- Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Sep 15, 2025 · IPR2025-00005 · APJ John G New · IPR · Rehearing
Denied Solus’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood of prevailing on the challenged claims.
In the decision…as to how a person of ordinary skill in the art would have known how to optimize the recited properties, and particularly so in combination with the teachings of Hirose and the other cited prior art references. Furthermore, as we noted in our Decision: Patent Owner asserts that this interplay…
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“[O]f the 44 specimens tested by Ye, as revealed in Ye’s Table II, only a single specimen, specimen 15, meets the required TC ratios recited in challenged claim 1 of the ’541 patent. Furthermore, none of the references cited by Petitioner teach, or even remotely suggest, the four requisite TC ratios recited by challenged claim 1. We find Petitioner’s argument that a person of ordinary skill in the art would have been motivated to exclusively select Ye’s sample 15, out of the remaining 43, to which to apply the teachings of Hara and Otsuka concerning the requisite tensile strength and weight deviation ranges in the hope of arriving at the claimed invention, is implausible. Indeed, only the ’541 patent, among all of the evidence of record, that actually mentions the required texture coefficient ratios recited in challenged claim 1. Petitioner provides no convincing argument as to why a skilled artisan would have selected sample 15 for combination with Hara and Otsuka.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“At the heart of this flaw is Petitioner’s argument, and Dr. Josefowicz’s opinion, that it would have been conventional in the art at the time of filing to vary the electrolyte concentration, electrolysis plating parameters, temperature, and the use of organic and inorganic additives, in order to obtain a copper foil with tensile strength and elongation values falling within the claimed ranges as these ranges were well known, at least since 1974. Ex. 1003 ¶ 63. This statement is largely unsupported by evidence of record, with the sole exception of Table 2 of Lowenheim, which, as Patent Owner points out, provides tensile strengths well outside the claimed range. Petitioner provides insufficient guidance as to how a person of ordinary skill in the art would have known which parameters to vary, or how to vary them, to provide the foil of Hirose with a tensile strength or weight deviation within the claimed range. Dr. Josefowicz’s statement that this would result from routine optimization, and was “conventional” may or may not be true, but it is insufficiently supported by evidence of record to be persuasive.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,457,541 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Sep 15, 2025 · IPR2025-00005 · APJ John G New · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1-4.
In the decision…as to how a person of ordinary skill in the art would have known how to optimize the recited properties, and particularly so in combination with the teachings of Hirose and the other cited prior art references. Furthermore, as we noted in our Decision: Patent Owner asserts that this interplay…
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In summary, we again conclude that Petitioner has failed to provide sufficient evidence to demonstrate that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited prior art references, in combination with Dr. Josefowicz’s relatively unsupported testimony concerning a skilled artisan’s ability to optimize various constituents and conditions, to arrive at the claimed invention. Petitioner has not pointed to any argument or unconsidered evidence of record that is sufficient to show that, in reaching its conclusion, the Board abused its discretion by basing its Decision on an erroneous interpretation of law, a factual finding not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors. Arnold, 362 F.3d at 1340.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teaches the tensile strengths of various types of copper-electroplated steel electrical cable wire of different properties, including high strength, hardness, low electrical resistivity, near zero strength, good leveling, and thermal stability, some of which fall within the claimed range of tensile strength of 30 to 40 kgf/mm2. Lowenheim, 196, Table II. However, none of these categories correspond to those copper foil properties recited in the claims, and Dr. Josefowicz’s testimony provides little guidance as to how a person of ordinary skill in the art would have known how to optimize the recited properties, and particularly so in combination with the teachings of Hirose and the other cited prior art references. Furthermore, as we noted in our Decision:” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“At the heart of this flaw is Petitioner’s argument, and Dr. Josefowicz’s opinion, that it would have been conventional in the art at the time of filing to vary the electrolyte concentration, electrolysis plating parameters, temperature, and the use of organic and inorganic additives, in order to obtain a copper foil with tensile strength and elongation values falling within the claimed ranges as these ranges were well known, at least since 1974. Ex. 1003 ¶ 63. This statement is largely unsupported by evidence of record, with the sole exception of Table 2 of Lowenheim, which, as Patent Owner points out, provides tensile strengths well outside the claimed range. Petitioner provides insufficient guidance as to how a person of ordinary skill in the art would have known which parameters to vary, or how to vary them, to provide the foil of Hirose with a tensile strength or weight deviation within the claimed range. Dr. Josefowicz’s statement that this would result from routine optimization, and was “conventional” may or may not be true, but it is insufficiently supported by evidence of record to be persuasive. Id. (emphasis added) (footnote omitted).” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,457,541 - Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCInstitution deniedPTAB · May 24, 2023 · IPR2022-01415 · APJ John D Hamann · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10, 13, or 14 were unpatentable over any asserted ground.
In the decision…Patent 7,559,629 B2 Figure 9 is a “circuit diagram showing the drive control configuration of a head substrate” in accordance with Hayasaki’s teachings. Id. ¶¶ 36, 38. Petitioner annotates Figure 9 in relevant part by coloring the odd (i.e., the first, third, fifth, etc.) AND gates of AND…
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 under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 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 papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’629 patent would have had “at least a Bachelor’s level college degree in Mechanical Engineering, Electrical Engineering, Physics, Computer Science or a related field, and at least two years of training or experience in the design of inkjet printheads.” Pet. 14–15 (citing Ex. 1007 ¶ 45). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’629 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 42–43. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt the recitals of “at least” as that language is vague and openended. Pet. 14–15. This definition is consistent with the ’629 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The parties both argue that we should construe “non-contiguous hybrid arrangement” to mean “[a]n arrangement in which the first set of logic cells are interleaved or interlaced with the second set of logic cells.” Pet. 15; Prelim. Resp. 43. Petitioner supports its argument by pointing to the claim construction order from the HP litigation, which provides this construction for this term. Pet. 15 (citing Ex. 1010, 4 (construing non-contiguous hybrid arrangement)). Patent Owner supports its argument by citing to the written description and figures of the ’629 patent. Prelim. Resp. 43–46 (citations omitted). For example, Patent Owner cites Figure 4 of the challenged patent, and its accompanying text, and argues that Figure 4 illustrates that the “logic cells [are] interleaved in a manner that minimizes the space between heater arrays by forming a single linear array.” Id. at 44 (citing Ex. 1001, Fig. 4). The accompanying text teaches that “the magenta logic cells 440a–n may be interleaved between the cyan logic cells 420a–n in an alternating manner to form a single, linear hybrid cyan/magenta P-logic array 302.” Ex. 1001, 5:67–6:4; Prelim. Resp. 45 (citing same). The ’629 patent adds that “[b]ecause of this interlacing of cyan P-registers 420a–n and magenta P-registers 440a–n, neither the cyan P-registers 420a–n nor the magenta P-registers 440a–n remain contiguous,” and that “[f]or example, in F[igure] 4, the cyan logic cell 420b is followed by the magenta logic cell 440a instead of the next cyan logic cell 420c.” Ex. 1001, 6:10–15; Prelim. Resp. 45 (citing same). We have reviewed the parties’ arguments, and we adopt the parties’ proposed construction for this term. In addition, we determine that no express construction is needed for any other term for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“However, we agree with Patent Owner that Hayasaki does not disclose that AND circuit array 5M’ and AND circuit array 5Y are arranged in a non-contiguous hybrid arrangement. Prelim. Resp. 51–52, 54–63. Rather, Hayasaki’s AND gates are arranged in a grid, with each magenta 6 Petitioner argues that “‘a first and a second set of logic cells’ is indefinite because it is unclear if this requires (i) a first set of logic cells and a second set of logic cells, (ii) first and second sets of logic cells, or (iii) a set of first logic cells and second logic cells.” Pet. 30 n.5. We disagree. The plain reading of this limitation corresponds to a first set of logic cells and a second set of logic cells, which is in accord with the interpretation Petitioner applies in this proceeding. Id. AND gate of AND circuit array 5M’ located directly aligned with the corresponding yellow AND gate of AND circuit array 5Y—they are not interleaved or interlaced. Ex. 1004, Fig. 9. Put differently, Hayasaki teaches that AND circuit array 5M’ and AND circuit array 5Y comprise two separate columns of logic cells that are not interleaved or interlaced. See Ex. 1004, Fig. 9, ¶ 93. Thus, Hayasaki does not teach sets of logic cells in a non-contiguous hybrid arrangement.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,559,629 - Canon, Inc. / Canon U.S.A., Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution deniedPTAB · Apr 14, 2023 · IPR2022-01532 · APJ John A Hudalla · IPR · Institution
Institution was denied for claims 1–25 because the Petition did not establish a reasonable likelihood of prevailing on any asserted obviousness ground.
In the decision…in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’030 patent and the asserted prior art. C. Claim Interpretation In an inter partes review, we construe each claim using the same…
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). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, or computer science, or an equivalent degree, and two to three years of experience in the field of optical engineering.” Pet. 7 (citing Ex. 1002 ¶ 40). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’030 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner (see Pet. 19–21) and Patent Owner (see Prelim. Resp. 6–11) put forth arguments regarding the construction of certain terms of the challenged claims. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., 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))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“detect motion. Ex. 1004 ¶¶ 7 (“[E]valuation of the degree of correlation becomes possible on the basis of the entire photographic object image (i.e. the frame image)”), 30 (“The threshold value comparison unit 973 compares the level value of the non-correlating portion (differing portion) between the frame images . . . . [T]he level data of the previous frame image is subtracted from the level data of the current frame image.”). Petitioner fails to explain how full-frame data for Kubo’s image comparison would be obtained where only portions of Sugitani’s image sensor 401 are exposed by slit 402.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,493,030 - Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Jan 11, 2023 · IPR2022-01220 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 13, 14, and 17–20 unpatentable on the asserted obviousness grounds.
In the decision…for purposes of this Decision. C. Ground 1: Asserted Obviousness over Ma Petitioner contends that claims 14 and 18 would have been obvious over the teachings of Ma. Pet. 24–33. 1. Overview of Ma Ma is a dissertation relating to rapid prototyping (“RP”) and manufacturing technology. Ex. 1007, 7. Ma…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 7
- Expert testimonyPetitioner expert discountedOther
“means of the precuring device 15, causing the surface to dry and stick.”). In light of these disclosures in Wohrl, Petitioner does not adequately explain why a POSITA would have understood that using a nip roller to press the path onto the core, then precuring the path as it is laid, creates an anchor as the ’798 patent teaches. Nor does Petitioner sufficiently address why a POSITA would have understood Wohrl to be teaching the use of an anchor when Wohrl uses a core to support the formation of the part. Moreover, Dr. Rosen’s declaration testimony on this point is entitled to little to no weight as it merely parrots the Petition. Compare Pet. 101–102, with Ex. 1002 ¶¶ 414–416; see 37 C.F.R. § 42.65(a).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” (citation and internal quotation marks omitted)). Having reviewed the parties’ arguments and evidence of record, we are not persuaded that Petitioner provides sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ma and Lipsker in the manner recited in the challenged claims.” slip op. at 14
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,987,798 - Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Jan 11, 2023 · IPR2022-01218 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including because Ma taught against pulling, combinations lacked adequate motivation, and Wohrl did not disclose the claimed …
In the decision…purposes of this Decision. C. Ground 1: Asserted Obviousness over Ma Petitioner contends that claims 1, 2, and 6–11 would have been obvious over the teachings of Ma. Pet. 27–47. 1. Overview of Ma Ma is a dissertation relating to rapid prototyping and manufacturing technology. Ex. 1007, 7. Ma…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 12–13 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . . Regardless of what level of skill is applied, however, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 3. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. at 3–4 (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, or in other proceedings.”). On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the “claim terms should be given their plain and ordinary meaning because, to the extent certain claim terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 13 (footnote omitted). Patent Owner does not address claim construction at this stage of the proceeding. See generally Prelim. Resp. We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentableMotivation not foundNot shown unpatentable
“Ma distinguishes between these two methods, noting that with the “active” method, “the forming quality of a previous layer does not influence the forming of the current layer,” while with the “passive” method, “the quality of a previous layer has a profound effect on the forming quality of the current layer.” Ex. 1007, 53. Ma sets forth other problems with using the “passive” method. See, e.g., id. at 95–96, 98–107, 143, 145–147, 149. For example, Ma teaches that during deposition using the “passive” method, “it is possible to make a big error, especially when the nozzle makes a big-angle turn” (id. at 98), and that “[a] toolpath error could be generated if an anchoring point is not formed properly” when using the “passive” method (id. at 143). Ma also discloses that forming speed is an issue with the “passive” method, (id. at 146), but discloses “[o]ne of the advantages [of the ‘active’ method] is that the forming speed is not limited by the solidification condition of the towpreg during the forming process” (id. at 168). 2. Analysis Claim 1 recites, inter alia, “moving the nozzle away from the anchor during discharging to pull the path of the composite material out of the nozzle.” Ex. 1001, 10:61–63. Petitioner contends that Ma teaches this limitation because “Ma discloses that ‘when the object moves relative to the nozzle during the forming process, the towpreg is pulled out by the object instead of being pushed out by nozzle pressure” and “the anchor points are used to pull the towpreg (‘the path of the composite material’) out of the nozzle during discharging.” Pet. 33 (citing Ex. 1007, 38, 72)(emphasis omitted). controlled layer manufacturing: an “active” method that pushes the composite material from an extruder’s orifice, and a self-anchoring or “passive” method, wherein the composite material is pulled out by the object. Ex. 1007, 7–8, 52–54. Here, Petitioner relies on Ma’s disclosures relating to the passive method. Petitioner, however, fails to provide a persuasive explanation as to why a POSITA would have selected Ma’s passive pulling method over Ma’s active pushing method for further development or improvement. Petitioner’s failure to do so is particularly noteworthy here, because Ma includes numerous teachings against the passive method of pulling the composite material through the nozzle. Indeed, Patent Owner identifies no fewer than eight disclosures within Ma that seemingly disparage the passive pulling method and discuss the benefits of the active pushing method. Prelim. Resp. 7–10 (citing Ex. 1007, 53, 95– 96, 98–107, 143–147, 149, 167–168). We also agree with Patent Owner that Petitioner has not sufficiently explained why the ordinarily skilled artisan would have combined Ma’s active and passive methods, much less with a reasonable expectation of successfully arriving at the subject matter of claim 1. Id. at 11–14. In the absence of any explanation from Petitioner, we are not persuaded that a POSITA would have ignored Ma’s teachings against the passive pulling method and selected Ma’s pulling method over Ma’s active pushing method for further development and improvement. Accordingly, Petitioner has not demonstrated a reasonable likelihood that claim 1 would have been obvious over Ma.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,987,798 - Gamber-Johnson LLC v. National Products Inc.Institution deniedPTAB · Jan 3, 2022 · IPR2021-01159 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim, relying on the same-structure mapping and unsupported obviousness theories.
In the decision…claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008))). D. Asserted Anticipation by Woud slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art. B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“support surface” (emphasis added). The structure Petitioner relies on as meeting the recited “female connector,” however, encompasses the entirety of the structure relied on as meeting the recited “docking support surface.” Compare Pet. 34–36, with id. at 33–34. As highlighted by Patent Owner, this raises a significant issue. See Prelim Resp. 24, 26–27. Our reviewing court explains that, [w]here a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct component[s]” of the patented invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”). There is nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”). Becton Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Therefore, a single structure in Woud cannot be both the recited female connector and the recited docking support surface, nor meet the requirement that the female connector is disposed within the docking support surface where the entirety of structure relied on as the docking support surface is also the structure relied on as the female connector, as Petitioner contends. Petitioner offers no explanation or elements set forth in the claim. See Pet. Because we find Petitioner relies on the same structure for two distinct components of claim 1, Petitioner fails to establish a reasonable likelihood that it will establish by a preponderance that claim 1 is anticipated by Woud.5” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,026 - PTAB · Oct 6, 2021 · IPR2021-00622 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 8–11, 14, 15, 19, and 20 were unpatentable on the asserted grounds.
In the decision…1329. In any event, Petitioner does not direct us to anything here that constitutes an admission by the applicant as to the scope of a claim or the teaching of the prior art. See Pet. 23–26. As discussed above, contrary to Petitioner’s assertions, an applicant’s decision during examination to…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products” or “(2) five years or more of experience in the design or development of interlocking products,” where exemplary “interlocking products” include “docking cradles and adapters for portable electronic devices.” Pet. 16 (citing Ex. 1011 ¶¶ 21–23, 60–62). Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”). Petitioner contends that, “[i]n this inter partes review, no claim terms require construction.” Pet. 17. Petitioner further contends, however, that “in some instances, Petitioner relies at least in part on [Patent Owner’s] own interpretations of its claims in [Patent Owner’s] own Infringement Contentions.” Id. (citing Ex. 1021). Patent Owner does not offer any interpretation of claim terms (see Prelim. Resp.), although it does argue Petitioner erred in misstating the applicable standard of “broadest reasonable construction” (id. at 20, 21–22, 26–28; Pet. 16–17 (citing 37 C.F.R. § 42.100(b))). On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Petitioner’s reliance on Centocor is not well founded, as it pertains to the prima facie case of acquiescence estopping the patentee where the Examiner has “issued a clear, unambiguous, and final § 112 rejection” for “new matter” and the patentee has “conceded the correctness of the rejection by filing a CIP application in response.” Centocor, 662 F. Supp. 2d at 591; see also Litton, 728 F.2d at 1438 (holding that patentee filing a continuing application as a continuation-in-part implied that it did add new matter and patentee was estopped from contrary arguments). Petitioner offers no explanation or reasoning why we should treat prior art rejections overcome by claim amendment in the same manner, let alone legal authority supporting that position. See Pet. Petitioner’s failure to identify any authority for a more expansive doctrine of acquiescence that extends to prior art rejections, as it seeks to apply here, is unsurprising. A “patentee is not required to fight tooth and nail every possible adverse thought an examiner commits to paper, nor to advance redundant arguments for patentability.” TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003). Our reviewing court further explains TorPharm as holding “that the applicant’s ‘acquiesence’ in the obviousness rejection by amending its claims did not preclude the patentee from contesting obviousness in litigation.” Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1346 (Fed. Cir. 2005) (citing TorPharm, 336 F.3d at 1331). Specifically, “[i]n TorPharm, the applicant added limitations to claims to overcome an obviousness rejection” and, “[l]ater during litigation, the defendant . . . showed that the added limitation was also in the prior art” and then argued that “the patentee could not challenge its obviousness contentions.” Id. That appears on all fours with the circumstances that Petitioner contends, contrary to TorPharm, estops Patent Owner here. Further, while “an examiner’s reasoning and findings are highly relevant to the validity inquiry[,] . . . they are not beyond challenge and they do not in every case automatically preclude the existence of a dispute of material fact.” TorPharm, 336 F.3d at 1329. In any event, Petitioner does not direct us to anything here that constitutes an admission by the applicant as to the scope of a claim or the teaching of the prior art. See Pet. 23–26. As discussed above, contrary to Petitioner’s assertions, an applicant’s decision during examination to amend claims rather than argue against the Examiner’s assertions is not itself an admission.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,026 - Nanocellect Biomedical, Inc. v. Cytonome/St, LLCInstitution deniedPTAB · Sep 1, 2020 · IPR2020-00548 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 9, 17, and 18 unpatentable over any asserted §103 ground.
In the decision…is typically . . . positioned within a well, microscale channel, or other cavity within the device” and that this would have been recognized “as teaching a chamber.” Pet. 29–30 (citing Ex. 1006, 20:23–25; Ex. 1002 ¶¶ 134–138); id. at 28–29 (citing Ex. 1006, 7:25–29, 8:12–23, 22:30–23:24).…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’”). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations and/or alterations of the prior art would render them unpatentable as obvious. At this preliminary stage, we determine whether the information in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations and/or alterations of the prior art. slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry; or a bachelor’s or master’s degree in a related field and at least three years of experience in designing or developing microfluidic systems.” Pet. 14 (citing Ex. 1002 ¶¶ 46–49). Patent Owner reserves the right to dispute Petitioner’s proposed definition of the level of ordinary skill in the art, but applies Petitioner’s proposed definition “[s]olely for purposes of [the Patent Owner Preliminary Response].” Prelim. Resp. 29. On this record, we have no reason to fault Petitioner’s definition of the level of ordinary skill and, therefore, adopt it for the purposes of this Decision. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For the purposes of this Decision, based on the current record, we determine that the claim term “pressure pulse” means “a transient increase in pressure” because this is the plain and ordinary meaning of the term and is consistent with the use of this term in the ’295 patent. We further note that this determination is consistent with the district court’s determination that the claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012, 5–6. Turning to the claim term “reservoir,” for the purposes of this Decision, based on the current record, we determine that the claim term has its plain and ordinary meaning of “a physical structure that contains fluid,” but decline to reach any determination as to the nature or type of fluid as it is not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This determination is consistent with the construction adopted by the district court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for dampening or absorbing a pressure pulse” (claim 1), this, and other, limitations are addressed to the limited extent necessary in reaching our Decision that Petitioner has not established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim. Wellman, 642 F.3d at 1361.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“reservoir that absorbs or dampens a pressure pulse. The required function of the side microchannels is wholly different, and there is no showing that what is required to absorb or dampen a pressure pulse is included in the disclosed structure for introducing hydrodynamic flow into the central microchannel that cells to be sorted pass through. See generally Pet. Petitioner and Dr. Weigl rely on Wada “describing that the fluid direction components ‘nudge’ materials across the width of the first channel,’” however, that is insufficient to support Petitioner’s contention that “the opposed microchannel structure in each of Figures 22 and 23 is configured to receive . . . and to dampen and absorb the pressure pulse.” Pet. 27–29; Ex. 1002 ¶ 126. On the record before us, thus, we are not persuaded that Wada includes any reservoir adapted for dampening or absorbing a pressure pulse such as recited in the claims. As to Dr. Weigl’s testimony to the contrary, we find it conclusory, largely unsupported as applied to Wada, and entitled to little weight. Dr. Weigl contends that the orientation of opposing microchannels across from one another indicates that one, or both, of them function as a reservoir that is adapted to dampening or absorbing a pressure pulse, and then points to structures in other references that are not shown to be similar or to have the same function as support. See Ex. 1002 ¶¶ 125– 139. This position is not sufficiently supported, though, particularly where there is insufficient explanation provided as to why what Dr. Weigl contends is disclosed in the further “background references” is what is also present in Wada’s disclosed structure, and what would follow based on its function. See generally Pet.; Ex. 1002. For example, while Dr. Weigl contends that the use of microchannel structure geometry with a channel, chamber or reservoir structure across the source of the transient pressure pulse for dampening or absorbing the transient pressure pulse was well known, and that it was understood that they can be used to mitigate undesirable flow fluctuations (see, e.g., Ex. 1002 ¶¶ 126–130), it simply does not follow that a pair of oppositely-oriented microchannels, as disclosed in Wada for providing fluid flow into the main microchannel, have similar structure or that they function in like manner, and Petitioner fails to set forth clearly how the structures are sufficiently similar at a level of detail sufficient to establish like function (see generally Pet.). Similarly, Petitioner’s reliance on the disclosed Joule heating wells in Wada as dampening or absorbing a pressure pulse or fluid (id. at 29–31) fails to establish sufficient basis for including structure that is adapted to dampen or absorb a pressure or fluid (see generally Pet.; Ex. 1002). As discussed above, as to “a first reservoir . . . adapted for dampening or absorbing a pressure pulse propagated across the flow channel,” what Wada discloses falls short, and Petitioner provides no reasonable basis for modifying what is, in fact, disclosed in Wada to arrive at the claimed invention. See generally Pet. Instead, as discussed above, Petitioner merely sets forth what one of ordinary skill in the art could have done. This is not sufficient to reasonably support a ground of obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation as to why the opposing microchannels in Wada function to dampen or absorb a pressure pulse, or would be adapted to do so, there is an insufficient showing that the ground set forth by Petitioner is not grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,623,295 - Nanocellect Biomedical, Inc. v. Cytonome/St, LLCInstitution deniedPTAB · Sep 1, 2020 · IPR2020-00550 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, 5, 13, 16, 18, or 19 unpatentable over any asserted obviousness ground.
In the decision…of Wada” and that “all aspects of the claimed subject matter are found in Wada.” Pet. 19 (citing Ex. 1002 ¶¶ 112, 123–151, 206). Relying on Wada’s teaching of “the opposed sorting microchannel structures in Figures 22 and 23,” Petitioner contends that “Wada discloses and illustrates employing a…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, for the reasons set forth below, we decline to institute an inter partes review because Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1, 2, 5, 13, 16, 18, and 19.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we have no reason to fault Petitioner’s definition of the level of ordinary skill and, therefore, adopt it for the purposes of this Decision. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For the purposes of this Decision, based on the current record, we determine that the claim term “pressure pulse” is “a transient increase in pressure” because this is the plain and ordinary meaning of the term and is consistent with the use of this term in the ’797 patent. We further note that this construction is consistent with the district court’s determination that the claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012, 5–6. We also determine, for the purposes of this Decision and based on the current record, that the claim term “reservoir” has its plain and ordinary meaning of “a physical structure that contains fluid.” We decline to reach any determination as to the nature or type of fluid, however, as it is not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This determination is consistent with the construction adopted by the district court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for dampening or absorbing a pressure pulse” (claim 1), this and other limitations, are addressed to the limited extent necessary in reaching our Decision that Petitioner has not established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim. Wellman, 642 F.3d at 1361.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, as to the “first reservoir . . . adapted for dampening or absorbing a pressure pulse propagated across the width of the flow channel” (claim 5) or “dampening or absorbing the pressure pulse using a first reservoir” (claim 1), what Wada discloses falls short, and Petitioner provides no reasonable basis for modifying what is, in fact, disclosed in Wada to arrive at the claimed invention. See generally Pet. Instead, Petitioner merely sets forth what one of ordinary skill in the art could have done. This is not sufficient to reasonably support a ground of obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation for why the relied on opposing microchannels actually function to dampen or absorb a pressure pulse, or would be adapted to do so, there is an insufficient showing that the ground set forth by Petitioner is not grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,011,797
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.