• Cipla Limited v. Gilead Sciences, Inc.Institution denied
  PTAB · May 15, 2025 · IPR2025-00033 · APJ Susan L C Mitchell · IPR · Institution

  The Board denied institution of IPR on claims 1–13 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “We determine that this factor weighs heavily in favor of exercising discretion to deny the Petition. The trial date in the district court litigation is scheduled for October 6, 2025. See Prelim. Resp. 16 (citing Ex. 2010). This date is at least six months before our projected statutory deadline should we go forward in this case. Patent Owner points out that this trial date is nine months later than the median time to trial in the District of Delaware, and in Patent Owner’s view, the parties are on track to satisfy the current schedule. Id. at 16–17 (citing Ex. 2011).” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “1 Patent Owner also asserts that the Petition should be denied under 35 U.S.C. § 325(d), but we need not reach this issue because we are exercising discretion under Section 314(a) to deny the Petition. See Prelim. Resp. 2–3.” slip op. at 2

  Discretionary denial
  Patents in suitUS 11,744,802
• Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyInstitution denied
  PTAB · Jan 29, 2025 · IPR2024-01178 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because Bio-Rad did not show a reasonable likelihood of proving any challenged claim unpatentable, as relied-upon Saxonov disclosures were not shown to qualify as prior art.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314. Upon considering the parties’ arguments and evidence, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we decline to institute an inter partes review of the challenged claims.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes when two conditions are met: (1) the provisional provides sufficient support for at least one claim in the reference patent or published patent application; and (2) the provisional application provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or application. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1377, 1381–82 (Fed. Cir. 2015); MPEP §§ 2136 (I), 2136.03 (III), 2136 (Examples 2, 4, 7); see, e.g., Google LLC v. Ikorongo Tech, LLC, IPR 2021-00058, Paper 14 at 10–12 (PTAB May 10, 2021). The burden of production is on the Petitioner to show in its Petition that the asserted references qualify as prior art. See Dynamic Drinkware, 800 F.3d at 1380 (explaining that a petitioner bears the initial burden of production to establish that the asserted references qualify as prior art).” slip op. at 18

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

    “Each of the remaining grounds asserted in the Petition relies on Saxonov to reach a number of limitations of independent claim 1 and the challenged dependent claims. Because Petitioner has not shown that all of the relied-upon portions of Saxonov are prior art to the ’170 patent, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’170 patent in any of the remaining grounds.” slip op. at 24

  • PTAB / AIA Trials › Discretionary denialNot reached

    “Because we deny institution upon consideration of the merits of Petitioner’s challenges, Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution is moot.” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,770,170
• Samsung Display Co., Ltd. v. Pictiva Displays Internaltional Ltd.Institution denied
  PTAB · Nov 19, 2024 · IPR2024-00855 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution of IPR challenging claims 1–5 and 8–14, exercising § 314(a) discretion under Fintiv because the factors favored denial and the merits were not compelling.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6.” slip op. at 7

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

    “We have authority to institute an inter partes review where a petitioner shows a reasonable likelihood of prevailing with respect to at least one challenged claim. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Under appropriate circumstances, however, we may exercise our discretion under Section 314(a) and deny review without regard to whether the petitioner has met that threshold. Trial Practice Guide,3 64; see 84 Fed. Reg. 64,280 (Nov. 21, 2019). For reasons that follow, we exercise our discretion under Section 314(a) and do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “On this record, we discern a genuinely-disputed issue surrounding the correct construction of the first wavelength spectrum limitation. Specifically, a question arises whether the first wavelength spectrum limitation can be 13 Neither party identifies the litigation involving Petitioner’s real parties-ininterest as related to this proceeding. Pet. 1; Paper 5, 1. That litigation, however, involves assertions of the ’547 patent claims against Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. Ex. 2053, 1, 8; see Pet. 1 (identifying those entities as Petitioner’s real parties-in-interest). met by a portion of the radiation emitted by the organic layer (as argued by Petitioner); or instead, the first wavelength spectrum limitation refers to the entirety of the radiation emitted by the organic layer (as argued by Patent Owner). Compare Pet. 23–25, 57–58, with Prelim. Resp. 64–74. To be clear, we need not and, therefore, do not resolve the correct construction of the first wavelength spectrum limitation. It is enough for us to observe, on this record, that a genuinely-disputed issue surrounds this issue of claim construction. As explained in the next section, that dispute casts doubt upon whether Petitioner shows sufficiently, for purposes of trial institution, that the prior art suggests the filter transparency limitation.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “14 Petitioner belatedly suggests that an ordinarily skilled artisan would have been prompted to replace the emitter material employed by the prior art (namely, BCzVBi in DPvBi) with a different, but undisclosed, emitter material having “no significant emission at wavelengths above 500 nm.” Opp. Supp. Br. 2 (citing Ex. 2010 ¶ 43); see Reply 3–4 (same). That argument is not presented in the Petition, much less supported in the Petition by a rationale to combine. See Pet. 16–17, 48–50 (mapping the organic layer sequence of claim 1 to the organic layer sequence of Igarashi or Shiotani, which both employ BCzVBi in DPvBi as the emitter material (Ex. 1004 ¶ 88; Ex. 1005, 5/12)).” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,314,547
• Mahle Behr Charleston Inc. v. Frank Amidio CatalanoInstitution denied
  PTAB · Nov 15, 2023 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Institution

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

  RulingsInstitution decision

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

    “On this record, we determine that Petitioner advances Dr. Medlin’s testimony to make out a claim limitation that is not suggested, much less taught, by the text of the prior art reference at hand. Because that testimony lacks objective support or adequate technical reasoning, it is entitled “little weight” and, moreover, is insufficient to support institution of trial. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential). Dr. Medlin’s remaining testimony relies on the testimony we have discussed so far. Ex. 1004 ¶¶ 201–204, 207–210, 224–226. Accordingly, this testimony does not show sufficiently that Tomosada would have suggested to a person of ordinary skill in the art that anodes should be placed within 10 inches of Tomosada’s hot liquid inlet. Because Petitioner relies on Dr. Medlin’s testimony to show that a person of ordinary skill in the art would have understood that Tomosada suggested placing an anode within 10 inches of a hot liquid inlet to a radiator, and because that testimony does not show sufficiently that a person of ordinary skill in the art would have had such an understanding, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Tomosada.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Nevertheless, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, metallurgical engineering, or materials science engineering, and have two or more years of experience in mechanical engineering, metallurgical engineering, or materials science engineering and/or corrosion prevention system design.” Pet. 16 (citing Ex. 1004 ¶¶ 72–75). According to Petitioner, “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of more formal education (e.g., a Ph.D.) and less technical experience,” or vice versa. Id. at 16–17. “To the extent necessary, the [person of ordinary skill in the art] may have collaborated with other skilled artisans, such that the individual and/or team collectively would have had experience and/or knowledge or particular characteristics of a radiator system.” Id. at 17. “For the limited purpose of [its] Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’494 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’494 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding 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)).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “C. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Both parties argue that we need not construe any terms in order to decide whether to institute trial. Pet. 17; Prelim. Resp. 8. We agree. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

  Claim constructioncites Phillips · KSR · Graham
• Gce Gas Control Equipment Inc. v. Vbox, Inc.Institution denied
  PTAB · Sep 1, 2023 · IPR2023-00527 · APJ Jane E Inglese · IPR · Institution

  The Board denied institution because the petition did not show that Deane disclosed or suggested the claimed removal direction for claims 1–23.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2

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

    “As discussed above, when addressing Ground 1 in the Petition, the Petitioner contends that Berntson (in addition to Deane) teaches a separation cartridge selectively removable from a receptacle, but contends that Deane alone renders obvious a separation cartridge selectively removable from a receptacle “by movement relative to the receptacle in a first direction.” Pet. 54–55, 82. For the first time in the Reply, however, the Petitioner contends that “applying Berntson’s basic teachings to Deane . . . would result in a cartridge removable through the POC bottom.” Reply 4; see also id. at 1 (describing Petitioner’s Scenario A). In neither the Petition nor the Reply, however, does the Petitioner identify with any degree of specificity the “basic teachings” of Berntson that a POSITA would have applied to Deane, nor without relying on impermissible hindsight, how the combined teachings of Deane and Berntson would have led the POSITA to the claimed subject matter. In particular, the Petitioner does not describe how or why Berntson would have led a POSITA to modify Deane’s gas fractionalization apparatus, much less describe any specific modifications that would have resulted in a separation cartridge removable through the bottom of Deane’s gas fractionation apparatus. Equally importantly, the Petitioner does not provide a sufficient rationale for combining the prior art teachings. The Petitioner does not explain why one of ordinary skill in the art would have considered any modifications of Deane’s apparatus in view of Berntson. The Petitioner, therefore, does not provide sufficient information to establish that combining Berntson with Deane would remedy the deficiencies of the Petitioner’s contentions based on Deane alone, discussed above.” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “would be used to construe the claims in a civil action held under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “E. Discretion under 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 28–29; Prelim. Resp. 45–57.” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,357,628
• Gator Bio, Inc. v. Sartorius Bioanalytical Instruments, Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00215 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution of review of claims 1–19 under § 325(d), finding substantially the same art or arguments had been considered and no material Examiner error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments. Id. In general, only if the same or substantially the same art or arguments previously were presented to the Office, do we turn to whether Petitioner has established a material error. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 8

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

    “We have authority to institute an inter partes review only where the information presented establishes “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board also has discretion to deny review if “the same or substantially the same prior art or arguments previously were presented to the Office,” for example, during patent prosecution. 35 U.S.C. § 325(d). We exercise our discretion under § 325(d) and decline to institute an inter partes review of the ’585 patent without addressing whether Petitioner satisfies the evidentiary threshold for review under § 314(a).” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,305,585
• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Sep 9, 2022 · IPR2022-00548 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 and 17–41 were unpatentable over the asserted obviousness grounds.

  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

  • Skill levelOther

    “(“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 9–10 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . . But regardless of what level of skill is applied, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, or in other proceedings.”).” slip op. at 6

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

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 7

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

    “Thus, as we understand it, Petitioner is arguing that a POSITA would have understood Wohrl’s teaching of laying fiber strands on a core and precuring the fibers so that the fibers dry and stick to the core is “coupling a portion of the at least one path to an anchor point” as recited in claims 1 and 38. Petitioner’s argument appears to be premised on the understanding that any point at which the path contacts a “surface suitable for anchoring the part” is the claimed “anchor point.” The ’543 patent, however, describes an “anchor point” as something more than just any point to which a part of the path is affixed.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,511,543
• Vitec Production Solutions, Inc. v. Rotolight LimitedInstitution denied
  PTAB · Jun 8, 2022 · IPR2022-00262 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on claims 1–22 because the petition did not show a reasonable likelihood that the Morgan, Hinrichs, and Pohlert combination rendered them obvious.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner fails to establish Morgan in view of Hinrichs and Pohlert suggests “calculate[ing] [using an effect simulator,] a time varying lighting value based on at least one simulation parameter,” as claimed. Ex. 1001, 11:59–12:12. Specifically, Petitioner does not direct us to anything in Morgan that is adapted to “calculate” at all, much less adapted to calculate a time varying lighting value based on a simulation parameter. Pet. 19–24. Petitioner alleges that Morgan’s disclosure of “‘one or more of the library of lighting effects/shows’ and ‘one or more (or all) functional aspects of a user interface and library searching may be performed by a controller that also controls the lighting system that generates the lighting effect(s)/show(s)’” satisfies the functionality of the “effect simulator” of the ’258 patent. Pet. 19 (citing Ex. 1005, 10:16–21; Ex. 1003 ¶ 91–102). However, merely identifying a controller that searches a library and processes pre-programmed lighting effects, falls short of establishing sufficiently that Morgan’s controller is adapted to “calculate.” And as Patent Owner aptly explains, the other functions performed by Morgan’s controller similarly do not “calculate”; nor are they adapted to calculate. Prelim. Resp. 47–48 (referring to Figure 3 and identifying “steps 302 (query user for input information), 304 (search lighting effects/shows), and 306 (provide user with indication of candidate lighting effects)”). Furthermore, we agree with Patent Owner that Petitioner does not demonstrate that Morgan suggests an effect simulator adapted to calculate “a time varying lighting value based on at least one simulation parameter,” as claimed. Id. at 48–49. Petitioner does not expressly identify where Morgan describes calculating or anything adapted to calculate a time varying lighting value but, instead, directs our attention to Morgan’s description of “generat[ing] the lighting effect using the executable lighting program” using “one or more characteristics of the lighting effect [that] include, but are not limited to, ‘color content,’ ‘color resolution,’ ‘color distribution or color spatial frequency,’ and/or ‘at least one dynamic temporal characteristic’ of the selected lighting effect.” Pet. 20 (citing Ex. 1005, 3:45–67, 14:4–12, 32:15–22). But, as Patent Owner explains, this portion of Morgan “describes the various attributes a user may employ to search the prepackaged executable lighting effects,” which a person of ordinary skill in the art would not have understood to include calculating, or adapted to calculate, “a time varying lighting value.” Prelim. Resp. 48–49 (emphasis in original) (citing Ex. 2001 ¶ 52). Finally, Petitioner’s contentions regarding Hinrichs and Pohlert do not remedy the deficiencies of Morgan. Although Petitioner alleges that “Hinrichs teaches that its subject lighting system controller provides outputs based on ‘effect functions,’” and that “the controlling means . . . execute[s] [effect functions] in relation to time and in relation to each other,” Petitioner does not direct our attention to anything in Hinrichs that describes calculating or anything adapted to calculate a time varying lighting value. Pet. 20–22. Similarly, Petitioner fails to identify how Pohlert discloses an effect simulator adapted to calculate a time varying light value. Pet. 22–24. That Pohlert teaches that its “processes may be carried out by a power controller that ‘includes a processor 1074 which may be programmed to provide various lighting effects—the effects generator—by ‘control[ling] the switch selector [through] setting various digital values’” and that “[t]he programming instructions may provide that the switches 1062 are turned on and off according to designated sequences, thus allowing the capability of pattern generation via the processor 1074,” fails to sufficiently establish this limitation. Pet. 23–24 (citation omitted) (alterations in original). Further, as Patent Owner aptly explains, a strobing effect oscillating signals generate “is not ‘time varying’, but rather repetitive.” Prelim. Resp. 50 (citing Ex. 2001 ¶ 61). In view of the foregoing, we determine that Petitioner fails to demonstrate on this record a reasonable likelihood that the subject matter of claim 1 of the ’258 patent would have been obvious over the combined disclosures of Morgan, Hinrichs, and Pohlert.” slip op. at 25

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “E. Discretion to Deny Institution under 35 U.S.C. § 325(d) Petitioner and Patent Owner both address 35 U.S.C. § 325(d). Pet. 6– 7; Prelim. Resp. 26. Because we deny the Petition on the merits, we do not address the arguments about discretion to deny institution.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in electrical engineering, or a closely related field, along [with] at least two years of experience in the design of entertaining lighting systems, controls and effects.” Pet. 3 (citing Ex. 1003). Petitioner further states that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp. 25. On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See” slip op. at 8

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

    “Petitioner proposes construction for claim terms “cinematic lighting special effect” and “effect simulator.” See Pet. 3–6. Patent Owner states that it “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 24. We need not expressly construe any claim terms because resolution of the issues presented in this Petition for inter partes review are not based on any particular claim construction the parties advance. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,197,258
• Vitec Production Solutions, Inc. v. Rotolight LimitedInstitution denied
  PTAB · Jun 8, 2022 · IPR2022-00261 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution for claims 1–21 because Petitioner did not show a reasonable likelihood that Morgan and Julio rendered the claims obvious.

  RulingsInstitution decision

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

    “In an IPR [(inter partes review)], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Furthermore, a petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art “would have had a Bachelor of Science degree in electrical engineering, or a closely related field, along [with] at least two years of experience in the design of entertaining lighting systems, controls and effects.” Pet. 5 (citing Ex. 1003 ¶¶ 33–34). Petitioner further states that “[m]ore education can supplement 4 At this stage of the proceeding, the parties have not asserted or otherwise directed our attention to any objective evidence of nonobviousness. practical experience and vice versa.” Id. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp. 20. On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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))).” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1005, 10:46–58. There is no mention of “videography, broadcasting, cinematography, studio filming, or location filming” in Morgan. Petitioner’s witness provides no explanation as to why a person of ordinary skill in the art would have understood “theatrical or other entertainment-based/special effects lighting” to suggest “videography, broadcasting, cinematography, studio filming, and location filming,” and offers nothing beyond what is alleged in the Petition. Ex. 1003 ¶ 77. Our reviewing court has “repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.” TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019); 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.”). In contrast, Patent Owner, through the testimony of Mr. Kramer, explains that a person of ordinary skill in the art would have understood that “[l]ighting systems used in live applications, such as those in Morgan, are notably different than the claimed use for ‘videography, broadcasting, cinematography, studio filming, and location filming.’” Prelim. Resp. 40 (citing Ex. 2001 ¶ 52). As Patent Owner explains, these differences are not trivial and lighting systems “can differ very significantly in their construction and functionality depending on their intended use.” Id. Some differences for consideration in studio filming include, among other things, the location of the light source, lenses to direct and focus the light, the quantity of light source, the modulation of the lighting, and the need to account for imaging device characteristics, like frame-rate. Id. We are also not persuaded by Petitioner’s position that a person of ordinary skill in the art would have understood that “Morgan’s disclosure encompasses cinematography, videography, and similar applications based on its discussion of pulse duration control” and that the ordinarily skilled artisan “would recognize the need for rolling shutter compensation for preventing unwanted flicker, or other artifacts.” Pet. 19 (citing Ex. 1003 ¶¶ 77). Petitioner suggests that “pulse duration control” and “rolling shutter compensation” refer to the same thing. Ex. 1003 ¶ 77 (“pulse duration control (also known as rolling shutter compensation in the art)”). However, Patent Owner persuasively explains that “pulse duration modulation is a common method of controlling the light output of LED light sources.” Prelim. Resp. 41 (citing Ex. 2001 ¶ 54). Specifically, Patent Owner explains that “LEDs typically operate Pulse Width Modulation (‘PWM’), which works by ‘blinking’ LEDs at a rapid rate, such that it cycles through ‘on’ and ‘off’ states many times per second in order to reduce the noticeability of the ‘flicker effect’ (flicker observed by the human eye).” Id. Morgan’s description of its controller operation is consistent with Patent Owner’s position and explains that the controller applies voltage “at a frequency that is greater than that capable of being detected by the human eye” so that “an observer of the light generated by the light source does not perceive the discrete on-off cycles (commonly referred to as ‘flicker effect’), but instead the integrating function of the eye perceives essentially continuous light generation.” Ex. 1005, 12:9–28. Morgan does not mention “rolling shutter compensation” or the use of a camera. See generally Ex. 1005; Ex. 2001 ¶ 54. Accordingly, on this record, Petitioner fails to establish sufficiently that Morgan in view of Julio suggests “at least one simulation parameter characterize[d by] a user customizable lighting effect . . . for at least one of videography, broadcasting, cinematography, studio filming, and location filming.”” slip op. at 23

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

    “We agree with Patent Owner that Petitioner fails to establish Morgan suggests “calculating, using an effect simulator, a time varying lighting value based on at least one simulation parameter,” as claimed. Ex. 1001, 11:54–12:3 (claim 1), 12:57–13:8 (claim 15), 14:1–18 (claim 20). Specifically, Petitioner does not direct us to anything in Morgan that “calculates” at all, much less calculates a time varying lighting value based on a simulation parameter. Pet. 17–18. Petitioner alleges that Morgan’s disclosure of “‘one or more of the library of lighting effects/show[s]’ and ‘one or more (or all) functional aspects of a user interface and library searching may be performed by a controller that also controls the lighting system that generates the lighting effect(s)/show(s)’ . . . satisfies the functionality of the ‘effect simulator’ of the ’257 Patent.” Pet. 17 (citing Ex. 1005, 10:16–21; Ex. 1003 ¶ 72). However, merely identifying a controller that searches a library and processes pre-programmed lighting effects, falls short of establishing that Morgan’s controller actually “calculates.” And, as Patent Owner aptly explains, the other functions performed by Morgan’s controller similarly do not “calculate.” Prelim. Resp. 36 (referring to Figure 3 and identifying “steps 302 (query user for input information), 304 (search lighting effects/shows), and 306 (provide user with indication of candidate lighting effects)”). Furthermore, we agree with Patent Owner that Petitioner does not demonstrate that Morgan suggests an effect simulator that calculates “a time varying lighting value based on at least one simulation parameter,” as claimed. Id. at 36–37. Petitioner directs our attention to Morgan’s description of “encoding” lighting effects that occurs in “reference to some time base” and implies this describes “a time varying lighting value based on at least one simulation parameter.” Pet. 18. But, as Patent Owner contends, “the encoding performed by the light system composer is done based on lighting effects and lighting shows that are authored by a designer/programmer—prior to a user entering search criteria” and “later executed by the controller.” Prelim. Resp. 37 (emphasis added). This encoding is not performed by the “effect simulator”—the central controller identified by Petitioner—and is performed prior to the “library searching” and “processing” which Petitioner alleges satisfies the functionality, i.e., calculating done by the “effect simulator.” Therefore, on this record, Petitioner fails to establish sufficiently that Morgan suggests “calculating, using an effect simulator, a time varying lighting value based on at least one simulation parameter.”6” slip op. at 19

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,197,257
• Nespresso USA, Inc. v. K-Fee System GMHBInstitution denied
  PTAB · Jan 18, 2022 · IPR2021-01222 · APJ James J Mayberry · IPR · Institution

  The Board denied institution under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material examiner error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “stated in the Petition, standing alone, supports a finding of material examiner error, that argument is not developed adequately and, therefore, is unpersuasive on this record. Pet. 84–85. Petitioner bears the burden of showing that the Office erred, for example, by “misapprehending or overlooking specific teachings of the relevant prior art whose teachings impact patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. Where “the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under” Becton, Dickinson factors (e) and (f). Advanced Bionics, Paper 6 at 10. As explained above, when assessing factor (e), we consider whether Petitioner “point[s] out sufficiently how the examiner erred in its evaluation of the asserted prior art.” Supra 8. When assessing factor (f), in turn, we look for some explanation of how or why “the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.” Id. Petitioner addresses neither of those issues adequately, if at all. Pet. 81–85; Prelim. Reply 5–10. The closest Petitioner comes to addressing those issues is by observing, “the obviousness analysis” in the Petition “is supported by expert testimony, which the Examiner did not have.” Pet. 85. That observation is undeveloped by further analysis and, therefore, is ineffective to show that the Examiner materially erred by failing to discuss the same prior art combinations advanced in the Petition, or that “additional evidence and facts presented in the Petition warrant reconsideration of the prior art” previously presented to the Office. Becton, Dickinson, Paper 8 at 18.” slip op. at 26

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

    “institute review. See also 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we exercise discretion under 35 U.S.C. § 325(d) and do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner

    “namely, whether the claimed invention is entitled to a priority date of July 22, 2010, based on certain German priority documents, thereby disqualifying Jarisch as prior art under 35 U.S.C. § 102(e). See Pet. 15–18 (discussing priority to the German applications), 22–23 (asserting Jarisch as prior art under § 102(e)), 85 (arguing that the examiner did not consider Jarisch because of an error in priority); Ex. 1002–176, Part 1, 278. Pet. 15–18 (arguing that the challenged claims are not entitled to priority based on the German priority documents), 85 (arguing the examiner applied an incorrect priority date, based on the German priority documents, to antedate Jarisch); Prelim. Resp. 4–6, 16–22; Prelim. Reply 8–10; Prelim. Sur-reply 7–10. Petitioner focuses only on whether the examiner erred in assessing that argument. Pet. 85. Petitioner does not, and cannot, submit that the Office never considered the issue during patent prosecution, at least with respect to applications in the priority chain of the ’177 patent. The Office, in fact, expressly considered whether “Jarisch is not prior art” because the challenged claims are “entitled to a priority date of 22 July 2010” based on the German priority documents. Ex. 1002–176, Part 1, 278 (prosecution history for the grandparent application). The Office also expressly responded to Patent Owner’s argument on that point as follows: “This urging is not deemed persuasive.” Id. This issue represents a second, significant argument previously presented to the Office.” slip op. at 20

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “B. Discretionary Denial under 35 U.S.C. § 314(a) Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 314(a) in light of parallel district court litigation involving the parties and the ’177 patent. Prelim. Resp. 36–44; Prelim. Sur-reply 1–4. Because we exercise our discretion under § 325(d) and deny the Petition, we do not reach this issue.” slip op. at 28

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,858,177

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.