• Duplo U.S.A. Corporation v. Mgi Digital Technology S.A.Institution denied
  PTAB · Dec 5, 2023 · IPR2023-00936 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution for claims 1, 2, 4, 9, 10, and 12 under § 314(a), finding the Fintiv factors favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs somewhat against discretionary denial. The remaining factors either do not support institution (factors 1 and 6) or weigh in favor of denial of institution (factors 2, 3, and 5). Moreover, Petitioner has not submitted a Sotera-type stipulation or shown compelling evidence of unpatentability that would make discretionary denial inappropriate under the Guidance Memo. Given the late stage of the parallel District Court Proceeding, the substantial investment by the parties in that proceeding, and the lack of strong countervailing considerations, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 32

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

    “As such, even if we were to determine that Petitioner’s Nagashima- based challenges met the lower threshold for instituting an inter partes review (a question we need not reach in our Fintiv analysis), these challenges, if unrebutted in trial, do not plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Ordinary Skill in the Art The level of ordinary skill is a factor to be considered when determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner states that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical or electrical engineering or a related field and at least two years of practical experience with printer technology. Pet. 5. Petitioner further asserts that more relevant experience may compensate for less formal education and that more relevant formal education may compensate for less practical experience. Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose its own definition but does assert that Petitioner has understated the level of ordinary skill in the art. Prelim. Resp. 9. For the purpose of this Decision, we apply Petitioner’s definition, because Patent Owner presents no countervailing definition and because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. We also note that our analysis would not change if we were to apply a higher level of skill in the art.” slip op. at 20

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

    “We agree with Patent Owner that Petitioner has not sufficiently shown that Nagashima discloses or suggests the claimed covering ink ordroplets of covering ink and, thus, Petitioner’s Nagashima-based grounds fail to present a compelling, meritorious, challenge. First, we disagree with Petitioner’s assertion that the ’806 patent defines covering ink as synonymous with “viscous product” so that “covering ink” broadly covers any “viscous product” including printing ink. See Pet. 8–9 (citing Ex. 1001, 3:21–22; Ex. 1003 ¶ 57–61). Rather, the ’806 patent states that “[i]n the present document, the terms of ‘covering ink’, ‘viscous product’ and ‘varnish’ are synonyms.” Ex. 1001, 3:21–22. We understand this sentence to mean that when ’806 patent uses the term “viscous product,” that the term is synonymous with “covering ink” within the ’806 patent, but is not intended to broadly mean that “covering ink” encompasses the entire universe of viscous products. We also determine that there are substantial issues with Petitioner’s argument that Nagashima discloses or suggests using covering ink in its device. Petitioner’s argument that Nagashima does not limit its device to any particular ink and identifies ink having different characteristics, including viscosity, does not plainly lead to a conclusion that Nagashima discloses use of covering ink. See Pet. 8. Nor does Petitioner’s argument that because some inkjet printers have been used to deposit covering ink, and those inkjet printers and Nagashima’s device both involve similar piezo-type ink ejection heads for ejecting different ink types and viscosities, plainly lead to a conclusion that a POSITA would have found it obvious to use Nagashima to apply a covering ink. See Pet. 9–10; Ex. 1003 ¶¶ 62–66; see” slip op. at 24

  § 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 8,783,806
• International Business Machines Corporation v. Digital Doors, Inc.Institution denied
  PTAB · Dec 5, 2023 · IPR2023-00969 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 1, 6, 9, 10, 11, 15, 16, 21–23, and 27, finding Fintiv factors favored denial and the petition lacked compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 8

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2

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

    “We do not see compelling evidence from Petitioner that the extracting/parsing data limitation is taught or suggested by Bossemeyer. As discussed supra, in Section II.C, the ’987 patent discloses extraction occurring as an initial step in which a filter removes or extracts security-sensitive data from a data object prior to storage. See Ex. 1001, 19:45–49, Fig. 1A. In contrast, Bossemeyer discloses a “partitioned” memory (see Fig. 3, reproduced supra in Section II.E.1), but does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data and remainder data. See Easttom Decl. ¶ 29 (“Bossemeyer is entirely silent as to where the information stored in the central server comes from, the form it takes before it gets to the central database server, or how the different pieces of information end up in the different partitioned areas of memory.”). Petitioner points to no disclosure or suggestion that the “proprietary” and “limited access” information in Bossemeyer’s database has been filtered or separated from the “public” information, so as to result in “extracted data” and “remainder data,” as recited in the challenged claims.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 24 (“Bossemeyer partitions or separates (e.g., extracts), user data into subsets of extracted data, e.g., limited access information and/or proprietary information, and remainder data, e.g., public information.”) (emphases and color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id. Petitioner argues that, to the extent Bossemeyer does not explicitly disclose “extracting data,” a person of ordinary skill would have understood that, when Bossemeyer’s central data base server “partitions” user information in terms of accessibility, Bossemeyer teaches “separating sensitive information from user data.” Pet. 27 (citing Ex. 1005, 2:17–20). We find the reference in Bossemeyer to “partitions” is not a compelling disclosure of extracting, e.g., filtering or removing, security sensitive data from a data object prior to storage. We agree, instead, with Dr. Easttom, that this disclosure in Bossemeyer is “merely referring to the act by the memory partitions of keeping different pieces of information separate from each other, not removing some pieces of data from a larger whole.” Easttom Decl. ¶ 32. He concludes that “[a person of ordinary skill] would have understood that the extracting/parsing process of the ’987 Patent is vastly different than the act of ‘partitioning’ either as used in Bossemeyer or as used in the art at the time.’” Id. ¶ 34.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,349,987
• International Business Machines Corporation v. Digital Doors, Inc.Institution denied
  PTAB · Dec 5, 2023 · IPR2023-00971 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020 00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 7

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

    “We have jurisdiction under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2023). Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Furthermore, we are not persuaded that Dr. Zadok’s testimony provides compelling evidence that this limitation is met by Bossemeyer. See Ex. 1003 ¶¶ 194–211. We agree with Patent Owner that much of Dr. Zadok’s testimony is based on assumptions that he does not support with facts. Prelim. Resp. 34–41. For example, he testifies, without factual support, that “[t]he system of Bossemeyer retrieves remainder data (e.g., public information such as a customer’s name), retrieve [sic] extracted data (e.g., proprietary or limited access information such as credit card numbers and account PIN/numbers), and then logically merges these pieces of information (i.e., reconstruct the original information to appear as before it was split into different security categories).” Ex. 1003 ¶ 207 (emphases and color coding omitted). Dr. Zadok provides no citation to Bossemeyer, and we see no disclosure that Bossemeyer’s system “logically merges” public information, such as a customer’s name, with proprietary or limited access information, such as credit card numbers and account PIN/numbers. Id. Dr. Zadok even admits that “Bossemeyer does not explicitly state that the ¶ 208. Nevertheless, he speculates (without support) that “a [person of ordinary skill in the art] would have understood that such logical merging would have been obvious to take place for the (secure) transaction to succeed.” Id. Similarly, we are not persuaded by Dr. Zadok’s testimony, referring to an example from Bossemeyer involving access to medical data (Ex. 1005, 5:6–15), that “Bossemeyer discloses permitting reconstruction of some of a user’s medical data (e.g., data including the user’s medical alerts 212, and insurance and prescription information 214) and permitting reconstruction of all of user’s data (e.g., data further including the user’s medical history 216) with additional authorization.” Ex. 1003 ¶ 210 (emphases and color highlighting omitted). We find that Dr. Zadok’s testimony is speculative, hindsight-biased, and unsupported by Bossemeyer, which does not disclose or suggest any such logical merging of data. See, e.g., Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated reasoning “is especially important to guard against the dangers of hindsight bias”). See Ex 2004 ¶¶ 47–56 (challenging Dr. Zadok’s assumption of merging data in Bossemeyer).” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill would have “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience “[l]ess professional experience can be substituted by additional education and vice versa. Pet. 6 (citing Ex. 1003 ¶¶ 112–113). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 7,721,344
• Duplo U.S.A. Corporation v. Mgi Digital Technology S.A.Institution denied
  PTAB · Dec 4, 2023 · IPR2023-00935 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution of IPR challenging claims 1, 7, 12, and 18 under § 314(a), weighing the Fintiv factors in favor of discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs somewhat against discretionary denial. The remaining factors either do not support institution (factors 1 and 6) or weigh in favor of denial of institution (factors 2, 3, and 5). Moreover, Petitioner has not submitted a Sotera-type stipulation or shown compelling evidence of unpatentability that would make discretionary denial inappropriate under the Fintiv Memo. Given the late stage of the parallel district court proceeding, the substantial investment by the parties in that proceeding, and the lack of strong countervailing considerations, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 27

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

    “§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”) After considering the parties’ submissions and the evidence of record, we determine it is appropriate to exercise our discretion and decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “1. Level of Ordinary Skill in the Art The level of ordinary skill is a factor to be considered when determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner states that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical or electrical engineering or a related field and at least two years of practical experience with inkjet and related printer technology. Pet. 4. Petitioner further asserts that more relevant experience may compensate for less formal education and that more relevant formal education may compensate for less practical experience. Pet. 5 (citing Ex. 1003 ¶¶ 27–29). Patent Owner does not propose its own definition but does assert that Petitioner has understated the level of ordinary skill in the art. Prelim. Resp. 9–10. For the purpose of this Decision, we apply Petitioner’s definition. We also note that our analysis would not change if we were to apply a higher level of skill in the art.” slip op. at 17

  Discretionary denialcites Graham
  Patents in suitUS 8,506,031
• International Business Machines Corporation v. Digitaldoors, Inc.Institution denied
  PTAB · Dec 1, 2023 · IPR2023-00967 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claim 81 because the Fintiv factors favored denial and the Petition did not present compelling evidence of unpatentability.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review.” slip op. at 12

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

    “compelling-merits question requires a higher standard of proof, ‘highly likely to prevail,’ than the statutory standard for institution, ‘reasonably likely to prevail.’” Prelim. Resp. 48. Patent Owner asserts that the Petition is deficient because Bossemeyer is not analogous art to the ’825 patent. Id. at 2, 16–23. Patent Owner contends also that Bossemeyer and Glick fail to teach the claimed “extracted data” and “reconstruction” claim elements discussed infra. Id. at 2, 23–41. Finally, Patent Owner contends that Petitioner fails to provide sufficient motivation to combine Bossemeyer and Glick. Id. at 42–47. slip op. at 19

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 35 (“Specifically, in Bossemeyer, user data is partitioned, e.g., extracted, into limited access information and/or proprietary information, and public information.”) (color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not imply or suggest extraction.” Easttom Decl. ¶ 29. As Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id.” slip op. at 21

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

    “B. Claim Construction We apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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))). construction (Pet. 11) and Patent Owner’s choice not to state its position on claim construction. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,313,825
• International Business Machines Corporation v. Digital Doors, Inc.Institution denied
  PTAB · Dec 1, 2023 · IPR2023-00968 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution on claims 1, 2, 10, 15, 16, 19, 33, 34, 42, 47, 48, and 51, citing Fintiv and finding no compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “We agree with Patent Owner’s analysis based on the most recent time- to-trial statistics and the schedule set by Judge Gilstrap. We are not persuaded by Petitioner’s argument based on out-of-date data. We find that this factor favors exercising our discretion to deny institution.” slip op. at 10

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

    “which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 13

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

    “in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. For the reasons given, Petitioner’s arguments and evidence do not present a “compelling, meritorious challenge.” In view of this determination, we do not need to address Patent ’047 patent or that there is insufficient motivation to combine Bossemeyer and Merenda.” slip op. at 27

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,322,047
• Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Ltd.Institution denied
  PTAB · Oct 24, 2023 · IPR2023-00585 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution on claims 1–3 and 5–12 under § 314(a), finding the Fintiv factors favored denial and no compelling unpatentability challenge overcame them.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id.” slip op. at 9

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

    “Given the testimony regarding Wang’s use of relatively low- temperature “ultrasound welding” (Ex. 1004 ¶¶ 43, 48, 109; Ex. 2001 ¶¶ 85– 86 (ultrasonic welding “involves the use of a high frequency of ultrasonic energy to produce oscillating shears to create solid-state bonds between two sheets clamped under pressure at elevated but relatively low temperatures”); Ex. 2005, 3), and in the absence of any articulation of the benefit of heat reduction in Wang’s process, we are not persuaded that a person of ordinary skill in the art would have looked to combine Deng’s heat-dissipating notch with Wang’s secondary battery in the manner proposed by Petitioner. See also Prelim. Resp. 22 (arguing that the “use of resistance welding in Wang would cause significant damage to Wang’s current collector, rendering Wang’s lithium-ion battery inoperable”), 24–25 (citing Ex. 2001 ¶ 78). As Patent Owner also points out, Deng’s notch is not located in an electrode tab receiving groove to receive an electrode tab, nor does it mitigate a burr problem (Prelim. Resp. 16, Sur-Reply 5)), which calls into question Petitioner’s asserted motivation to combine Deng’s notch with Wang’s electrode tab receiving groove in the manner proposed (Pet. 30 (“In view of Deng’s stated benefits of its electrode notch, such as to reduce the accumulation of heat and the resulting deformation and/or warping of the electrode to which the tab is welded,” one of ordinary skill in the art “would on the current collector where the first (e.g., anode) electrode tab will be welded.” (citing Ex. 1002 ¶ 76))), because Deng’s notch lacks the location and function that would have motivated one of ordinary skill in the art to make the combination. We also consider Patent Owner’s concerns about the suitability of Deng’s availability for combination with Wang sufficiently well-founded, based in part on Patent Owner’s argument and evidence indicating that Deng is directed to a flat metal plate type battery that would use a resistance welding process, instead of a lithium-ion wound battery that would use an ultrasonic welding process. See In re Bigio, 381 F.3d at 1325. Accordingly, we find Petitioner’s rationale for the combination lacking. As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Fintiv Memo, 4. While Petitioner’s arguments and evidence provide an explanation for the proposed combination with respect to limitation 1(g), they do not plainly lead to a conclusion that one of ordinary skill in the art would have been motivated to make the combination of Wang and Deng to attain limitation 1(g) and, thus, are not sufficiently supported by the record for purposes of an obviousness challenge under this framework. Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as obvious over Wang and Deng.” slip op. at 26

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

    “Patent Owner also argues that Deng is not analogous art. Id. at 23–30 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”)). As to the first prong of the analogous art test, Patent Owner argues that Deng is a flat metal plate type battery, whereas Wang and the ’352 patent are lithium-ion batteries. Id. at 23. According to Patent Owner, one of ordinary skill in the art “would not weld electrode tabs in lithium-ion batteries in such a manner” as the resistance welding used in Deng. Id. at 25. As to the second prong of the analogous art test, Patent Owner argues that Deng is not reasonably pertinent to the particular problem with which the inventor of the ’352 patent was involved, because “Deng discloses, at best, heat mitigation techniques related to resistance welding,” which “would damage the current collector of a lithium-ion battery,” and “would not have been considered by the inventors when solving the problems of the ’352 Patent.” Id. at 27. As argued by Patent Owner, Deng’s benefit of reducing heat accumulation and warping from resistance welding “is not an issue for the lithium-ion battery of Wang or the ’352 patent,” which one of ordinary skill in the art would understand to benefit from the low operating temperature and good welding performance of ultrasonic welding. Id. at 29–30. Next, Patent Owner argues that Petitioner’s proposed modification would render Wang’s current collector susceptible to damage and tearing. Id. at 30–32. Finally, Patent Owner argues that even if Wang” slip op. at 23

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,329,352
• Resmed Corp. v. Cleveland Medical Devices Inc.Institution denied
  PTAB · Sep 25, 2023 · IPR2023-00565 · APJ Ulrike W Jenks · IPR · Institution

  The Board denied institution of IPR challenging claims 1–20 because the Fintiv factors favored discretionary denial, and the petition did not present a compelling unpatentability challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “and the district court, we have concerns regarding duplicative efforts and potentially conflicting decisions (including due to Petitioner’s different claim construction positions in the district court and in this IPR, see infra Section II.f). We agree with Patent Owner that a Sotera-type stipulation would have helped ensure that an inter partes review functions as a true alternative to litigation in relation to grounds that could be at issue in an inter partes review. Here, Petitioner could have expressly waived in district court any overlapping patentability or invalidity defenses but chose not to. Given the facts here, this factor weighs in favor of exercising discretion to deny institution.” slip op. at 14

  Discretionary denialcites Phillips
  Patents in suitUS 10,076,269
• Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology LimitedInstitution denied
  PTAB · Sep 22, 2023 · IPR2023-00587 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution for claims 1–17 under § 314(a), finding the parallel litigation favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel proceeding the grounds advanced in the petition. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 11–12, 12 n.5 (June 16, 2020) (informative). “The PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo, 7–8 (emphasis added); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A). Here, Petitioner’s stipulation extends to the same grounds raised in the Petition, but does not extend to any ground “that could have been reasonably raised,” pursuant to Sotera. Patent Owner points to the narrowness of the proffered stipulation in the Sur-Reply and asserts this factor “only marginally weighs in favor of institution.” Sur-Reply 3. Because Petitioner’s stipulation obviates some potential for duplication or redundancy with respect to the patentability of the challenged claims (albeit not to the extent a full Sotera-type stipulation would have) and the parallel litigation does not include claims 10–16, we determine that the fourth Fintiv factor weighs against denial of institution.” slip op. at 15

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)). “[T]he reference 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.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Fintiv Memo 4. While the Petition and Dr. Gido provide an explanation for the full range in which Iwai’s D90 necessarily would be found, the Petition and Dr. Gido identify only a single value for the adhesive porous layer thickness of Iwai’s Example 7 and Comparative Example 2. Pet. 48, 51; Ex. 1003 ¶¶ 165, 174. The Petition and Dr. Gido direct us to the average thickness “a” of Iwai’s adhesive porous layer without taking into account Iwai’s disclosure of the ratio of the average thickness layer “a” to the volume average particle diameter “r.” Iwai describes the volume average particle diameter “r” being “projected at a proper height . . . formed on a surface of the adhesive porous layer.” Ex. 1006 ¶ 43. Thus, the evidence of record purportedly mapping claim 1’s recited “thickness of the porous layer” to Iwai does not plainly lead to a conclusion that Iwai necessarily discloses to a POSA the claimed “ratio of Dv90 of the inorganic particles to the thickness of the porous layer is in a range from 0.3 to 3.0.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as anticipated by Iwai.” slip op. at 23

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

    “In addition to the lack of support in the record for the Petition and Dr. Gido’s assumption that the porous layer thicknesses of Examples 4 and 5 are the same as the porous layer thickness of Example 1 discussed above in connection with the anticipation challenge of claim 1, the cited record does not plainly support Petitioner’s assertion that Nishikawa teaches or suggests claim 10’s recited “uniform coating solution.” The Petition acknowledges that Nishikawa teaches a mixed solvent containing DMAc and TPG to provide a coating slurry. Pet. 31; Ex. 1003 ¶ 64; Ex. 1005, 22:26–33 (Example 4), 22:46–51 (Example 5). Nishikawa teaches that the solvent mixture includes a polar solvent (DMAc preferred) and a poor solvent (such as TPG) that “induces a microscopic phase separation structure to facilitate formation of pores upon providing the heat resistant porous layer.” Ex. 1005, 11:1–5. The Petition does not sufficiently explain why such a phase separation structure produced by Nishikawa’s mixed solvent meets claim 10’s recited “uniform coating solution.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 10 as obvious over Nishikawa’s teachings.” slip op. at 25

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,964,987
• ROKU, Inc. v. Ioengine, LLCInstitution denied
  PTAB · May 5, 2023 · IPR2022-01554 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution on claims 17–21, 25–35, 59–69, 85–89, and 93–99 under § 314(a), finding the Fintiv factors favored denial and no compelling merits challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “The Fintiv Memo directs that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Ex. 2011, 4. The Director defines “[c]ompelling, meritorious challenges [as] those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. We consider whether there are compelling merits when, as here, our analysis of the first five Fintiv factors favors denial of institution. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 5 (PTAB Feb. 27, 2023) (precedential). For the reasons below, we determine that the Petition and the preliminary evidence do not present a compelling, meritorious challenge.7” slip op. at 15

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

    “In particular, the preliminary record does not plainly show that Alger or the other references teach or disclose a portable device and a separate terminal with processing capabilities sufficient to facilitate a key exchange between the terminal and the portable device as recited in the claims. See, e.g., Ex. 1301, 32:48–53, 33:26–30.” slip op. at 16

  § 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,972,584

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.