- Tanklogix, LLC v. SiteproInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8
- 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 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,488,871 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9–16, or 20 unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither party contends that any claim terms require an express construction to resolve the present controversy. Pet. 8 (“For purposes of this Petition only, Petitioner does not believe any terms require a formal construction.”); see generally Prelim. Resp. Nonetheless, Petitioner explains that the Petition is structured such that “Ground 1 is based on Patent Owner’s infringement contentions in the district court litigation, where the claimed ‘MUD module’ is generally mapped to multiple-input multiple-output (MIMO) receivers in a wireless network.” Pet. 2. Petitioner contends that “[u]nder this broad interpretation of a ‘MUD module,’ Walton’s MIMO receiver renders every challenged claim obvious.” Id. In contrast to Ground 1, the Petition states that “Ground 2 is based on the plain meaning of ‘MUD module,’ which is a component that detects, separates, and decodes signals from multiple users transmitting simultaneously over the same frequency band.” Id. Petitioner contends that, “[a]pplying the correct meaning of the term, Walton’s MIMO receiver does not necessarily comprise a MUD module.” Id. Therefore, Petitioner explains that “Ground 2 combines Walton with Learned, which expressly discloses [a] multi-user detector, and thus renders every challenged claim obvious in combination with Walton.” Id. at 2–3.7 In other words, the Petition presents Ground 1 and Grounds 2/3 as alternatives depending on the meaning of 7 Although not specifically relevant to claim construction, Petitioner explains that “Ground 3 further combines Walton and Learned with Quigley, to the extent Patent Owner argues Walton does not disclose providing a burst control input.” Pet. 3. “MUD module,” where Ground 1 is based on Petitioner’s understanding of Patent Owner’s interpretation of the term and Grounds 2 and 3 are based on Petitioner’s interpretation of the term as having its plain meaning. Petitioner further contends that “[e]very other claim term carries its ‘ordinary and customary meaning’ . . . .” Id. at 8. Although Petitioner presents a potential dispute regarding the meaning of “MUD module,” we need not construe this term expressly because the determination we reach herein does not depend on which meaning MUD module is applied. Accordingly, we do not construe any claim terms expressly because express constructions are not necessary to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“IV. DISCRETIONARY DENIAL Patent Owners contends that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 9 (PTAB Mar. 20, 2020) (precedential), weigh heavily in favor of discretionary denial. Prelim. Resp. 40–46; Paper 10. Petitioner disagrees. Pet. 74–77; Paper 9. In light of the conclusion reached above, we need not address the parties’ arguments regarding discretionary denial.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,089,946 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Mar 21, 2025 · IPR2024-01248 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–11, 16, and 21 unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes a specific construction of any claim term, although Petitioner contends each term should be construed according to its plain and ordinary meaning. Pet. 16; see generally Prelim. Resp. Accordingly, we need not construe any claim terms expressly because the meaning of the terms is not in dispute and an express construction is not necessary to resolve the controversy before us.” slip op. at 13
- BurdenNot shown unpatentable
“We find the Petition lacking in particularity because it does not clearly identify what aspect of Jin is alleged to teach the unique signal parameters (or unique estimated signal parameters) recited in claim 1. See, e.g., 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if — (3) the petition identifies, in writing and with particularity, . . . the evidence that supports the ground for the challenge to each claim . . . .”). First, as reflected above, the Petition asserts that something called a “unique pilot parameter” teaches the recited unique estimated signal parameters. But “unique pilot parameter” is not a term or phrase recited in Jin. See Prelim. Resp. 19 (arguing the same). So, when Petitioner states “Jin discloses that the base station uses the unique pilot parameter (i.e., ‘unique estimated signal parameters’) to ‘identify which user (i.e., mobile terminal) has transmitted the received data,’” it is not clear what element in Jin Petitioner intends to identify by the term “unique pilot parameter.” Dr. Min’s testimony does not help resolve the ambiguity in the Petition. In particular, Dr. Min also refers to a “unique pilot parameter (i.e., ‘unique signal parameter’) for each user.” Ex. 1003 ¶ 89. But, as noted above, Jin does not disclose an element referred to as a “pilot parameter” and it is not clear what element Dr. Min intended to identify in Jin.8” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,814,071 - Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution deniedPTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4
- PTAB / AIA Trials › Discretionary denialNot reached
“Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11
Claim constructionDiscretionary denialPatents in suitUS 6,845,128 - Mylan Pharmaceuticals Inc. v. Novo Nordisk A/SInstitution deniedPTAB · Oct 2, 2023 · IPR2023-00723 · APJ Robert A Pollock · IPR · Institution
The Board denied institution on claims 1–6 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
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) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence (1966). In analyzing the obviousness of a combination of prior art elements, it can be important to identify a reason that would have prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Accordingly, a party that petitions the Board for a determination of unpatentability based on obviousness 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) (internal quotations omitted). slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). In addressing the level of ordinary skill in the art, Petitioner contends that “[t]he claimed subject matter falls within the medicinal chemical and pharmacological arts and encompasses the skills, education, and expertise of a team of individuals working together to develop and formulate GLP-1 analogs to treat patients having type-2 diabetes or related conditions.” Pet. 7. The persons of ordinary skill in the art (“POSA”) making up the team would have an M.D., Pharm.D., or doctoral degree(s) in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, chemical engineering, biochemical engineering or related fields, peptides or proteins, and experience with the development, design, manufacture, formulation, or administration of therapeutic peptides or proteins, and the literature concerning protein or peptide formulation and design or diabetes treatments. Id. at 7–8 (citing Ex. 1020 ¶ 27; Ex. 1022 ¶ 27; Ex. 1024 ¶ 21; Ex. 1026 ¶¶ 25–26). 13 Patent Owner does not offer a different level of ordinary skill in the art. See generally Prelim. Resp. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’343 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C. Claim Construction” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Moreover, “the specification ‘is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term.’” In re Abbott 13 We need not consider Petitioner’s similar alternative definitions. See id. at 8–9. v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)). The parties contend that no claim term requires construction. Pet. 13. Prelim. Resp. 15. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). D. Overview of Asserted References” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“On the record before us, however, Dr. Flatt’s assessment of the relative benefit one of ordinary skill in the art would have accorded the higher Ki of mono-substituted compound 3 as compared to the “much longer plasma half-life” of Dong’s bi-substituted compounds is at odds with Dong’s selection of bi-substituted compound 4 for clinical trials. See Ex. 1013, 670– 671 (Table 1). We are also skeptical of Dr. Flatt’s assertion that one of ordinary skill in the art would have recognized that Dong’s substitution of Aib for alanine at position 8 “would complement and work synergistically with liraglutide’s [other] properties,” including the fatty acylation of Lys26. See Ex. 1020 ¶ 181. In this respect, Patent Owner notes that, unlike liraglutide, Dong’s GLP-1 analogs were not acylated, whereas Knudsen 2001 counseled against N-terminal modifications in the context of acylation. Prelim. Resp. 28–30, 46 (citing Ex. 1011, 680–681). In addressing such combinations, Knudsen 2001 states, for example, that “Desamino His7 represents one of the more potent suggestions to a modification giving metabolic stability (81 ). Nevertheless, as seen when comparing 19 (687 pM) to 5 [liraglutide] (68 pM), considerably more potent compounds could be obtained by not modifying the N-terminus when a combination with acylation was desired.” Id. at 680. As such, we are unpersuaded on the record before us that one of ordinary skill in the art would have had a reasonable expectation that the Aib8 modification would be beneficial or otherwise “complement and work synergistically with” the acylated Lys26 of liraglutide or semaglutide. See Ex. 1020 ¶ 181.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,129,343 - Mylan Pharmaceuticals Inc. v. Novo Nordisk A/SInstitution deniedPTAB · Oct 2, 2023 · IPR2023-00722 · APJ Robert A Pollock · IPR · Institution
Institution was denied for claims 1, 2, 4–11, 13, and 15 because Petitioner did not show a reasonable likelihood of proving them obvious under any of the three grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In addressing the level of ordinary skill in the art, Petitioner contends that “[t]he claimed subject matter falls within the medicinal chemical and pharmacological arts and encompasses the skills, education, and expertise of a team of individuals working together to develop and formulate GLP-1 analogs to treat patients having type-2 diabetes or related conditions.” Pet. 7. The persons of ordinary skill in the art (“POSA”) making up the team would have an M.D., Pharm.D., or doctoral degree(s) in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, chemical engineering, biochemical engineering or related fields, with at least two years of experience in developing therapeutic peptides or proteins, and experience with the development, design, manufacture, formulation, or administration of therapeutic peptides or proteins, and the literature concerning protein or peptide formulation and design or diabetes treatments. ¶ 24).14 Patent Owner does not offer a different level of ordinary skill in the art. See generally Prelim. Resp. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’122 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties contend that no claim term requires construction. Pet. 16. Prelim. Resp. 16. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our 14 We need not consider Petitioner’s similar, but alternative, definitions. See id. at 8–9. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’122 patent is unpatentable, we do not institute an inter partes review on the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yesor-no institution choice respecting a petition, embracing all challenges included in the petition”); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).1” slip op. at 2
- BurdenNot shown unpatentable
“Considering the record before us, Petitioner has not shown sufficiently that one of ordinary skill in the art would be motivated to make the required modification with a reasonable expectation of success. (4) Hindsight and Reasonable Expectation of Success One of ordinary skill in the art seeking to modify liraglutide would need undertake at least four discrete steps to arrive at semaglutide—some of which entail multiple options and decision points (e.g., the selection and placement of di-AEEA, and whether to replace, or add to, the existing γ-glu linker). As discussed above, we find Petitioner’s justification for these individual steps problematic. Taken as whole, and considering the vast number of modifications suggested in the art—and indeed, the large number of amino acids suggested as cites for modification—Petitioner has failed to meet its burden of demonstrating why a skilled artisan would have been motivated to make all of the identified substitutions and no others. See e.g., Ex. 1010, 4130 (Figure 3) (identifying amino acids available for derivatization (Ser18, Gln23, Lys26, Glu27, Lys34, and Arg36) or modification (Ala8)); Ex. 1011, 680–681 (identifying desamino His7 as “one of the more potent suggestions to a modification giving metabolic stability,”); Ex. 1012 at, e.g., 9:21-19:59; 192:30–60 (Table 1), 193:35–46 (disclosing numerous GLP-1 analogs, including those with greater half-lives or potency than liraglutide, and teaching that each could be further modified, including with amino acid substitutions and/or acylation at multiple positions, numerous the fatty and amino acids); Ex. 1013, 670–671 (disclosing that GLP-1 analogs bearing modifications at both positions 8 and 35 maintain efficacy but “have much longer plasma half-life than mono-substituted compounds”).” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,536,122 - Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research FoundationInstitution deniedPTAB · Jul 15, 2022 · PGR2022-00021 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution on Grounds 1–5 under § 325(d) and found Ground 6 had not shown any challenged claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“met (e.g., substantially the same art is presented), we move to part two of the framework, asking “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” Id. at 8. Factors (c), (e), and (f) of Becton, Dickinson fall within part two of the framework. Id. at 10 (“[F]actors (c), (e), and (f) relate to whether the petitioner has demonstrated material error by the Office.”). Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated error. Id. at 8–10. “If the petitioner fails to show that the Office erred, the Director may exercise his discretion not to institute.” Id. at 8–9. “At bottom, this [§ 325(d)] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9 (“If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.”).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“specific citations to evaluate its assertions, Petitioner does not direct our attention to any portion of the Nordgren Declaration providing information on why the partial sequences disclosed by the references teach or suggest the claimed 90% sequence homology. Pet. 76, 79 (citing Ex. 1026 at VII.C, ¶¶ 247–269). For example, Dr. Nordgren’s assertion “a POSITA would anticipate natural genetic variation of PorkNW2/USA/2009 ORF2 would bring it within the scope of the Claim 1 genera” is not supported by substantial evidence. Ex. 1026 ¶ 256. Claim 1, for example, recites a PCV3 protein and does not recite partial proteins. Without knowing what portion of complete proteins are disclosed by the references, we are not persuaded that a person of ordinary skill in the art would have been able to predict the variation expected among a group of complete proteins to arrive at the claimed subject matter as is implied by Petitioner. Petitioner’s conclusory statements are insufficient to support a legal conclusion of obviousness. And while we agree with Petitioner that the protein sequences disclosed in the cited references do not necessarily have to be designated as PCV3 sequences, we determine that Petitioner has failed to meet its burden to demonstrate that any of the PCV3 deposit references teach or suggest the recited sequences within the claimed range. Pet. 79. Therefore, Petitioner has not met its burden in showing that every claimed element is taught by its cited references, and we need not reach Petitioner’s argument on motivation to combine. Accordingly, we determine that Petitioner fails to carry its burden to show that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable based on Petitioner’s Ground 6.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (or “POSITA”) in the field of the ’274 Patent in the October 2015 to October 2019 timeframe would have held a Doctorate in Veterinary Medicine (D.V.M.) or equivalent, or a Ph.D. or equivalent in immunology, vaccinology, virology, molecular biology, animal science, and/or husbandry, or a closely related field. A POSITA would also have practical knowledge of immunology, including how vaccine candidates are first identified and then subsequently developed. The knowledge may come from the POSITA’s own experience, or it may come through research or work collaborations with other experienced individuals in the medical, pharmaceutical, or biotech industry, e.g., as members of a research team or group. Pet. 16 (citing Ex. 1026 ¶ 34). Absent opposition from Patent Owner, we adopt Petitioner’s definition because it is consistent with the level of ordinary skill in the art reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board applies the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.200(b) (2019). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner contends that it “does not believe any term of the ’274 Patent needs to be construed in this proceeding.” Pet. 29. We agree and independently determine that it is unnecessary to expressly construe any claim term for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,954,274 - Airbus Americas, Inc. v. Harper Engineering CompanyInstitution deniedPTAB · May 20, 2022 · IPR2022-00195 · APJ James A Tartal · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2021). 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(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we conclude that the information does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art in light of the subject matter of the ’244 patent, which is not limited to “aeronautical” or “aerospace” applications, claims a “stowage bin assembly” and a “hinge assembly,” and expressly refers broadly to “transportation vehicles” as typically including “overhead storage compartments,” identifying “airplanes” only as an “example” of a “transportation vehicle.” Ex. 1001, code (57), 1:12–15, 7:31–8:64. Patent Owner’s argument appears to be no more than a transparent attempt to baselessly suggest that Dr. Codd should be excluded from testifying because he lacks “the proper background or sufficient experience in the field” under Patent Owner’s unreasonable proposed level of ordinary skill. See Prelim. Resp. 17–18. Dr. Dershowitz’s testimony in support of Patent Owner on the level of ordinary skill is not credible because it is inconsistent with the ’244 patent and the asserted art. Ex. 2001 ¶¶ 58–63. For example, Dr. Dershowitz acknowledges that “[h]inges are common to many mechanical systems,” but then suggests “being familiar with hinges in general may not directly apply to the specifics of this invention” without identifying anything “specific” to the ’244 patent that requires the level of skill Dr. Dershowitz endorses. Id. ¶ 62. Dr. Dershowitz suggests “hinges used in storage solutions that are stationary have fewer requirements related to mass and volume and are not subject to the same forces and stresses that are experienced on an aircraft,” however, the challenged claims of the ’244 patent do not preclude “stationary” storage solutions, do not require anything pertaining to “mass and volume,” and are not required to withstand any “forces and stresses” experienced on an aircraft. Dr. Dershowitz’s opinion that “[d]ue to the unique environment and specialized nature of the technology at issue” a person of ordinary skill in the art would have needed “to have an educational background and experience that is specific to the aerospace field” is not supported by the ’244 patent or the asserted art. See id. ¶ 63; see also Ex. 1005 ¶ 2 (Rheaume stating it “relates to a hinge assembly and, more particularly to a hinge assembly for retaining a door of a storage bin”); Ex. 1006 ¶ 2 (Savian stating it “relates generally to overhead storage bin assemblies”); Ex. 1008, 3:24–27 (Frazier stating it discloses “improvements to standard luggage and storage bins commonly found in commercial aircraft as well as other aircraft, buses, passenger vans, and other vehicles”). Dr. Dershowitz’s misapprehension of the appropriate level of ordinary skill in the art is a consideration we apply in weighing his opinion of how a” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Dr. Dershowitz’s testimony in support of Patent Owner on the level of ordinary skill is not credible because it is inconsistent with the ’244 patent and the asserted art. Ex. 2001 ¶¶ 58–63. For example, Dr. Dershowitz acknowledges that “[h]inges are common to many mechanical systems,” but then suggests “being familiar with hinges in general may not directly apply to the specifics of this invention” without identifying anything “specific” to the ’244 patent that requires the level of skill Dr. Dershowitz endorses. Id. ¶ 62. Dr. Dershowitz suggests “hinges used in storage solutions that are stationary have fewer requirements related to mass and volume and are not subject to the same forces and stresses that are experienced on an aircraft,” however, the challenged claims of the ’244 patent do not preclude “stationary” storage solutions, do not require anything pertaining to “mass and volume,” and are not required to withstand any “forces and stresses” experienced on an aircraft. Dr. Dershowitz’s opinion that “[d]ue to the unique environment and specialized nature of the technology at issue” a person of ordinary skill in the art would have needed “to have an educational background and experience that is specific to the aerospace field” is not supported by the ’244 patent or the asserted art. See id. ¶ 63; see also Ex. 1005 ¶ 2 (Rheaume stating it “relates to a hinge assembly and, more particularly to a hinge assembly for retaining a door of a storage bin”); Ex. 1006 ¶ 2 (Savian stating it “relates generally to overhead storage bin assemblies”); Ex. 1008, 3:24–27 (Frazier stating it discloses “improvements to standard luggage and storage bins commonly found in commercial aircraft as well as other aircraft, buses, passenger vans, and other vehicles”). Dr. Dershowitz’s misapprehension of the appropriate level of ordinary skill in the art is a consideration we apply in weighing his opinion of how a person of ordinary skill in the art would have understood the prior art at issue.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms require construction. Pet. 10 (citing Ex. 1003 ¶¶ 64–66). Patent Owner proposes an express construction for “stowage bin door” and “self-opening mechanism.” Prelim. Resp. 13– 17. We find no claim term requires an express construction in reaching our decision for the reasons below to deny institution of inter partes review. See Vivid Techs., 200 F.3d at 803.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,801,244 - Airbus Americas, Inc. v. Harper Engineering CompanyInstitution deniedPTAB · May 20, 2022 · IPR2022-00192 · APJ James A Tartal · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 2–6 or 12–17 were unpatentable; claims 1 and 7–11 had been disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“obvious over Rheaume and Savian. Pet. 32–51. Each of claims 2–6 and 12–17 requires a “hinge assembly” that includes “a self-opening mechanism.” Ex. 1001, 7:47–8:8, 8:27–64. Petitioner relies only upon Savian as teaching a “self-opening mechanism.” Pet. 32–34, 45. We focus our discussion on the “self-opening mechanism” limitation because it is dispositive and, for the reasons that follow, we determine that Petitioner has not shown sufficiently that Savian teaches this limitation.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“More importantly, Petitioner provides no sufficient reasoning and cites no support for construing the required “self-opening mechanism” to be so broad as to include a mechanism that provides “only some damping against gravity to be ‘self-opening.’” Reply 2. We agree with Patent Owner that, contrary to Petitioner’s assertion, a component that only opposes opening is not a “self-opening mechanism.” See Sur-reply 2. In short, as shown by Patent Owner, the plain and ordinary meaning of “self-opening mechanism” in the context of the ’315 patent, as required by claims 2–6 and 12–17, is a mechanism that acts on its own accord to open the stowage bin door. See Prelim. Resp. 16 (citing Ex. 2006). An express construction of any other claim term is not necessary for” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“obvious over Rheaume and Savian. Pet. 32–51. Each of claims 2–6 and 12–17 requires a “hinge assembly” that includes “a self-opening mechanism.” Ex. 1001, 7:47–8:8, 8:27–64. Petitioner relies only upon Savian as teaching a “self-opening mechanism.” Pet. 32–34, 45. We focus our discussion on the “self-opening mechanism” limitation because it is dispositive and, for the reasons that follow, we determine that Petitioner has not shown sufficiently that Savian teaches this limitation.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“9 Patent Owner also argues that we should exercise our discretion under 35 U.S.C. §325(d) to deny institution of inter partes review. Prelim. Resp. 36–46. We deny institution of inter partes review for the reasons provided above and, therefore, do not reach Patent Owner’s arguments regarding discretionary denial.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,760,315 - Hulu, LLC v. Divx, LLCInstitution deniedPTAB · Mar 15, 2022 · IPR2021-01419 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7, 8, 10, and 13–16 were unpatentable over either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has not established a reasonable 1 This Petition is Petitioner’s second petition challenging claims 1, 2, 4, 7, 8, 10, and 13–16 of the ’443 patent. As noted below, Petitioner also filed a petition challenging the same claims of the ’443 patent in IPR2021-01418. Petitioner filed a Ranking and Explanation of Material Differences Between Petitions (Paper 3), where Petitioner discusses the two petitions. Because of the determination we reach on the merits, we do not address the parties’ arguments as to whether two petitions are necessary. likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Bajaj, however, testifies that he disagrees with Dr. Storer’s definition of the level of ordinary skill because the definition “exceeds the qualifications of a person of ordinary skill in the art.” Ex. 2002 ¶ 25. Nonetheless, Dr. Bajaj does not propose a specific level of ordinary skill in the art and states that, for purposes of his declaration, he applies Dr. Storer’s definition of the level of ordinary skill in the art. Id. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’443 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt and apply Petitioner’s position as to the level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“prosecution history sheds substantial light on how the applicants understood the disputed claim language. As set forth above, in response to rejections based on Candelore-II, the applicants raised two primary arguments. First, the applicants argued that Candelore-II “does not . . . appear to disclose partial encryption of encoded frames of video by encrypting at least one block of data within the partially encrypted frame so that only a portion of the encoded frame is encrypted.” Ex. 1103, 250. Second, and importantly, the applicants argued that Candelore-II’s failure to disclose partial encryption of encoded frames of video “is highlighted by the Candelore patent’s failure to disclose DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame as recited in claim 1.” Id. at 251 (first emphasis added). Critically, the very next sentence begins with the word instead, and states, “[i]nstead, the Candelore patent discloses pointers that point to the location of encrypted portions of the video data relative to the file.” Id. (emphases added). These two sentences from the applicants’ argument directly contrast the recited “offset value” language with Candelore-II’s disclosure. Specifically, the applicants sought to distinguish Candelore-II because its pointers are relative to the file. We find that by contrasting Candelore-II’s pointers, the applicants “ma[d]e clear that the invention does not include a particular feature”— pointers that are relative to the file. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). And, we also find that the applicants’ arguments constitute a “clear and unmistakable disclaimer” of an offset value that points to the start of an encrypted block within an encoded frame, where the offset value is relative to the file. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012). Although we agree with Petitioner that the applicants “never raised a distinction between offset values ‘relative to a file’ and offset values ‘relative to a frame’ at any point during prosecution,” we do not agree with Petitioner that the applicants “never said that offset values relative to a file are excluded from the scope of the claim.” Prelim. Reply 10. Rather, we find no other way to interpret the applicants’ arguments. As noted above, the applicants specifically stated that Candelore-II fails to disclose “DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame’” and then stated that “[i]nstead,” Candelore-II “discloses pointers that point to the location of encrypted portions of the video data relative to the file.” The applicants’ argument specifically identifies the claim language at issue here and specifically says that it is not disclosed because Candelore-II discloses something else instead.11 Accordingly, for these reasons, we find that the applicants disclaimed “pointers that point to the location of encrypted portions of the video data relative to the file.”” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“regarding the meaning of “an offset value that points to the start of an encrypted block within an encoded frame,” we determine that the applicants disclaimed an offset value that is relative to the file. See supra § II.A.2. On the present record, we find Patent Owner’s argument and evidence persuasive regarding Candelore-II’s disclosure. In particular, Patent Owner identifies the teachings of Candelore-II directed to its pointers, and Candelore-II’s description and Figure 3 support Patent Owner’s argument that Candelore-II’s pointers are relative to the file. See, e.g., Prelim. Resp. 42 (citing Ex. 1106 ¶ 31, Fig. 3). Additionally, Petitioner does not contest Patent Owner’s position that Candelore-II teaches pointers that are relative to the file. See generally Pet.; Prelim. Reply. Further, as applied to the combination, Petitioner does not propose modifying Candelore-II’s pointers such that they are not relative to the file. See, e.g., Pet. 30–36 (discussing motivation and reasonable expectation of success), 41–53 (discussing, inter alia, limitations [1f], [1h], [1i], and [1j]). Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution of the ’443 patent, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [1j] and, hence, claim 1. d. Independent Claim 7 and Dependent Claims 2, 4, 8, 10, 14, and 16 As noted above, limitation [7j] of independent claim 7 recites the same “offset value” language as limitation [1j] and Petitioner relies on its arguments and evidence directed to limitation [1j] in its discussion of limitation [7j]. See Pet. 72–73 (limitation [7j]). For the same reasons discussed above, we find that the same deficiency regarding claim 1 applies equally to claim 7 and the claims that depend from claim 1 or claim 7— claims 2, 4, 8, 10, 14, and 16. Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [7j] and, via their dependency from claim 1 or claim 7, the subject matter of dependent claims 2, 4, 8, 10, 14, and 16.” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,257,443
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.