- PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. 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 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - PTAB · Sep 23, 2022 · PGR2022-00030 · APJ James J Mayberry · PGR · Institution
Instituted PGR on claims 1–20 after finding it more likely than not that at least one challenged claim is unpatentable, including because Bucco anticipates claims 1, 2, 4–16, and 18–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2011). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the Challenged Claims is unpatentable. Accordingly, we institute a post-grant review of the Challenged Claims of the ’486 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art. We determine that Petitioner’s definition is more consistent with the prior art of record, and the skill reflected in the Specification of the ’486 patent, based on our review of the limited record. Specifically, we preliminarily find that the field of “consumer products,” as proposed by Patent Owner, is too broad, based on our review of the limited record before us, including the prior art of record, which is directed to razors and personal grooming devices. See Exs. 1003; 1005–1007; 1010; 1011; 2003–2007; 2010–2015. We note, however, that our conclusions in this Decision would not change if we applied Patent Owner’s definition of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regardless of the parties’ proposed constructions, the parties do not dispute that the pivot member placement terms encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. See, e.g., Pet. 30–31 (“All . . . claims [other than claims 3 and 17] are necessarily broad enough to encompass a handle that includes the two opposed legs.”); Prelim. Resp. 49 (depicting embodiment where the two opposing legs are on a clevis attached to the handle). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Accordingly, for the purposes of this Decision, we construe the pivot member placement terms to encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. We also determine, on the current record, that we need not construe any other claim term to resolve the parties’ dispute at this stage of the proceeding. See Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“Like in SunModo, the grandparent application expressly discloses the opposed legs attached to the cartridge and the pivot member attached to the arm of the handle only. The grandparent application does not describe the opposed legs as part of the handle. Nor does the application state that the position of the opposed legs and pivot member are flexible, such that they could be reversed. On the limited record before us, the lack of any disclosure in support of Patent Owner’s reversal of parts embodiment is fatal to Patent Owner’s position. Cf. SunModo, 890 F.3d at 1052 (“The lack of any disclosure of an assembly with a washer below the flashing, or statement on the flexibility of the position of the washer, is fatal to D Three’s argument.”). We have considered Patent Owner’s arguments and determine, on the current record, that they do not demonstrate a deficiency in Petitioner’s position. First, Patent Owner’s argument that reversal of parts is generally common practice within the level of ordinary skill goes to the obviousness of rearranging parts to reach what is now claimed, rather than the adequacy of the written description of what is now claimed. Cf. Lockwood, 107 F.3d at 1572: The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. . . . One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Tellingly, Patent Owner relies, at least in part, on MPEP Section 2144.04. But this section is part of the MPEP directed to obviousness, not written description. See MPEP § 2144 (“Supporting a Rejection Under 35 U.S.C. 103”). Patent Owner’s reliance on the MPEP’s examining guidelines for written description is also unavailing. See Prelim. Resp. 50–51 (citing MPEP § 2163(II)(A)(3)(a), and quoting “If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met.”). We preliminarily find that reversing the locations of the pivot member and opposed legs from those locations disclosed in the only embodiment described in detail in the specification represents more than a “nuance” of the claims. Instead, it represents a departure from the disclosed embodiment of Figure 1, a departure with no support in the actual written description in the grandparent application.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialPatents in suitUS 11,235,486 - Lti Flexible Products, Inc. D/B/A Boyd Corporation v. The Regents Of The University Of CaliforniaInstitutedPTAB · Jan 11, 2022 · IPR2021-01189 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that MacDonald anticipates claims 1–13 and that MacDonald with Ding renders claims 2, 3, and 7 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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 consideration of the Petition, Preliminary Response, Reply, and Sur-reply and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–13 of the ’728 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“figures and substantively identical specifications. See Pet. 16, 26; Prelim. Resp. 21; Ex. 1012 ¶¶ 75–76. We agree with Petitioner that the Specifications of the parent applications, MacDonald, and the ’728 patent (“the common Specification”) do not disclose expressly the claimed pitch range of 5–500 microns. We also agree with Petitioner that the pitch range must be derived from the disclosed values of diameter of the pillars and spacing between pillars. Pet. 3, 18–22; Ex. 1012 ¶¶ 98–112, 123–129. We further agree with Petitioner that none of the derived pitch ranges aligns perfectly with the claimed pitch range. Pet. 21, 23; Ex. 1012 ¶ 120. Petitioner presents sufficient argument and evidence that the common Specification may not provide sufficient “blaze marks” for the claimed pitch range and that the derived pitch ranges may not reasonably convey to one of ordinary skill in the art the claimed pitch range. Pet. 17–26; Ex. 1012 ¶¶ 92– 140. Patent Owner disputes, at least, whether the common Specification provides adequate “blaze marks” and whether the derived pitch ranges would reasonably convey the claimed pitch range. Prelim. Resp. 11–18. The parties’ dispute presents a factual issue that would benefit from a fuller record developed at trial. Gen. Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1371 (2018) (“Sufficiency of written description is a question of fact.”).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artOther
“Petitioner contends that MacDonald is prior art under § 102(a)(1) because MacDonald was published a year before the filing date of the application that issued as the ’728 patent. Pet. 7. If the ’728 patent is entitled to the benefit of the filing dates of the PCT and ’111 applications (collectively, “the parent applications”), then MacDonald would not qualify as prior art, as argued by Patent Owner. Prelim. Resp. 27–28.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“3. Claims 1–13 Petitioner argues with citations to MacDonald and declarant testimony that, because MacDonald has the same figures and substantively same Specification, MacDonald anticipates independent claims 1 and 9. Pet. 26– 37, 53–58. In particular, for the claimed pitch range, Petitioner argues that, because MacDonald discloses pillar spacings between 1–500 microns and pillar diameters between 5–500 microns, MacDonald discloses, at least, two pitches of 6 microns and 253.5 microns, both of which are in the claimed pitch range. Id. at 36 (citing Ex. 1012 ¶¶ 176–178). For dependent claims 2–8 and 10–13, Petitioner argues with citations to MacDonald and declarant testimony that MacDonald discloses all their limitations. Id. at 37–53, 58– 62. Other than the arguments discussed above regarding written description and effective filing date, Patent Owner does not argue that Petitioner fails to show that MacDonald discloses the limitations of claims 1 and 9. See generally Prelim. Resp. Patent Owner also does not provide separate arguments for the challenged dependent claims. See generally id. Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its anticipation challenge of dependent claims 1– 13.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,309,728
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.