• Ningbo Linhua Plastic Co., Ltd. v. Converter Manufacturing, LLCInstitution denied
  PTAB · Mar 10, 2025 · IPR2024-01435 · APJ James A Tartal · IPR · Institution

  Institution was denied for claims 6–10 and 21 because Petitioner did not show a reasonable likelihood that Portelli or Meadors rendered the claims obvious.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we find that the ’222 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and the ’222 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s asserted level of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Petitioner argues that “the challenged claims are invalid under their plain and ordinary meaning.” Pet. 5. Petitioner further contends that “[t]he scope of the plain and ordinary meaning of certain claim terms must at least encompass the disclosure and accompanying illustrations in the ’222 patent.” Id. at 6 (citing no legal support for its proposition). Petitioner also refers to how Patent Owner applied certain “terms” and “other features to Petitioner’s product” in its district court complaint against Petitioner. See id. at 7–8 (citing Ex. 1007, 7–8; Ex. 1003, ¶¶ 53–57). Patent Owner does not address claim construction and does not dispute the meaning of any claim term in regard to Petitioner’s contentions. See generally Prelim. Resp. Accordingly, in view of the issues we address below, we apply the plain and ordinary meaning of claim terms and further determine that it is not necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 11

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

    “Figure 13 of Portelli, however, does not show the profile of an article prior to a method step of impinging to further shape it, but instead shows “a schematic sectional view of the edge of the tray . . . after it has been deformed out of the wrap path in accordance with the invention [of Portelli].” Ex. 1004, 8:11–13 (emphasis added). Petitioner fails to show any method taught by Portelli that further alters the configuration of the profile of the tray shown in Figure 13 of Portelli by, for example, an additional method step of impingement.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,562,222
• Voltage, LLC v. Shoals Technologies Group, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00877 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any challenged claim 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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties dispute whether a person of ordinary skill in the art must have experience with photovoltaic (solar) systems or whether such experience may be in the broader field of electrical wiring and connectors. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. On this preliminary record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’739 patent and the prior art. But, for purposes of this institution decision, and on the present record, we observe that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “The Board “need only construe terms that are in controversy, 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) (internal citation omitted). Because no claim construction is required in order to address the issues presented in this proceeding, we need not address claim construction for purposes of institution.” slip op. at 10

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

    “On this record, we are not persuaded Petitioner has adequately shown a reason to combine Fan and Ba. Petitioner argues that the ordinarily skilled artisan would have modified the in-line fuse assembly of Fan to include the plug and connector of Ba that physically integrates with the fuse in order to eliminate extra wire pieces. Pet. 14. But the details of Petitioner’s combination end there. Eliminating extra wire pieces may be advantageous and might be a reason for a person of ordinary skill in the art to modify the teachings of Fan. However neither Petitioner nor its declarant, Dr. Kenny, identify what wires are eliminated or explain why the elimination of wires in this case is advantageous. Furthermore, Petitioner does not direct our attention to any teaching in Ba that discusses the elimination of wires as a benefit to its structure. Thus, even if an ordinarily skilled artisan could have made the combination, Petitioner failed to sufficiently explain why an ordinary artisan would have been motivated to do so. See, e.g., 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.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,553,739
• Voltage, LLC v. Shoals Technologies Group, LLCInstitution denied
  PTAB · Nov 18, 2024 · IPR2024-00876 · APJ Michael G Mcmanus · IPR · Institution

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

  RulingsInstitution decision

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

    “review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted unless “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(a); see also 37 C.F.R. § 42.108(c). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’254 patent. Accordingly, we decline to institute an inter partes review of claims 1–15 based on the grounds articulated in the Petition. B.” slip op. at 2

  • Skill levelOther

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, for purposes of this institution decision, and on the present record, we determine that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions. B.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Although claim 1 is to an apparatus (a lead assembly), this limitation includes functional language (“combines” and “transmits”). We construe this limitation to require that the lead assembly have structure capable of performing the recited act. See, e.g., Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (where claims reciting a computer processor that performs several functions were construed to be “clearly limited to a . . . processor possessing the recited structure and capable of performing the recited functions”). Accordingly, we construe the claim to require structure capable of combining and transmitting power to an inverter without use of a combiner box.” slip op. at 33

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

    “cable, Petitioner asserts that Amphenol lists feeder cables of various gauges (thicknesses) that may be selected for lead assemblies and that a person of ordinary skill in the art “would recognize that either 8AWG or 10AWG cables are rated for 30 amps; thus, Amphenol discloses at least one 30 amp feeder cable.” Pet. 18. Petitioner, however, does not explain why one would have had reason to choose a cable rated for 30 amps rather than one of the other feeder cables disclosed having some other rating. “Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). Here, Petitioner does not supply any reasoning or evidence, in the cited references or elsewhere, that would lead one of ordinary skill in the art to employ a feeder cable rated for 30 amps over the other cables listed in Amphenol. See Pet. 18; Ex. 1003 ¶ 135. That such cables were known in the prior art is not, of itself, a sufficient basis for combination with the other cited teachings of the art.” slip op. at 32

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,992,254
• Voltage, LLC v. Shoals Technologies Group, LLCInstitution denied
  PTAB · Sep 30, 2024 · PGR2024-00022 · APJ Michael G Mcmanus · PGR · Institution

  The Board denied institution on claims 1–24 because Voltage did not show that any challenged claim was more likely than not unpatentable under the asserted grounds.

  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 a post-grant review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). A post-grant review may not be instituted “unless. . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that Petitioner has not demonstrated that the ’153 patent is eligible for post-grant review. Accordingly, we decline to institute a post-grant review of claims 1–24 based on the grounds articulated in the Petition.” slip op. at 2

  • Skill levelOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, for purposes of this institution decision, and on the present record, we determine that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions. C. Claim Construction” slip op. at 12

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

    “The parties put forward several terms for construction. Pet. 14–17; Prelim. Resp. 9–12. With respect to Grounds I through VII, we have determined that no claim constructions are required in order to address the points at issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy” (internal citation omitted)). Claim construction is required to resolve certain issues arising in connection with Ground VIII. Accordingly, we construe certain terms in our discussion of that ground, infra.” slip op. at 13

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

    “through the undermold.” The term “aperture only partially extending through said undermold” was added to the claims of the ’254 parent application by amendment. Ex. 1021, 103–105; Ex. 1020, 6:60–8:47. With this amendment, the claims of the ’254 patent align with Figure 7, reproduced below. Figure 7 of the ’254 Patent (Figure 7 of the ’153 patent is identical to Figure 7 of the ’254 patent except for minor stylistic changes). As can be seen, the aperture occupied by drop line 12 extends partially through the undermold to compression lug 20 while the aperture occupied by feeder cable 14 extends completely through the undermold. This suggests a construction of “aperture extending partially through the undermold” where such aperture does not extend completely through the undermold. Such a construction of “aperture extending partially through the undermold” is consistent with the plain meaning of “extending partially.”” slip op. at 62

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · Nautilus
  Patents in suitUS 11,689,153
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution denied
  PTAB · Aug 26, 2024 · IPR2024-00567 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Cho disclosed the claimed reservoir structure required by the challenged claims.

  RulingsInstitution decision

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

    “Therefore, Petitioner has not shown a reasonable likelihood that Cho describes “a liquid reservoir at least partially defined by an interior of the cartridge housing and an exterior of the atomizing chamber” in either of the “separated embodiment” or the “integrated embodiment.” For at least this reason, and based on the current record, Petitioner has failed to establish that claim 43 is anticipated by Cho. 3. Remaining Claims 44, 76, 77, 80, 81, 86, 89, and 93 Petitioner asserts that claims 44, 76, 77, 81, 86, 89, and 93 are anticipated by Cho. Pet. 35–46, 54–64. In addition, Petitioner alleges that the combination of Cho and Nielsen would have rendered obvious claim 80 of the ’114 patent. Pet. 64–70. Each of claims 44, 76, 77, 80, 81, 86, 89, and 93 requires a “liquid reservoir at least partially defined by an interior of the cartridge housing and an exterior of the atomizing chamber,” either by virtue of dependence (claims 76, 77, 80, 81, 86, 89, and 93) or independent recitation (claim 44). Ex. 1001, 11:50–12:9, 19:1–19:63. Because Petitioner has failed to show a reasonable likelihood that Cho teaches a “liquid reservoir at least partially defined by an interior of the cartridge housing and an exterior of the atomizing chamber,” we decline to institute on the remaining claims.” slip op. at 20

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

    “We are persuaded that Petitioner has not shown that Cho describes a “liquid reservoir [that] is partially defined by the exterior of an atomizing chamber” in either of the “separated embodiment” or the “integrated embodiment.” Pet. 48–50. With respect to the “separated embodiment,” Petitioner identifies the inside of storage container 1201 as the “interior of the cartridge housing” and the outside of air inhalation tube 1313 as the “exterior of the atomizing chamber.” Id. But Annotated Figure 11 does not show air inhalation tube 1313 as part of atomizing chamber 1203. Therefore, the liquid reservoir, i.e., loading portion 1205, is not “at least partially defined by . . . an exterior of the atomizing chamber.”” slip op. at 18

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

    “3. Remaining Claims 44, 76, 77, 80, 81, 86, 89, and 93 Petitioner asserts that claims 44, 76, 77, 81, 86, 89, and 93 are anticipated by Cho. Pet. 35–46, 54–64. In addition, Petitioner alleges that the combination of Cho and Nielsen would have rendered obvious claim 80 of the ’114 patent. Pet. 64–70. Each of claims 44, 76, 77, 80, 81, 86, 89, and 93 requires a “liquid reservoir at least partially defined by an interior of the cartridge housing and an exterior of the atomizing chamber,” either by virtue of dependence (claims 76, 77, 80, 81, 86, 89, and 93) or independent recitation (claim 44). Ex. 1001, 11:50–12:9, 19:1–19:63. Because Petitioner has failed to show a reasonable likelihood that Cho teaches a “liquid reservoir at least partially defined by an interior of the cartridge housing and an exterior of the atomizing chamber,” we decline to institute on the remaining claims.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues that a person of ordinary skill in the art “at the time of the ’114 patent would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 2 (citing Ex. 2001 ¶¶ 19). Patent Owner submits that “the arguments in this Response apply regardless of which standard is adopted,” and that “Patent Owner’s expert, Dr. John Collins, was a POSITA at the time of the ’114 patent under either [Petitioner’s or Patent Owner’s] definition.” Id. (citing Ex. 2001 ¶ 22). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’114 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’114 patent and the prior art.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution denied
  PTAB · Aug 12, 2024 · IPR2024-00536 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because NJOY did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.

  RulingsInstitution decision

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

    “At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed prior art.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields, and such POSA would have been familiar with electrically powered vaporizing articles, their components, or the underlying technologies.” Pet. 6–7. Patent Owner argues that a person of ordinary skill in the art “would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field,” and that “[m]ore education can substitute for practical experience and vice versa.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 17–22). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’981 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’981 patent and the prior art. However, our decision would not change if we applied Patent Owner’s definition.” slip op. at 12

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

    “None of the constructions proffered by Petitioner is dispositive of the issue of whether to institute inter partes review. We determine that it is not necessary to provide an express construction for any term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only 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. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “integrate Liu783’s connector with its battery component in order to decrease the possibility of damage to the device during assembly/disassembly. Pet. 23. Petitioner, however, does not provide any evidence that such damage was a point of concern. See generally Pet. Nor does Petitioner sufficiently explain how the integrated battery component/connector would result in less damage. See id. (failing to quantify the alleged benefit nor providing any evidence to support its contention that an integrated connector/battery component would decrease damage to the device). Nor does Petitioner sufficiently support its contention that the modified Liu783 device would be more beneficial to the consumer because there are fewer pieces to assemble or misplace. See id. Indeed, Petitioner’s argument runs directly counter to Liu783’s own disclosure which asserts that its three-piece design is more convenient than the previous two-piece design. See, e.g., Ex. 1005 ¶ 19 (stating “assembly and detachment of the atomizer and the connector become very convenient”), ¶ 3 (stating an “object of the present invention is to . . . facilitate the installation, detachment, and replacement of the electronic cigarette). Similarly, Petitioner does not sufficiently support its contention that integrating the components would reduce the complexity and expense of manufacturing the device (Pet. 23), which is counter to Liu783’s statement that the object of its invention is to “decrease manufacture and use cost” (Ex. 1010 ¶ 3). Conclusory statements by an expert that do not disclose the underlying facts or data on which the opinion is based are entitled to little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 25

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,606,981
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution denied
  PTAB · May 24, 2024 · IPR2024-00223 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on the merits because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 7, 15, 16, 18–25, 28, and 30 were unpatentable.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not established that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition based on Verleur and the knowledge of a person of ordinary skill in the art. E. Challenge based on Verleur, Knowledge of a Person of Ordinary Skill in the Art, and Plojoux Petitioner also contends Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux would have rendered claims 2, 4, 21, and 23 obvious. Pet. 70–78. Petitioner does not present any arguments or evidence with respect to claims 2, 4, 21, and 23 that would remedy the defects noted above with respect to independent claims 1 and 20. Thus, Petitioner fails to demonstrate that the subject matter of claims 2, 4, 21, and 23 would have been obvious over the combined disclosures of Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux.” slip op. at 22

  • 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 at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields, and such [person of ordinary skill in the art] would have been familiar with electrically powered vaporizing articles, their components, or the underlying technologies. Pet. 5. Patent Owner contends that a person of ordinary skill in the art “would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also states that “Patent Owner’s arguments herein apply regardless of which definition of a [person of ordinary skill in the art] is adopted.” Id. (citing Ex. 2001 ¶¶ 20–21). On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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 7

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

    “Petitioner “contend[s] the term ‘mouthpiece’ means a ‘separate component from the storage compartment to be used by a mouth.’” Pet. 6. Petitioner additionally contends the construction of the term “is not material to the grounds in the Petition.” Id. Patent Owner contends that the term “mouthpiece” “means ‘portion to be used by a mouth.’” Prelim. Resp. 5. Patent Owner additionally “agrees with Petitioners that, at least in this preliminary stage, it is not necessary for the Board to resolve this construction.” Id. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only 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) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 8

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

    “Petitioner’s position is unpersuasive. It is not evident from the record that the skilled artisan would have understood that a window equates to a hole or “air inlet passage” as claimed. Indeed, the record suggests otherwise. For example, Verleur explains that: The shell may include a window provided at the cartomizer receiving segment so that a portion of the chamber is visible from outside the shell. [Ex. 1005 ¶ 27]. One or more windows 130 may be provided in outer shell 106 (see FIG. 1). Windows 130 may be made of a translucent material, such as glass or substantially clear plastic, in order to view internal components of battery portion 100. [Id. ¶ 37] For instance, in one embodiment, window 130 may be provided on or proximate to cartomizer receiving segment 104 and, more particularly, cartomizer chamber 108 so as to permit a user of electronic cigarette 10 to view the cartomizer 200 when it is inserted into cartomizer chamber 108. [Id.]. At least a portion of body 208 may be composed of translucent or substantially translucent material, such as glass or plastic, so that a user may see fluid 300A held within. The portion of body 208 composed of translucent material may be alignable with window 130 . . . . [Id. ¶ 38]. Petitioner itself acknowledges that window 130 of Verleur “may be made of a translucent material, such as glass or substantially clear plastic” and that the purpose of window 130 is “to view internal components of battery portion 100.” Pet. 29 (quoting Ex. 1005 ¶ 37). Thus, Verleur provides that window 130 may be translucent to allow a user to view internal components, and Verleur makes no mention that window 130 is a hole or slit that allows air to enter. Ex. 1005 ¶¶ 37–38. Neither Petitioner nor its declarant Dr. Singhose adequately explains why the ordinarily skilled artisan would have understood window 130 to be an air inlet passage that allows air to enter gap “formed by an exterior surface of the cartridge and . . . an internal surface of the receptacle.” In contrast, Patent Owner, through the testimony of Dr. Collins, persuasively explains that the skilled artisan would have understood that Verleur’s window 130 is not an air inlet passage. Ex. 2001 ¶¶ 48–49; Prelim. Resp. 11–13. Dr. Collins explains that “[w]indow 130 is a window . . . ‘to view internal components of battery portion 100,’ such as ‘to permit a user . . . to view the cartomizer 200 when it is inserted into cartomizer chamber 108.’” Ex. 2001 ¶¶ 46–47 (third alteration in original). Dr. Collins further testifies that “Verleur knew how to describe an air inlet on the outside of the shell, since one is described in a different embodiment.” Id. ¶ 45. Alternatively, Petitioner contends that “to the extent window 130 is not a slit, but instead comprises glass or plastic, a hole would nonetheless be needed elsewhere in the shell to permit air into the gap between the cartomizer 200/200A and the outer shell 106.” Pet. 34. Petitioner points to Verleur paragraph 39, which describes holes or ducts in the outer shell. Id. However, where Verleur describes the existence of holes or ducts for air flow, the air flow is described as flowing though the cartomizer body itself and not through the gap or channel formed where the cartomizer is inserted into the shell chamber. Ex. 1005 ¶ 39 (stating that “[i]nhalation tube 222 may also be in fluid communication with one or more holes or ducts provided, for instance, in sides of outer shell 106 in order to permit air flow through cartomizer body 208” (emphasis added)). This is consistent with Dr. Collins’s testimony that “[s]uch a mechanism would allow air to flow directly into the cartomizer through aligned holes.” Ex. 2001 ¶ 66 (emphasis added). In addition, Petitioner fails to demonstrate that an air inlet passage” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,709,173
• Hirsch Glass Corp., D/B/A Spectrum Quartz v. Cambria Company LLCInstitution denied
  PTAB · Aug 8, 2022 · IPR2022-00583 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on its 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 at least one claim of the ’626 patent, and we do not institute inter partes review.” slip op. at 2

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

    “We agree with Patent Owner that Petitioner’s rationale for combining Benito Lopez and Bigi is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo, 694 F.3d at 1328; see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure.”).” slip op. at 18

  • BurdenNot shown unpatentable

    “According to 35 U.S.C. § 312(a)(3), a petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review must identify how “the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) adds that the Petition must identify “specific portions of the evidence that support the challenge.” Similarly, Rule 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Patent Trial Practice Guide suggests that “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 39, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov. 14, 2019). Here, Petitioner’s approach of arguing that every limitation in claim 1 can be satisfied by both Benito Lopez and/or Bigi, or possibly the combination of the two, fails to identify with sufficient specificity the portions of Benito Lopez or Bigi or the combination that Petitioner relies on to meet each limitation of claim 1. Although arguing in the alternative is generally permissible, in this case, both the Petition and Mr. Tassone fail to explain in adequate detail which, why or how the identified elements of Benito Lopez or Bigi, or their prospective combination, meet the limitations of claim 1. In each subsection discussing limitations [1.a.]–[1.g.], Petitioner” slip op. at 20

  • Expert testimonyPetitioner expert discountedOther

    “Petitioner also relies on the testimony of Mr. Tassone, but Mr. Tassone’s testimony similarly falls short. See Ex. 1032 ¶¶ 140–143. Mr. Tassone’s testimony is entitled to little weight because it fails to explain how the alleged market pressures or commercial need would motivate one of ordinary skill in the art to make the proposed combination, and it is not otherwise apparent that it does. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also 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.”); cf. 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 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,300,626
• Hirsch Glass Corp., D/B/A/ Spectrum Quartz v. Cambria Company LLCInstitution denied
  PTAB · Aug 8, 2022 · IPR2022-00589 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution for claims 1–4 and 6–35 because the petition did not show a sufficient reason to combine the cited prior art.

  RulingsInstitution decision

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

    “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) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’942 patent has an effective filing date after the effective date of the applicable AIA amendments, we refer to the AIA version of § 103. 2 Benito Lopez et al., US 2015/0360507 A1, published December 17, 2015 (Ex. 1005, “Benito Lopez”). 3 Liu, CN 1718403 A, published January 11, 2006 (Ex. 1006). Petitioner provides a certified English-language translation of Liu (Ex. 1007). Any reference to Liu hereinafter will be to the English-language translation. 4 Toncelli, US 2004/0032044 A1, published February 19, 2004 (Ex. 1011, “Toncelli ’044”). never shifts to the 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). Furthermore, a 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 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have an educational background, such as a Bachelor of Science degree, in chemistry, chemical engineering and/or material science or a related field, as well as some understanding of mechanics or manufacturing” and “would have at least two to four years of practical experience in manufacturing or designing composite materials, such as engineered stone or ceramic tiles” but that “[a]dditional practical or work experience can result in a lower level of education being necessary, and vice versa.” Pet. 8–9 (citing Ex. 1004 ¶ 46). Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp., passim. On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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 11

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

    “Petitioner states that “no terms require express construction because the patent claims encompass the below prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 9. Patent Owner does not, at this time, seek construction of any terms. See Prelim. Resp. 28. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only 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) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12

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

    “In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm. Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo, 694 F.3d at 1328; see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure.”). Here, Petitioner combines Benito Lopez’s method—involving dispensing a particulate mineral mixture into a horizontally-oriented mold— with Liu’s method—dispensing into a vertically-oriented mold. Pet. 15. Petitioner reasons that the person of ordinary skill in the art would have been motivated to combine the teachings of these references as part of the “pervasive motivation to improve engineered stone and ceramic tile to look as close as possible to their natural stone counterparts.” Id. at 18 (citing Ex. 1004 ¶¶ 69, 74–80, 470–471), 20 (citing Ex. 1004 ¶¶ 479–481). According to Petitioner, a person of ordinary skill in the art “would have been motivated to try alternative known methods for manufacturing engineered stone slabs that could better emulate natural stone at competitive costs.” Id. at 18–19 (citing Ex. 1004 ¶ 470). Petitioner’s proffered reason to modify Benito Lopez with Liu, however, merely addresses a generalized desire in the industry to improve the aesthetic quality of engineered stone slabs and does not provide a reason to adopt Liu’s vertically-oriented dispensing method. Cardiac Pacemakers, 381 F.3d at 1377. Petitioner fails to direct our attention to any record evidence that the specific dispensing method described in Liu improves the overall aesthetics of the engineered slab beyond that described in Benito Lopez. Rather, the record evidence shows that each of Benito Lopez and Liu product artificial stone products that mimic the veining patterns of natural stone. Pet. 10, 12–14; Prelim. Resp. 33 (explaining that the “Petition recognizes that Benito Lopez already achieves this goal”); see also Ex. 1007 ¶¶ 3 (Liu describing the goal to create “unburned imitation natural stone textured ceramic tiles”), 5 (“the present invention . . . produce[s] imitation natural stone textured ceramic tiles with color richness and good simulation effects”), 6, 12–13; Ex. 1005 ¶¶ 4 (Benito Lopez stating that it achieves “an aesthetic look similar to natural stone . . . surpassing the existing technical limitation”), 26 (providing a method that produces slabs “with a similar design to that of natural stone, created by a tri-dimensional stratus”). The mere fact that Benito Lopez and Liu share a common goal of producing products that mimic natural stone fails to identify what would have prompted the skilled artisan to arrive at the combination in the first place. This is especially true where Petitioner seeks to add—not substitute—a process step, thereby introducing added complexity into Benito Lopez’s method. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1329, 1332 (Fed. Cir. 2019) (affirming the Board’s decision that a person of ordinary skill in the art would not have reason to make a modification that “introduce[s] additional complexity and inefficiencies” into a process). As Patent Owner aptly points out, “the Petition contains no analysis of the costs required to add machinery that rotates the mold from a vertical to horizontal orientation” and fails to “account for the additional time required for this step.” Prelim. Resp. 40. Petitioner also relies on the testimony of Mr. Tassone, but Mr. Tassone’s testimony similarly falls short. See Ex. 1004 ¶¶ 69, 74–80, 470–471, 479–481. Mr. Tassone’s testimony is entitled to little weight because it fails to explain how the alleged market pressures or commercial need would motivate one of ordinary skill in the art to make the specific proposed modification, and it is not otherwise apparent that it does. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also 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.”); cf. 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.”). As a result, Petitioner’s reason to combine is generic and untethered from the modification being made, and, therefore, is insufficient to support a determination of obviousness.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,993,942
• Vitec Production Solutions, Inc. v. Rotolight LimitedInstitution denied
  PTAB · Jun 8, 2022 · IPR2022-00262 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on claims 1–22 because the petition did not show a reasonable likelihood that the Morgan, Hinrichs, and Pohlert combination rendered them obvious.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner fails to establish Morgan in view of Hinrichs and Pohlert suggests “calculate[ing] [using an effect simulator,] a time varying lighting value based on at least one simulation parameter,” as claimed. Ex. 1001, 11:59–12:12. Specifically, Petitioner does not direct us to anything in Morgan that is adapted to “calculate” at all, much less adapted to calculate a time varying lighting value based on a simulation parameter. Pet. 19–24. Petitioner alleges that Morgan’s disclosure of “‘one or more of the library of lighting effects/shows’ and ‘one or more (or all) functional aspects of a user interface and library searching may be performed by a controller that also controls the lighting system that generates the lighting effect(s)/show(s)’” satisfies the functionality of the “effect simulator” of the ’258 patent. Pet. 19 (citing Ex. 1005, 10:16–21; Ex. 1003 ¶ 91–102). However, merely identifying a controller that searches a library and processes pre-programmed lighting effects, falls short of establishing sufficiently that Morgan’s controller is adapted to “calculate.” And as Patent Owner aptly explains, the other functions performed by Morgan’s controller similarly do not “calculate”; nor are they adapted to calculate. Prelim. Resp. 47–48 (referring to Figure 3 and identifying “steps 302 (query user for input information), 304 (search lighting effects/shows), and 306 (provide user with indication of candidate lighting effects)”). Furthermore, we agree with Patent Owner that Petitioner does not demonstrate that Morgan suggests an effect simulator adapted to calculate “a time varying lighting value based on at least one simulation parameter,” as claimed. Id. at 48–49. Petitioner does not expressly identify where Morgan describes calculating or anything adapted to calculate a time varying lighting value but, instead, directs our attention to Morgan’s description of “generat[ing] the lighting effect using the executable lighting program” using “one or more characteristics of the lighting effect [that] include, but are not limited to, ‘color content,’ ‘color resolution,’ ‘color distribution or color spatial frequency,’ and/or ‘at least one dynamic temporal characteristic’ of the selected lighting effect.” Pet. 20 (citing Ex. 1005, 3:45–67, 14:4–12, 32:15–22). But, as Patent Owner explains, this portion of Morgan “describes the various attributes a user may employ to search the prepackaged executable lighting effects,” which a person of ordinary skill in the art would not have understood to include calculating, or adapted to calculate, “a time varying lighting value.” Prelim. Resp. 48–49 (emphasis in original) (citing Ex. 2001 ¶ 52). Finally, Petitioner’s contentions regarding Hinrichs and Pohlert do not remedy the deficiencies of Morgan. Although Petitioner alleges that “Hinrichs teaches that its subject lighting system controller provides outputs based on ‘effect functions,’” and that “the controlling means . . . execute[s] [effect functions] in relation to time and in relation to each other,” Petitioner does not direct our attention to anything in Hinrichs that describes calculating or anything adapted to calculate a time varying lighting value. Pet. 20–22. Similarly, Petitioner fails to identify how Pohlert discloses an effect simulator adapted to calculate a time varying light value. Pet. 22–24. That Pohlert teaches that its “processes may be carried out by a power controller that ‘includes a processor 1074 which may be programmed to provide various lighting effects—the effects generator—by ‘control[ling] the switch selector [through] setting various digital values’” and that “[t]he programming instructions may provide that the switches 1062 are turned on and off according to designated sequences, thus allowing the capability of pattern generation via the processor 1074,” fails to sufficiently establish this limitation. Pet. 23–24 (citation omitted) (alterations in original). Further, as Patent Owner aptly explains, a strobing effect oscillating signals generate “is not ‘time varying’, but rather repetitive.” Prelim. Resp. 50 (citing Ex. 2001 ¶ 61). In view of the foregoing, we determine that Petitioner fails to demonstrate on this record a reasonable likelihood that the subject matter of claim 1 of the ’258 patent would have been obvious over the combined disclosures of Morgan, Hinrichs, and Pohlert.” slip op. at 25

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “E. Discretion to Deny Institution under 35 U.S.C. § 325(d) Petitioner and Patent Owner both address 35 U.S.C. § 325(d). Pet. 6– 7; Prelim. Resp. 26. Because we deny the Petition on the merits, we do not address the arguments about discretion to deny institution.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in electrical engineering, or a closely related field, along [with] at least two years of experience in the design of entertaining lighting systems, controls and effects.” Pet. 3 (citing Ex. 1003). Petitioner further states that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp. 25. On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See” slip op. at 8

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

    “Petitioner proposes construction for claim terms “cinematic lighting special effect” and “effect simulator.” See Pet. 3–6. Patent Owner states that it “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 24. We need not expressly construe any claim terms because resolution of the issues presented in this Petition for inter partes review are not based on any particular claim construction the parties advance. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only 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, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,197,258

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.