• Ewald Dörken AG v. Schaeffler Technology AG & Co. KG.Institution denied
  PTAB · Feb 20, 2025 · IPR2024-01365 · APJ James J Mayberry · IPR · Institution

  The Board denied institution on all three obviousness grounds because the Petition did not show a reasonable likelihood of prevailing on claims 1–7.

  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) (2024) (permitting the Board to institute trial on behalf of the Director). 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 do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that “[a] person having ordinary skill in the art (‘POSITA’) would have been a person having, as of 21 July 2017: (1) at least an undergraduate degree in engineering and/or material science, or similar education; and (2) two or more years of experience with coatings.” Pet. 7–8; see Ex. 1009 ¶ 25 (providing the same level of ordinary skill). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. We apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’756 patent, based on our review of the record.” slip op. at 9

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

    “Petitioner submits that . . . the claims should be given their plain and ordinary meaning.” Pet. 11. Patent Owner does not propose any specific constructions. See Prelim. Resp. 4–5.8 We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” (emphasis added)) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any other claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 11

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

    “Ex. 1003 ¶¶ 18–19. Petitioner provides no additional discussion on this disclosure, including how it satisfies the zinc flake coating limitation. See Pet. 15–17, 20. Petitioner’s sole citation to Dr. Haber’s declaration associated with this claim limitation is to paragraph 35, which provides the same claim chart as is in the Petition. See Pet. 17; Ex. 1009 ¶ 35.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,098,756
• Honeywell International Inc. v. DSM IP Assets B.V.Institution denied
  PTAB · Aug 21, 2024 · IPR2024-00493 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because Honeywell did not show a reasonable likelihood that claims 1–9 were unpatentable over any of its three obviousness combinations.

  RulingsInstitution decision

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

    “Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its obviousness challenge of independent claim 1 or dependent claims 2–9 over the combination of Simmelink and Section 73.1015.” slip op. at 23

  • Skill levelOther

    “PHOSITA) at the time of the ’532 patent “would have had at least a Bachelor’s degree in the field of chemistry, chemical engineering, polymer chemistry, or materials science and at least three years of relevant work experience in the field of high strength fibers.” Pet. 8 (citing Ex. 1003 ¶ 18). Petitioner adds that individuals with different educational backgrounds could still be of ordinary skill in the art if they have “additional experience [that] compensates for a deficit in their education and experience stated above.” Id. According to Patent Owner, a person or ordinary skill in the art, would have (i) a bachelor’s degree in chemistry, polymer chemistry, materials science, chemical engineering, or biomedical engineering and (ii) three years of experience in designing and manufacturing gel-spun UHMWPE yarns. At this level of skill, a PHOSITA would have a detailed understanding of the information provided in the Technology Background, Section II, supra, including (i) the differences between linear HDPE and UHMWPE, (ii) the history underlying Section 73.1015 and the early failures of the 1960s-era blue, melt-extruded polyethylene sutures, (iii) why the molecular orientation of polyethylene molecules leads to strong yarns in the special case of gel-spun UHMWPE, and (iv) the challenges associated with coloring gel-spun UHMWPE yarns, especially for end-use medical applications. Prelim. Resp. 33–34. We note that the parties’ proposed definitions are largely similar, except that Patent Owner additionally recognizes a Bachelor’s degree in biomedical engineering and requires experience in designing and manufacturing gel-spun UHMWPE yarns. In any event, we do not need to the same under either proposed definition.” slip op. at 6

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

    “a skilled artisan would have understood that the “gel spinning” process recited in the claims requires the use of a solvent during the spinning process. Indeed, the Specification describes this term, as follows: Gel spinning is understood to include at least the steps of spinning filaments from a solution of ultra-high molecular weight polyethylene in a spin solvent; cooling the filament obtained to form a gel filament removing at least partly the spin solvent from the gel filament; removing at least partly the spin solvent from the gel filament; and drawing the filament in at least one drawing step before during or after removing spin solvent. Ex. 1001, 2:31–37. We recognize the inventor’s lexicography as dispositive with respect to the meaning of the term “gel spinning.” See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner

    “Claim 1 describes gel spinning as the manner by which the filaments comprised in the claimed colored multi-filament yarn are obtained. This, on its face, is a product-by-process claim element because it describes the filament structure being obtained in a particular way, i.e., by gel spinning. See Kamstrup A/S v. Axioma Metering UAB, 43 F.4th 1374, 1382 (Fed. Cir. 2022) (agreeing with the Board that “cast in one piece” is a product-by-process claim element as it describes the structure being cast “in a particular way”). For this element to be limiting, it must impart “structural and functional differences” that distinguish the claimed product from the prior art. See Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009). Patent Owner argues persuasively that gel spinning imparts structural and functional differences to the claimed product because the process “creates overlap between polyethylene molecules within the UHMWPE filaments that maximizes the intermolecular Van der Waals interactions, resulting in highly crystalline filaments with high tensile strength.” Prelim. Resp. 38, 22 (citing Ex. 1014, 62–66). According to Patent Owner, “the structure of the gel spun UHMWPE is substantially different from other types of UHMWPE such as compression-molded and ram-extruded UHMWPE used to make joint replacements and other orthopedic implants.” Id. at 38.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,280,532
• Ericsson Inc. / Nokia Of America Corporation v. XR Communications LLCInstitution denied
  PTAB · Jul 15, 2024 · IPR2024-00314 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Wong, alone or with Minn and Lehne, rendered any challenged claim obvious.

  RulingsInstitution decision

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

    “For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 11

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

    “Accordingly, we understand the term pre-equalization parameter to encompass a parameter used for pre-equalization, that is, to account for properties of a propagation path between a transmitter and a receiving device, where the parameter is based on at least one multipath transmission delay identified from a reverse path data signal received from the receiving device and where a forward path data signal is modified based on the parameter.” slip op. at 15

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

    “We are not persuaded that Petitioner has shown that Wong teaches the recited pre-equalization parameter because Petitioner’s analysis does not address the term “pre-equalization” sufficiently. As Patent Owner argues, Wong discloses that it uses the magnitude of the channel gain in its iterative process of assigning bits to subcarriers in an OFDM system to minimize the total amount of power used for a transmission. The magnitude of the channel gain is used to calculate the required transmit power for a kth user over an nth subcarrier, as seen in Equation 1 in Wong. Ex. 1005, 1749. 9 To the extent that Petitioner contends that employing the time-domain option would have been “obvious to try” under obviousness case law merely because there are only two options, this contention shortcuts the obvious to try analysis. See, e.g., Grunenthal GmbH v. Alkem Labs. Ltd., 919 F.3d 1333, 1345 (Fed. Cir. 2019) (“To prove obviousness under an obvious to try theory, [the challenger] must show (1) a design or market need to solve a particular problem, and (2) that ‘there are a finite number of identified, predictable solutions’ that would lead to an expectation of success.” (quoting KSR Int’l Co., 550 U.S. at 421)). Wong’s process iterates over the k users and n subcarriers such that the sum of the transmit power is minimized. Id. Nowhere in Wong does it explain that its power minimization approach pre-equalizes the transmit signal. Accordingly, we agree with Patent Owner that Petitioner’s unpatentability analysis reads out the term “pre-equalization” from claim 1. See Prelim. Sur-reply 1–2.” slip op. at 23

  • Obviousness (§103) › KSR rationalesDecided for patent owner

    “can be determined by one of two ways—a time-domain option or a frequency domain option—“the epitome of ‘obvious to try.9’” Id. at 23. Petitioner then employs the time-domain approach, eventually getting to a relationship between channel gain and channel frequency response, apparently contending that the amplitude of the channel frequency is the same as the magnitude of the channel gain. See id. at 26–27; Ex. 1003 ¶ 311 (“[T]hus the ‘magnitude of the channel gain’ as used in the methods described in Wong is simply this amplitude term within this estimated ‘channel frequency response.’” (emphasis in original)). We are not persuaded that Petitioner has shown that Wong teaches the recited pre-equalization parameter because Petitioner’s analysis does not address the term “pre-equalization” sufficiently. As Patent Owner argues, Wong discloses that it uses the magnitude of the channel gain in its iterative process of assigning bits to subcarriers in an OFDM system to minimize the total amount of power used for a transmission. The magnitude of the channel gain is used to calculate the required transmit power for a kth user over an nth subcarrier, as seen in Equation 1 in Wong. Ex. 1005, 1749. 9 To the extent that Petitioner contends that employing the time-domain option would have been “obvious to try” under obviousness case law merely because there are only two options, this contention shortcuts the obvious to try analysis. See, e.g., Grunenthal GmbH v. Alkem Labs. Ltd., 919 F.3d 1333, 1345 (Fed. Cir. 2019) (“To prove obviousness under an obvious to try theory, [the challenger] must show (1) a design or market need to solve a particular problem, and (2) that ‘there are a finite number of identified, predictable solutions’ that would lead to an expectation of success.” (quoting KSR Int’l Co., 550 U.S. at 421)).” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,177,369
• Nespresso USA, Inc. v. K-Fee System GmbHInstitution denied
  PTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.

  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). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10

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

    “That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,542,094
• Crusoe Energy Systems, LLC v. Upstream Data Inc.Institution denied
  PTAB · Mar 29, 2024 · PGR2023-00052 · APJ Matthew S Meyers · PGR · Institution

  Institution was denied because Petitioner did not show it was more likely than not that claims 1–41 were unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that claim 1 is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with Petitioner’s articulation of the level of ordinary skill in the art, but does not offer a definition of its own. Prelim. Resp. 5. According to Patent Owner, “[t]his Petition and related declaration propose two alternative levels of ordinary skill in the art, where the second alternative does not require any formal education or any experience in the field of oil or gas production.” Id. While Patent Owner disagrees with Petitioner’s characterization of the level of ordinary skill in the art, Patent Owner does not explain how a different level of skill is likely to alter Petitioner’s analysis. Instead, Patent Owner contends that it “applied Petitioner’s articulation and confirmed the analysis detailed below would not change based on disagreements over the level of ordinary skill in the art.” Id. (citing Ex. 2101 ¶¶ 16–17). 8 To the extent necessary, and for purposes of this Decision, we accept Petitioner’s statement on the level of skill in the art. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8

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

    “Because the meanings of the claim terms “blockchain mining devices,” “mining processor,” and “adapted to mine transactions” are inextricably linked with Petitioner’s indefiniteness grounds, we will address the meaning of those terms in the context of the parties’ arguments to the extent necessary to resolve the controversy as set forth below in Section III.C. Similarly, we will address the parties’ arguments regarding the disputed means-plus-function limitations in our discussion of 35 U.S.C. § 112(f) as set forth below in Section III.E. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not shown unpatentable

    “To satisfy the definiteness requirement of § 112(b), a patent’s claims must, when “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910. We are not persuaded that the Petition shows that it is more likely than not that Petitioner would prevail in demonstrating that the term “blockchain mining devices,” as recited by independent claims 1 and 24, is indefinite. As an initial matter, we agree with Patent Owner that “Petitioner’s indefiniteness theory is flawed because its ‘alternative interpretations’ are of its incorrect claim construction rather than the claim language in view of the specification as required by Nautilus.” Prelim. Resp. 13. We find the Specification informs, with reasonable certainty, those skilled in the art about the meaning of the term “blockchain mining devices.” The 18 Specification informs us that “each blockchain mining device 12 may be composed of suitable components. The blockchain mining device 12 may have a network interface, such as network equipment 88, and one or a plurality of mining processors 92 (92A-92E for example).” Ex. 1001, 15:21–25. And, claim 1 recites that the “blockchain mining devices [are] connected to the generator” and “each have a mining processor and are connected to a network interface.” Id. at 19:59–62. Thus, reading the term “blockchain mining devices” in light of the language of the claim and the Specification, an ordinarily skilled artisan would have understood “blockchain mining devices” to mean a device composed of, for example, a network interface and one or more processors. Id. at 15:21–25, 19:59–62.” slip op. at 18

  Claim construction§ 112 disclosureDiscretionary denial
  Patents in suitUS 11,574,372
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 25, 2024 · IPR2023-01314 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17

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

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’553 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 43–48.” slip op. at 30

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

    “Regarding the preambles of independent claims 1 and 22, as well as the claim term “excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation,” Petitioner asserts that it “applies the claim construction previously adopted by the district court in the co-pending litigation.” Pet. 9–10. Petitioner asserts that “the parties agreed that the preambles of independent claims 1 and 22 are limiting, and the district court adopted this construction in its order.” Id. at 9–10 (citing Ex. 1011, 2 (district court claim construction order)). Petitioner also asserts that “the district court adopted Patent Owner’s preferred construction of [‘excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation’]: ‘excluded volume in space that is common to both the first and second 3D representations where no surface from either of the 3D representations should be present.” Id. at 10 (citing Ex. 1011, 2). Patent Owner does not respond other than to repeat Petitioner’s assertions regarding the district court’s claim constructions. Prelim. Resp. 9. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,064,553
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 22, 2024 · IPR2023-01313 · APJ Michelle N Wormmeester · IPR · Institution

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

  RulingsInstitution decision

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

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 33

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

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33

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

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,629,551
• Omega Liner Company, Inc. v. Buergofol GmbHInstitution denied
  PTAB · Mar 20, 2024 · IPR2023-01402 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 would have been obvious over either asserted combination.

  RulingsInstitution decision

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

    “Those arguments are insufficient to support trial institution because neither Petitioner nor Dr. MacLean sufficiently explains why an ordinarily skilled artisan would have been interested in selecting a material capable of withstanding temperatures “incurred when using a heat-based curing process.” Id. To the contrary, elsewhere in the Petition, Petitioner consistently and repeatedly identifies UV-radiation curing (as opposed to heat-curing) as providing the impetus for selecting and combining other features from Glover and Brandenburger to attain a modified insertion tube that meets the challenged claims. Pet. 20–41 (relying on UV-radiation curable resins and UV-radiation curing). Critically lacking on this record is any explanation why an ordinarily skilled artisan would have been led to select one structural feature of the invention (the required “layer (a)” material, Ex. 1001, 14:50) to facilitate a heat-curing process, where the reasons for selecting every other structural feature of the invention are keyed to facilitating a UV-radiation curing process.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees, arguing that Petitioner’s proposed definition “completely ignores having any experience” within the field of “an insertion tube suitable for the renovation of subterranean pipes.” Prelim. Resp. 17. In Patent Owner’s view, the ordinarily skilled artisan would have had “some knowledge and experience in the end-use performance of polymeric films and sheet products” and, moreover, “would not necessarily have experience in the formulation or manufacturing of” those films and products. Id. On that basis, Patent Owner proposes modifying Petitioner’s definition by deleting “experience in the formulation or manufacturing of polymeric films and sheet products.” Id. The prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Each asserted reference in this case refers to manufacturing or formulating processes for polymeric materials useful in subterranean pipe renovation, which supports Petitioner’s proposed definition. See Ex. 1005, code (57), 3:33–4:58; Ex. 1006, code (57), 1:56–2:46, 4:8–41; Ex. 1007, code (57), 4:19–63; Ex. 1009, code (57), 2:28–3:5. Only Petitioner’s definition, moreover, is supported by declaration testimony. Pet. 3 (citing Ex. 1003 ¶ 23). In our analysis, therefore, we apply Petitioner’s definition, but note that neither party indicates that the result on institution would change under Patent Owner’s slightly different definition.” slip op. at 7

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

    “Petitioner submits that “[n]o formal claim construction [is] necessary” for purposes of deciding whether to institute review. Pet. 19. Patent Owner does not address claim construction, except to observe that “Petitioner proposes no construction of the claims.” Prelim. Resp. 17. On this record, no express claim construction is necessary. This Decision turns on the sufficiency of Petitioner’s showing that the asserted prior art suggests an internally situated tube having “a layer (a),” as specified in claim 1, which is characterized by a “VICAT softening point” that “is at least 100˚C.” Ex. 1001, 14:50–63. Neither party argues that the result would change in this case based on the meaning applied to those terms. See Pet. 19; Prelim. Resp. 17.” slip op. at 8

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

    “Those arguments are insufficient to support trial institution because neither Petitioner nor Dr. MacLean sufficiently explains why an ordinarily skilled artisan would have been interested in selecting a material capable of withstanding temperatures “incurred when using a heat-based curing process.” Id. To the contrary, elsewhere in the Petition, Petitioner consistently and repeatedly identifies UV-radiation curing (as opposed to heat-curing) as providing the impetus for selecting and combining other features from Glover and Brandenburger to attain a modified insertion tube that meets the challenged claims. Pet. 20–41 (relying on UV-radiation curable resins and UV-radiation curing). Critically lacking on this record is any explanation why an ordinarily skilled artisan would have been led to select one structural feature of the invention (the required “layer (a)” material, Ex. 1001, 14:50) to facilitate a heat-curing process, where the reasons for selecting every other structural feature of the invention are keyed to facilitating a UV-radiation curing process.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,794,269
• Advanced Lighting Concepts LLC v. Mate LLCInstitution denied
  PTAB · Feb 13, 2024 · IPR2023-01266 · APJ Kimberly J Mcgraw · IPR · Institution

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

  RulingsInstitution decision

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

    “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a)(“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute inter partes review of the challenged claims of the ’601 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner’s declarant, Joseph McAlexander, testifies that a person having ordinary skill in the art (“POSITA”) to which the ’601 patent pertains, would have “at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with power regulation devices, like LED drivers and dimmers.” Ex. 1002 ¶ 31. Patent Owner, having waived its Preliminary Response, does not contest Petitioner’s articulation of the level of skill in the art. Paper 7. We regard Petitioner’s definition as consistent with the prior art before us and the skill reflected in the Specification of the ’601 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art may reflect an appropriate level of skill). Thus, for the purpose of this Decision, we apply Mr. McAlexander’s definition.” slip op. at 15

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

    “Petitioner states that “[e]ach claim term challenged by this Petition should be construed in accordance with its ordinary and customary meaning for purposes of resolving the issues raised in this Petition,” but does not otherwise explicitly articulate any particular claim construction. Pet. 14. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). .” slip op. at 16

  • BurdenNot shown unpatentable

    “Thus, Petitioner’s mapping of the LED driver recited in claim elements 1(b), 1(c), and 1(e) to Peng’s phase controlled dimmer 101 is inconsistent with its mapping of the claimed components included in the LED driver of claim element 1(a) to components located external to Peng’s phase controlled dimmer 101. Because of Petitioner’s inconsistent mapping of Peng to the claimed LED driver, Petitioner fails to show that Peng discloses an LED driver that meets all of the limitations set forth in claim 1. See Net MoneyIN, 545 F.3d at 1369 (stating for a prior art reference to anticipate a claim, it “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim’”). Additionally, Petitioner’s failure to articulate, inter alia, which components in Peng correspond to either the LED driver or the power circuit recited in claim element 1(a) violates our rules requiring that the “petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon” (37 C.F.R. § 42.104(b)(5) (emphasis added)) and that the “petition must include a full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including material fact” (37 C.F.R. § 42.22(a)(2) (emphasis added)). See also 37 C.F.R. § 42.104(b)(4) (stating the Board may “give no weight to the evidence where a party as failed to state its relevance”). As such, Petitioner does not show a reasonable likelihood that it will prevail in showing that claim 1 is anticipated by Peng.” slip op. at 23

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 8,957,601
• Advanced Lighting Concepts LLC v. Mate LLC.Institution denied
  PTAB · Feb 13, 2024 · IPR2023-01257 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 5, 7, 13, 15, or 21 unpatentable.

  RulingsInstitution decision

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

    “provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute inter partes review of” slip op. at 2

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

    “art depicted in Figure 5 (relied upon for claim element 1(b)) either relates to or can be combined with Shteynberg’s discussion of its Figure 10 embodiment depicting capacitor 345 (relied upon for claim element 1(d)). For a prior art reference to anticipate a claim, it “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For example, in Net MoneyIN, the Federal Circuit held that an “Internet payment system” was not anticipated by a prior art reference that disclosed all the components of the invention, because the reference disclosed two separate payment protocols, each of which contained only a subset of the components claimed in the patent at issue. Id. at 1371. “[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. at 1371 (citation omitted). Here, Petitioner relies upon two disparate disclosures without any indication as to how these disclosures could be combined. Second, Petitioner has not sufficiently shown that capacitor 345 functions as an inrush current limit or that Shteynberg discloses a “power factor correction (PFC) boost connected to the inrush current limit” as required by claim element 1(d). Petitioner and its declarant have clearly stated that a person having ordinary skill in the art “would readily understand that using a resistor in series with a capacitor to limit inrush current as described in Shteynberg is analogous to the inrush current limit of the ‘446 [p]atent.” Pet. 17 (emphasis added); Ex. 1002 ¶ 57. Neither Petitioner nor its declarant make any persuasive argument that a capacitor only, such as capacitor 345, can constitute an inrush current limit. Indeed, Mr. McAlexander provides no testimony that a capacitor alone can constitute an inrush current limit, let alone that Shteynberg discloses an inrush current limit that is connected to power factor correction (PFC) boost as required by claim element 1(d). See Ex. 1002 ¶¶ 53–61 (providing testimony that Shteynberg anticipates claim 1 but not discussing the inrush current limit of claim element 1(d)). Indeed, Petitioner does not include any citations to Mr. McAlexander’s declaration to support its contention that Shteynberg discloses an inrush current limit as required by claim element 1(d). See Pet. 19–22. Thus, Petitioner has not provided persuasive evidence or argument that Shteynberg’s Figure 10 discloses an inrush current limit, let alone an inrush current limit that is connected to a power factor correction (PFC) boost. As noted above, Petitioner has provided no persuasive argument as to how Shteynberg’s disclosures regarding its discussion of the resistor in series with a capacitor shown in prior art Figure 5 can be combined with Shteynberg’s disclosures regarding its inventive embodiment of Figure 10. Thus, we find that Petitioner fails to demonstrate a reasonable likelihood that Shteynberg discloses the recited inrush current limit as required by claim 1.” slip op. at 15

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner’s declarant, Mr. McAlexander, testifies that a person having ordinary skill in the art (“POSITA”) to which the ’446 patent pertains, would have “at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with power regulation devices, like LED drivers and dimmers.” Ex. 1002 ¶ 31. Patent Owner, having waived its Preliminary Response, does not contest Petitioner’s articulation of the level of skill in the art. Paper 7. We regard Petitioner’s definition as consistent with the prior art before us and the skill reflected in the Specification of the ’601 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art may reflect an appropriate level of skill). Thus, for the purpose of this Decision, we apply Mr. McAlexander’s definition.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,525,446

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.