• Reed Semiconductor Corp. v. Monolithic Power Systems, Inc.Institution denied
  PTAB · Nov 26, 2024 · IPR2024-00871 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim; it also found institution inefficient based on Ground 1 alone.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12

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

    “On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Unpatentability of Claims 1, 11, and 12 as Anticipated by TI,” slip op. at 13

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

    “establishing the unpatentability of any of the challenged claims of the ’608 patent. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 39

  • PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied

    “Here, Petitioner advances five challenges with four directed to the same three independent claims. Pet. 3. We, for the reasons discussed below, determine that Petitioner has failed to show a reasonable likelihood of prevailing on Grounds 2 through 5. We further determine that, based on the particular facts of this proceeding, instituting a trial with respect to all grounds and all the challenged claims based on evidence and arguments directed only to Ground 1 would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, even if Petitioner met the requisite burden for institution as to Ground 1, we would exercise our discretion and not institute an inter partes review. E. The Alleged Anticipation of Claims 1, 11, and 12 by Galinski (Ground 2)” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,590,608
• Hamilton Beach Brands, Inc. v. F’Real Foods, LLCInstitution denied
  PTAB · Nov 30, 2016 · IPR2016-01105 · APJ Brian P Murphy · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 1 and 6–11 anticipated by Neilson or claims 1 and 5–11 obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “October 6, 2014—the date the 2014 Complaint alleging infringement of the ’658 patent was served on Petitioner. Prelim. Resp. 5, 11. It is undisputed, however, that Patent Owner did not own the ’658 patent at the time the 2014 Complaint was filed and served. Pet. 4; Prelim. Resp. 7; Ex. 1030 ¶¶ 5–7. Title to the ’658 patent was transferred to Patent Owner by an assignment executed January 25, 2016. Pet. 4; Prelim. Resp. 9; Ex. 1030 ¶ 7, Ex. C (patent assignment). Accordingly, Patent Owner lacked standing to sue for infringement of the ’658 patent at the time the 2014 Complaint was filed and served. Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003) (“[I]n order to assert standing for patent infringement, the plaintiff must demonstrate that it held enforceable title to the patent at the inception of the lawsuit.”). The patent counts of the 2014 Complaint were jurisdictionally defective, and the defect could not be cured after the filing date of the complaint, e.g., by a subsequent assignment or by joining the patent title holder to the lawsuit. Alps S., LLC v. Ohio Willow Wood Co., 787 F.3d 1379, 1385 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 897 (2016) (“The party asserting patent infringement is ‘required to have legal title to the patents on the day it filed the complaint and that requirement can not be met retroactively.’”) (quoting Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1366 (Fed. Cir. 2010)). The Delaware district court was required to—and actually did— dismiss the patent infringement counts of the 2014 Complaint for lack of Article III standing. Ex. 1031 n.1 (Delaware district court order granting motion for voluntary dismissal: “the court lacks jurisdiction to make a judgment on the merits”); see also, Abraxis, 625 F.3d at 1367 (“[T]he action must be dismissed because [plaintiff] lacked standing on the day it filed the action.”); Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005) (“[I]f the original plaintiff lacked Article III initial standing, the suit must be dismissed, and the jurisdictional defect cannot be cured by the addition of a party with standing, . . . nor by the subsequent purchase of an interest in the patent in suit.”) (citing Paradise, 315 F.3d at 1309). Thus, the allegation of infringement of the ’658 patent in the 2014 Complaint was not a proper federal pleading and did not trigger the one-year time period under 35 U.S.C. § 315(b). Petitioner was not served with a complaint properly alleging infringement of the ’658 patent until January 2016. The instant petition was filed in May 2016. Accordingly, the Petition is not time-barred under § 315(b).” slip op. at 9

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

    “unpatentable under 35 U.S.C. § 102(b) and claims 1 and 5–11 as unpatentable under § 103. Pet. 9. Based on the arguments and evidence presented in the Petition and Preliminary Response, we determine Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Therefore, institution of an inter partes review is denied.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “of the specification of the patent in which they appear. 37 C.F.R. § 100(b); 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). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner offer competing constructions for several claim terms. Pet. 18–20; Prelim. Resp. 26–35. We determine that only the following claim terms require express construction for purposes of this Decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (citation omitted).” slip op. at 13

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

    “position.” During a mixing operation, the ’658 patent describes how the cup holder is reciprocated to move axially upward so the mixing element is in a position within the liquid-filled cup, i.e. the recited “first position,” then reciprocated downward so the mixing element is moved upward to the recited “second position” closer to the opening at the top of the cup, “to allow the blade to pass through the full contents of the cup more than one time.” Ex. 1001, 3:58–64. When the mixing element is moved upward within the cup to the second position, the weight of the splash shield must be sufficient to keep the liquid-filled cup in the cup holder. Id. at 4:3–10 (“heavy enough to create sufficient downward force on the cup to overcome any upward force created by the mixing blade being moved upwardly in the cup”). The force generated by upward movement of the mixing element is not further described in the ’658 patent, although the ’658 patent provides a preferred embodiment where a splash shield weighing 5 pounds (dependent claim 5) provides sufficient downward force to perform the recited function. Id. at 4:20–23. Petitioner argues that “sufficient mass” in claim 1 should be construed in accordance with the interpretation allegedly offered by Patent Owner in the dismissed patent action: “the splash shield applies sufficient weight to the top of the cup to retain the cup in the cupholder during mixing.” Pet. 19 (no citation). Petitioner further argues that “the mass of the splash shield” limitation in claim 6 should be construed in accordance with the construction allegedly offered by Patent Owner in the dismissed patent action: “the splash shield applies sufficient weight to the top of the cup to prevent separation of the cup from the cupholder during mixing.” Id. (no citation). Patent Owner responds with a slightly different interpretation of a splash shield having a “sufficient mass”: “heavy enough to retain the vessel within the holder during relative movement of the mixing element and vessel.” Prelim. Resp. 31 (citing Ex. 1001, 4:3–24; Ex. 2025 (definition of “sufficient”)). Both parties appear to agree that the ’658 patent describes the “sufficient mass” of the splash shield in functional terms as enough weight to retain the vessel or cup within the holder during mixing. Ex. 1001, 3:65– 4:23. Based on the description provided in the ’658 patent, the claim language at issue in claim 1 – “the splash shield having sufficient mass to retain the vessel within the holder during relative movement of the mixing element and vessel from the first position to the second position when liquid is present in the vessel” – is entitled to its plain and ordinary meaning: “the splash shield is heavy enough to create sufficient downward force on the vessel so as to retain the vessel within the holder when the mixing element moves upwardly in the vessel from the first position to the second position when liquid is present.” See Ex. 1001, 4:3–10 (“heavy enough to create sufficient downward force on the cup to overcome any upward force created by the mixing blade being moved upwardly in the cup”). The claim language in claim 6 “the mass of the splash shield preventing separation of the holder and the vessel during translation” is similarly construed to mean “the splash shield is heavy enough to create sufficient downward force on the vessel so as to prevent separation of the holder and the vessel during translation of the mixing element or holder.”” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,520,658
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Institution denied
  PTAB · Jun 24, 2016 · IPR2016-00325 · APJ James B Arpin · IPR · Institution

  The Board denied institution for claims 42–44 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “inter partes review of claims 42–44 of U.S. Patent No. 7,000,063 B2 (Ex. 1001, “the ’063 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or “Pet.”). Innovative Memory Systems, Inc. (“Patent Owner”), filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Under 35 U.S.C. § 314, 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.” For the reasons set forth below, we deny institution of an inter partes review of any of claims 42–44 of the ’063 patent.” slip op. at 2

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

    “2. “write-once memory cells” (Claims 42–44) Patent Owner contends that the term “write-once memory cells” means “memory cells to which data can be written only once.” Prelim. Resp. 7 (emphasis added). Petitioner does not propose a construction for this term. See Pet. 9–12.” slip op. at 7

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

    “Patent Owner contends that Kasa does not disclose the “rendering” step of claim 42. Prelim. Resp. 15–17. In particular, Patent Owner contends that Kasa does not disclose causing a write-many memory cell to become a write-once memory cell. Id. at 15–16. Instead, Patent Owner contends that “Kasa merely discloses causing a write-many memory cell to become a read- only memory cell, i.e., a memory cell to which data can no longer be written,” after the data to be protected has been written to the write-many OTP sector. Id.; see Ex. 1005, col. 11, ll. 27–30 (“As set forth above, when the OTP sector write-protect CAM 34 is in the programmed state, the OTP sector 26 can only be used as a read-only sector.” (emphasis added)).” slip op. at 12

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

    “3. Analysis of Challenge to Claim 43 Claim 43 depends directly from independent claim 42 and recites the method of claim 42 “wherein the memory device comprises a modular memory device that is removabl[y] couplable [with] a host device.” Ex. 1001, col. 10, ll. 33–35; see id., Certificate of Correction. Petitioner argues that Dipert teaches the additional limitations of claim 43 and that a person of ordinary skill in the art would have reason to combine the teachings of Kasa with those of Dipert to achieve the method recited in claim 43. Pet. 25–28. However, Petitioner relies solely on the teachings of Kasa to supply the limitations of independent claim 42. Id. at 27. Patent Owner contends that, because Kasa fails to disclose each and every element of claim 42, Kasa also fails to teach or suggest the limitations of dependent claim 44. See Prelim. Resp. 18. In view of our analysis of the arguments with respect to claim 42 (see supra Section II.B.3.a.), we agree with Patent Owner. Consequently, on this record, we are persuaded that Petitioner fails to demonstrate a reasonable likelihood of prevailing in showing that Kasa and Dipert render claim 43 of the ’063 patent obvious.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,000,063
• Dukane Corporation v. Herrmann Ultraschalltechnik GmbH & Co., KGRehearing denied
  PTAB · May 26, 2016 · IPR2016-00066 · APJ Michelle N Ankenbrand · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution for claims 4, 5, and 7–9 because Petitioner did not show the Board misapprehended or overlooked its arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “Regarding the asserted grounds that Klinstein ’158 anticipates claim 8 and the DPC Manual anticipates claims 6–9, we determined that Petitioner “fail[ed] to address the limitations reciting different target variables for the machining intervals,” which was “fatal to [those] unpatentability assertions.” Dec. 9–10. Likewise, we determined that Petitioner’s failure to address the additional “target variable[s] differ” limitation of claim 8 was fatal to the asserted ground that the subject matter of claim 9 (which depends from claim 8) would have been obvious over the combination of Klinstein ’158 and the iQManual. Id. at 10. Regarding Petitioner’s assertion that Klinstein ’158 anticipates claim 6, we determined that, although Petitioner addressed the “target variable[s] differ” limitation, Petitioner failed to explain adequately how the reference discloses that limitation. Id. at 12–13. With respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816, we determined that Petitioner did not provide “adequate reasoning based on rational underpinnings to persuade us, in the absence of hindsight, that one of ordinary skill would have modified the welding method of Klinstein ’816 to achieve the claimed subject matter [i.e., the specific features that claims 4 and 5 add to the subject matter of claim 1].” Id. at 16.” slip op. at 3

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

    “Reh’g Req. 5 (citing Pet. 43–53). Petitioner does not direct us to the particular page of the Petition on which it advanced that argument, but, rather, cites ten pages of analysis. After reviewing the cited pages, it appears that Petitioner made the argument in a claim chart to show how the DPC Manual discloses welding variables and target variables, not how the DPC Manual discloses the “target variable[s] differ” limitation. See Pet. 45– 46. Indeed, Petitioner’s claim chart does not address the “target variable[s] differ” limitation. Like the Petition, the claim chart focuses on whether the target values of the target variable differ. Id. at 46. In any event, Petitioner fails to explain how the identification of exemplary target variables set forth in the DPC Manual is an anticipating disclosure of different target variables for each machining interval. In fact, the analysis in the Petition contradicts Petitioner’s argument in this regard because, as explained previously, Petitioner identifies the same variable as corresponding to the first, second, and fifth target variables disclosed in the DPC Manual. Dec. 9 (citing Pet. 57). Petitioner further admits that the DPC Manual discloses “the ‘[c]ontrol parameters [i.e., target variables] for P2 are the same as those used for P1, however the limits set for the parameters are specific to each pressure.’ Thus, the user-specified target values for the first and second control parameters may differ.” Pet. 52 (citing Ex. 1005, 81) (emphasis added). Consistent with that description, Figure 7-16 of the DPC Manual illustrates how to set the dual pressure control and depicts the same control parameter (i.e., target variable) for P2 and P1 (i.e., weld time). Ex. 1005, 82. Accordingly, we are not persuaded that we overlooked or misapprehended Petitioner’s arguments as to what each of Klinstein ’158, Klinstein ’816, and the DPC Manual discloses.” slip op. at 8

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

    “detecting a third target variable during the first machining interval and selecting the second target variable depending on the result of the detection. Ex. 1001, 4:52–55. Claim 5 depends from claim 4 and narrows the third target variable to welding time. Id. at 4:56–57. As to these claims, we determined that Petitioner’s argument, which was devoid of discussion and citations to Klinstein ’816, “fails to link the hypothetical detection and selection criteria [that a skilled artisan ‘could have’ used] to any particular teaching, preference, suggestion, or other reasoning derived from Klinstein ’816 and the level of skill in the art.” Dec. 16. We also determined that the Klinstein Declaration “adds no further detail; it merely mirrors the Petition.” Id. Petitioner contends that the entire discussion on pages 31–41 of the Petition relates to the obviousness of claims 4 and 5 from the disclosure of Klinstein ’816. Reh’g Req. 6. As Petitioner concedes in the Rehearing Request, however, “[t]hose pages make it clear, in graphic detail including reproduction of drawings from the [Klinstein] ’816 patent, how claim 1 is anticipated by the [Klinstein] ’816 patent.” Id. (emphasis added). In other words, the analysis on pages 31–41 does not set forth how the additional features of claims 4 and 5 would have been obvious from the disclosure of Klinstein ’816 and the level of skill in the art. Petitioner also repeats in the Rehearing Request essentially the same argument that was raised in the Petition, purporting to establish the link between Petitioner’s hypothetical detection criteria and the disclosure of Klinstein ’816 we found missing from its argument and the Klinstein Declaration. Compare Reh’g Req. 6–7, with Pet. 42 and Ex. 1007 ¶ 55. Petitioner’s argument is no more persuasive on the second telling. That is, Petitioner reargues a case it attempted to make out in the Petition, but fails to point out how we misunderstood its arguments or Mr. Klinstein’s testimony. Accordingly, we are not persuaded we misapprehended or overlooked Petitioner’s arguments with respect to the asserted ground that the subject matter of claims 4 and 5 would have been obvious over Klinstein ’816.” slip op. at 9

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,702,883
• Funai Electric Co., Ltd. / Samsung Display Co., Ltd. v. Gold Charm Ltd.Rehearing denied
  PTAB · Mar 2, 2016 · IPR2015-01448 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Petitioner’s rehearing request, leaving in place the denial of institution for claims 1 and 3–6 because Petitioner showed no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “electrode is referred to with the reference numeral 24, the Decision found that the pixel electrode in Figure 36 is single unitary electrode, as is shown clearly in Figure 36, and the pixel electrode in Figure 52 is a combination of two sub-pixel electrodes. Dec. 8–9. The Decision found that Petitioner had not shown sufficient evidence in the record that the unitary electrode embodiment would be combined with the two sub-pixel electrode embodiment. Thus, the Decision did not overlook or misapprehend Petitioner’s arguments or evidence. We fully considered Petitioner’s position and determined that the evidence on which Petitioner relied was not persuasive in establishing that Figures 36 and 52 could be combined. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. We are not” slip op. at 3

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

    “[a]s our reviewing court’s predecessor stated, for anticipation, the prior art reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).” slip op. at 3

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

    “Yamamoto, the Petition does not state that Koike could be combined with the admitted prior art in the patent as would be required to prove obviousness. Nor does the Petition state a rationale for combining Koike or Yamamoto with the admitted prior art in the patent as also would be required to prove obviousness. Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000). Further, in its anticipation ground, the Petition does not state that the “opening” was within the knowledge of one of ordinary skill such that it could be combined with the disclosure of Koike for the purpose of anticipation. An argument that a particular limitation in a claim is a “point of novelty” does not relieve the Petitioner from showing each element of the claim is in the prior art and that the elements would have been combined with each other by one of ordinary 4 skill. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102”). Thus, we are not persuaded by this argument.” slip op. at 4

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 5,995,176
• Coalition For Affordable Drugs Ix LLC v. Bristol-Myers Squibb CompanyInstitution denied
  PTAB · Feb 22, 2016 · IPR2015-01723 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was anticipated by or obvious over Fevig I or Fevig II.

  RulingsInstitution decision

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

    “renders the challenged claims of the ’208 patent obvious under 35 U.S.C. § 103. Pet. 54–58. Petitioner’s argument, however, relies in part on the rejection of patent application claims in Fevig II over another prior art reference, the relevance of which is not sufficiently articulated by Petitioner, apart from Petitioner’s discussion of Merck v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). Id. at 56–57. More fundamentally, Petitioner’s obviousness argument neither analyzes the facts of the present case in view of the Graham factors nor explains sufficiently why the challenged patent claims would have been obvious to one of ordinary skill in the art. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–420 (2007). Petitioner does not offer a proper obviousness analysis, relying instead on a perfunctory reference to its anticipation argument, and arguing that the facts of the present case are “directly analogous to the facts in Merck.” Pet. 56–58.” slip op. at 16

  • BurdenNot shown unpatentable

    “technology.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012). On the one hand, “when the class of compounds that falls within the genus is so limited that a person of ordinary skill in the art can ‘at once envisage each member of this limited class,’ . . . a reference describing the genus anticipates every species within the genus.” In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (quoting Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1376 (Fed. Cir. 2006)) (emphasis added). However, where “the number of compounds actually disclosed by [the asserted prior art] numbers in the millions (including all proposed alternative substituents),” the prior art genus cannot anticipate a later species claim. Eli Lilly, 471 F.3d at 1376. A person of ordinary skill in the art would understand to look at any expressed “pattern of preferences” in the prior art, such as preferred embodiments, in assessing the scope of the generic disclosure. See, e.g., Sanofi-Synthelabo, 470 F.3d at 1377. Therefore, to anticipate a later-claimed species, a pattern of preferences or other related teaching or suggestion must lead to a genus small enough that a person of ordinary skill in the art would at once envisage the claimed species. Sanofi-Synthelabo, 550 F.3d at 1083; Prelim. Resp. 19–21.” slip op. at 10

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

    “technology.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012). On the one hand, “when the class of compounds that falls within the genus is so limited that a person of ordinary skill in the art can ‘at once envisage each member of this limited class,’ . . . a reference describing the genus anticipates every species within the genus.” In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (quoting Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1376 (Fed. Cir. 2006)) (emphasis added). However, where “the number of compounds actually disclosed by [the asserted prior art] numbers in the millions (including all proposed alternative substituents),” the prior art genus cannot anticipate a later species claim. Eli Lilly, 471 F.3d at 1376. A person of ordinary skill in the art would understand to look at any expressed “pattern of preferences” in the prior art, such as preferred embodiments, in assessing the scope of the generic disclosure. See, e.g., Sanofi-Synthelabo, 470 F.3d at 1377. Therefore, to anticipate a later-claimed species, a pattern of preferences or other related teaching or suggestion must lead to a genus small enough that a person of ordinary skill in the art would at once envisage the claimed species. Sanofi-Synthelabo, 550 F.3d at 1083; Prelim. Resp. 19–21.” slip op. at 10

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

    “renders the challenged claims of the ’208 patent obvious under 35 U.S.C. § 103. Pet. 54–58. Petitioner’s argument, however, relies in part on the rejection of patent application claims in Fevig II over another prior art reference, the relevance of which is not sufficiently articulated by Petitioner, apart from Petitioner’s discussion of Merck v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). Id. at 56–57. More fundamentally, Petitioner’s obviousness argument neither analyzes the facts of the present case in view of the Graham factors nor explains sufficiently why the challenged patent claims would have been obvious to one of ordinary skill in the art. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–420 (2007). Petitioner does not offer a proper obviousness analysis, relying instead on a perfunctory reference to its anticipation argument, and arguing that the facts of the present case are “directly analogous to the facts in Merck.” Pet. 56–58.” slip op. at 16

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,967,208
• Funai Electric Co., Ltd. / Samsung Display Co., Ltd. v. Gold Charm Ltd.Institution denied
  PTAB · Jan 11, 2016 · IPR2015-01448 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution for claims 1 and 3–6 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “III. CONCLUSION The information presented does not show that there is a reasonable likelihood that Petitioner would prevail at trial with respect to at least one 17 claim of the ’176 patent, based on any grounds presented in the Petition. On this record, we deny the petition for inter partes review of claims 1 and 3–6. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 17

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “The current situation does not require us to assess the merits of the real parties in interest issue because, as we explain below, the dispositive issue in this proceeding is whether Petitioner has shown a reasonable likelihood of success on the merits of the grounds presented in the Petition. Consequently, we need not reach and, therefore, do not address whether Petitioner identifies all real parties in interest in its Petition, as required by § 312(a)(2).” slip op. at 3

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir. 2015) (“Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, and on this record, none of the claim terms require an express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy).” slip op. at 5

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

    “As our reviewing court’s predecessor stated, for anticipation, the prior art reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference discloses within the four corners of the document not only all of the 9 limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102”). We determine that Petitioner has not shown sufficiently that all the limitations of claim 1 are arranged or combined in Koike in the same way as in claim 1.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,995,176
• Mastercard International Incorporated v. John D’AgostinoInstitution denied
  PTAB · Mar 7, 2014 · CBM2013-00058 · APJ Kalyan K Deshpande · CBM · Institution

  The Board denied institution on claims 1-30 because Cohen and Flitcroft did not qualify as prior art for a covered business method review under AIA § 18(a)(1)(C).

  RulingsInstitution decision

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

    “THRESHOLD—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. Petitioner challenges the patentability of claims 1-30 of the ’486 patent under 35 U.S.C. §§ 102 and 103. Taking into account Patent Owner’s preliminary response, we determine that the information presented in the petition does not demonstrate that it is more likely than not that the challenged claims are unpatentable. Pursuant to 35 U.S.C. § 324(a), we deny the institution of a covered business method patent review as to claims 1-30 of the ’486 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “neither Cohen nor Flitcroft was published prior to the effective filing date of the ’486 patent. As such, we agree with Petitioner that both Cohen and Flitcroft only qualify as § 102(e) references. Accordingly, neither Cohen nor Flitcroft qualifies as prior art, for a covered business methods review, under Section 18(a)(1)(C) of the AIA. Petitioner does not direct us to any further evidence to demonstrate that Cohen and Flitcroft qualify as prior art under Section 18(a)(1)(C) of the AIA. Instead, Petitioner argues that the Board previously has instituted a covered business method patent review on the basis of a reference that qualifies under § 102 (e). Pet. 15, n. 6 (citing CBM2013-00008, paper 20, 20-21, 35). Nonetheless, Section 18 (a)(1)(C) of the AIA governs what qualifies as prior art in this proceeding, and in that earlier Board proceeding the Board issued a clarifying order, effectively amending the decision to institute and withdrawing the previously instituted ground based on the § 102(e) reference, reasoning that the reference does not qualify as prior art in CBM proceedings under Section 18(a)(1)(C) of the AIA. See CBM2013- 00008, paper 24, 2-3. Because Petitioner has not demonstrated that Cohen or Flitcroft qualifies as prior art under Section 18(a)(1)(C) of the AIA, we are not persuaded that Petitioner demonstrates that it is more likely than not that claims 1-15 and 22-30 are unpatentable as being anticipated by Cohen or Flitcroft. We similarly are not persuaded that Petitioner demonstrates that it is more likely than not that claims 16-21 are unpatentable as being obvious over Cohen or Flitcroft, and Musmanno.” slip op. at 9

  § 102 anticipation
  Patents in suitUS 7,840,486

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.