- Viken Detection Corporation v. American Science And Engineering, Inc.Institution deniedPTAB · Dec 16, 2022 · PGR2022-00047 · APJ Carl M Defranco · PGR · Institution
The Board denied institution because Viken did not show that any of claims 1–22 was more likely than not unpatentable for lack of written description or enablement.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“We apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13; see also 37 C.F.R. § 42.200(b). Viken asserts that “the only terms that need construction are ‘a first X-ray source,’ ‘a second X-ray source,’ and ‘a third X-ray source’ of claim 1.” Pet. 20. According to Viken, the “X-ray sources of claim 1 should be construed to be ‘a first backscatter X-ray source,’ ‘a second backscatter X-ray source,’ and ‘a third backscatter X-ray source,’ respectively,” because one skilled in the art “would understand these sources to be backscatter sources in view of the intrinsic evidence (claims and specification).” Id. at 21 (citing Ex. 1012 ¶ 95). In particular, Viken asserts “[t]he only sources paired with backscatter detectors in the ’783 patent are backscatter sources.” Id. at 22 (citing Ex. 1012 ¶¶ 88, 95). We disagree, as discussed below in connection with Viken’s first ground.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Viken asserts that a person having ordinary skill in the art would be “a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors.” Pet. 9 (citing Ex. 1012 ¶ 20). At this stage, ASE does not contest that formulation of the level of skill in the art. Nor do we discern any reason to question Viken’s formulation, as it appears consistent with the level of skill reflected in the ’783 patent and the prior art of record. We, therefore, apply Viken’s formulation for purposes of determining whether to institute.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Viken is mistaken on both counts. First, we disagree with Viken’s assertion that the claims are limited to a backscatter-only imaging system. Nor do we agree with Viken’s assertion that the Specification is limited to describing only a combined transmission/backscatter imaging system. We address each of these assertions in turn.” slip op. at 9
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable
“G. Ground 5 – Enablement of System that is not a Combination Viken asserts that “claims 1–22 of the ’783 patent are invalid for failing to comply with the enablement requirement of 35 U.S.C. § 112(a) because the specification does not enable a two-plane backscatter-only system.” Pet. 41. Viken’s non-enablement assertions fail for the simple reason that they are premised on the same improper assumptions discussed above with respect to Viken’s assertions that claim 1 is limited to a backscatter-only imaging system. As discussed above in section II.C., the claims of the ’783 patent are not so limited. Also, as discussed above in section II.D, the Specification of ’783 patent provides adequate written description support for an X-ray imaging system that includes two planes. Given the high level of skill in the art based on Viken’s formulation—“a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors” (Pet. 9 )— and given Viken’s improper reading of limitations into the claims in alleging lack of enablement, we are not persuaded that one skilled in the art would be unable to make or use the invention as claimed.” slip op. at 20
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,143,783 - Nokia Solutions And Networks US LLC / Nokia Solutions And Networks OY v. Huawei Technologies Co. Ltd.Institution deniedPTAB · Jul 26, 2017 · IPR2017-00592 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 8, 9, 11, 16, 17, and 19 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“’575 patent would have been obvious over TS 23.125 and Tdoc ’930. Pet. 66–70. For the reasons explained below, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on this asserted ground.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Based on the record before us, we are unpersuaded by Petitioner’s argument that the challenged claims of the ’575 patent are not entitled to the benefit of the filing date of the Chinese application. As Patent Owner points out, independent claims 1 and 16 do not require determining a charging method to be offline. Prelim. Resp. 14. Rather, the claims recite “determining a charging method” or “determine a charging method,” without specifying offline as a required charging method. Patent Owner points us to where the Chinese application discloses a CRF determining a charging method to be online, as discussed above. See, e.g., Ex. 1031, 19 (cited at Prelim. Resp. 14). We find that such disclosure sufficiently describes the disputed limitations “determining a charging method” and “determine a charging method.”” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Tdoc ’930 is a “temporary document” that contains 3GPP member “contributions for consideration by the Technical Specification Group or Working Group.” Ex. 1013; Ex. 1004 ¶ 17 (declaration testimony explaining that “Tdocs” refer to “temporary documents”). Petitioner asserts that Tdoc ’930 “was publicly available as early as May 23, 2004,” the date on which Petitioner relies as the prior art date. Pet. 33. Petitioner supports this assertion with the declaration testimony of both Dr. Min (Ex. 1003) and Balazs Bertenyi (Ex. 1004). See id. (citing Ex. 1003 ¶ 124; Ex. 1004 ¶ 37). According to Petitioner, Tdoc ’930 qualifies as prior art under 35 U.S.C. § 102(a)4 “because the ’575 Patent is not entitled to the priority date of the [] Chinese priority document.” Id. As discussed above, however, we find that the challenged claims are entitled to the benefit of the filing date of the Chinese application, namely, May 12, 2004. Accordingly, Tdoc ’930 does not qualify as prior art against the challenged claims of the ’575 patent under 35 U.S.C. § 102(a). 4 Because the application for the ’575 patent was filed before the enactment of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), the pre-AIA version of 35 U.S.C. § 102(a) applies in this proceeding. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claims 1– 3, 5, 8, 9, 11, 16, 17, and 19 would have been obvious over TS 23.125 and Tdoc ’930.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner argues that one of ordinary skill in the art would have found it obvious to combine TS 23.125 and the Tdoc list because, according to Dr. Min, “a POSITA would have followed the instructions explicitly provided by [the Tdoc list], namely include an OCS address.” Pet. 36; Ex. 1003 ¶ 131. We are not persuaded by Petitioner’s argument. Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining TS 23.125 and the Tdoc list to arrive at the claimed invention, namely a CRF providing a TPF with address information of a charging system. As to the case where the address information is provided to the TPF by another node (as opposed to being preconfigured in the TPF), we note Petitioner’s explanation that the CRF is the only node that would have provided the TPF with address information because the CRF and the charging system are the only nodes connected to the TPF, and the charging system would not have provided its own address to the TPF. See Pet. 54–55; Ex. 1003 ¶¶ 158–59. However, we find this explanation to be inconsistent with the teachings in TS 23.125 and the ’575 APA. For example, TS 23.125 teaches that “[a] TPF may be served by one or more CRF nodes,” and that “[t]he appropriate CRF is contacted based on UE identity information,” where “UE” refers to “User Equipment.” Ex. 1006, at 8, 16; see also id. at Fig. 7.1 (showing the UE communicating with the TPF). Similarly, the ’575 APA teaches that “the UE sends an Establish Bearer Service Request to the TPF.” Ex. 1001, 4:65–66. These teachings indicate that at least another node, namely the UE, is connected to the TPF. Accordingly, we find that these teachings also indicate that the address information of a charging system could have been provided by the CRF or the UE in the case where the address information is provided to the TPF by another node. As Patent Owner points out, neither Petitioner nor Dr. Min explains why a person of ordinary skill in the art would have combined TS 23.125 and the Tdoc list to arrive specifically at a CRF providing a TPF with address information of a charging system, rather than to arrive at a UE providing a TPF with the address information or at a TPF that is already preconfigured with the address information. See Prelim. Resp. 36 (“Neither Petitioner nor its declarant articulate a reasoning with rational underpinnings as to . . . why such modification would occur specifically to the CRF element of TS 23.125.”); id. at 37 (“the Petitioner had a burden to show why a POSITA in 2004 would have modified the ‘CRF’ element, in particular, of TS 23.125 to add the OCS address rather than modifying another element of TS 23.125”). Accordingly, on this record, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See Kahn, 441 F.3d at 988.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,798,575
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