• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution

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

  RulingsInstitution decision

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

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

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

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

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

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

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,153,835
• Apple Inc. v. Shenzhen Rfcyber Asset Management, LLPInstitution denied
  PTAB · Jan 23, 2023 · IPR2022-01240 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because Apple did not show a reasonable likelihood that Hayaashi and Prisma rendered the claims obvious.

  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 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

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

    “sufficiently that the proposed combination of Hayaashi and Prisma would incorporate Prisma’s JCVM. See id. at 15–19. Instead, Petitioner asserts that one of ordinary skill in the art “would have simply needed to modify Hayaashi’s smart IC card chip 171 to incorporate Prisma’s core smart card elements, including CALC/OS and support for third-party e-purse applets.” Id. at 17 (citing Ex. 1003 ¶¶ 158–167). More specifically, Petitioner provides an annotated diagram, reproduced below, to identify the smart card components from Prisma to be incorporated into Hayaashi’s smart IC card chip 171. Id. at 18 (citing Ex. 1005, 9). In this annotated diagram, Petitioner adds red borders to the three boxes labeled “e-purse,” “CALC,” and “OS,”5 thereby 5 “CALC” is Prisma’s Card and Application LifeCycle manager, and “OS” is the card’s operating system. Ex. 1005, 6, 9. Hayaashi. As such, Petitioner does not specify Prisma’s JCVM as component that is incorporated into Hayaashi. To the extent Petitioner’s reference to “support for third-party e-purse applets” is meant to include Prisma’s JCVM, such a broad statement that fails to specifically mention Prisma’s JCVM lacks sufficient specificity to suggest that it would have been obvious to modify Hayaashi to include Prisma’s JCVM. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, 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 these reasons, we determine that the Petition fails to explain adequately why one of ordinary skill in the art would have been led to incorporate Prisma’s JCVM into Hayaashi.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “purse applet and provides a response the e-purse applet is configured to expect” as claimed because the JCVM ensures that an applet operates as expected and that the applet’s requests are handled as the applet expects regardless of the underlying hardware platform. Ex. 1003 ¶ 178. This testimony, however, is entitled to little weight because Mr. Smith fails to provide the underlying basis for his opinion. 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). The assertion that “the JCVM ensures that an applet operates as expected” is a conclusory statement not supported sufficiently by any objective evidence or analysis. Accordingly, we do not find Mr. Smith’s testimony of this point persuasive. Moreover, neither the Petition nor Mr. Smith explains sufficiently how Hayaashi or Prisma disclose providing an e-purse applet that the JCVM would interact with in the manner claimed. For the above reasons, we determine Petitioner has not met its burden” slip op. at 15

  § 103 obviousnesscites Graham
  Patents in suitUS 8,118,218
• Apple Inc. v. Rfcyber Corp.Institution denied
  PTAB · Jan 23, 2023 · IPR2022-01241 · APJ Kevin W Cherry · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner has failed to show a reasonable likelihood that the combination accounts for limitation 1(f). As Patent Owner states, neither Prisma nor Hayaashi contain any express discussion of transaction logs, let alone “causing an emulator” to do so “after an authenticity of the commands is verified by the e-purse applet.” To fill this hole in the combination, Petitioner leans heavily on what it contends a person of ordinary skill “would have understood” about the modified system. See, e.g., Pet. 38. It is unclear whether Petitioner relying on inherency, some modification to the combination, or some combination with other knowledge of a person of ordinary skill to arrive at this limitation. But setting aside this problem for a moment, we find that Petitioner has failed to show sufficiently that what it contends is the emulator, the Java Card Virtual Machine, updates the logs, and more importantly, whether the logs are updated after the e-purse applet verifies the commands. Again, there is no express disclosure in Prisma of these components performing these actions. Instead, Petitioner relies on the testimony of Mr. Smith to show that the combination accounts for this limitation. See Pet. 37–38 (citing Ex. 1003 ¶¶ 208–215). But we find Mr. Smith’s testimony to be insufficient because it relies lacks adequate support for his assertions about what he contends a person of ordinary skill “would have understood” about how the hypothetical third-party e-purse application would have operated. See, e.g., Ex. 1003 ¶¶ 213–214. Mr. Smith’s contentions about what a person of ordinary skill are supported only with citations to vague passages in the Prisma reference that merely mention the use of Application for Secure Personal Identification and Communication (ASPIC) and public key infrastructure (PKI). See id. ¶ 213 (citing Ex. 1005, 21–22). Mr. Smith gestures to these passages, but then goes far beyond what those passages disclose without adequately tying his contentions to the actual disclosures and additional supporting evidence. See id. ¶¶ 213–214. Without more explanation and support, we find this evidence inadequate to show that the combination would actually suggest this limitation.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the Declaration testimony of Mr. Smith, Petitioner contends that an ordinarily skilled artisan for the ’855 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 34–36). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’855 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8

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

    “Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “reasonable likelihood that the combination accounts for limitation 1(f). As Patent Owner states, neither Prisma nor Hayaashi contain any express discussion of transaction logs, let alone “causing an emulator” to do so “after an authenticity of the commands is verified by the e-purse applet.” To fill this hole in the combination, Petitioner leans heavily on what it contends a person of ordinary skill “would have understood” about the modified system. See, e.g., Pet. 38. It is unclear whether Petitioner relying on inherency, some modification to the combination, or some combination with other knowledge of a person of ordinary skill to arrive at this limitation. But setting aside this problem for a moment, we find that Petitioner has failed to show sufficiently that what it contends is the emulator, the Java Card Virtual Machine, updates the logs, and more importantly, whether the logs are updated after the e-purse applet verifies the commands. Again, there is no express disclosure in Prisma of these components performing these actions. Instead, Petitioner relies on the testimony of Mr. Smith to show that the combination accounts for this limitation. See Pet. 37–38 (citing Ex. 1003 ¶¶ 208–215). But we find Mr. Smith’s testimony to be insufficient because it relies lacks adequate support for his assertions about what he contends a person of ordinary skill “would have understood” about how the hypothetical third-party e-purse application would have operated. See, e.g., Ex. 1003 ¶¶ 213–214. Mr. Smith’s contentions about what a person of ordinary skill are supported only with citations to vague passages in the Prisma reference that merely mention the use of Application for Secure Personal Identification and Communication (ASPIC) and public key infrastructure (PKI). See id. ¶ 213 (citing Ex. 1005, 21–22). Mr. Smith gestures to these passages, but then goes far beyond what those passages disclose without adequately tying his contentions to the actual disclosures and additional supporting evidence. See id. ¶¶ 213–214. Without more explanation and support, we find this evidence inadequate to show that the combination would actually suggest this limitation. The lack of clarity of what theory the Petition is relying for this limitation exacerbates this problem. Because the references are completely silent as to “transaction logs,” let alone when, how, or by what they are updated, it is important for Petitioner to explain how it is filling that gap. Instead, Petitioner and Mr. Smith venture far beyond the disclosure of the actual references to what they contend a person of ordinary skill “would have known.” See Pet. 36–38; Ex. 1003 ¶¶ 208–215. At some points, Petitioner appears to attempt to rely on the underlying Prisma Proton system, not just the Prisma reference relied on in this ground. See Pet. 38 (discussing what was known about the Prisma Proton system). But 35 U.S.C. § 311(b) limits inter partes review as allowed “only on the basis of prior art consisting of patent or printed publications.” We decline to use the actual system to fill in gaps in the printed publication. Focusing our attention on the Prisma reference itself, we are only left with Mr. Smith’s conjectures about what a person of ordinary skill “would have known” without sufficient reasoning of how a person of ordinary skill would have combined this knowledge with the reference in precisely this way to arrive at the claim limitation. A rejection based on obviousness requires articulated reasoning with rational underpinning. See KSR, 550 U.S. at 418. In this case, having carefully reviewed the evidence currently presented, we cannot say that Petitioner has presented sufficient articulated reasoning to establish a reasonable likelihood of prevailing in showing that this limitation would have been obvious in view of the combination presented. Because all of the grounds and challenged claims contain a similar limitation to limitation 1(f) and rely on similar reasoning, we determine that Petitioner has also failed to establish a reasonable likelihood of prevailing on those grounds as well.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,448,855
• Flowco Production Solutions, LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 20, 2023 · IPR2022-01385 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution because Flowco did not show a reasonable likelihood of proving claims 3–17 obvious over Victor and Yerian, with or without Davis.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, 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.” Id. (internal quotation marks and citation omitted).” slip op. at 8

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

    “We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 22–24; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,395,865
• Flowco Production Solutions, LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 20, 2023 · IPR2022-01384 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution on claims 1–16 because the Petition did not show a reasonable likelihood of proving obviousness over Victor and Yerian, with or without Davis.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute 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 at the time of the alleged invention “would have [had] at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 7. Patent Owner “does not dispute” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the current record, including the prior art. See Prelim. Resp. 11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 8

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

    “Petitioner “proposes that all claim terms be given their ordinary and customary meanings and that no explicit constructions are necessary.” Pet. 8. Patent Owner does not dispute that position. See Prelim. Resp. 11. We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “As noted by Patent Owner, however, the mere fact that two references may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 21–23; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,793,728
• Beckman Coulter, Inc. v. Sirigen II LimitedInstitution denied
  PTAB · Jan 6, 2023 · IPR2022-01208 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all challenged claims and 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

    “Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner does not establish a reasonable likelihood that it would prevail with respect to at least one claim of the ’303 patent. Thus, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “1 Because we deny the Petition on the merits, we do not address the parties’ arguments related to discretionary denial.” slip op. at 2

  • Skill levelOther

    “Petitioner asserts that a person having ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See, e.g., id. at 10 (noting that the arguments and conclusions reached in the Preliminary Response “would not change” if Petitioner’s definition of the ordinarily skilled artisan were applied).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “structure of Formula (Ia),” including specific MU, L1 and L2, G1 and G2, n, and a, b, c, and d (which define the mol % of each unit within the structure) constituents, wherein each R group must be a “[n]on-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1006, 239:29–240:56. The ’303 patent expressly defines the phrase “[n]on-ionic side groups capable of imparting solubility in water” to refer to “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solutions with no visible particulates.” Id. at 54:31–34. In view of structure of claim 1 and the express definition provided in the ’303 patent, we agree with Patent Owner that claim 1 requires that the non-ionic side group R must be capable of imparting solubility to the claimed conjugated polymer (having constituents that satisfy the claimed variables noted above) in excess of 10 mg/mL. Prelim. Resp. 13. On this record, it is not sufficient to show that a particular R group is capable of” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,575,303
• Flowco Production Solutions LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 6, 2023 · IPR2022-01386 · APJ James P Calve · IPR · Institution

  Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–11, 13, 15, 16, 18–21, 23, and 24 unpatentable.

  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 inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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 evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 5–6. Patent Owner does not dispute Petitioner’s contention. Prelim. Resp. 2; Ex. 2001 ¶ 38. We adopt Petitioner’s proposed level of skill in the art for purposes of this Decision.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “The ’892 patent prosecution history evidences that an unimpeded fluid path does not include valves. During prosecution, Patent Owner amended the independent claims to claim “an unimpeded fluid path” in claims 1 and 23 and “an unimpeded narrow passageway within the fluid path” in claim 18. Ex. 1002, 61–64 (emphasis in original). Patent Owner argued that, The Applicant has amended independent claims 1, 18, and 23 to clarify that the fluid path is unimpeded. The alleged fluid path through the body of the plunger disclosed by Brown identified at page 4 of the Office Action is not unimpeded due to the presence of valves 76 and 102/104. Thus, Brown cannot anticipate claims 1, 2, 4–8, 12, 18, 19 or 23 of the present application. Id. at 66. In response, the Examiner issued a Notice of Allowability but did not provide a Statement of Reasons for Allowance. Id. at 43. “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, Patent Owner’s amendments to claim an unimpeded fluid path/passageway and arguments distinguishing Brown’s fluid path as being impeded by valves 76, 102/104 (versus unimpeded as claimed) clearly and unmistakably disclaimed coverage of plungers having bypass valves in the fluid path and narrow passageway through the plunger body.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “b. Motivation to Combine Further, we are persuaded by Patent Owner’s argument that a skilled artisan would not have modified Gray’s bypass valve with Victor’s stopper because their different principles of operation would render Gray’s plunger unsuitable for its intended purpose of providing lift in early stage wells. See Prelim Resp. 35–38 (citing Ex. 2001 ¶¶ 66–75, 103–107, 111). Mr. Cosby testifies that Gray and Victor operate differently so adding a narrow passage of Victor to Gray’s plunger would reduce the ability of Gray’s plunger to work in high pressure wells. Ex. 2001 ¶¶ 103–07; see Ex. 1005 ¶¶ 57, 91, 98, 111–12. The record supports Mr. Cosby’s testimony, and Petitioner’s attorney arguments do not address the arguments and evidence. Pet. 14–15. For this additional reason, Petitioner has failed to show a reasonable likelihood of demonstrating the unpatentability of any of claims 1–11, 13, 15, 16, 18–21, 23, and 24 under Ground 1.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,627,892
• Hubspot, Inc. v. Trident Holdings, Inc.Institution denied
  PTAB · Oct 27, 2022 · IPR2022-00907 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all grounds because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted references.

  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 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Because the person of ordinary skill in the art is a hypothetical person, we are not persuaded by Patent Owner’s argument regarding actual individuals that allegedly are disqualified by Petitioner’s definition. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. Our analysis would not differ, however, if we adopted Patent Owner’s proposed definition.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the passage cited by Patent Owner exhibits a clear intent to define “campaign” and does so with the requisite clarity, deliberateness, and precision. We thus lexicographic definition for the term. See Ex. 1001, 16:60–65. Patent Owner, however, truncates the lexicographic definition for its proposed construction without explaining the basis for the truncation. We need not determine whether the alteration is appropriate because we see no meaningful difference between Patent Owner’s proposed construction and the lexicographic definition vis-à-vis our analysis below. Accordingly, for the purpose of this Decision, we construe “campaign” as “a coordinated set of marketing activities.”” slip op. at 8

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

    “Jones is not a coordinated set of marketing activities but only an expression to sell something. Prelim. Resp. 15. We agree with Patent Owner because Petitioner’s mapping of Jones’s offers to “campaigns” is inconsistent with our construction of “campaign” as “a coordinated set of marketing activities.” See supra § III.B. Petitioner does not identify any disclosure in Jones or provide any reasoning suggesting that an offer in Jones is a coordinated set of marketing activities. As such, Petitioner’s arguments do not persuade us that Jones discloses selectively generating and storing a campaign population. Furthermore, even if we discounted the lexicographic definition, Petitioner does not explain adequately why an offer in Jones would be a “campaign” under the ordinary meaning of the term. Instead, Petitioner merely equates Jones’s offers to campaigns with repeated parenthetical references. Pet. 14–16. Petitioner argues that Jones discloses developing offers to be marketed to consumers (id. at 14 (citing Ex. 1005, 6:66–7:1)) and that the offers are “geared to an individual consumer and presented over 3:39–41)).7 These disclosures may indicate that Jones’s offers could be considered a form of marketing, but Petitioner still fails to explain sufficiently how an individual offer would comprise a marketing campaign. Accordingly, we are not persuaded that Jones discloses generating and storing a campaign population that comprises a plurality of marketing campaigns. For the above reasons, we determine Petitioner has not met its burden to show a reasonable likelihood it would prevail with respect to the contention that claims 1 and 27 are unpatentable over Jones.” slip op. at 11

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,236,977
• Axalta Coating Systems, LLC v. PPG Industries Ohio, Inc.Institution denied
  PTAB · Sep 12, 2022 · IPR2022-00676 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–19 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) (2022). 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). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “would have had “at least a Bachelor’s or Master’s degree in the field of polymer chemistry, polymer coatings, materials science and/or a related field and at least two years of practical experience in the development of coating systems for consumer products.” Pet. 11. For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s definition of a POSA, which is consistent with the scope and content of the ’505 Patent and the asserted prior art.” slip op. at 7

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

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not need to resolve any claim construction disputes for purposes of this Decision.” slip op. at 7

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in Kasari or Hall would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[Kasari] and Kondo each teach multi-layer systems with a transparent colored middle layer that can be used in the automobile industry” (Pet. 20) and makes a similar assertion about Hall and Kondo (Pet. 48), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to the intermediate coating layer of Kasari or Hall that a POSA would have applied Kondo’s teachings to the organic pigments that may be used in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39–47, 3:2–9. In contrast, Kasari and Hall both teach an intermediate coating layer that may contain an organic or inorganic pigment. Ex. 1009, 9:50–64; Ex. 1010 ¶ 32. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in the intermediate coating layer of Kasari or Hall. Petitioner also does not explain why a POSA would rely on the particle size of Kondo’s particles in isolation from Kondo’s teaching of inorganic pigments as the ultra-fine particles. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,981,505
• Axalta Coating Systems, LLC v. PPG Industries Ohio, Inc.Institution denied
  PTAB · Sep 12, 2022 · IPR2022-00675 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Axalta did not show a reasonable likelihood that claims 1–19 were unpatentable on 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 (2018); 37 C.F.R. § 42.4(a) (2022). 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). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Obviousness (§103) › Analogous artNon analogous artDecided for patent owner

    “for combining the teachings of EP ’931 and Kondo in a manner that would result in the claimed invention. Petitioner does not show sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in EP ’931 would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[b]oth EP ’931 and Kondo teach multi-layer systems intended for use in the automobile industry” (Pet. 20), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to EP ’931’s intermediate coating layer that a POSA would have applied Kondo’s teachings to the organic pigments in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39– 47, 3:2–9. In contrast, EP ’931 teaches an intermediate coating layer containing organic pigments that interact with metallic flake in the base coat to provide a color shift that varies with viewing angle. Ex. 1005, 6:41–47. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in EP ’931’s color-shifting intermediate coating layer. Nor does Petitioner address whether or how applying Kondo’s particle size teaching to EP ’931’s intermediate layer would affect the color-shifting property of that layer. Petitioner also does not explain why a POSA would rely on the particle size of Kondo’s particles in isolation from Kondo’s teaching of inorganic pigments as the ultra-fine particles. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “for combining the teachings of EP ’931 and Kondo in a manner that would result in the claimed invention. Petitioner does not show sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in EP ’931 would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[b]oth EP ’931 and Kondo teach multi-layer systems intended for use in the automobile industry” (Pet. 20), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to EP ’931’s intermediate coating layer that a POSA would have applied Kondo’s teachings to the organic pigments in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39– 47, 3:2–9. In contrast, EP ’931 teaches an intermediate coating layer containing organic pigments that interact with metallic flake in the base coat to provide a color shift that varies with viewing angle. Ex. 1005, 6:41–47. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in EP ’931’s color-shifting intermediate coating layer. Nor does Petitioner address whether or how applying Kondo’s particle size teaching to EP ’931’s intermediate layer would affect the color-shifting property of that layer. Petitioner also does not explain why a POSA would rely on the particle size” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “POSA would combine EP ’931 and Kondo and that the proposed combination is based on impermissible hindsight. Id. at 33–39. Patent Owner argues that Grubenmann teaches away from the claimed subject matter and does not support Petitioner’s contentions. Id. at 16, 40–41. Patent Owner argues that JP ’535 does not cure the deficiencies in EP ’931 and Kondo because JP ’535 teaches opaque, hiding layers for concealment of a substrate and teaches away from a transparent layer. Id. at 17–18, 42–44. After considering the parties’ arguments and evidence, we agree with Patent Owner that Petitioner does not make a sufficient showing of obviousness. Our reasoning is two-fold. First, Petitioner’s EP ’931-led grounds are based on a hindsight-biased view of the teachings of Grubenmann and unsupported assertions about the teachings of Kondo and ’JP 535. Second, Petitioner fails to provide a sufficient, non-hindsight biased rationale for combining the three-layer coating of EP ’931 with the teachings of Kondo, Grubenmann, and JP ’535 regarding particle size in a manner that would have led a POSA to the claimed invention. We address each of these shortcomings below.” slip op. at 13

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,981,505

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.