• Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution denied
  PTAB · Apr 22, 2025 · IPR2025-00111 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution of IPR on all challenged claims under § 314(a), finding the reasons offered for a second parallel petition unpersuasive.

  RulingsInstitution decision

  • Parallel petitionsInstitution denied discretionary otherDenied

    “petitioner files two or more petitions challenging the same patent, we consider guidance in the Consolidated Trial Practice Guide, which provides that “one petition should be sufficient to challenge the claims of a patent in most situations” and that “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Trial Practice Guide 59 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”). In such circumstances, a petitioner should provide: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a). TPG 59–60. The Trial Practice Guide provides that “the Board recognizes that there may be circumstances in which more than one petition may be necessary” and that “two petitions by a petitioner may be needed, although this should be rare.” Id. at 59.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “We disagree with Petitioner that the still-open outcome of Lynk Labs in any way impacts the availability of Lundh in either the 110 IPR or this proceeding.10 Critically, in Lynk Labs, the Federal Circuit examined the prior art date of a U.S. patent application publication under pre-AIA § 102(e)(1) because the challenged patent in that case had a priority date in February 2004—well before the 2013 effective date of the AIA’s revisions to §§ 102, 103—such that the pre-AIA versions of § 102 determined the” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “We are not persuaded that this assertion supports the argument for a second petition. As argued by Patent Owner, Petitioner’s alleged need is undermined by the distribution of its arguments across the 110 IPR and this proceeding. As discussed above, for the “at least one thigh support adjusters” in the 110 IPR, Petitioner relies on one prior art structure from the first category and two prior art structures from the second category; and for the “at least one thigh support adjusters” in this proceeding, Petitioner relies on two prior art structures from the first category and one prior art structure from the second category. Id. In other words, as stated by Patent Owner, “Petitioner was able to address both its constructions in both of its Petitions.” Resp. 3–411; see also Medacta USA, Inc. v. RSB Spine, LLC, IPR2020-00275, Paper 22 at 10–11 (PTAB May 22, 2020) (denying institution of a second-ranked parallel petition challenging the same claims of the same patent and stating, “Because Petitioner was able to present an alternative challenge contingent upon [the] alternative claim construction” in the first-ranked petition, “we fail to see how uncertainty regarding claim construction justifies two petitions.”). In contrast, in the SolarEdge decision cited by Petitioner, the first-ranked petition presented one approach as to the prior art and the second-ranked petition was permitted because it presented a different approach, such that the two petitions “do not overlap in any meaningful way.” SolarEdge v. SMA Solar Techs., IPR2019-01224, Paper 10 at 10 (PTAB Jan. 23, 2020), cited at Expl. 4. Turning to the discovery issue, we determine that the alleged failure of Patent Owner to answer adequately an interrogatory in the Texas Litigation seeking information on “all corresponding disclosures and written 11 Petitioner highlights the two categories of prior art structures identified across the six grounds in these two proceedings rather than the two different constructions for “at least one thigh support adjuster” proposed. Looking at the distributions of the constructions presented, however, the same reasoning above applies as Petitioner relied on each construction at least twice to address the “one thigh support adjuster” in each proceeding. See 110 Petition 27 (relying on both constructions for Ground 1), 53–57 (relying on only a § 112(f) construction for Ground 2), 86–90 (relying on both constructions for Ground 3); Pet. 29–34 (relying on only a § 112(f) construction for Ground 4), 61–63 (relying on both constructions for Ground 5), 88–90 (relying on both constructions for Ground 6). description support for the ‘at least one thigh support adjuster’ limitation” (Ex. 1029 at 5) does not warrant a second petition here. The challenged patent was clearly available to Petitioner, and Petitioner was—even with Patent Owner’s non-substantive answer to the interrogatory (id. at 6)—able to propose a construction of “at least one thigh support adjuster” under § 112(f). See Pet. 7–12. For these reasons, the two different constructions presented do not warrant a second petition in this proceeding.” slip op. at 12

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 11,786,055
• Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution denied
  PTAB · Apr 22, 2025 · IPR2025-00110 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person having ordinary skill in the art “would have had at least a four-year degree in a design-based field, which may include fashion design, industrial design, mechanical engineering, or another technical field, or equivalent experience, and familiarity working with child products and/or adjustable products.” Pet. 6–7 (citing Smith Decl. ¶¶ 32–38). Patent Owner does not address Petitioner’s proposed definition, which appears consistent with the record in this proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Furthermore, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9

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

    “Based on the current record, we need not construe explicitly the term “at least one thigh support adjuster” because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). More particularly, and as discussed below, Petitioner does not show sufficiently how the prior art teaches the structure identified as corresponding to the alleged claimed function. Further, because we deny on the merits (as discussed below), we do not address Patent Owner’s alternative argument that we should deny institution because “Petitioner fails to construe th[is] limitation and otherwise argues for an advisory opinion from the Board on indefiniteness.” Prelim. Resp. 1; see id. at 1–6 (entire argument). 2. “defined by” Limitations 1j and 11l each recite “a first setting, a second setting, and a third setting defined by the adjustable child carrier.” Ex. 1001, 17:38–39 (emphasis added), 19:43–44 (emphasis added). Limitation 6k recites “a first position, a second position, and a third position defined by the adjustable child carrier.” Id. at 18:36–37 (emphasis added). Patent Owner proposes a construction for “defined by” in these limitations. See Prelim. Resp. 12–15. At this stage of the proceeding and based on the current record, we need not construe explicitly “defined by”” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Public accessibility “has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ . . . .” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). In Hulu, the Precedential Opinion Panel (“POP”) rejected a petitioner’s argument that a reference necessarily meets “the reasonable likelihood standard for institution where the reference bears conventional markers of publication, such as a copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number.” Hulu, Paper 29 at 17. The POP stated: “We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Here, Petitioner provides no citation, no discussion, and no support for its assertion that the Synergy Manual was “published” in “2007.” See Pet. 2. Instead, we are left to assume that Petitioner relies on the text “© BabyBjörn AB, Stockholm, 2007” at the bottom of page 6 of the Synergy Manual. More to the point, Petitioner does not discuss in the Petition any evidence supporting the implicit position that the Synergy Manual was publicly accessible prior to the critical date of the claimed invention.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,786,055
• First Solar, Inc. v. Rovshan SadeInstitution denied
  PTAB · Nov 16, 2023 · IPR2023-00881 · APJ Kevin W Cherry · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claim 1 was unpatentable over Wattsun, RayTracker, or their combination.

  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) (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). slip op. at 10

  • Skill levelSkill level petitioner adoptedOther

    “Relying on the declaration testimony of Edward C. Kern, Jr., Petitioner contends that an ordinarily skilled artisan for the ’17,546 patent “would have had a bachelor’s degree in mechanical engineering or equivalent with 2–3 years of experience involving design, development, and manufacturing of support and mounting structures for solar trackers, with additional education substituting for experience and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 34). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’17,546 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

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

    “Petitioner submits the claims be interpreted “according to 37 C.F.R. § 42.100(b)” and that no terms require explicit construction. Pet. 16. Patent Owner does not “believe that any claim terms require express construction in order to deny institution.” Prelim. Resp. 10. Patent Owner also asserts “that providing a construction of the claims at issue is the duty of Petitioner, and the Petitioner has failed to comply.” Id. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “d) Analysis We observe that Patent Owner’s arguments in connection with its challenge to Wattsun as prior art do raise meaningful questions, on this record, as to Wattsun’s status as a printed publication before the priority date of the challenged patent. In particular, we take note of Patent Owner’s contention (see Prelim. Resp. 20–21) that Petitioner has failed to present sufficient evidence or argument that an interested party exercising reasonable diligence would have located Wattsun. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1349 (Fed. Cir. 2016).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,917,546
• First Solar, Inc. v. Rovshan SadeInstitution denied
  PTAB · Nov 16, 2023 · IPR2023-00827 · APJ Josiah C Cocks · IPR · Institution

  Institution denied for claims 5 and 6 because Petitioner did not show a reasonable likelihood of success on any asserted ground.

  RulingsInstitution decision

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

    “institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner 1 The ’57,546 patent is the parent of U.S. Patent No. 9,917,546 B2 (“the ’17,546 patent”). A Petition challenging claim of the ’17,546 patent (IPR2023-00881) was filed on the same day as this IPR2023-00827 proceeding. would prevail in establishing the unpatentability of any challenged claim of the ’57,546 patent. Accordingly, we deny institution of the Petition for inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Relying on the declaration testimony of Edward C. Kern, Jr., Petitioner contends that an ordinarily skilled artisan for the ’57,546 patent “would have had a bachelor’s degree in mechanical engineering or equivalent with 2–3 years of experience involving design, development, and manufacturing of support and mounting structures for solar trackers, with additional education substituting for experience and vice versa.” Pet. 14–15 (citing Ex. 1003 ¶¶ 34). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’57,546 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10

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

    “Petitioner submits the claims be interpreted “according to 37 C.F.R. § 42.100(b)” and that no terms require explicit construction. Pet. 15. Patent Owner does not “believe that any claim terms require express construction in order to deny institution.” Prelim. Resp. 8. Patent Owner also asserts “that providing a construction of the claims at issue is the duty of Petitioner, and the Petitioner has failed to comply.” Id. at 8–9. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “a) Legal Standards for Public Accessibility “[T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 16 (PTAB Dec. 20, 2019) (precedential). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). In certain situations, such as for manuscripts or dissertations stored in libraries, courts may inquire whether a reference was sufficiently indexed, catalogued, and shelved. See, e.g., In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986); In re Lister, 583 F.3d 1307, 1315 (Fed. Cir. 2009) (manuscript became publicly accessible once it was placed in a searchable database). Analogously, electronic documents may be publicly accessible if they were indexed or catalogued, or if there were other tools for customary and meaningful research. See SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). “[I]ndexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media.” Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,057,546
• Beckman Coulter, Inc. v. Becton, Dickinson And CompanyInstitution denied
  PTAB · Dec 1, 2022 · IPR2022-01122 · APJ Michael A Valek · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–13 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “likelihood of establishing that any of the challenged claims are unpatentable on any of the grounds in the Petition. Accordingly, institution of inter partes review is denied. V. ORDER Accordingly, it is: ORDERED that the Petition is denied, and no inter partes review is instituted” slip op. at 33

  • Skill levelOther

    “We are sympathetic to Patent Owner’s argument that a POSA would have had at least some experience with the optical systems used in optical analyzers. All of the claims recite an “optical analyzer” and the Specification is replete with references to optical analyzers and their operation. See, e.g., Ex. 1001, Abstr., 1:14–15, 2:3–4, 2:18–29, 3:38–57, 9:55–10:59 (claims reciting an “optical analyzer”). Moreover, Patent Owner cites other evidence that also suggests a POSA would have such experience. See Prelim. Resp. 12–13. However, on the current record, we are not convinced that the ordinary level of skill in the art would necessarily require the amount of specific experience (i.e., two years working and/or designing optical systems in optical analyzers) that Patent Owner urges. Petitioner’s declarant, Dr. Fang, testifies that two years of experience “in the field of optical imaging, with a specific focus on laser optics” would suffice. See Ex. 1002 ¶ 9. Thus, while it seems likely that a POSA would have at least some experience specific to optical analyzers, we see no reason why additional experience with laser optics more generally could not provide the balance of the two years of experience noted in the parties’ definitions. In any event, we need not resolve this issue here because we would reach the same outcome under either parties’ POSA definition.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The testimony Petitioner offers from its declarant, Dr. Fang, does not provide the missing explanation. Paragraphs 115 and 127 of Dr. Fang’s declaration, provide his opinions that “adapting a lens to focus a light beam onto a focal spot within a sample analysis region is no different from adapting a lens to focus a light beam into any region in space in other applications” and that a POSA would “understand that Lynch is generally applicable to light sources emitting collimated beams, and that such light sources were well-known in the art.” Ex. 1002 ¶¶ 115, 127. In paragraph 126, Dr. Fang testifies that a POSA would have a reasonable expectation of success in implementing the system described in Lynch.11 None of this testimony explains why a POSA would have been motivated to modify Lynch for implementation in an optical analyzer. For these reasons and based on the current record, Petitioner has not” slip op. at 25

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Whether to treat a preamble as a limitation is a determination ‘resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”’ In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002) (citation omitted). “In general, a preamble limits the claimed invention if it recites essential structure or steps, or if it is necessary to give live meaning and vitality to the claim.” Id. (citation and quotations omitted). This may be ascertained by review of the entirety of the patent to determine whether the preamble “discloses a fundamental characteristic of the claimed invention” as opposed to merely “stat[ing] a purpose or intended use.” Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004). As Patent Owner points out, the ’197 patent is replete with references describing the invention as an optical analyzer. See Prelim. Resp. 24–25 (bullet pointing quotes from the Specification). The Specification begins by explaining that optical or “[p]article analyzers . . . are well known analytical tools that enable the characterization of particles on the basis of optical parameters such as light scatter and fluorescence.” Ex. 1001, 1:16–19. The Specification explains that “[t]he present invention” provides both “illumination optics for use in an optical analyzer” and “an optical analyzer incorporating the illumination optics of the present invention.” Ex. 1001, 2:3–4, 2:18–19. Claims 1–13, each of which recites an “optical analyzer” comprising a set of optical elements, are specifically directed to the latter. Id. at 9:55–10:59. The Specification further demonstrates that the preamble term is limiting by explaining that “the invention addresses a concern specific to” optical analyzers. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 1358 (Fed. Cir. 2012) (finding that the specification “demonstrates that the preamble phrase ‘rotary cutter deck’ is a limitation” because it “explains that the invention addresses a concern specific to rotary cutters”). The Specification explains that in a flow cytometer, i.e., an exemplary type of optical analyzer, “the excitation light from a laser . . . is focused onto a focal spot to illuminate the core stream (the fluid stream containing the particles to be analyzed).” Ex. 1001, 1:39–42. According to the Specification, “[a]ccurate focusing of the excitation light beam on the core stream is important,” “[o]ptimal performance is compromised if the focused light beam is not properly adjusted on the core stream,” and because the particles being analyzed are only a “few microns in size, the precision of the light beam adjustment also needs to be in the micron range.” Id. at 1:42–51; see also id. at 3:38–49 (explaining that “fine control over the focus spot” is useful in optical analyzers). The present invention addresses these concerns by providing an optical analyzer “adapted to focus an illumination beam onto a sample analysis region,” configured to obtain a “high degree of precision over the adjustment of the focal spot using less expensive lens adjusting mechanisms,” and comprising “detection optics for measuring the light emitted from the analysis region.” See id. at 2:18–23, 7:3–8. We also agree with Patent Owner that the recitation of an “optical analyzer” in the preamble informs the meaning of the phrase “a focusing lens . . . adapted to focus the light beam onto a focal spot within a sample analysis region” in the claim body. The term “sample analysis region” refers to a structural feature of the claimed “optical analyzer,” i.e., the area configured to contain the sample to be analyzed. This is confirmed by the Specification, which explains that in addition to illumination optics “[t]he optical analyzer will further comprise detection optics for measuring the light emitted from the analysis region. In a preferred embodiment, the optical analyzer is a flow cytometer, and the sample analysis region is a sample detection region in a fluid stream containing particles to be optically analyzed.” Ex. 1001, 2:21–26. In this regard, the preamble informs the meaning of “sample analysis region” by indicating that the recited “sample analysis region” is configured such that it can contain a sample and that light emitted from that region can be measured by the analyzer. See Deere, 703 F.3d at 1358 (explaining that “rotary cutter deck” in the claim preamble “informs the meaning of the ‘torsional stiffness’ limitation––the claimed structure must possess sufficient stiffness to withstand the torsional loads imposed by the operation of a rotary cutter”). By the same measure, holding that the “sample analysis region” need not be so configured would undermine the benefits the Specification indicates the recited illumination optics achieve. See Ex. 1001, 1:39–55, 2:30–48, 7:3–7 (explaining that “accurate focusing” is important because the sample to be analyzed may be very small and that the present invention obtains “precise positioning control” using less expensive components). The fact that the preamble informs the meaning of a term in the claim body, distinguishes it from “nonlimiting preamble terms” that “merely state a name or a use” by demonstrating that the optical analyzer recited in the preamble of the presently challenged claims is a “fundamental characteristic of the claimed invention.” Deere, 703 F.3d at 1358 (quoting Poly-Am., 383 F.3d at 1310).9 slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,787,197
• Zillow Group, Inc. / Zillow, Inc. v. International Business Machines CorpInstitution denied
  PTAB · Mar 10, 2022 · IPR2021-01311 · APJ Kevin W Cherry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–7, 9–13, and 15–18 were unpatentable over Chowdhry or MacLaurin and Masselle.

  RulingsInstitution decision

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

    “Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1, 3–7, 9–13, and 15–18 of the ’234 patent. Accordingly, we deny institution of inter partes review of the ’234 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the level of skill, and choice of language, reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

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

    “Petitioner proposes construction for four variations of the term stack that appear in the claims: “stacks,” “stack of stacks,” “stacking,” and “stackable.” Pet. 13–23. Patent Owner contends only the term “stackable” requires construction. Prelim. Resp. 26. However, only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). For purposes of this decision, we determine that no construction is necessary because Petitioner has failed to meet its burden under its own constructions.” slip op. at 7

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

    “At bottom, Petitioner’s contentions and Dr. Rosenberg’s testimony, which merely repeats verbatim what is in the Petition, suffer from the problem that they simply assert a series of conclusions without providing adequate reasoning supported by Chowdhry or other evidence as to how Chowdhry actually describes what Petitioner contends. “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). To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). As best as we can discern, Petitioner’s allegations do not appear to be based on the express or inherent disclosures of Chowdhry, but on how a person of ordinary skill could have extended what is actually disclosed to reach the claimed invention. See Pet. 34–37; Ex. 1011 ¶¶ 86–92. Petitioner has the burden of proof, and in this case, Petitioner’s and Dr. Rosenberg’s skeletal explanation fails to persuade us that Petitioner’s interpretation of what Chowdhry discloses even has a reasonable likelihood of being correct. As such, we find that Petitioner has failed to provide adequate support for its contention that Chowdhry describes “determining whether a subset of portlets is stackable,” as required by limitation 1[a]. Accordingly, we find that Petitioner has failed to demonstrate a reasonable likelihood of success in showing the claim 1 was anticipated by Chowdhry.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,543,234
• Wendt Corporation v. Iqasr, LLCInstitution denied
  PTAB · Sep 28, 2017 · IPR2017-01080 · APJ Richard H Marschall · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–15, 18–20, and 22 were unpatentable over Jody or Jody and the 1998 Handbook.

  RulingsInstitution decision

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

    “We review the Petition under 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.” Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. A.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “automobile shredder residue,” “sorting, non-ferrous recovery system,” “magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable materials,” and “air-locked automobile shredder residue sorting, non-ferrous recovery system” require construction. Pet. 12–35. In turn, Patent Owner proposes its own construction for those same terms. Prelim. Resp. 3–24. Having considered the evidence presented, we determine that we need only address the meaning of “magnetic fuzz” for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “The Petition also lacks an explicit inherency analysis. As Petitioner acknowledges in its legal background, inherent disclosure “necessarily describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if Petitioner established that magnetic fuzz is likely present and sorted using Jody’s process, that does not establish inherency. See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” (citation omitted)). To the extent that Petitioner’s argument that magnetic fuzz “would be part of the plastic-rich stream and initially would be sorted from the PUF, fines, etc.,” amounts to an inherency argument, it lacks adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added). Petitioner’s assertion fails to address why magnetic fuzz would be present in Jody’s automobile shredder residue in the first place, much less that Jody’s process necessarily must sort that magnetic fuzz. Given Jody’s failure to disclose magnetic fuzz expressly, Petitioner needed to do more than merely assume that magnetic fuzz is present and assert that magnetic fuzz “would be” sorted, without explaining why this must be the case.” slip op. at 11

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

    “2. Discussion To establish anticipation under 35 U.S.C. § 102, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “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. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must “enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929, 940–44 (CCPA 1962).” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,132,432
• Albaad Massuot Yitzhak, Ltd. / Albaad USA, Inc. v. Edgewell Personal Care Brands, LLCInstitution denied
  PTAB · Jul 17, 2017 · IPR2017-00693 · APJ Amanda F Wieker · IPR · Institution

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

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating authority to the Board). Taking into account the arguments presented in the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing claims 1, 2, 4, 7–10, 12, 14–16, 18, 21–23, 25, 27–29, 31, 33–37, and 39 of the ’522 patent are unpatentable. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “Second, we are not persuaded by Petitioner’s contention that Wada inherently discloses this limitation. Pet. 43. Petitioner has not shown that the tip of Wada’s tampon 3 necessarily possesses a greater density than a region adjacent the tip. See Continental Can, 948 F.2d at 1268 (explaining that the evidence “must make clear that the missing descriptive matter is necessarily present”). To the contrary, both the Petition and the Hull 2 The cited portions of the Hull Declaration closely mirror the Petition. Declaration lack persuasive technical reasoning to explain how or why “compress-molding” Wada’s tampon would necessarily result in a higher density at the tip region, as compared to adjacent regions of the pledget. Pet. 43; Ex. 1036 ¶¶ 116–117; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Furthermore, the record suggests that compression of a tampon does not necessarily result in a tip with a greater density than adjacent regions. Ex. 1001, 5:45–48. For example, if a tip includes less dense material, compression may result in a tip with the same density as the rest of the pledget. Id. Because Wada does not specify the starting density or distribution of its absorptive fibers, we are not persuaded that compress-molding those fibers would necessarily result in a higher density at the tip region. Although a higher relative density may result, inherency “may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can, 948 F.2d at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 9

  • BurdenNot shown unpatentable

    “Furthermore, the Petition fails to identify clearly what it contends to be the “tapered tip,” such that its length could be compared to the length of the applicator’s cuts to determine whether this claim limitation is met. For example, the Petition at page 44 states that the “tapered tip is shown to be shorter than the barrel’s insertion tip,” but does not define what portion of Wada’s structure is understood to be the “tapered tip.” Pet. 44. The Hull Declaration similarly fails to identify the tapered tip with particularity. Ex. 1036 ¶ 118. Thus, for these reasons, Petitioner has not established that Wada anticipates independent claims 1, 9, 22, 27, 34, or 39, or claims 2, 4, 7, 8, 10, 12, 14, 23, 25, 28, 29, 31, 33, and 35–37, which depend from independent claims 1, 9, 22, 27, 34, or 39.” slip op. at 12

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

    “We agree with Patent Owner. The Petition states that the claimed relative densities were “well known in the art before 2003,” but does not provide persuasive evidentiary support for this statement. Pet. 78. Indeed, cited paragraphs 95–98 of the Hull Declaration discuss prior art tampons having petals or tapered designs, and prior art tampons formed by compression, but do not discuss prior art tampons having the claimed density. Ex. 1036 ¶¶ 95–98. Cited paragraph 225 asserts that the claimed density was known, but provides no support for this statement, instead merely citing back to paragraphs 95–98. Id. ¶ 225; see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight” and, here, we assign Mr. Hull’s testimony no weight. 37 C.F.R. § 42.65(a).” slip op. at 14

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,192,522
• Albaad Massuot Yitzhak, Ltd. / Albaad USA, Inc. v. Edgewell Personal Care Brands, LLCInstitution denied
  PTAB · Jul 17, 2017 · IPR2017-00694 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–6 unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating authority to the Board). Taking into account the arguments presented in the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in challenging claims 1–6 of the ’075 patent as unpatentable. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner relies on the testimony of its declarant, Mr. Hull, and contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in engineering, and would have had at least four years of experience designing and building prototype tampons and tampon applicators.” Pet. 12 (citing Ex. 1024 ¶ 57). In its Preliminary Response, Patent Owner does not identify the relevant level of skill in the art. See generally Prelim. Resp. Based on our review of the ’075 patent, the types of problems and solutions described in the ’075 patent and cited prior art, and the testimony of Mr. Hull, at this stage of the proceeding, we apply Petitioner’s definition for purposes of this Decision. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Based on the record before us, we need not provide express constructions for any claim terms to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

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

    “general matter, dimensions purportedly reflected in patent drawings are unpersuasive, absent a discussion of those dimensions in the written description of the patent’s specification. Indeed, as our reviewing court instructs, “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” See Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (emphasis added); see also Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (concluding it was error to “not properly apply[] the principles set forth in our prior precedents that arguments based on drawings not explicitly made to scale in issued patents are unavailing”). Petitioner is correct that design patents may serve as prior art for all that they reasonably disclose and suggest to a person of ordinary skill in the art. Pet. 24; In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). However, the cases cited by Petitioner do not stand for the proposition that design patent figures alone may be relied upon to establish specific, particular, quantitative dimensions. See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value.”). To the contrary, as the cases discussed above make clear, specific dimensions inferred from patent drawings are unpersuasive if the specification is silent on the issue. Hockerson-Halberstadt, 222 F.3d at 956; Nystrom, 424 F.3d at 1149. In this case, Koch does not indicate that its sole Figure is drawn to scale. See Ex. 1004. To the contrary, Koch indicates that its Figure presents an “isometric illustration.” Id. at Description. Further, Koch’s limited written description lacks any discussion of the claimed dimensions or ratios. See id. As such, we are unpersuaded by Petitioner’s reliance on dimensions measured with a ruler from Koch’s Figure. Petitioner does not identify, and we do not discern, any other support in Koch for the claimed ratios.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,432,075
• Telebrands Corp. v. Ragner Technology CorporationInstitution denied
  PTAB · Nov 23, 2016 · PGR2016-00026 · APJ Michael W Kim · PGR · Institution

  The Board denied institution because the petition did not show that claims 1–25 were more likely than not unpatentable for indefiniteness or obviousness over Berardi and Gladfelter.

  RulingsInstitution decision

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

    “may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the effective filing date of the ’057 patent “would have been a person having general knowledge about and experience with the manufacture and/or use of hoses and with fluid mechanics and materials science as they relate to hoses and how hoses work generally. The person of ordinary skill has at least an associate’s degree in science or engineering.” Pet. 17 (citing Ex. 1005). Patent Owner does not challenge Petitioner’s assertion. On these facts, we determine that Petitioner’s articulation of a person of ordinary skill in the art is credible.” slip op. at 7

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “’057 patent defines the following relevant claim terms: “extended length” and “maximum stretched length.” Petitioner does not dispute that these claim terms are defined expressly by the ’057 patent, nor does Petitioner indicate that these claim terms are indefinite. Next, each independent claim recites expressly that the “stretched length” is longer than the “extended length,” which we construed above as “the length the hose or those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure.” Finally, the term “maximum stretched length,” both by the use of the word “maximum” and the express definition set forth in the ’057 patent, indicates that it constitutes an upper bound for the term “stretched length.” Accordingly, through transitive analysis, we determine that the recited term “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” Relative claim terminology is acceptable if one of ordinary skill would have understood what is claimed, in light of the Specification. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).” slip op. at 10

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

    “those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure,” and also determined that “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” When considered in the aggregate, we see that “extended length” is a length of a hose attributable to only fluid pressure, while “stretched length” is a length of a hose attributable to any force other than fluid pressure. Accordingly, a discussion of the prior art must acknowledge the interplay between the length of the hose, fluid pressure, and other forces, in order to meet the aforementioned claim limitation.” slip op. at 17

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,182,057

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.