- Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies LLCInstitution deniedPTAB · Dec 6, 2022 · IPR2022-01083 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claims on any ground asserted in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“it is used consistently throughout. First, in describing related prior art, the ’903 patent states that “[t]he through plug is constituted of an insulating material covering a sidewall of a through hole and a low electrical resistance metal material . . . in a columnar shape that is positioned so as to be surrounded by the insulating material and that serves as a conductive member.” Ex. 1001, 1:35–40. In describing its own drawings, reference numeral 15 consistently is used to refer to the “through plug.” Id. at 2:37– 52. Figures 1A and 1B “are views schematically showing the structure of a semiconductor device (semiconductor chip) according to an embodiment of the present invention.” Id. at 5:46–48, Figs. 1A, 1B. In these figures, reference numeral 15 refers to “[a] through plug.” Id. at 6:16. This through plug “is constituted of a columnar electric conductor 15a . . . and an insulation layer 15b . . . surrounding the electric conductor 15a.” Id. at 6:21–25. Similarly, reference numeral 15 refers to the “through plug” in Figures 1C, 2A, 2B, 3, 4, 5, 6, 7A, and 7B. Id. at 6:35–40, 7:10–38, 8:10– 17, 8:32–38, 8:65–9:43. Where it is referred to in these same parts of the ’903 patent, the conductive core is discussed as merely a portion of the through plug and is referred to by the reference numeral 15a. Id. Thus, the ’903 patent consistently defines the through plug as having two portions: both a conductive core and a surrounding insulation layer. This is true whether the patent is referring to either of its disclosed embodiments or the prior art. Based on this unambiguous usage, we determine that the ’903 patent defines the term “through plug” as including both a conductive core and a surrounding insulating layer. See Phillips, 415 F.3d at 1320–21 (“the specification ‘acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are not persuaded that the Petition adequately identifies how Christensen teaches or suggests a through plug as that term is used in the ’903 patent. As noted above, the ’903 patent requires a through plug to have both a conductive core and a surrounding insulating layer. It is clear on the current record that Christensen’s “conductive stud” could correspond to the conductive portion of such a through plug. Ex. 1033, 4:66–5:1 (“the stud 34 may comprise any number of conductive materials”). But Petitioner does not show sufficiently that Christensen teaches or suggests the surrounding insulating layer necessary to turn the conductive core into a through plug. First, Petitioner does not allege that Christensen teaches or suggests such a layer. Pet. 33–34. Second, Christensen discloses the use of “conductive materials” and “material[s] which promote[] adhesion to the surrounding oxide such as titanium or titanium nitride.” Ex. 1033, 4:66–5:1, 5:15–20. None of these materials are identified by Christensen as insulators. Id. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that Christensen alone teaches or suggests the through plug of the challenged claims. b. Christensen and Lin Petitioner also argues that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims. Pet. 34–36. Specifically, Petitioner argues that “[t]o the extent [it is determined] that Christensen alone is not sufficient because the conductive stud 34 does not extend all the way through wafer 12, Christensen in view of Lin renders obvious a ‘through plug.’” Id. at 34. According to this argument, “Lin teaches a backside process for forming ‘a conductive plug through a silicon’ wafer and an insulation layer,” and it would have been obvious to form such a plug “from the backside of the wafer 12 below [Christensen’s] conductive stud 34,” such that the combination of the two structures would form a conductive path all the way through the structure of Christensen’s Figures 8B and 9. Id. at 34–35 (emphasis omitted). As with the argument based on Christensen alone, however, this argument does not show sufficiently that the combination of Christensen and Lin teaches or suggests a through plug that has both a conductive core and a surrounding insulating layer. Lin describes its structure as a “conductive plug” and does not describe any insulation surrounding that structure. Ex. 1054, 1:60–64, 3:2– 34, 4:23–32, Fig. 7. “The conductive plugs” of Lin “typically compris[e] metal,” which Lin does not describe as an insulator. Id. at 3:21–25. Nor does Petitioner allege the presence of a conductive core surrounded by insulation either in Lin itself or in the combination of Lin and Christensen. Pet. 34–36. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“An invention is not obvious just ‘because all of the elements that comprise the invention were known in the prior art.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)). Instead, “a finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Id. (quoting Power-One, 599 F.3d at 1352). This rationale requires “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[I]t can be important to” include within this reasoning “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. Here, Petitioner offers two reasons to combine the teachings of Shim and Shirakawa. First, Petitioner argues that “Shim’s diffusion teachings would facilitate the formation of” Shirakawa’s collector layer. Pet. 65–66. On the present record, we do not find this reason sufficiently persuasive. Even though Shim does teach a way to make the n-GaAs that Shirakawa uses, Shirakawa teaches a different way to make the same material, and other prior-art references agree with Shirakawa. Ex. 1022, 1:34–40 (“silicon ions of a silicon layer formed on a GaAs substrate are diffused by means of ion-implantation method using little energy and annealing treatment”); Ex. 1005, 9:36–42 (first embodiment “collector layer” is “laminated on top of a semi-insulating GaAs substrate . . . by epitaxial growth process”), 12:47–48 (fourth embodiment made in same way as first embodiment); Ex. 1016, 8:7–19 (“a highly doped n type GaAs subcollector layer . . . [and other layers] are made to grow above a semiinsulating GaAs substrate . . . by a metal organic vapor phase epitaxial growth method”); Ex. 1025, 4:40–45 (teaching “[f]orming two flat epitaxial layers of gallium arsenide to obtain [a] collector,” including “a layer . . . of the n+ conductivity type and a layer . . . of the n -conductivity type” by “epitaxial growth . . . from the vapour phase or from the liquid phase”). The mere fact that Shim offers an alternative process does not, in the absence of a reason to adopt that alternative process, provide a reason for a person of ordinary skill in the art to make Shirakawa’s n-GaAs via Shim’s method rather than via Shirakawa’s own method. In addition, Patent Owner’s declarant, Dr. Peter Elenius, testifies that the ion implantation involved in Shim’s diffusion process would damage Shirakawa’s gallium arsenide in a way that would dissuade a person of ordinary skill in the art from using that process to produce the HBT of Shirakawa. Ex. 2001 ¶¶ 52–57. The other reason that Petitioner provides to combine the teachings of Shim and Shirakawa is that Shim’s diffusion “method us[es] little energy and annealing treatment.” Pet. 66 (quoting Ex. 1022, 1:34–40). Shim’s method is described as “diffus[ion] by means of ion-implantation method using little energy and annealing treatment,” which Shim distinguishes from earlier methods “widely used in the art,” which involved “ion-implantation . . . using high energy.” Ex. 1022, 1:12–40. Shim teaches that its lower-energy ion implantation does not suffer from the “problem” of the earlier method, “damaging of ohmic contacts of metal electrodes” due to the injection of “lots of impurity ions.” Id. at 1:17–22; see id. at 3:37–40 (“the manufacturing method of the present invention can prevent damage to be generated in ohmic contacts of source/drain electrodes due to ion-injecting of high density”). Thus, the lower energy of Shim’s process is a benefit of that process over earlier ion implantation processes, which use higher energy. Shim does not teach that its use of lower-energy ion implantation is an improvement over other processes, such as the epitaxial growth taught by Shirakawa and the other references cited by Petitioner. Thus, Petitioner does not explain sufficiently why lower energy would be a benefit of the Shim- Shirakawa combination over Shirakawa alone. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that a person of ordinary skill in the art would have had a reason to combine the teachings of Shirakawa and Shim to arrive at a combination that teaches or suggests the “diffusion layer patterns” of the challenged claims. slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,402,903 - FTC Solar, Inc. v. FCX Solar, LLCInstitution deniedPTAB · Nov 28, 2022 · IPR2022-01101 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least an undergraduate degree in mechanical engineering, physics, or a similar discipline, and at least three to five years of work experience designing, analyzing, or evaluating solar trackers.” Pet. 6 (citing Ex. 1003 ¶¶ 35–39). Patent Owner supplements Petitioner’s description of a POSITA to include as similar disciplines “applied aerodynamics, aerospace engineering, fluid dynamics, photovoltaic systems engineering” and asserts that a POSITA in the field of solar trackers would “enlist the expertise of a damper expert in designing the dampers to provide desired characteristics to trackers.” Prelim. Resp. 14. For the purposes of this Decision, we adopt Petitioner’s description of the level of one of ordinary skill in the art, as modified by Patent Owner; any differences between the parties’ descriptions do not affect our analysis. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 6
- Prior constructionPrior construction adoptedDecided for patent owner
“In the litigation, the District Court determined that a person having ordinary skill in the art would understand “damping ratio” to refer to “the damper providing the photovoltaic system with different damping ratios depending on the conditions.” Ex. 2005, 6:15–20. The District Court noted that intrinsic evidence supports “references to a damper having a [damping] ratio are made in the context of a damper installed in a system and are not about a damper in isolation.” Id. at 6:21–25. The District Court also noted that FTC’s7 expert, Dr. Codd, recognized that “pluck testing is the primary tool for determining a damping ratio, and that a person of ordinary skill in the art would be familiar with how to perform pluck testing.” Id. at 8:4–7. In view of the parties’ agreed-upon definition of the term “damping ratio” and the District Court’s claim construction analysis, we construe “damping ratio” to mean “a ratio determined by dividing the actual damping coefficient of a system by the critical damping coefficient of the system.”” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“parameter that is used imprecisely in the claims of the ’782 Patent to signify the damping force provided by the damper to the system.” Pet. 7 n.4 (citing Ex. 1003 ¶ 40 n.7). Thus, the Petition acknowledges a difference between the terms “damping ratio” and “damping force.” The footnote concludes “[h]ere, Petitioner has adopted Patent Owner’s interpretation of ‘damping ratio’ to signify the damping force provided by the damper to the invariant system.” Id. Petitioner cites to paragraph 40 n.7 of the Codd Declaration to support its assertion, but that paragraph parrots the language in the Petition, and Dr. Codd does not provide the underlying facts supporting his testimony.9 See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,903,782 - Costar Realty Information, Inc. v. Clantech, Inc.Institution deniedPTAB · Nov 25, 2022 · IPR2022-00798 · APJ Jo-Anne M Kokoski · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–28 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“On this record, we determine that Petitioner has not established a reasonable likelihood of demonstrating that Collins discloses “the display character is displayed using the exact same font” as required by claim 1. In particular, Petitioner does not explain how a POSITA would have understood Collins’ rendered document “with virtually the exact same appearance” (Ex. 1005, 10:6–12) to disclose a rendered document “displayed using the exact same font” as claim 1 requires. Similarly, Collins explains that its invention “enables virtually any document created with virtually any font to be accurately reproduced on another computer that does not contain the original font descriptions from which it was created.” Id. at 10:40–45 (emphasis added). Again, Petitioner does not explain how teaching the display of an accurate reproduction (i.e., a copy) of the font discloses the recited “displaying the exact same font.” If Collins’ rendered image on the second computer had the exact same font as the original fonted document, that rendered image should have the exact same appearance as the fonted document, not nearly the exact same appearance, as Collins’ use of “virtually” and “accurate reproduction” to describe the displayed characters suggests.” slip op. at 13
- Skill levelSkill level board ownOther
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 7
§ 103 obviousnesscites PhillipsPatents in suitUS 8,522,127 - Motif Foodworks, Inc. v. Impossible Foods Inc.Institution deniedPTAB · Oct 26, 2022 · IPR2022-00887 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were unpatentable on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“replica approximates the taste, texture or color of an equivalent muscle tissue derived from an animal source.” Ex. 1001, 5:34–36; Pet. 15. The ’761 patent describes many meat products comprising a high proportion of striated skeletal muscle in which individual muscle fibers are organized in an isotropic fashion and that replicas may mimic muscle by being “formed into asymmetric fibers” that “replicate muscle fibers” using extrusion and other methods known in the art. Ex. 1001, 25:48–50, 26:44–57; Pet. 15–16. These portions of the ’761 patent support Patent Owner’s position that “muscle replica” is not actual muscle because actual muscle tissue is “not a replica” of muscle tissue. Prelim. Resp. 8. Petitioner directs us to the ’761 patent’s disclosure that “[i]n some embodiments, the muscle replica and/or meat substitute product comprising the muscle replica are partially derived from animal sources.” Ex. 1001, 25:42–45; Pet. 16. Petitioner asserts that claim 1 encompasses “replicas made with animal products” because claim 12, which depends from claim 1, recites “wherein said beef replica product contains no animal products.” Ex. 1001, 50:26–28; Pet. 16. However, as Patent Owner points out, the ’761 patent discloses components derived from an animal source such as myoglobin, an isolated and purified heme-containing protein. Ex. 1001, 37:30–47, 38:25–32; Prelim. Resp. 8. The ’761 patent describes muscle replica being “partially derived from animal sources” or “entirely derived from non-animal sources.” Ex. 1001, 25:42–48 (emphasis added). The ’761 patent lists a number of components present in animal muscle tissue that may be included in the muscle replica and specifically describes protein components that are isolated, purified proteins or artificially designed proteins to emulate physical properties of animal muscle tissue. Ex. 1001, 26:59–27:43. Therefore, based on the context of “muscle replica” as used in the ’761 patent written description, the term “muscle replica” may include components derived from animal sources; however, animal muscle tissue itself is not “muscle replica.” As such, a “replica” does not encompass the actual material that it replicates or approximates. Accordingly, we construe “muscle replica” to mean “a composition approximating the taste, texture or color of an equivalent muscle tissue derived from an animal source; the muscle replica may include components derived from an animal source, but does not include muscle tissue itself” and “replica” such that it “excludes the actual material being replicated or approximated” for purposes of the present decision.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted); see PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (inherency “may not be established by probabilities or possibilities.”). In addition, a prior art 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’” in order to anticipate under 35 U.S.C. § 102. NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“animal-free embodiments in McMindes, Petitioner does not clearly articulate that it is relying on an embodiment of McMindes that does not contain any animal tissue in combination with hemoglobins from Ljublinksij as corresponding to the claimed muscle replica. Petitioner’s failure to clearly articulate its challenge violates our rules, and is inadequate to satisfy Petitioner’s burden on institution. See 37 C.F.R. § 42.104(b)(4) (requiring, inter alia, that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). To the extent that Petitioner is relying on a combination that includes an entirely animal-free embodiment of McMindes, Petitioner contends that “a POSITA would be motivated to incorporate Ljublinskij’s hemoglobin at a concentration between 0.1–5.0%, precisely as claimed in the ’761 patent” to attain desirable coloration of the McMindes product. Pet. 59. This argument is not persuasive, as Petitioner relies on the ’761 patent itself for the exact amount of heme protein that a person of ordinary skill in the art would have incorporated into McMindes’s animal-free product to achieve a desirable color. Pet. 59 (citing Ex. 1001, 34:50–55, 37:24–26). In this regard, we agree with Patent Owner that Petitioner’s suggested motivation to combine McMindes and Ljublinskij is guided by improper hindsight. See Prelim. Resp. 45–46. We recognize Petitioner’s assertion that “McMindes’s ‘preferred’ concentration of colorant is ‘between 0.1% to 5%.’” Pet. 59 (citing Ex. 1003 ¶ 91). This statement in McMindes, however, refers to the concentration of colorants such as caramel color and other food dyes, and McMindes provides great detail for coloring a soy protein containing food product, including the use of carmine as “an internal color” and caramel as “the external color” to achieve contrasting red and brown coloring. Ex. 1003 ¶¶ 86–91. Petitioner asserts a person of ordinary skill in the art would substitute Ljublinskij’s hemoglobin for these colorants because it purportedly provides “a more natural meat-like coloring than these ingredients,” but Petitioner does not direct us to evidence demonstrating that the use of hemoglobin achieves this result. Pet. 60. Petitioner cites to paragraph 372 of the Tarté Declaration to support its assertion, but that paragraph parrots the language in the Petition, and Dr. Tarté does not provide the underlying facts supporting his testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Thus, we find Petitioner does not provide adequate support for its assertions regarding the substitution of Ljublinskij’s hemoglobin for the colorants of McMindes at all, let alone in the amounts recited in claim 1. In addition, Petitioner’s attempt to address separately “muscle replica” and “comprising 0.1%-5% of a heme-containing protein” is unavailing, as it effectively rewrites the claim language. Accordingly, Petitioner has not established a reasonable likelihood of prevailing in showing claim 1, as well as its dependent claims, would have been obvious over McMindes in combination with Ljublinskij.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“obviousness argument does not sufficiently explain what portions of McMindes’s disclosure would have been modified by a POSITA and how those portions would have been modified to form a “muscle replica” as required by claim 1. To the extent Petitioner’s argument relies on McMindes’s hybrid product containing meat, Petitioner has not established that McMindes discloses a “muscle replica comprising 0.1%–5% of a heme-containing protein, at least one sugar compound and at least one sulfur compound” as construed herein. To the extent that Petitioner’s argument relies on substituting Sonac’s colorant for meat with McMindes’s colorants for a nonmeat containing product, Petitioner does not establish sufficiently that a person of ordinary skill in the art would have had reason to make that substitution or that using different types of colorants for such different products are interchangeable. We recognize Petitioner’s assertion that Sonac teaches that Harimix gives meat products a “natural color,” but there is insufficient evidence to support a determination that the substitution would result in “better meat-like coloring” than those used in McMindes. Pet. 63– 64 (citing Ex. 1003 ¶ 388). At best, Dr. Tarté’s testimony demonstrates Harimix provides a “meat color,” whereas carmine (used in McMindes) produces a “red/pink” color. Ex. 1003 ¶ 388. But Dr. Tarté does not explain sufficiently why one color is better than another, or address the fact that McMindes does not use only carmine as its colorant. Accordingly, Petitioner has not established a reasonable likelihood of prevailing in showing claim 1, as well as its dependent claims, would have been obvious over McMindes in combination with Sonac.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,863,761 - Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies, LLCInstitution deniedPTAB · Oct 7, 2022 · IPR2022-00763 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.” Ex. 1001, 26:62–27:12. Claims 2– 12 and 16–18 all depend directly or indirectly from claim 1. Id. at 27:13– 28:31. Accordingly, all of the claims Petitioner challenges as obvious over combinations of prior art based on JP848 incorporate the limitations of claim 1. 37 C.F.R. § 1.75(c). Therefore, to show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests “a contact which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS A. Claim Construction Petitioner argues that no claim terms require express construction. Pet. 12. Patent Owner also does not propose express construction of any term. Prelim. Resp. 16–17. We agree with the parties that no terms in the challenged claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe 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 5
Claim construction§ 103 obviousnessPatents in suitUS 6,291,861 - 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 - PTAB · Aug 31, 2022 · IPR2022-00661 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Because the “total amount of protein . . . on a dry weight basis” required by claim 1 and taught by the asserted prior art is disputed in the parties’ papers, we construe this claim term in order to determine whether or not to institute trial. As Petitioner indicates, the ’146 patent states “the term ‘total protein’ pertains to the total amount of true protein of a composition or product and disregards non-protein nitrogen (NPN).” Ex. 1001, 3:53–56; Pet. 11. The ’146 patent also specifies “the term ‘dry weight’ of a composition or product relates to the weight of the composition or product when it has been dried to a water content of 3% (w/w) water.” Ex. 1001, 11:26–29; Pet. 11. These portions of the ’146 patent support Petitioner’s proposed construction of “total amount of protein . . . on a dry weight basis” as the total weight of true protein disregarding non-protein nitrogen when the composition in question has been dried to 3% (w/w) water. Pet. 11. Accordingly, we adopt Petitioner’s construction for purposes of the present decision.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted); see PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (inherency “may not be established by probabilities or possibilities.”). The proper inquiry for inherent anticipation is whether the claimed limitations “necessarily result” from practicing V Powder. See, e.g., Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 960–61 (Fed. Cir. 2014) (affirming judgment that claims were not inherently anticipated where the prior art only showed that the limitation might occur, not that it inevitably occurred). Even if a theoretical value is appropriate to establish the claimed limitations “necessarily result” from practicing V Powder, Petitioner has not established that V Powder discloses a protein amount on a dry weight basis as construed herein. Petitioner argues that “[t]he V Powder Publication taught that ‘substantially denatured whey protein . . . is dried to a moisture content of less than 5%’” and that, “[t]hus, the protein content of Powder F was reported ‘on a dry weight basis.’” Pet. 28–29 (quoting Ex. 1004, 24:1– 2). V Powder does indeed teach that, “[i]n certain embodiments the heat treated, substantially denatured whey protein, for example the WPC or WPI, is dried to a moisture content of less than 5%.” Ex. 1004, 24:1–2. Petitioner, however, has not shown sufficiently that a dried to a moisture content of less than 5% necessarily discloses the required dried to a moisture content of 3%. Thus, Petitioner has not established a reasonable likelihood of prevailing in showing V Powder anticipates claims 1–4, 6–9, and 22. slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although the ’146 patent defines “dry weight basis” as requiring drying “to a water content of 3% (w/w) water,” V Powder teaches only drying “to a moisture content of less than 5%.” Ex. 1001, 11:26–29; Ex. 1004, 24:1–2. Petitioner does not explain why the obviousness of a claim requiring a specific water content of 3% is supported by a reference teaching a much broader range of water contents between 0% and 5%. Pet. 28–29. Nor is it clear to us why such an obviousness argument should prevail. It is true that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). But the specific water content of the challenged claims (precisely “a water content of 3% (w/w) water”) is not a “somewhat narrower claimed range” that is encompassed by the broader range of V Powder. Id. It is not a range at all; rather, it is a single, discrete point. This distinguishes the present situation from that in Peterson, in which the claims at issue recited ranges formed from single values that were modified in each case by the term “about.” Id. at 1327 (reciting, e.g., “about 14 percent chromium,” “about 9.5 percent cobalt,” and “about 3.8 percent tungsten”). Instead, this case presents a situation more analogous to that in In re Baird, in which the prior art taught a wide range of chemical compounds and the claims at issue recited a single compound within that range. 16 F.3d 380, 382 (Fed. Cir. 1994) (“the generic diphenol formula disclosed in [the reference] . . . encompasses more than 100 million different diphenols, only one of which is [the claimed] bisphenol A”). The teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus. In re Baird, 16 F.3d at 382. Here, the challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 13:18–21. There are numerous discrete points within the continuous range of 0% to 5% water content taught by V Powder. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that the disclosure in V Powder supports the obviousness of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that the prior art teaches or suggests the “dry weight basis” limitation present in all the challenged claims. Thus, Petitioner has not shown sufficiently that the combination of V” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,709,146 - PTAB · Aug 31, 2022 · IPR2022-00662 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art taught or suggested the dry-weight limitation incorporated into claims 1–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“drying “to a water content of 3% (w/w) water,” the V Powder Publication teaches only drying “to a moisture content of less than 5%.” Id.; Ex. 1004, 24:1–2. Petitioner does not explain why the obviousness of a claim requiring a specific water content of 3% is supported by a reference teaching a much broader range of water contents between 0% and 5%. Pet. 31–32. Nor is it clear to us why such an obviousness argument should prevail. It is true that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). But the specific water content of the challenged claims (precisely “a water content of 3% (w/w) water”) is not a “somewhat narrower claimed range” that is encompassed by the broader range of the V Powder Publication. Id. It is not a range at all; rather, it is a single, discrete point. This distinguishes the present situation from that in Peterson, in which the claims at issue recited ranges formed from single values that were modified in each case by the term “about.” Id. at 1327 (reciting, e.g., “about 14 percent chromium,” “about 9.5 percent cobalt,” and “about 3.8 percent tungsten”). Instead, this case presents a situation more analogous to that in In re Baird, in which the prior art taught a wide range of chemical compounds and the claims at issue recited a single compound within that range. 16 F.3d 380, 382 (Fed. Cir. 1994) (“[T]he generic diphenol formula disclosed in [the reference] . . . encompasses more than 100 million different diphenols, only one of which is [the claimed] bisphenol A.”). The teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus. Baird, 16 F.3d at 382. Here, the challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 13:18–21. There are an enormous, and potentially an infinite, number of such discrete points within the continuous range of 0% to 5% water content taught by the V Powder Publication. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that the disclosure in the V Powder Publication supports the obviousness of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that the prior art teaches or suggests the “dry weight basis” limitation present in all the challenged claims.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“drying “to a water content of 3% (w/w) water,” the V Powder Publication teaches only drying “to a moisture content of less than 5%.” Id.; Ex. 1004, 24:1–2. Petitioner does not explain why the obviousness of a claim requiring a specific water content of 3% is supported by a reference teaching a much broader range of water contents between 0% and 5%. Pet. 31–32. Nor is it clear to us why such an obviousness argument should prevail. It is true that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). But the specific water content of the challenged claims (precisely “a water content of 3% (w/w) water”) is not a “somewhat narrower claimed range” that is encompassed by the broader range of the V Powder Publication. Id. It is not a range at all; rather, it is a single, discrete point. This distinguishes the present situation from that in Peterson, in which the claims at issue recited ranges formed from single values that were modified in each case by the term “about.” Id. at 1327 (reciting, e.g., “about 14 percent chromium,” “about 9.5 percent cobalt,” and “about 3.8 percent tungsten”). Instead, this case presents a situation more analogous to that in In re Baird, in which the prior art taught a wide range of chemical compounds and the claims at issue recited a single compound within that range. 16 F.3d 380, 382 (Fed. Cir. 1994) (“[T]he generic diphenol formula disclosed in [the reference] . . . encompasses more than 100 million different diphenols, only one of which is [the claimed] bisphenol A.”). The teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus. Baird, 16 F.3d at 382. Here, the challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 13:18–21. There are an enormous, and potentially an infinite, number of such discrete points within the continuous range of 0% to 5% water content taught by the V Powder Publication. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that the disclosure in the V Powder Publication supports the obviousness of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that the prior art teaches or suggests the “dry weight basis” limitation present in all the challenged claims.” slip op. at 10
§ 103 obviousnessPatents in suitUS 10,729,150 - Hirsch Glass Corp., D/B/A Spectrum Quartz v. Cambria Company LLCInstitution deniedPTAB · Aug 8, 2022 · IPR2022-00583 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’626 patent, and we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s rationale for combining Benito Lopez and Bigi is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo, 694 F.3d at 1328; see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure.”).” slip op. at 18
- BurdenNot shown unpatentable
“According to 35 U.S.C. § 312(a)(3), a petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review must identify how “the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) adds that the Petition must identify “specific portions of the evidence that support the challenge.” Similarly, Rule 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Patent Trial Practice Guide suggests that “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 39, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov. 14, 2019). Here, Petitioner’s approach of arguing that every limitation in claim 1 can be satisfied by both Benito Lopez and/or Bigi, or possibly the combination of the two, fails to identify with sufficient specificity the portions of Benito Lopez or Bigi or the combination that Petitioner relies on to meet each limitation of claim 1. Although arguing in the alternative is generally permissible, in this case, both the Petition and Mr. Tassone fail to explain in adequate detail which, why or how the identified elements of Benito Lopez or Bigi, or their prospective combination, meet the limitations of claim 1. In each subsection discussing limitations [1.a.]–[1.g.], Petitioner” slip op. at 20
- Expert testimonyPetitioner expert discountedOther
“Petitioner also relies on the testimony of Mr. Tassone, but Mr. Tassone’s testimony similarly falls short. See Ex. 1032 ¶¶ 140–143. Mr. Tassone’s testimony is entitled to little weight because it fails to explain how the alleged market pressures or commercial need would motivate one of ordinary skill in the art to make the proposed combination, and it is not otherwise apparent that it does. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,300,626
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.