not identify sufficiently where each element of claim 1 is found in GPS 2, GPS 3, and GPS 4. establishes that any of the AP Publications discloses the recitations of claim 1 directed to “an adapter coupleable to a portable electronic device for mating with an external connector.” Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 1, and claims 2, 3, and 7–9 that depend directly or indirectly therefrom, are anticipated by the AP Publications.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,630,334 - PTAB · Oct 6, 2021 · IPR2021-00622 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 8–11, 14, 15, 19, and 20 were unpatentable on the asserted 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, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products” or “(2) five years or more of experience in the design or development of interlocking products,” where exemplary “interlocking products” include “docking cradles and adapters for portable electronic devices.” Pet. 16 (citing Ex. 1011 ¶¶ 21–23, 60–62). Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”). Petitioner contends that, “[i]n this inter partes review, no claim terms require construction.” Pet. 17. Petitioner further contends, however, that “in some instances, Petitioner relies at least in part on [Patent Owner’s] own interpretations of its claims in [Patent Owner’s] own Infringement Contentions.” Id. (citing Ex. 1021). Patent Owner does not offer any interpretation of claim terms (see Prelim. Resp.), although it does argue Petitioner erred in misstating the applicable standard of “broadest reasonable construction” (id. at 20, 21–22, 26–28; Pet. 16–17 (citing 37 C.F.R. § 42.100(b))). On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Petitioner’s reliance on Centocor is not well founded, as it pertains to the prima facie case of acquiescence estopping the patentee where the Examiner has “issued a clear, unambiguous, and final § 112 rejection” for “new matter” and the patentee has “conceded the correctness of the rejection by filing a CIP application in response.” Centocor, 662 F. Supp. 2d at 591; see also Litton, 728 F.2d at 1438 (holding that patentee filing a continuing application as a continuation-in-part implied that it did add new matter and patentee was estopped from contrary arguments). Petitioner offers no explanation or reasoning why we should treat prior art rejections overcome by claim amendment in the same manner, let alone legal authority supporting that position. See Pet. Petitioner’s failure to identify any authority for a more expansive doctrine of acquiescence that extends to prior art rejections, as it seeks to apply here, is unsurprising. A “patentee is not required to fight tooth and nail every possible adverse thought an examiner commits to paper, nor to advance redundant arguments for patentability.” TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003). Our reviewing court further explains TorPharm as holding “that the applicant’s ‘acquiesence’ in the obviousness rejection by amending its claims did not preclude the patentee from contesting obviousness in litigation.” Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1346 (Fed. Cir. 2005) (citing TorPharm, 336 F.3d at 1331). Specifically, “[i]n TorPharm, the applicant added limitations to claims to overcome an obviousness rejection” and, “[l]ater during litigation, the defendant . . . showed that the added limitation was also in the prior art” and then argued that “the patentee could not challenge its obviousness contentions.” Id. That appears on all fours with the circumstances that Petitioner contends, contrary to TorPharm, estops Patent Owner here. Further, while “an examiner’s reasoning and findings are highly relevant to the validity inquiry[,] . . . they are not beyond challenge and they do not in every case automatically preclude the existence of a dispute of material fact.” TorPharm, 336 F.3d at 1329. In any event, Petitioner does not direct us to anything here that constitutes an admission by the applicant as to the scope of a claim or the teaching of the prior art. See Pet. 23–26. As discussed above, contrary to Petitioner’s assertions, an applicant’s decision during examination to amend claims rather than argue against the Examiner’s assertions is not itself an admission.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,026 - PTAB · Oct 4, 2021 · IPR2021-00623 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation or obviousness grounds.
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 37 C.F.R. § 42.4. For the reasons set forth below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable 1 Korean Intellectual Property Office Registered Utility Model Publication No. 20-0265673, published Feb. 25, 2002 (Ex. 1003 (English translation), Ex. 1019). 2 Japanese Unexamined Patent App. Pub. No. 2014-75327, published April 24, 2014 (Ex. 1004 (English translation), Ex. 1020). 3 Korean Intellectual Property Office Registered Patent No. 10-1078214, published Nov. 1, 2011 (Ex. 1005 (English translation), Ex. 1021). development of interlocking products.” Pet. 9. At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.4 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In particular, we are not persuaded that Petitioner establishes that Song discloses that the male positioning interface defines “a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter.” As illustrated in Annotated Figures 4 and 5 in the Petition, the contactor surface of the identified “contactor” of intermediate coupling jack B extends to the edges of what Petitioner identifies as the claimed “male positioning interface.” See Pet. 17–18. Being part of the contactor itself, the “outer peripheral edge” of the contactor neither surrounds, nor is in contact with, the perimeter of the contactor surface, and therefore is not a “rim” as recited in claim 1.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,454,515 - Neosales Corp LP v. Allan WendlingInstitution deniedPTAB · Sep 14, 2021 · PGR2021-00058 · APJ Wesley B Derrick · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable on the asserted obviousness or written-description grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 324. The standard set forth in 35 U.S.C. § 324(a) requires Petitioner to demonstrate that it is more likely than not that at least one challenged patent claim is unpatentable. Petitioner has not met that standard and, accordingly, we do not institute a post grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had at least a High School Diploma with 5 years of experience in the flooring industry” and that they “would also understand that there is a requirement that many accessible surfaces must be slip resistant to minimize hazards to users of the surface.” Pet. 13–14 (citing Ex. 1003 ¶¶ 21–26). On this record, for purposes of this decision, we agree that a person of ordinary skill in the art would have had at least the qualifications set forth in Patent Owner and appears, on this record, to be consistent with the disclosures of the ’285 patent and the asserted prior art references. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”). accordance with their ordinary meaning except for “laminate structure” and “laminated.” Pet. 14–15 (citing Ex. 1003 ¶¶ 36–41). As to these terms, the Petition relies on a quotation, describing what is shown in Figure 3, that includes the term “laminate structure” from the ’285 patent.5 Id. at 15 (“As best shown in FIG. 3, the body is a laminate structure and comprises a bottom elastomeric layer 24 of an elastomeric material . . . floor surface 26.”); Ex. 1001, 2:16–20, Fig. 3. Petitioner also relies on Merriam- Webster’s definition of “laminate” as ‘a product made by laminating,’” where “laminating” means “to unite (layers of material) by an adhesive or other means.” Pet. 15 (quoting Ex. 1013) (citing Ex. 1011 [sic] Ex. 1013). Petitioner contends that “the term ‘laminate structure’ should be construed to mean a ‘body having an adhered elastomeric material’” and that “the term ‘laminated’ should be construed as ‘adhered.’” Id. On this record, and for purposes of this decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“On this record, Petitioner fails to establish a basis for the recited “sticky polyurethane gel layer.” Although it is evident that Haas’ “bonding layer 2” can itself be formed of an adhesive material (see, e.g., Ex. 1009, 5:48–50), it can also be formed of material that is not adhesive (or sticky) (see, e.g., id. at 5:61–63). Petitioner offers no support for Haas’ polyurethane foam layer itself being an adhesive or sticky material. Pet. 21– 24. Further, the disclosure relating to Haas’ polyurethane layer is contrary to the polyurethane being an adhesive or sticky material because Haas teaches applying an adhesive to the polyurethane layer. See, e.g., Ex. 1009, 8:36–38, 11:32–12:43 (Examples I–IV). Likewise, Petitioner offers no support for the polyurethane foam being a polyurethane gel. See, e.g., Pet. 21–24. Petitioner rather merely asserts that its “augmented carpet-to-floor contact system would produce the same effect claimed by a ‘sticky [bonding] polyurethane gel [foam] layer,’” which falls short of establishing that the polyurethane foam meets the limitation requiring gel. Pet. 24. The Phillips Declaration essentially repeats arguments set forth in the Petition, including as to the “sticky polyurethane gel layer that includes a Compare Ex. 1003 ¶¶ 61–67, with Pet. 20–24. The cited testimony, thus, lacks the necessary objective evidence to support the opinions expressed as to Haas teaching or suggesting a “sticky polyurethane gel layer.” See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,806,285 - Nanocellect Biomedical, Inc. v. Cytonome/St, LLCInstitution deniedPTAB · Sep 1, 2020 · IPR2020-00548 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 9, 17, and 18 unpatentable over any asserted §103 ground.
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) as “requiring inter partes review petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’”). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations and/or alterations of the prior art would render them unpatentable as obvious. At this preliminary stage, we determine whether the information in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations and/or alterations of the prior art. slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry; or a bachelor’s or master’s degree in a related field and at least three years of experience in designing or developing microfluidic systems.” Pet. 14 (citing Ex. 1002 ¶¶ 46–49). Patent Owner reserves the right to dispute Petitioner’s proposed definition of the level of ordinary skill in the art, but applies Petitioner’s proposed definition “[s]olely for purposes of [the Patent Owner Preliminary Response].” Prelim. Resp. 29. On this record, we have no reason to fault Petitioner’s definition of the level of ordinary skill and, therefore, adopt it for the purposes of this Decision. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For the purposes of this Decision, based on the current record, we determine that the claim term “pressure pulse” means “a transient increase in pressure” because this is the plain and ordinary meaning of the term and is consistent with the use of this term in the ’295 patent. We further note that this determination is consistent with the district court’s determination that the claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012, 5–6. Turning to the claim term “reservoir,” for the purposes of this Decision, based on the current record, we determine that the claim term has its plain and ordinary meaning of “a physical structure that contains fluid,” but decline to reach any determination as to the nature or type of fluid as it is not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This determination is consistent with the construction adopted by the district court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for dampening or absorbing a pressure pulse” (claim 1), this, and other, limitations are addressed to the limited extent necessary in reaching our Decision that Petitioner has not established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim. Wellman, 642 F.3d at 1361.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“reservoir that absorbs or dampens a pressure pulse. The required function of the side microchannels is wholly different, and there is no showing that what is required to absorb or dampen a pressure pulse is included in the disclosed structure for introducing hydrodynamic flow into the central microchannel that cells to be sorted pass through. See generally Pet. Petitioner and Dr. Weigl rely on Wada “describing that the fluid direction components ‘nudge’ materials across the width of the first channel,’” however, that is insufficient to support Petitioner’s contention that “the opposed microchannel structure in each of Figures 22 and 23 is configured to receive . . . and to dampen and absorb the pressure pulse.” Pet. 27–29; Ex. 1002 ¶ 126. On the record before us, thus, we are not persuaded that Wada includes any reservoir adapted for dampening or absorbing a pressure pulse such as recited in the claims. As to Dr. Weigl’s testimony to the contrary, we find it conclusory, largely unsupported as applied to Wada, and entitled to little weight. Dr. Weigl contends that the orientation of opposing microchannels across from one another indicates that one, or both, of them function as a reservoir that is adapted to dampening or absorbing a pressure pulse, and then points to structures in other references that are not shown to be similar or to have the same function as support. See Ex. 1002 ¶¶ 125– 139. This position is not sufficiently supported, though, particularly where there is insufficient explanation provided as to why what Dr. Weigl contends is disclosed in the further “background references” is what is also present in Wada’s disclosed structure, and what would follow based on its function. See generally Pet.; Ex. 1002. For example, while Dr. Weigl contends that the use of microchannel structure geometry with a channel, chamber or reservoir structure across the source of the transient pressure pulse for dampening or absorbing the transient pressure pulse was well known, and that it was understood that they can be used to mitigate undesirable flow fluctuations (see, e.g., Ex. 1002 ¶¶ 126–130), it simply does not follow that a pair of oppositely-oriented microchannels, as disclosed in Wada for providing fluid flow into the main microchannel, have similar structure or that they function in like manner, and Petitioner fails to set forth clearly how the structures are sufficiently similar at a level of detail sufficient to establish like function (see generally Pet.). Similarly, Petitioner’s reliance on the disclosed Joule heating wells in Wada as dampening or absorbing a pressure pulse or fluid (id. at 29–31) fails to establish sufficient basis for including structure that is adapted to dampen or absorb a pressure or fluid (see generally Pet.; Ex. 1002). As discussed above, as to “a first reservoir . . . adapted for dampening or absorbing a pressure pulse propagated across the flow channel,” what Wada discloses falls short, and Petitioner provides no reasonable basis for modifying what is, in fact, disclosed in Wada to arrive at the claimed invention. See generally Pet. Instead, as discussed above, Petitioner merely sets forth what one of ordinary skill in the art could have done. This is not sufficient to reasonably support a ground of obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation as to why the opposing microchannels in Wada function to dampen or absorb a pressure pulse, or would be adapted to do so, there is an insufficient showing that the ground set forth by Petitioner is not grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,623,295 - Nanocellect Biomedical, Inc. v. Cytonome/St, LLCInstitution deniedPTAB · Sep 1, 2020 · IPR2020-00550 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, 5, 13, 16, 18, or 19 unpatentable over any asserted obviousness ground.
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). We may not institute an inter partes review “unless . . . 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). Applying that standard, for the reasons set forth below, we decline to institute an inter partes review because Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1, 2, 5, 13, 16, 18, and 19.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we have no reason to fault Petitioner’s definition of the level of ordinary skill and, therefore, adopt it for the purposes of this Decision. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For the purposes of this Decision, based on the current record, we determine that the claim term “pressure pulse” is “a transient increase in pressure” because this is the plain and ordinary meaning of the term and is consistent with the use of this term in the ’797 patent. We further note that this construction is consistent with the district court’s determination that the claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012, 5–6. We also determine, for the purposes of this Decision and based on the current record, that the claim term “reservoir” has its plain and ordinary meaning of “a physical structure that contains fluid.” We decline to reach any determination as to the nature or type of fluid, however, as it is not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This determination is consistent with the construction adopted by the district court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for dampening or absorbing a pressure pulse” (claim 1), this and other limitations, are addressed to the limited extent necessary in reaching our Decision that Petitioner has not established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim. Wellman, 642 F.3d at 1361.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, as to the “first reservoir . . . adapted for dampening or absorbing a pressure pulse propagated across the width of the flow channel” (claim 5) or “dampening or absorbing the pressure pulse using a first reservoir” (claim 1), what Wada discloses falls short, and Petitioner provides no reasonable basis for modifying what is, in fact, disclosed in Wada to arrive at the claimed invention. See generally Pet. Instead, Petitioner merely sets forth what one of ordinary skill in the art could have done. This is not sufficient to reasonably support a ground of obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation for why the relied on opposing microchannels actually function to dampen or absorb a pressure pulse, or would be adapted to do so, there is an insufficient showing that the ground set forth by Petitioner is not grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,011,797
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.