- Axalta Coating Systems, LLC v. PPG Industries Ohio, Inc.Institution deniedPTAB · Sep 12, 2022 · IPR2022-00676 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–19 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“would have had “at least a Bachelor’s or Master’s degree in the field of polymer chemistry, polymer coatings, materials science and/or a related field and at least two years of practical experience in the development of coating systems for consumer products.” Pet. 11. For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s definition of a POSA, which is consistent with the scope and content of the ’505 Patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not need to resolve any claim construction disputes for purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in Kasari or Hall would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[Kasari] and Kondo each teach multi-layer systems with a transparent colored middle layer that can be used in the automobile industry” (Pet. 20) and makes a similar assertion about Hall and Kondo (Pet. 48), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to the intermediate coating layer of Kasari or Hall that a POSA would have applied Kondo’s teachings to the organic pigments that may be used in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39–47, 3:2–9. In contrast, Kasari and Hall both teach an intermediate coating layer that may contain an organic or inorganic pigment. Ex. 1009, 9:50–64; Ex. 1010 ¶ 32. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in the intermediate coating layer of Kasari or Hall. Petitioner also does not explain why a POSA would rely on the particle size of Kondo’s particles in isolation from Kondo’s teaching of inorganic pigments as the ultra-fine particles. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,981,505 - Axalta Coating Systems, LLC v. PPG Industries Ohio, Inc.Institution deniedPTAB · Sep 12, 2022 · IPR2022-00675 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Axalta did not show a reasonable likelihood that claims 1–19 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“for combining the teachings of EP ’931 and Kondo in a manner that would result in the claimed invention. Petitioner does not show sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in EP ’931 would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[b]oth EP ’931 and Kondo teach multi-layer systems intended for use in the automobile industry” (Pet. 20), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to EP ’931’s intermediate coating layer that a POSA would have applied Kondo’s teachings to the organic pigments in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39– 47, 3:2–9. In contrast, EP ’931 teaches an intermediate coating layer containing organic pigments that interact with metallic flake in the base coat to provide a color shift that varies with viewing angle. Ex. 1005, 6:41–47. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in EP ’931’s color-shifting intermediate coating layer. Nor does Petitioner address whether or how applying Kondo’s particle size teaching to EP ’931’s intermediate layer would affect the color-shifting property of that layer. Petitioner also does not explain why a POSA would rely on the particle size of Kondo’s particles in isolation from Kondo’s teaching of inorganic pigments as the ultra-fine particles. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“for combining the teachings of EP ’931 and Kondo in a manner that would result in the claimed invention. Petitioner does not show sufficiently that a POSA looking to improve a three-layer coating for automobiles as disclosed in EP ’931 would have looked to Kondo, which teaches laminated glass for windshields. Although Petitioner asserts that “[b]oth EP ’931 and Kondo teach multi-layer systems intended for use in the automobile industry” (Pet. 20), such high-level similarity is not a sufficient obviousness rationale. See Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of [asserted references] as both falling within the same alleged field . . . without more, is not enough for [petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion.”). Petitioner fails to show that Kondo’s interlayer for bonding two glass plates is sufficiently relevant to EP ’931’s intermediate coating layer that a POSA would have applied Kondo’s teachings to the organic pigments in the intermediate coating layer. Kondo teaches a glass-bonding interlayer containing ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation, without adversely affecting the bond strength of the interlayer or the haze, radio transmittance, transparency, and durability of the glass laminate. Ex. 1006, 2:25–31, 2:39– 47, 3:2–9. In contrast, EP ’931 teaches an intermediate coating layer containing organic pigments that interact with metallic flake in the base coat to provide a color shift that varies with viewing angle. Ex. 1005, 6:41–47. Petitioner does not provide a sufficient reason why a POSA would consider Kondo’s teaching about ultra-fine inorganic particles for providing colorlessness or a color tone, heat insulation, and ultraviolet ray insulation in a glass-bonding layer, when selecting organic pigments for use in EP ’931’s color-shifting intermediate coating layer. Nor does Petitioner address whether or how applying Kondo’s particle size teaching to EP ’931’s intermediate layer would affect the color-shifting property of that layer. Petitioner also does not explain why a POSA would rely on the particle size” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“POSA would combine EP ’931 and Kondo and that the proposed combination is based on impermissible hindsight. Id. at 33–39. Patent Owner argues that Grubenmann teaches away from the claimed subject matter and does not support Petitioner’s contentions. Id. at 16, 40–41. Patent Owner argues that JP ’535 does not cure the deficiencies in EP ’931 and Kondo because JP ’535 teaches opaque, hiding layers for concealment of a substrate and teaches away from a transparent layer. Id. at 17–18, 42–44. After considering the parties’ arguments and evidence, we agree with Patent Owner that Petitioner does not make a sufficient showing of obviousness. Our reasoning is two-fold. First, Petitioner’s EP ’931-led grounds are based on a hindsight-biased view of the teachings of Grubenmann and unsupported assertions about the teachings of Kondo and ’JP 535. Second, Petitioner fails to provide a sufficient, non-hindsight biased rationale for combining the three-layer coating of EP ’931 with the teachings of Kondo, Grubenmann, and JP ’535 regarding particle size in a manner that would have led a POSA to the claimed invention. We address each of these shortcomings below.” slip op. at 13
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,981,505 - Home Depot U.S.A., Inc. v. Lynk Labs, Inc.Institution deniedPTAB · May 27, 2022 · IPR2022-00143 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR challenging claims 1–3, 5, 7–10, 12, 14–17, and 19 under § 314(a), based on its General Plastic analysis of the parallel PGR petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied discretionary otherInstitution denied
“that Petitioner challenges the priority date of the ’341 patent. See PGR2022- 00009, Paper 1 at 16–23; CTPG 59 (indicating a priority date dispute could justify multiple petitions). Petitioner does not, however, differentiate its Petitions based on this issue—both Petitions apply the same prior art combinations (albeit with respect to different sets of claims), none of which turns on a determination as to the priority date of the challenged claims. Although the priority issue is raised by the Petition in PGR2022-00009, Petitioner is not proposing alternate grounds based on different priority dates for the challenged claims at issue. As noted above, both Petitions raise the same grounds and have the same exact prior art combinations. To institute trial in both the PGR and the IPR would mean identical prior art challenges with potentially different records. Petitioner contends it would be easy enough for us to consolidate trial. See Pet. Ranking 4. We disagree. Petitioner’s argument for consolidation misses the point of the Trial Practice Guide’s admonition that “multiple petitions by a petitioner are not necessary in the vast majority of cases.” CTPG 59. In effect, Petitioner proposes consolidation as an efficiency, only after multiplying the parties’ expenses and expending Board resources with an identical subset of challenges. Petitioner also overlooks that consolidation does not completely eliminate inefficiencies, as it has been the Board’s experience that consolidated cases inevitably expend more Board resources than a single case.” slip op. at 11
Discretionary denialPatents in suitUS 10,932,341 - Luxshare Precision Industry Co., Ltd. v. Amphenol Corp.Institution deniedPTAB · May 3, 2022 · IPR2022-00132 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution of IPR on claims 1–32 under § 314(a), finding the Fintiv factors favoring denial outweighed those against it.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherInstitution denied
“resolution of the ITC Litigation. Prelim. Resp. 13; Pet. 7. The ITC Litigation, however, has proceeded to an initial determination and Petitioner presents no evidence that it has requested a stay of the ITC Litigation or that a stay is likely. Prelim. Resp. 17 (Patent Owner noting the March 4, 2022, due date for the initial determination in the ITC Litigation). Accordingly, factor 1 weighs in favor of discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“denial because, among other reasons, “despite being on notice that [Patent Owner] challenges whether Cai discloses a ‘lead assembly’ as required by every Challenged Claim, the Petition fails to adequately explain how that limitation is satisfied by the prior art.” Prelim. Resp. 25. Each independent claim of the ’767 patent requires a “first lead assembly” and a “second lead assembly.” Ex. 1001, 31:9–32, 33:27–55, 34:47–35:8, 36:15–47. Upon review of the parties’ arguments and supporting evidence, we find that Patent Owner raises significant questions as to whether Cai discloses either of those limitations. First, Patent Owner presents evidence that the term “lead assembly” in the ’767 patent is used to denote a sub-unit that is assembled prior to the formation of the connector, and presents evidence that each of the elements of Cai identified by Petitioner as making up the first and second lead assemblies are assembled individually, and not as an identifiable sub-unit of the claimed connector. Prelim. Resp. 37–39; Ex. 1001, 10:52–57 (noting that lead assembly 610A is “formed” by, for example, molding housing member 612A over a portion of the conductive elements in lead assembly 610A); Ex. 1004, 22 (Cai explaining how and when each individual structure is assembled into the disclosed connector)6.” slip op. at 13
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,381,767 - Guangdong Mic-Power New Energy Co. Ltd. / Peag LLC D/B/A Jlab Audio et al. v. Varta Microbattery GmbHInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01207 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“one of ordinary skill in the art would have sought to modify the battery of Comparative Example 1 to arrive at the subject matter of claim 1. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“one of ordinary skill in the art would have sought to modify the battery of Comparative Example 1 to arrive at the subject matter of claim 1. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)).” slip op. at 15
§ 103 obviousnessPatents in suitUS 10,804,506 - Guangdong Mic-Power New Energy Co. Ltd. / Peag LLC et al. v. Varta Microbattery GmbHInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01206 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any challenged claim of the ’776 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“agree with Patent Owner that Petitioner fails to adequately explain why one of ordinary skill in the art would have sought to use the welding technique of Martin when assembling the battery of Comparative Example 1. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)). Nor has Petitioner demonstrated sufficiently that one of ordinary skill in the art would have had a reasonable expectation of success in combining Kannou and Martin to arrive at the subject matter of claim 1. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (explaining that a petitioner must demonstrate that one of ordinary skill in the art would have had a reasonable expectation of success in combining the identified references to meet the limitations of the claimed invention).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party asserts that any terms of the ’776 require construction for purposes of this Decision. Pet. 24; Prelim. Resp. 12. And, upon review of the parties’ arguments and supporting evidence, we agree that no terms of the ’776 patent require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting 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 7
Claim construction§ 103 obviousnessPatents in suitUS 10,971,776 - Autostore System Inc. v. Ocado Innovation LimitedInstitution deniedPTAB · Oct 8, 2021 · IPR2021-00798 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“storage locations, but that this grid is defined by a structural framework. Ex. 1001, 14:5–6. Thus, we agree with Patent Owner that the language of claims 1 and 23 strongly suggests that the structural framework defines the grid of storage locations, and not merely that the structural framework provides open areas within which storage containers could be arranged in a grid-like pattern.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the parties’ arguments and evidence, for the reasons set forth below, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed in Section II.A.2 above, we construe “a structural framework defining a grid of storage locations,” as recited in claims 1 and 23, to require that a “structural framework” define the grid of storage locations, as opposed to these locations being defined merely by the orientation or location of stacked containers. Petitioner identifies no Accordingly, we are not persuaded that Petitioner demonstrates a reasonable likelihood that independent claims 1 and 23 are anticipated by Lert.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“would have been obvious over Lert. Pet. 21–53. Petitioner’s obviousness arguments with respect to these claims do not resolve the issues noted above with respect to independent claims 1, 13, and 23. In particular, Petitioner provides no persuasive argument that one of ordinary skill in the art would have modified Lert to have a structural framework that defines the storage locations or to have delivery containers stored within storage containers and delivered to picking workstations. Accordingly, Petitioner has not shown a reasonable likelihood that claims 1–8, 13–20, and 23 would have been obvious over the disclosures of Lert.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,796,080 - TCT Mobile (US), Inc. / TCT Mobile (US) Holdings, Inc. et al. v. Fundamental Innovation Systems International LLCInstitution deniedPTAB · Aug 30, 2021 · IPR2021-00598 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over Morita and the knowledge of a person of ordinary skill.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“current that exceeds the USB limits, Petitioner’s assertion that it would be obvious for the videophone to detect an SE1 signal provided by Morita’s adapter is unpersuasive. Rather, we are persuaded by Patent Owner’s arguments that the proposed combination of Morita and the implementation of an SE1 signal as the “abnormal condition” would render Morita inoperable for its intended purpose. Prelim. Resp. 5161. Morita is configured to maintain USB communication between the mobile device and the hub, and with the external peripherals. Morita ¶¶ 18, 19, 22. According to Petitioner, however, the SE1 signal renders normal USB communication impossible. Pet. 24; Baker Decl. ¶¶ 8182. Thus, it is unreasonable to alter Morita’s configuration to include a signal that would render inoperable the very USB communications Morita is designed to maintain. Patent Owner correctly argues that a redesign of Morita that changes the principles under which Morita was designed to operate is evidence of non-obviousness. Prelim. Resp. 5253 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundNot shown unpatentable
“current that exceeds the USB limits, Petitioner’s assertion that it would be obvious for the videophone to detect an SE1 signal provided by Morita’s adapter is unpersuasive. Rather, we are persuaded by Patent Owner’s arguments that the proposed combination of Morita and the implementation of an SE1 signal as the “abnormal condition” would render Morita inoperable for its intended purpose. Prelim. Resp. 5161. Morita is configured to maintain USB communication between the mobile device and the hub, and with the external peripherals. Morita ¶¶ 18, 19, 22. According to Petitioner, however, the SE1 signal renders normal USB communication impossible. Pet. 24; Baker Decl. ¶¶ 8182. Thus, it is unreasonable to alter Morita’s configuration to include a signal that would render inoperable the very USB communications Morita is designed to maintain. Patent Owner correctly argues that a redesign of Morita that changes the principles under which Morita was designed to operate is evidence of non-obviousness. Prelim. Resp. 5253 (citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“support the premise that the adapter would need a signal to indicate the so-called “charge-only” mode. Rather, Patent Owner persuasively shows that Morita has no need for such a signal. For instance, Morita’s USB port 21 (connected to the videophone) derives its power from power supply connection 22 and charges that mobile device whether there is a PC host or not. See Prelim. Resp. 3839 (citing Morita ¶¶ 14, 16; Ex. 2009 ¶¶ 8991, 119). And Morita’s adapter is configured as a self-powered hub and USB port 21 would be a high-powered hub port. Id. at 3941 (citing Ex. 1009, 134, 136, Fig. 7-33, 171; Ex. 2009 ¶¶ 9091, 119). Thus, Morita already provides high-rate charging of the videophone, without having to signal how much power or current the videophone may draw in any of Morita’s modes of operation. As Dr. Kenneth Fernald (Patent Owner’s declarant) opines, and we agree, because the ports of Morita’s adapter operate as high-power hub ports in the first and second modes of operation, there is no situation in Morita “where USB port 21 would not be able to meet the current demanded by a high-power function, and need a signal to indicate to the mobile device that it is connected to a high-power hub port or not connected to a lower-power hub port.” Ex. 2009 ¶ 119 (“Fernald Decl.”). We credit this testimony. It is consistent with Morita’s disclosure and the USB Specification as noted by Dr. Fernald. Id.” slip op. at 11
- Skill levelOther
“have either a bachelor’s degree in electrical engineering, computer science, or a related field, plus 3-5 years of experience in design of systems with Universal Serial Bus (‘USB’) or equivalent buses that follow the USB 2.0 and earlier specifications, or a master’s degree in electrical engineering, computer science, or a related field, plus 1-2 years of experience in design of systems with USB or equivalent buses that follow the USB 2.0 and earlier specifications at the time of the ’766 patent’s priority date.” Pet. 1415 (citing Becker Decl. ¶ 68). Patent Owner states that “[f]or purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.” Prelim. Resp. 20. At this juncture, we do not find it necessary to define the level of skill, especially when neither party raises a dispute on the issue.” slip op. at 7
§ 103 obviousnesscites GrahamPatents in suitUS 8,232,766 - PTAB · Mar 4, 2021 · CBM2018-00040 · APJ Christopher G Paulraj · CBM · Rehearing
The Board denied Petitioner’s second rehearing request and left in place its denial of institution because the patent’s CBM review eligibility was not subject to judicial review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our denial of institution in this proceeding in light of the Federal Circuit’s decision in SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019). Paper 19. We also authorized Patent Owner to file an opposition to Petitioner’s second request for rehearing. Paper 20. Subsequently, the Supreme Court granted a petition for certiorari, vacated the Federal Circuit’s first opinion in the SIPCO case, and remanded the case “for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP,” 140 S. Ct. 1367 (2020). On remand, the Federal Circuit determined that the issue of whether a patent qualifies for CBM review is not subject to judicial review. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 870 (Fed. Cir. 2020). Accordingly, because the circumstances that warranted further reconsideration of our denial of institution no longer hold true, we hereby decline to consider the second request for rehearing. For the foregoing reasons, Petitioner’s second request for rehearing is denied. Our original decision to deny institution based on lack of CBM review eligibility therefore stands.” slip op. at 2
NonePatents in suitUS 6,758,370 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686
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.