- Delta Electronics, Inc. v. Vicor CorporationInstitution deniedPTAB · May 17, 2024 · IPR2024-00187 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 22, and 31–35 were unpatentable under 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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. This burden of persuasion 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). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented 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 of prior art. slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design and control of switching power converters, with more experience potentially substituting for education, or vice-versa.” Pet. 14 (citing Ex. 1017, 79; Ex. 1003 ¶ 29).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term, or decide whether the preamble of claim 1 is limiting, for purposes of this Decision.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner cites to Dr. Hopkins’ Declaration, which repeats nearly verbatim the contentions in the Petition, and then adds testimony that “[t]he resonant period and frequency is what the ’481 Patent refers to as the ‘standard’ operating period and frequency.” Pet. 32 (citing Ex. 1003 ¶ 81). Dr. Hopkins, however, does not provide any citation to the ’481 patent to support this testimony, nor any further explanation as to how or why the resonant period and frequency teaches the “standard operating period and frequency” recited in limitation 1[c]. Therefore, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory 17 As discussed below, Petitioner also relies on this theory for all of the remaining six challenges in the Petition, and does not provide further explanation in any of those challenges. Accordingly, as explained below, each of Petitioner’s remaining challenges is insufficient for the same reasons described here. assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also 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.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,166,481 - Life Spine, Inc. v. Globus Medical, Inc.Institution deniedPTAB · Apr 18, 2023 · IPR2022-01601 · APJ Kristi L R Sawert · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8, 10–18, and 20 were unpatentable over Chung, Olmos, or Olmos in view of Chung.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“1[d] and 11[d] recite that the “second expansion portion” is “longitudinally spaced from the first expansion portion.” Ex. 1001, 21:54–55, 22:38–39 (emphasis added). On this record, we find that the annotated excerpt of Chung’s Figure 2 is inconclusive as to whether dovetail (32) (blue) is longitudinally spaced from the expansion portion (yellow). Based on the excerpt of Chung’s Figure 2, it is equally likely that the structures colored blue and yellow terminate in the same plane, as shown in Patent Owner’s annotated excerpt of Chung’s Figure 2, reproduced below: Prelim. Resp. 45–46. In Patent Owner’s annotated excerpt of Chung’s Figure 2 reproduced above, Patent Owner demonstrates that Chung’s dovetail (32) longitudinally terminates in the same plane as the ramped surfaces that flank the dovetail (shown by the orange arrows), and does not appear to be longitudinally spaced past the plane where the expansion portion terminates. See id. (citing Ex. 1005, 10; Ex. 2001 (Culbert Decl.) ¶ 85). On this record, we find Patent Owner’s interpretation of Chung Figure 2 more plausible than Petitioner’s.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“certain limitations of claims 1 and 11 (i.e., limitations 1[f], 1[g], 11[f], 11[e]), but relies only on Olmos for limitations 1[d] and 11[d]. See Pet. 99 (stating that “Olmos discloses each and every element of” the challenged claims); id. at 99–101 (discussing the combination of Olmos and Chung with respect to only limitations 1[f], 1[g], 11[f], 11[e]); see also Prelim. Resp. 82 (noting that, for claim limitations 1[d] and 11[d], “Petitioner’s analysis of the asserted combination relies completely on its discussion of Olmos”). We refer back to our analysis above in determining that Petitioner has not sufficiently shown for institution that Olmos teaches limitations 1[d] and 11[d] (relating to “second expansion portion” that is “longitudinally spaced from the first expansion portion”). Supra § II.G. Accordingly, for at least the same reasons discussed above for claims 1 and 11, on this record we determine that Petitioner has not shown a reasonable likelihood that these claims are unpatentable as obvious over Olmos in view of Chung.” slip op. at 30
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Seal. Paper 3 (“Motion”). Petitioner requests that we seal Exhibit 1010 (a claim chart submitted as an exhibit to Patent Owner’s litigation infringement contentions). Id. at 1. Petitioner represents that the material it seeks to seal contains its trade secrets. Id. at 2–3. Petitioner filed a proposed protective order, which includes modifications to the Board’s default protective order. See Ex. 1018; Ex. 1019. Patent Owner filed a Response to Petitioner’s Motion. Paper 7. Patent Owner indicates that it does not oppose “the Board sealing Petitioner’s confidential information,” but does oppose Petitioner’s proposed protective order. Id. at 1 (citing Ex. 1018; Ex. 1019). However, Patent Owner represents that “the parties have conferred and agree to the terms of the stipulated protective order filed as Exhibit 2100.” Id.; see also Ex. 2101 (redline comparison of Ex. 2100 to the Board’s default protective order). We find that Petitioner has established good cause to seal its trade secret information. Accordingly, we grant Petitioner’s Motion. 37 C.F.R. § 42.14. We also enter the stipulated protective order filed as Exhibit 2100.” slip op. at 31
§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,925,752
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.