- PTAB · Apr 25, 2025 · IPR2024-01463 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative). We decline to speculate on how the court may rule on the pending motion to stay. Accordingly, this factor is neutral.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–10 of the ’706 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“TC(220), and ΔRz/Ra are result effective variables and that copper foils having ΔPD, TC(220), and ΔRz/Ra values that meet the values recited in claim 1 have advantageous properties. See, e.g., Ex. 1005 ¶ 45 (Kim ’761, disclosing that preferably the “difference in peak count roughness Rpc between the shiny surface . . . and the matte surface . . . of the electrolytic copper foil . . . is preferably 60 or less” because “when the difference in the peak count roughness Rpc exceeds 60 capacity maintenance of the secondary battery is deteriorated.”);15 Ex. 1007, 3:16–23, 4:14–23 (Cheng, disclosing that the foils of Cheng’s invention have (220) and (311) surfaces that provide increased elongation and that solve a high roughness problem that rendered traditional products unsuitable for use in a lithium ion secondary battery), 10:27–34 (Cheng, disclosing that in the foils of Cheng’s invention “the roughness difference between both sides was extremely small” and thus “it was . . . not easy for the electrolytic copper foil to break or fracture during the charging-discharging cycles and the life of a battery is thus increased”), Tables 3 & 4 (Cheng, disclosing embodiments and comparative examples with TC(220) values meeting the requirements of claim 1); Ex. 1008, 6:36–44 (Wolski, disclosing that “the surface roughness Rz at the matte side of the untreated copper foil of the present invention is the same or smaller than the surface roughness Rz at the shiny side . . . so that the surface treated copper foil . . . becomes more low-profiled . . . whereby it becomes a foil having a large etching factor”), 9:1–29 & Table 2 (Wolski, disclosing 15 Dr. Randall testifies that “Kim ’761’s peak count roughness Rpc corresponds to the peak density PD of the ’706 patent.” Ex. 1003 ¶ 52. At this stage in the proceeding, this testimony is unrebutted. 38 embodiments meeting the ΔRz/Ra of claim 1, describing them as having “matte side roughnesses” that are “sufficiently small,” and as having “excellent” “high temperature elongation characteristics”), 11:37–41 (Wolski, describing comparative examples as having “large” matte side roughnesses “whereby etching factors are not good”), 12:12–27 (Wolski, teaching that “as compared with a conventional untreated copper foil, both surfaces of the untreated copper foil obtained by [Wolski’s] invention are flat” resulting in a low profile foil that has “excellent elongations at room temperature and high temperature and also high tensile strength”). The teachings in the prior art support the presently unrebutted testimony of Dr. Randall explaining why the POSA would have been motivated to modify Kim ’761’s copper foil to have the claimed TC(220) and ΔRz/Ra. Ex. 1003 ¶¶ 66–68, 71–74; Pfizer Inc., v. Sanofi Pasteur Inc., 94 F.4th 1341, 1348 (Fed. Cir. 2024) (“Where [a gap in prior art] includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is ‘normally obvious.’”). Accordingly, we are not persuaded by Patent Owner’s argument that Petitioner failed to articulate a sufficient motivation to combine the references. To the contrary, the preliminary record presents a strong showing that the POSA would have been motivated to combine the references in the manner described in the Petition.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill in the art. Prelim. Resp. 4 (“For purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art”). Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’706 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,706 - Adobe Inc. v. Jonathan E. JaffeInstitutedPTAB · Mar 7, 2025 · IPR2024-01352 · APJ Bach V Hoang · IPR · Institution
The Board instituted review of claims 1–6 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Glass.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Parallel Proceeding Petitioner “stipulates that if the requested review is instituted, Petitioner will not pursue in the related litigation the grounds raised or that v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential as to Section II.A)). Petitioner’s stipulation here mitigates any concerns of duplicative efforts between the District Court proceeding and the Board, as well as concerns of potentially conflicting decisions. Sotera Wireless, Paper 12 at 19. Thus, we find that this factor weighs strongly in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).4” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and evidence, summarized above, we are persuaded, on this record, that Petitioner shows a reasonable likelihood of prevailing in demonstrating that claim 1 would have been obvious over Glass. 2. Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Glass, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to 5 The current record does not include allegations or evidence of objective indicia of nonobviousness. prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). This definition is also supported by the testimony of Dr. Xiong. See Ex. 1002 ¶¶ 81–83. We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“Petitioner’s construction is reasonably based on remarks made during prosecution of the ’828 Patent by Applicant in Applicant’s December 3, 2003 Amendment. Pet. 9–10 (citing Ex. 1002, 277). In that Amendment, Applicant stated [e]xemplary structure or method steps corresponding to this claim feature is shown in Fig. 2A of the subject application, which illustrates a processor 157 which is “tightly coupled” to a memory. . . . Because the processor is “tightly coupled” to the memory, it will be virtually impossible for a user to supply false information to the memory by breaking the conductive trace or lead between the memory and the processor. This means, for example, that there is no possibility for altering the image before the authentication information is generated. Ex. 1002, 277. In discussing the difficulty “to supply false information to the memory by breaking the conductive trace or lead between the memory and the processor” (id. (emphasis added)), Applicant implies that “tightly coupled” components are connected using a conductive trace or lead. Petitioner notes that the Specification does not describe any particular means Ex. 1003 ¶ 94). As such, Petitioner’s proposed construction is at least suggested by the intrinsic record, and we adopt it for the purposes of our decision on institution.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,757,828 - PTAB · Feb 14, 2025 · IPR2024-01330 · APJ Tina E Hulse · IPR · Institution
The Board instituted IPR of claims 3, 4, and 12–19 on all asserted obviousness grounds, finding a reasonable likelihood of success and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Upon considering the arguments and evidence presented in the papers, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition, and we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d). Accordingly, we institute an inter partes review of the challenged claims of the ’746 Patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“As explained in the -459 IPR, we do not discern much of a substantive difference between the parties’ respective definitions in this proceeding beyond the number of years of experience after obtaining a doctoral degree. Compare Pet. 12, with Prelim. Resp. 21. For purposes of this Decision, we adopt Patent Owner’s definition as it appears to be reasonable and falls between Petitioner’s definitions asserted in the Petition and in its request for reexamination of the ’781 Patent. See Ex. 2001 ¶ 51. Moreover, Patent Owner’s definition appears consistent with the prior art’s demonstration of the level of ordinary skill in the art at the time of the invention. 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))). To the extent the parties continue to disagree on the level of ordinary skill in the art, they should brief the issue further during trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states that it “does not believe that the Board must construe any claim terms in order to deny institution” and “reserves the right to assert claim construction positions should the Board institute IPR.” Prelim. Resp. 20. At this stage of the proceeding, we agree with the parties that no construction of any claim term is necessary for purposes of our Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,970,746 - PTAB · Jan 10, 2025 · IPR2024-00845 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of the remaining challenged claims across three patents, granted EndyMed’s joinder motions, joined the proceedings, and terminated the three original IPRs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“More importantly, as shown in the above comparison, the underlying premise of Serendia’s arguments here and in the 383 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the 383 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 13 and 14 of the ’774 patent. See 383 IPR, Paper 17, 11–18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, there is no dispute that EndyMed’s petition is materially identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. And because a Sotera stipulation mitigates concerns of duplicative efforts, we decline to discretionarily deny institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or joinder on the basis of the parallel Delaware litigation.6 Also, to the extent Serendia contends EndyMed should not be permitted to join and continue an IPR that would otherwise be terminated due to Serendia’s settlement with Jeisys, we disagree for several reasons. First, this is EndyMed’s first (and only) petition challenging the ’774 patent. As such, there is no risk of “repeated attacks” by the “same petitioner,” as was the case in Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9, 5– 13 (October 28, 2020) (precedential), where joinder was denied because the 6 To the extent Serendia also relies on duplicative efforts with the pending ITC investigation, the Director has expressly stated that the Board “will not” discretionarily deny a petition based on a parallel ITC proceeding. See Director Memo, at 7.” slip op. at 13
Discretionary denialPatents in suitUS 10,869,812 - PTAB · Jan 10, 2025 · IPR2024-00844 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of the remaining challenged claims, granted EndyMed’s joinder motions, joined the proceedings, and terminated the three new IPRs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“More importantly, as shown in the above comparison, the underlying premise of Serendia’s arguments here and in the 383 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the 383 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 13 and 14 of the ’774 patent. See 383 IPR, Paper 17, 11–18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, there is no dispute that EndyMed’s petition is materially identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. And because a Sotera stipulation mitigates concerns of duplicative efforts, we decline to discretionarily deny institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or joinder on the basis of the parallel Delaware litigation.6” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for petitioner
“identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
Discretionary denialPatents in suitUS 9,320,536 - PTAB · Jan 10, 2025 · IPR2024-00843 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 13 and 14 of the ’774 patent, granted EndyMed’s motion for joinder with IPR2024-00383, and terminated IPR2024-00843.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“More importantly, as shown in the above comparison, the underlying premise of Serendia’s arguments here and in the 383 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the 383 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 13 and 14 of the ’774 patent. See 383 IPR, Paper 17, 11–18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, there is no dispute that EndyMed’s petition is materially identical to the petition in the 383 IPR. Instead, Serendia argues that joinder should be denied due to EndyMed’s “unreasonable and unjustifiable delay” in filing the petition and seeking joinder with the 383 IPR, despite being aware of the ’774 patent and Jeisys’s petition for “more than 7 months” before filing. PO Opp. 1–2. We disagree. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the 383 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, per our rules, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” (emphasis added)). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’774 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. And because a Sotera stipulation mitigates concerns of duplicative efforts, we decline to discretionarily deny institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or joinder on the basis of the parallel Delaware litigation.6 Also, to the extent Serendia contends EndyMed should not be permitted to join and continue an IPR that would otherwise be terminated due to Serendia’s settlement with Jeisys, we disagree for several reasons. First, this is EndyMed’s first (and only) petition challenging the ’774 patent. As such, there is no risk of “repeated attacks” by the “same petitioner,” as was the case in Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9, 5– 13 (October 28, 2020) (precedential), where joinder was denied because the 6 To the extent Serendia also relies on duplicative efforts with the pending ITC investigation, the Director has expressly stated that the Board “will not” discretionarily deny a petition based on a parallel ITC proceeding. See Director Memo, at 7.” slip op. at 13
Discretionary denialPatents in suitUS 9,775,774 - PTAB · Dec 16, 2024 · IPR2024-01012 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood of unpatentability and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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). Upon consideration of the Petition in view of the record at this stage, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“parties on the present record, we are persuaded Petitioner sufficiently shows the combination of Bosnyak-392 and Son teaches or suggests all of the limitations of claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Bosnyak-392’s teaching of using exfoliated, open-ended carbon nanotube fibers having two different aspect ratios in a composition with improved electrical and mechanical properties, with Son’s implementation of a specific bimodal distribution of aspect ratios, to arrive at the composition of claim 1 with a reasonable expectation of success. We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Having considered both sides’ arguments as to Fintiv factors 2 and 3, we determine that the considerations of these factors weigh against exercising discretionary denial. Neither party directs us to any substantive order issued by the district court in the parallel litigation, which indicates the court has not yet considered claim construction or potential invalidity of the ’282 patent. The Markman hearing will not occur until June 2025, and the expert discovery cutoff is not until August 2025. Ex. 2002. Thus, although the parties have begun discovery as to invalidity issues, much further work remains in the parallel district court litigation. We also take into account Petitioner’s prompt filing of the Petition, as weighing against exercising discretionary denial. See Fintiv 11 (“If the evidence shows that the petitioner filed the petition expeditiously, such as promptly after becoming aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution . . . .”).” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,608,282 - PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). If either party intends to argue a claim construction at trial, however, including what is the ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“CTPG”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least [a] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’649 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,636,649 - PTAB · Dec 16, 2024 · IPR2024-01013 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–18 on all three asserted obviousness grounds, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’483 patent. We also determine that the arguments and evidence of record do not support discretionary denial under either 35 U.S.C. § 314(a) or § 325(d). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’483 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that, “given the breadth of remaining grounds of invalidity in parallel litigation,” Petitioner’s stipulation “would only resolve a small portion of the issues before the court.” Prelim. Sur-reply 3. Nevertheless, the stipulation offered by Petitioner does mitigate, at least to some extent, concerns of “potentially conflicting decisions.” Sand Revolution at 12. Accordingly, we determine that Fintiv factor 4 weighs, at least to some extent, against exercising our authority to deny institution.” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“During prosecution, the examiner stated that the carbon nanotubes of the applied prior art reference “are considered discrete and exfoliated . . . because they are dispersed in the composite cathode slurry mixture.” Ex. 1002, 5–6. The Board determined, however, that “without more,” the examiner’s bare statement was insufficient to address the prior art reference’s “express teaching that suggests bundling or agglomeration of carbon nanotubes.” Id. at 6 (noting that Figure 2 of the prior art reference suggested that the carbon nanotubes were in fact bundled and agglomerated). In contrast to the art and analysis provided by the examiner during prosecution, Petitioner identifies a specific disclosure in Ohata demonstrating that the carbon nanotubes are “discrete, non-agglomerated, and exfoliated.” Pet. 32–33 (citing Ex. 1004, Fig. 1(b)). In further contrast to the arguments presented during prosecution, Patent Owner identifies no disclosure in Ohata, or any other prior art reference, that would suggest that the carbon nanotubes of Ohata, Kavan, and Gong or Liu are agglomerated or non-discrete. Prelim. Resp. 22–23. As such, we determine that the prior art and arguments set forth in the Petition are not substantially the same as those previously analyzed by the Office. Thus, we decline to exercise discretion to dismiss the Petition under 35 U.S.C. § 325(d).” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would have had “at least a Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 7. Petitioner further contends that “[a]dditional work experience can compensate for less formal education and vice versa.” Id. For purposes of its Preliminary Response, Patent Owner “does not dispute the Petition’s definition of [the] level of ordinary skill in the art.” Prelim. Resp. 3. On this record, we preliminarily adopt Petitioner’s definition of the person of ordinary skill in the art as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,153,483 - PTAB · Dec 16, 2024 · IPR2024-01011 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–5 under all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim and no basis for discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’924 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’924 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Although the parties appear to agree that this factor is neutral, we note that a district court denial of a motion to stay without prejudice, accompanied by an indication that the district court would consider a renewed motion, “suggests the district court may be willing to avoid duplicative efforts and await the PTAB’s final resolution of the patentability issues raised in the petition before proceeding with the parallel litigation.” Fintiv at 6–7. “This fact has usually weighed against exercising authority to deny institution.” Id. (also noting that factors 2 and 3 are relevant to how much weight to give to the court’s willingness to reconsider a stay); see also T-Mobile, Paper 16 at 12 (noting that a stay was unlikely in that case given the proximity of the trial date to the entry of the institution decision). In view of the forgoing, we determine that Fintiv factor 1 weighs against exercising our authority to deny institution.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities” and that “[a]dditional work experience can compensate for less formal education, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 11). For purposes of its Preliminary Response, Patent Owner “does not dispute the Petition’s definition of [the] level of ordinary skill in the art.” Prelim. Resp. 2. On this record, we preliminarily adopt Petitioner’s definition of the person of ordinary skill in the art because it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no formal claim constructions are necessary.” Pet. 9. Patent Owner contends that all claim terms should be interpreted “in accordance with their ordinary and customary meaning.” Prelim. Resp. 2. Upon review of the record, we determine that no claim terms require express construction for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,968,924
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.