- Honeywell International Inc. v. DSM IP Assets B.V.Institution deniedPTAB · Aug 21, 2024 · IPR2024-00493 · APJ Erica A Franklin · IPR · Institution
The Board denied institution because Honeywell did not show a reasonable likelihood that claims 1–9 were unpatentable over any of its three obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its obviousness challenge of independent claim 1 or dependent claims 2–9 over the combination of Simmelink and Section 73.1015.” slip op. at 23
- Skill levelOther
“PHOSITA) at the time of the ’532 patent “would have had at least a Bachelor’s degree in the field of chemistry, chemical engineering, polymer chemistry, or materials science and at least three years of relevant work experience in the field of high strength fibers.” Pet. 8 (citing Ex. 1003 ¶ 18). Petitioner adds that individuals with different educational backgrounds could still be of ordinary skill in the art if they have “additional experience [that] compensates for a deficit in their education and experience stated above.” Id. According to Patent Owner, a person or ordinary skill in the art, would have (i) a bachelor’s degree in chemistry, polymer chemistry, materials science, chemical engineering, or biomedical engineering and (ii) three years of experience in designing and manufacturing gel-spun UHMWPE yarns. At this level of skill, a PHOSITA would have a detailed understanding of the information provided in the Technology Background, Section II, supra, including (i) the differences between linear HDPE and UHMWPE, (ii) the history underlying Section 73.1015 and the early failures of the 1960s-era blue, melt-extruded polyethylene sutures, (iii) why the molecular orientation of polyethylene molecules leads to strong yarns in the special case of gel-spun UHMWPE, and (iv) the challenges associated with coloring gel-spun UHMWPE yarns, especially for end-use medical applications. Prelim. Resp. 33–34. We note that the parties’ proposed definitions are largely similar, except that Patent Owner additionally recognizes a Bachelor’s degree in biomedical engineering and requires experience in designing and manufacturing gel-spun UHMWPE yarns. In any event, we do not need to the same under either proposed definition.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“a skilled artisan would have understood that the “gel spinning” process recited in the claims requires the use of a solvent during the spinning process. Indeed, the Specification describes this term, as follows: Gel spinning is understood to include at least the steps of spinning filaments from a solution of ultra-high molecular weight polyethylene in a spin solvent; cooling the filament obtained to form a gel filament removing at least partly the spin solvent from the gel filament; removing at least partly the spin solvent from the gel filament; and drawing the filament in at least one drawing step before during or after removing spin solvent. Ex. 1001, 2:31–37. We recognize the inventor’s lexicography as dispositive with respect to the meaning of the term “gel spinning.” See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Claim 1 describes gel spinning as the manner by which the filaments comprised in the claimed colored multi-filament yarn are obtained. This, on its face, is a product-by-process claim element because it describes the filament structure being obtained in a particular way, i.e., by gel spinning. See Kamstrup A/S v. Axioma Metering UAB, 43 F.4th 1374, 1382 (Fed. Cir. 2022) (agreeing with the Board that “cast in one piece” is a product-by-process claim element as it describes the structure being cast “in a particular way”). For this element to be limiting, it must impart “structural and functional differences” that distinguish the claimed product from the prior art. See Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009). Patent Owner argues persuasively that gel spinning imparts structural and functional differences to the claimed product because the process “creates overlap between polyethylene molecules within the UHMWPE filaments that maximizes the intermolecular Van der Waals interactions, resulting in highly crystalline filaments with high tensile strength.” Prelim. Resp. 38, 22 (citing Ex. 1014, 62–66). According to Patent Owner, “the structure of the gel spun UHMWPE is substantially different from other types of UHMWPE such as compression-molded and ram-extruded UHMWPE used to make joint replacements and other orthopedic implants.” Id. at 38.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,280,532 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Jul 1, 2024 · IPR2024-00454 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that the Reavey–Chandhri combination met limitation 1h.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 11–15. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,003,315 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Jul 1, 2024 · IPR2024-00455 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that Reavey and Chandhri disclose or suggest limitation 1[h].
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. And as a result, we find Petitioners have not demonstrated a reasonable likelihood of proving that the Reavey/Chandhri combination render independent claims 1 and 28 unpatentable, which is a deficiency that necessarily extends therethrough to all of the dependent claims challenged in all three grounds.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 11 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 12–16. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12
- BurdenDecided for patent owner
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,003,315 - Nespresso USA, Inc. v. K-Fee System GmbHInstitution deniedPTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.
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). 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.” For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,542,094 - US Conec Ltd. v. Senko Advanced Components, Inc.Institution deniedPTAB · Jun 5, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6–16, 19, and 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
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is undisputed. Prelim. Resp. 38. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’190 patent and the asserted prior art references.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“consistent with or supported by Nakagawa’s teachings. Dr. Brennan modifies Nakagawa Figure 4B by adding yellow highlighting in the form of a cylinder and opines that the added highlighting represents an inner round surface extending along a longitudinal axis within tubular main body portion 41. Ex. 1016 ¶¶ 164–165. Dr. Brennan’s testimony does not take into account that the circular shape highlighted yellow in his annotation of Figure 4E is recessed within boot 40 and does not extend to the proximal end of the boot.5 Nakagawa does not support Dr. Brennan’s addition of a yellow-highlighted cylindrical surface extending to the proximal end of the boot, as depicted in his annotation of Figure 4B.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Nakagawa’s deficiency is apparent from Figure 2. As noted above, claim limitation 1.3.3 recites an “inner round surface defining a proximal end portion of the boot passageway.” Dr. Brennan testifies “As shown in Figures 4B and 2 of Nakagawa, reproduced above and below, respectively, a POSITA would have understood that Nakagawa’s inner round surface defines the proximal end at the center of the rotatable boot assembly.” Ex. 1016 ¶ 166. Annotated version of Figure 2 of Nakagawa, above, is a cross-sectional view of optical connector 1 having, among other things, boot 40 (Ex. 1007 ¶¶ 22, 46) and includes red highlighting of boot 40 and yellow highlighting of a 5 Like Petitioner and Dr. Brennan, we use the term “proximal end” consistent with the definition in the ’190 patent. Ex. 1016 ¶ 166 n.2. surface within tubular main body portion 41 of boot 40. Id. ¶ 56; Ex. 1016 ¶ 166. Relying on the testimony of Mr. Pearson, Patent Owner argues that the “inner round surface” of Nakagawa relied on by Petitioner “defines an intermediate portion of a boot passageway, that is distal of the proximal end portion of the boot passageway.” Prelim. Resp. 57 (citing Ex. 2007 ¶ 120). Upon consideration of Petitioner’s arguments and evidence and Patent Owner’s arguments and evidence, we agree with Patent Owner. As shown in Figure 2, the highlighted yellow surface relied on by Petitioner is recessed and does not define “a proximal end portion of the boot passageway” as recited in limitation 1.3.3. Dr. Brennan identifies the “boot passageway” as extending the entire length of Nakagawa’s boot 40. Ex. 1016 ¶ 164 (annotation of Nakagawa Figure 4B identifying boot passageway with dotted blue line). Dr. Brennan does not, however, identify an inner round surface that defines a proximal end of the boot passageway. We find that Dr. Brennan’s testimony (id. ¶ 166) is not supported by the teachings of Nakagawa and, therefore, we give little to no weight to Dr. Brennan’s testimony concerning an inner round surface. For the foregoing reasons, we determine that Petitioner has not shown” slip op. at 15
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,061,190 - Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution deniedPTAB · May 28, 2024 · IPR2024-00481 · APJ Brian D Range · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 12, 14, or 16–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 10–11. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 18. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Lane’s orientation information would generate information indicative of a current mode of operation as claim 18 requires. Instead, we agree with Patent Owner that Petitioner has not carried its burden to establish a reasonable likelihood of prevailing in showing that a person of ordinary skill in the art would have, based on the teachings of Lane or other cited art, used an accelerometer that generates orientation information indicative of the current mode of operation. See Prelim. Resp. 35–42. Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. Lane does not teach using the accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 29.” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,563,229 - Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution deniedPTAB · May 28, 2024 · IPR2024-00480 · APJ Brian D Range · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–11, 19–21, and 23–25 were obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 9–10. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 17. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6:6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. at 5:25–31. Lane does not teach using an accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 30. The spatial orientation of Lane’s keyboard or screen relative to the earth’s gravity, however, does not reliably9 indicate the device’s current display mode because, at any given moment, the Lane device could be held at different angles such that orientation relative to gravity does not correlate with the display mode. For example, Lane Figure 13 teaches that its keyboard could be at an angle (relative to earth’s gravity) while in laptop mode. Ex. 1005, Fig. 5; Prelim. Resp. 41–42. We reproduce Lane Figure 13 as annotated by Patent Owner below.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,563,229 - PTAB · May 24, 2024 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Remand
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under any asserted ground.
RulingsRemand decision- RemandOther
“Accordingly, the Director instructed us to “determine whether Petitioner has demonstrated that Figure 1 of Godefroy ‘is clear on its face’ or would have reasonably suggested the placement of Godefroy’s sacrificial anode ‘within 10 inches’ of the hot liquid inlet.” Id. at 9. “In making this determination,” the Director instructed us to “consider whether the expert testimony provides sufficient ‘technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.’” Id. In addition, although the Director’s decision “is limited to [our] application of Hockerson to the grounds in the Petition involving Godefroy,” the Director instructed us also to “consider what effect, if any, this decision has on the other asserted grounds.” Id. Finally, the Director instructed us to “set forth [our] interpretation” of “the limitation ‘within 10 inches of a hot liquid inlet to the radiator.’” Id. at 8 n.4.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“original decision, the Director’s decision, and the evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“evidence. The challenged claims require that a sacrificial anode be placed within a certain distance—10 inches—of the hot liquid inlet, and, because the inlet has some non-zero size, it might be possible for an anode to be within that distance from some parts, but not from all parts, of the inlet. Accordingly, specifying the center axis of the inlet as the point from which to measure the distance to the anode improves on the plain words of the claim in terms of achieving the claim’s objective of placing the anode within a specified distance of the inlet. Moreover, when discussing the distance from the inlet to the anode, the specification of the ’494 patent uses the language “within 10 inches in any direction of the center axis of the inlet connection.” Ex. 1001, 7:61–64. Thus, the intrinsic evidence supports adopting Petitioner’s claim construction. Petitioner’s declarant, Dr. Medlin, relies on Petitioner’s proposed construction. See, e.g., Ex. 1004 ¶¶ 20 (noting that the construction “within 10 inches of the center axis of [a] hot liquid inlet” “ha[s] been adopted by Petitioner”), 96 (“the sacrificial anodes contained in each of the turbulators 2 would be placed within 10 inches of a center axis of a hot liquid inlet to the radiator of Tomosada”), 144 (“A POSITA would understand from Figure 1 that the sacrificial anode 14 is within 10 inches of a center axis of a hot liquid inlet”), 267 (“These teachings would further motivate a POSITA to located the sacrificial anode 12 within 10 inches of a center axis of the hot liquid inlet.”). This support for Petitioner’s proposed construction provides further reason for us to adopt it. Because it is supported by the intrinsic evidence of record, because Patent Owner proposes no alternative construction, and because Petitioner’s expert supports it, we adopt the construction of “within 10 inches of a hot liquid inlet to the radiator” that Petitioner proposes. Thus, we construe this term as “within 10 inches of the center axis of a hot liquid inlet to the radiator.” In other words, when discussing the distance between a hot liquid inlet and a sacrificial anode, we interpret “hot liquid inlet” as “center axis of the hot liquid inlet.”” slip op. at 5
- BurdenNot shown unpatentable
“Inherency may be relied upon in arguing either anticipation or obviousness. Schering, 339 F.3d at 1377 (applying inherency in an anticipation context); Par Pharma. Inc. v. TWI Pharma., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (applying inherency in an obviousness context). In both cases, however, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Instead, “the limitation at issue necessarily must be present, or the natural result of the combination of elements expressly disclosed by the prior art.” Par Pharma., 773 F.3d at 1195–96. Here, Petitioner has not shown sufficiently that, in Godefroy, the sacrificial anode necessarily is placed within 10 inches of the center axis of the hot liquid inlet. Dr. Medlin testifies that Figure 1 of Godefroy shows that “an entirety . . . or at least a significant portion of the sacrificial anode 14, is within 10 inches of a center axis of the inlet.” Ex. 1004 ¶ 144. But we cannot say that Figure 1 of Godefroy is clear on its face, or reasonably suggests, that this is necessarily the case. There are no dimensions shown on Figure 1, so it is unclear from the figure what the diameter of pipe 12 is. If that diameter is larger than 20 inches, then it simply is untrue that “sacrificial anode 14 is . . . necessarily placed within 10 inches of a center axis of a hot liquid inlet to the radiator,” as Dr. Medlin testifies. Id. ¶ 361. As noted above, neither Petitioner nor Dr. Medlin relies on the hot liquid inlet of Godefroy having any particular diameter, and Godefroy is silent as to the diameter of its inlet. Pet. 69–70; Ex. 1004 ¶¶ 144, 359–361, 381–382, 406–408; Ex. 1008, 1–15. Moreover, as Patent Owner notes, there is a wide range of sizes of radiators, including automobile radiators, available. Prelim. Resp. 3–5; Exs. 2001–2003. In the absence of any testimony or other evidence that tends to show that radiator inlet pipes necessarily have diameters less than 20 inches, Petitioner has not shown sufficiently that the diameter of Godefroy’s inlet pipe is small enough to ensure that any portion of the anode necessarily is within 10 inches of the center axis of the inlet.” slip op. at 11
Claim constructioncites Phillips - Asustek Computer Inc. / Asus Global Pte. Ltd. et al. v. Litl LLCInstitution deniedPTAB · May 23, 2024 · IPR2024-00532 · APJ David Cotta · IPR · Institution
The Board denied institution on claims 1–10 and 23 because Petitioner did not show a reasonable likelihood that a skilled artisan would replace Lane’s hinge with Misawa’s single-pivot hinge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“defines a single longitudinal axis running along an interface between the display component and the base” where “the display component and the base are rotatable about the single longitudinal axis.” Ex. 1001, 17:15–21 (the “single axis limitation”). In each of its seven grounds, Petitioner asserts that this claim limitation would have been obvious because “a POSA would have been motivated and able to adapt the portable computer 10 of Lane to use a single-pivot hinge like the hinge 20 taught in Misawa.” Pet. 29; see also id. at 32 (“In the portable computer 10 of Lane modified to implement a singlepivot hinge like the hinge 20 of Misawa, the hinge would define a ‘single longitudinal axis.’”). Our decision turns on whether Petitioner has carried its burden to establish a reasonable likelihood of prevailing on its assertion that the POSA would have been motivated to use a single-pivot hinge, like that disclosed in Misawa, in Lane’s computer, as proposed in the Petition. For the reasons discussed below, we find that Petitioner has not carried its burden. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Having determined that Petitioner’s proposed modification provides a modest benefit, we now consider whether such modification has any drawbacks. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (explaining that, in an obviousness inquiry, “[t]he benefits, both lost and gained, should be weighed against one another.”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)). Here, by Petitioner’s own admission, modifying Lane’s hinge in the manner Petitioner proposes comes at the expense of the hinge’s ability to rotate through a full 360°, which allows Lane’s computer to function as a tablet. Pet. 17 (explaining that Misawa’s single axis hinge “can open beyond the stated 300° (but less than 360°)”), 29 (explaining that a dual-pivot hinge is “unnecessary except to allow the display component to rotate far enough to fold flat against the bottom of the base to deploy the portable computer in tablet mode”); Ex. 1004 ¶¶ 110 (testimony of Dr. Wolfe echoing statement in the Petition that Misawa’s hinge cannot rotate through the full 360°), 114 (testimony of Dr. Wolf explaining that “the use of a dualpivot hinge would make it easier to design a portable computer having a display that can rotate far enough to fold flat against the bottom of the base to deploy the portable computer in a tablet mode”); Ex. 1017, 3:5–14 (Lane, teaching that allowing 360° of rotation allows a laptop computer to function as a “pen-based computing tablet”).” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for patent owner
“motivated to replace Lane’s hinge with a single axis hinge because a single axis hinge is less expensive and more reliable than Lane’s biaxial decouplable hinge. Pet 29; Ex. 1004 ¶¶ 113, 114, 131 (testimony of Dr. Wolfe to the same effect). Patent Owner argues this proffered motivation is supported only by the conclusory testimony of Dr. Wolfe. Prelim. Resp. 21. Patent Owner also argues that neither Petitioner nor Dr. Wolfe attempts to explain or quantify just how much of a benefit using a simpler hinge provides. Id. We agree that Dr. Wolfe’s testimony on this point is somewhat conclusory. See, e.g., Ex. 1004 ¶¶ 113, 114, 131 (citing only limited supporting evidence). Nonetheless, we give Dr. Wolfe’s testimony some weight because it is consistent with the notion that a simpler device with fewer moving parts is likely to be somewhat less expensive and more reliable than a more complicated device. See Ex. 1016 ¶ 9 (prior art reference cited by Dr. Wolfe (Misawa), teaching that the mechanism of a hinge having a biaxial structure is “likely to be biaxial decouplable hinge with Misawa’s single axial hinge would provide a modest benefit.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art at the time of the ’688 Patent (“POSA”) would have had a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject, and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices. Alternatively, a POSA would have had an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the design and architecture of laptop computers and other portable electronic devices. A POSA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices, as well as designs of user interfaces employed and displayed by computer operating POSA could have acquired similar skills and knowledge by other means. Pet. 7 (citing Ex. 1004 ¶ 15). Patent Owner does not dispute Petitioner’s identification of the person of ordinary skill in the art. See generally Prelim. Resp. As Petitioner’s description of the person of ordinary skill is consistent with the subject matter of the ’688 patent and with the prior art of record, we apply it for purposes of this decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,289,688 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 15, 2024 · IPR2024-00142 · APJ John D Hamann · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–16 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 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). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’330 patent “would have had at least the equivalent of a bachelor’s degree in electrical engineering and one to two years of experience in the field of circuit design, particularly the design of circuits operating at high frequencies.” Pet. 4 (citing Ex. 1002 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’330 patent or identify any specific shortcoming in Petitioner’s definition. See Prelim. Resp. 7. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 4. This definition is consistent with the ’330 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner argues that “no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 8. However, Petitioner also cites to a Special Master Report and Recommendation on Claim Construction where “node” was construed to mean “a point of connection or intersection in an electrical circuit.” Id. at 9 (quoting Ex. 1015, 29). Patent Owner adopts this construction for purposes of this Decision on Institution. Prelim. Resp. 8. We find that this construction is consistent with the plain and ordinary meaning of the term “node.” We thus apply the construction as such to our analysis below, and we determine that we need not provide an express construction of any other claim term for purposes of this institution decision.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“[claim] limitation is found either expressly or inherently in a single prior art reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)). Moreover, “[t]o anticipate, the reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F. 3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,535,330
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.