- PTAB · Aug 11, 2023 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–10, 13–18, and 20–32 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, it appears that the main distinction between Petitioner’s ordinary skilled artisan and Patent Owner’s is that Patent Owner further requires familiarity with wireless networks. We note, however, that the monitoring systems of the asserted prior art include wireless networks. In view of this, because Petitioner’s requirement of experience designing railcar, train, vehicle, or any other similar monitoring systems includes some familiarity with wireless networks, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’223 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding. Pet. 15. Patent Owner asserts that the term “housing” means “an enclosure.” Prelim. Resp. 29. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“30 of the ’223 patent are entitled to claim priority back to the ’713 application. The test for sufficiency of written description “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In particular, we do not agree with Patent Owner that it can simply pluck the temperature sensor from LeFebvre and insert it into the sensor device disclosed in the ’713 application. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (“Working backward from a knowledge of [the claims], that is by hindsight,” [patentee] seeks to derive written description support from an amalgam of disclosures plucked selectively from the [prior] application.”) (first alternation in original).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - 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
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