- Foundation Medicine, Inc. v. Guardant Health, Inc.Rehearing deniedPTAB · Dec 20, 2019 · IPR2019-00637 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show it had adequately supported the claimed ligation efficiency or a specific motivation to modify Schmitt.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“ligation efficiency. Indeed, we expressly acknowledged it. See Dec. 14 (noting Petitioner’s argument that “tagging ‘at least 20% of the cfDNA molecules’ would have been obvious because ligation efficiency ‘could be improved using a variety of techniques’”). After reviewing Petitioner’s evidence and argument, however, we were not persuaded that it was sufficient. Id. Even if the relevance of ligation efficiency was well known to a person of ordinary skill in the art for the reasons stated by Petitioner, the Petition still fails to provide a specific motivation to modify Schmitt. As explained in the Decision, “even if techniques were known that could have improved ligation efficiency, Petitioner has not shown sufficiently why a person of ordinary skill in the art would have modified Schmitt to tag ‘at least 20%’ of the DNA molecules.” Dec. 15; see also Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). That is, Petitioner’s motivation is “generic and bears no relation to any specific combination of prior art elements.” (Fed. Cir. 2012). As the Federal Circuit has explained, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,902,992 - Foundation Medicine, Inc. v. Guardant Health, Inc.Rehearing deniedPTAB · Dec 20, 2019 · IPR2019-00636 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show that Schmitt and the asserted obviousness rationale taught or motivated the claimed ligation efficiency.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“ligation efficiency. Indeed, we expressly acknowledged it. See Dec. 14 (noting Petitioner’s argument that “tagging ‘at least 20% of the cfDNA molecules’ would have been obvious because ligation efficiency ‘could be improved using a variety of techniques’”). After reviewing Petitioner’s evidence and argument, however, we were not persuaded that it was sufficient. Id. Even if the relevance of ligation efficiency was well known to a person of ordinary skill in the art for the reasons stated by Petitioner, the Petition still fails to provide a specific motivation to modify Schmitt. As explained in the Decision, “even if techniques were known that could have improved ligation efficiency, Petitioner has not shown sufficiently why a person of ordinary skill in the art would have modified Schmitt to tag ‘at least 20%’ of the DNA molecules.” Dec. 15; see also Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). That is, Petitioner’s motivation is “generic and bears no relation to any specific combination of prior art elements.” (Fed. Cir. 2012). As the Federal Circuit has explained, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,902,992 - Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - Anheuser-Busch Inbev S.A. And Anheuser-Busch, LLC v. Heineken Supply Chain B.V. (F.K.A. Heineken Technical Services B.V.)Institution deniedPTAB · Dec 12, 2019 · IPR2019-01151 · APJ John E Schneider · IPR · Institution
The Board denied institution for claims 1, 3, 7, and 10 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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.” Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review for that reason.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have at least a Master’s degree in mechanical engineering or product design and/or four years of relevant experience designing fluid dispensing systems. Pet. 14. Patent Owner disputes this definition of the level or ordinary skill in the art but does not offer its own definition. Prelim Resp. 22 n.4. For purposes of this decision, we adopt Petitioner’s description of the level of ordinary skill in the art.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Though Dr. Slocum contends that the shoulders of the valves depicted in Figures 17–20 and 21–24 are rigid because they are strong enough to resist fluid flow (see Ex. 1002 ¶¶ 134 and 132, respectively), Dr. Slocum does not provide adequate reasoning or evidence to support this opinion that one of ordinary skill in the art would consider shoulders that deform in the same manner as a flexible tube, and that are depicted as being integral with and made of the same material as the flexible tube, to nevertheless be rigid. For example, Dr. Slocum does not cite any extrinsic or intrinsic evidence that one of skill in the art would equate the ability to resist fluid flow with rigidity. Nor does Dr. Slocum or Petitioner propose any construction of the claim term “rigid” that would adequately distinguish the admittedly flexible pinch valves of Jeans.2 On the current record, and for the reasons discussed above, we find that Dr. Slocum’s testimony that the valve depicted in Jeans’s Figures 17–24 is made of a rigid material is not adequately supported. Accordingly, and based on the entire record presently before us, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge based on the combination of Timmermans and Figures 17–24 of Jeans.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the ball valve and slit valve configurations shown in Figures 17– 24 of Jeans operate by pinching the valve to open it. Ex. 1005, 18–20; Ex. 1002 ¶¶ 132–135; Ex. 2020, 1180. As discussed above, Patent Owner argues that the ability to be opened by a pinching indicates that the valves disclosed in Figures 17–24 of Jeans are made of a flexible material and do not meet the limitation of being composed on a rigid material. Prelim. Resp. 34–35. We note that this assertion is consistent with the position of Petitioner and its declarant, Dr. Slocum, that pinch valves like those shown in Timmermans and Van Der Meer are not rigid. See Pet. 26–27, 33; Ex. 1002 ¶¶ 99, 120. Jeans explicitly states that Figures 17–20 and 21–24 depict two different embodiments in which “the flexible tube of the container” is “designed to act as a valve which is open and closed between pinched and unpinched conditions, or vice versa.” Ex. 1005, 18 (emphasis added).” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,188,751 - General Electric Company v. United Technologies CorporationInstitution deniedPTAB · Dec 10, 2019 · IPR2019-01489 · APJ George R Hoskins · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims, claims 1–20, before institution.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDecided for patent owner
“requested authorization to file a motion for adverse judgment pursuant to 37 C.F.R. § 42.73(b). We deny that request. Our rules provide: “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Furthermore, the precedential decision in GE v. UT, supra, denied institution, and did not enter adverse judgment against the patent owner, where all challenged claims were disclaimed prior to institution of trial. Based on these authorities, we determine that a denial of institution, and not an adverse judgment against Patent Owner, is the appropriate vehicle for disposing of this case.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS Pursuant to the precedential Board decision in GE v. UT, when a Patent Owner properly records a disclaimer of all claims challenged in a Petition, no inter partes review is instituted. See also 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 9,920,653 - Opec Engineering Co., Ltd. D/B/A Opecmade, Inc. v. Berkenhoff GmbHInstitution deniedPTAB · Dec 9, 2019 · IPR2019-01090 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because the petition showed a reasonable likelihood on only a limited portion of the challenges, making review of all claims and grounds inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356. In exercising discretion, we are guided by the philosophy embodied in the statutory requirement to promulgate regulations for inter partes review that further “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings.” 35 U.S.C. § 316(b). We also are guided by the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Consistent with these policies, Office guidance explains that we may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons (June 5, 2018), available at https://www.uspto.gov/ sites/default/files/documents/ sas_qas_20180605.pdf (“[T]he panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a).”). Here, Petitioner fails to demonstrate a reasonable likelihood of prevailing on a majority of its asserted grounds of unpatentability and with respect to nearly all of its challenged claims. This raises at least some question as to whether instituting a trial with respect to all six claims and on all five grounds would be an efficient use of the Board’s time and resources. See, e.g., Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018). We must, therefore, decide whether the game is worth the candle; specifically, is resolving the question as to the patentability of claim 1 a sufficient reason to proceed to trial on claims 1 and 10–14? We assume, without deciding, that there may be situations in which resolving the patentability of one claim might justify trial as to six claims. For example, the Patent Owner in some cases may prefer to proceed to trial—and risk the patentability of the single claim—to gain the potential preclusive effect that would attach at the entry of a final written decision (see 35 U.S.C. § 315(e)) finding the remaining five claims not unpatentable. In other situations, the arguments against the patentability of that one claim may be so strong that we believe it is in the public interest to resolve them. Or it is possible the scope of the various claims challenged might merit review as to only some of them. For example, if a petition were to challenge a single, broad independent claim and a number of very narrow dependent claims, a reasonable likelihood of prevailing as to the independent claim alone may justify proceeding to trial on all claims, because a potential finding of unpatentability would significantly narrow the overall scope of the patent. Notably, none of these circumstances is present in the case at hand. Patent Owner has not expressed a preference that we proceed to trial so that it may have the benefit of estoppel under § 315(e). Nor is claim 1, the sole claim still potentially at issue in the case, significantly broader than claims 10–14. All the challenged claims are independent, and, indeed, it appears that claim 10 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy comprising gamma and epsilon phases and predominantly containing a gamma phase”) has a broader scope than claim 1 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy consisting of a gamma phase”). In other words, finding claim 1 unpatentable would not significantly narrow the scope of the ’789 patent. As a result, it is hard to discern how resolving the question as to the patentability of claim 1 would significantly benefit the public interest by narrowing the overall scope of the patent.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In no case, however, does Petitioner offer sufficient argument or supporting evidence for the existence of a reason for a person of ordinary skill in the art to have combined the teachings of the references. With respect to the Briffod2/Groos ground, Petitioner asserts that “[t]he technologies in Briffod2, Groos and the ‘789 Patent are very closely related,” going on to demonstrate the existence of several similarities between the three patents. Pet. 55–56. This may be enough to show an analogous-art type relationship between the references, but there is a difference between proving that the references could have been combined and showing that a person of ordinary skill in the art would have had a reason to do so. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). The same flaw affects Petitioner’s arguments with respect to the Briffod2/Groos/Briffod1 ground and the Briffod2/Groos/Tominaga ground, both of which assert merely that “the technologies in [the references in question] are extremely closely related.” Pet. 57–58, 72. Because Petitioner fails to show why a person of ordinary skill in the art would have combined the teachings of the prior-art references asserted in Petitioner’s multi-reference obviousness grounds, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim on any of those three grounds.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner argues that we should deny institution of inter partes review under 35 U.S.C. § 325(d) because Briffod2, the only prior-art reference at issue in the two asserted single-reference grounds, as well as the primary reference at issue in the combination grounds, previously was presented to the Office during prosecution of the challenged patent. Prelim. Resp. 21–29. We need not consider that argument because we determine that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356.” slip op. at 7
§ 103 obviousnessDiscretionary denial - Ioxus, Inc. v. Cap-Xx, Ltd.Institution deniedPTAB · Dec 4, 2019 · IPR2019-01178 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of success on its asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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) (2012). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented does not establish a reasonable likelihood that Petitioner will prevail in challenging the patentability of the challenged claims. We, therefore, decline to institute an inter partes review of the ’034 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a [person of ordinary skill in the art] to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a volumetric FOM of 3.0 (or 3.02).” Pet. 62; see also Ex. 1002 ¶ 202 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a [person of ordinary skill in the art] to combine the data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 3.0 FOMv value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having volumetric FOM of 3.0. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “there were no standard electrode shapes/sizes/dimensions at the time of the ’034 patent” and, therefore, “[i]t would have been a simple matter of the [person of ordinary skill in the art art] playing around with the dimensions of Yoshida’s device to get to the 3.0 FOMv” fares no better. Pet. 62–63; Ex. 1002 ¶ 204. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a volumetric FOM of 3.0 does not explain why modifying Yoshida to achieve a volumetric FOM of 3.0 is desirable in the first instance. The prior art may show a supercapacitor having a gravimetric FOM as claimed, but without more, this fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, Petitioner’s assertions here are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”). Thus, Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed. Arguments Regarding a Presumption of Obviousness” slip op. at 27
- Expert testimonyPetitioner expert creditedOther
“11 Petitioner requested authorization to file a Reply to Patent Owner’s Preliminary Response to address Patent Owner’s arguments regarding the credibility of Dr. Juzkow’s testimony. See Ex. 3001. We denied Petitioner’s request. Paper 7, 2. For purposes of this Decision, we have given full weight to Dr. Juzkow’s testimony, notwithstanding any alleged credibility issues raised by Patent Owner.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person having ordinary skill in the art would have had “a bachelor’s degree or the equivalent in electrical engineering or chemistry (or equivalent degree or experience) and at least two years of additional experience in the area of supercapacitors, or equivalent work experience.” Pet. 7. Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt and apply Petitioner’s proposed description of the person of ordinary skill in the art.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,920,034 - Ioxus, Inc. v. Cap-Xx, Ltd.Institution deniedPTAB · Dec 4, 2019 · IPR2019-01179 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution because the petition did not show a reason to combine Yoshida and AAPA to achieve the claimed gravimetric FOM for claims 1, 2, and 6–13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner fails to show why a person of ordinary skill in the art would have been motivated to combine the teachings of Yoshida and AAPA as proposed, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On this record, we agree that Petitioner has not offered sufficient argument or supporting evidence that a person skilled in the art would have had reason to combine the teachings of Yoshida and AAPA. Petitioner first argues that the PowerStor device uses the same cylinder-type supercapacitor as that is described in Yoshida and “[i]t would have therefore been obvious to a POSITA to combine the ‘Prior Art 1’ AAPA with Yoshida so that Yoshida’s supercapacitor has a gravimetric FOM of 2.06.” Pet. 27–28; see also Ex. 1002 (“Because Yoshida has the same EDLC shape and wound-cell configuration as the PowerStor supercapacitor . . . it would have been obvious to a POSITA to combine data for that supercapacitor . . . with the general cylindrical EDLC disclosures in Yoshida to obtain the 2.06 FOMg value.”). Petitioner’s reasoning, while relevant to showing that the references could have been combined, i.e., that they may be analogous, nevertheless falls short of establishing what would have prompted the ordinarily skilled artisan to make the proffered combination to yield a supercapacitor having gravimetric FOM of 2.1. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). Petitioner’s further argument that “the skilled artisan would have known to test Yoshida’s supercapacitor and then, based on the measured FOMg for that device . . . would start modifying certain aspects of the device to reach the target FOMg” fares no better. Pet. 28. As our reviewing court has explained, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., 805 F.3d at 1703 (citations omitted). That the person of ordinary skill in the art would have known how to achieve a gravimetric FOM of 2.1 does not explain why modifying Yoshida to achieve a gravimetric FOM of 2.1 is desirable in the first instance. That the prior art may show a supercapacitor having a gravimetric FOM as claimed, without more, fails to provide the requisite reason for a skilled artisan to modify Yoshida’s device to include the claimed gravimetric FOM. KSR, 550 U.S. at 418–419. Accordingly, without more, Petitioner’s assertions are “insufficient to show persuasively that a relevant artisan would have recognized some deficiency in one reference or had some other reason to motivate looking to the other and combining them.” Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); see also id. (“[T]he Board correctly concluded that Microsoft did not articulate a sufficient motivation to combine,” where “Microsoft gave no reason for the motivation of a person of ordinary skill to combine [two references] except that the references were directed to the same art or same techniques.”).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any terms 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 11
- Skill levelSkill level petitioner adoptedOther
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,382,600 - Charter Communications, Inc. v. Sprint Communications Company, L.P.Institution deniedPTAB · Dec 3, 2019 · IPR2019-01135 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–53 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In consideration of the above, we are not persuaded that Petitioner has demonstrated a reasonable likelihood it will succeed in its challenge to claim 1 as unpatentable over the combined teachings of Sampsell and Yosuke.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in electrical engineering, computer science, or a related field with at least five years of experience or research in interactive systems applicable to digital television, including VOD for cable and Internet delivery.” Pet. 12–13 (citing Ex. 1002, Declaration of Dr. Kevin Almeroth (“Almeroth Dec.”) ¶¶ 44–46. Patent Owner does not offer a definition of the level of ordinary skill, but reserves the right to dispute Petitioner’s assessment of the level of ordinary skill. Prelim. Resp. 20. Petitioner’s commensurate with the subject matter for the ’7907 patent, for purposes of this Decision we apply Petitioner’s description of the level of ordinary skill.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Having reviewed the claims and the specification of the ’7907 patent, we determine that the phrase “video-on-demand” in the preamble is necessary to give life and meaning to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“[I]f the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”). The difference between watching television and watching a video on demand is a difference in kind, rendering a video-on-demand system different from a non-video-on-demand system. While a person watching television can change channels and thus in some sense selects video content, such video content is being distributed regardless of whether the user selects specifically selects it.1 Because of that nature, the user also has control over the playback of the video content, such as pausing and stopping. Although the dependent claims more clearly demonstrate the on-demand nature of the video content (e.g., with the menu and control buttons), only the preamble in the independent claims provides the clue as to this context.2 Thus, the preamble serves to provide the framework necessary to understand the body of the claims, and is limiting.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Owner’s proposed construction, i.e., plain and ordinary meaning or “a signal reflecting viewer control” and instead construed “view control signal” to mean “a viewer control signal generated and processed without the involvement of a set-top box for remote control of the video-on-demand system.” Pet. 15. Petitioner notes that the Comcast court found the ’7907 patent does not dispute the use of a set-top box for purposes other than remote control, e.g. for the purpose of decoding a video signal and presenting it to a television. Id. n. 3. Referring to Figure 1, the Specification states “[i]n response to viewer input to the control screen, the second display 122 transfers a corresponding viewer control signal to the second communication system 112,” the second communication system 112 1 See, e.g., Ex. 1001, 1:17–33 (instructing that, with video-on-demand, the system receives a request to view a selection from the video content library, the video is played “[i]n response to the [user’s] request,” and the user is allowed “to immediately view [the] selected video content”). 2 This is broadly recited in claim 12 to encompass the controls relevant to video-on-demand, e.g., play, pause, stop, etc. Limiting claim 1 to a video-on-demand system provides meaningful context. and “[t]he second communication interface 102 transfers the [viewer] control signal to the processing system 103.” Ex. 1001, 2:61–67. Thus, we understand the viewer control signal to be a signal generated in response to user input.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,757,907 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Nov 27, 2019 · IPR2019-01125 · APJ Jameson Lee · IPR · Institution
The Board denied institution on claim 5 because its ambiguous scope prevented a reliable merits assessment and made trial resource intensive.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Id. at 2:29–42. Thus, within the context of both the claim and the Specification, a radio system and a station are not the same. It is unclear what is referred to by the reference in claim 5 to “radio systems in accordance with the first radio interface standard.”” slip op. at 14
- Other 314aInstitution denied discretionary otherDenied
“Because the claim language is ambiguous as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds 5 We recognize that in limited circumstances, clear errors in claims can be corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly does not meet that standard. What the Applicant for patent intended by the language used is subject to much speculation and conjecture. of unpatentability. If the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63. Furthermore, given that any trial instituted here would address a single claim that we regard to be ambiguous, that issue would likely become the sole focus of that trial. That seems problematic given that Petitioner may not request to cancel any claim based on an assertion of indefiniteness. See 35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).” slip op. at 16
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,016,676
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.