- Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing was granted and IPR instituted on claims 1–28 because the petition showed a reasonable likelihood that claim 1 was obvious over Linnarsson, McCloskey, and ordinary skill.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can provide a distinction based on a ‘polynucleotide sequence.’” Req. 6 (quoting Dec. 14 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we erroneously determined that the proposed modification could not achieve the claim language, stating the following: Petitioner’s proposal appears to defeat satisfaction of another portion of claim 1, namely a “second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.” Ex. 1001, 30:62–64. For if the second tag is “added to the CDS or TSO after extension,” as opposed to the sample polynucleotide, as Petitioner argues (Pet. 39 (emphasis added)), it would appear that the second tag would be incapable of distinguishing any sample polynucleotide from other sample polynucleotides. Rather, the second tag would be ligated to each and every extension product bearing a CDS or TSO without regard to the sequence of any sample polynucleotide. Dec. 16. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis. 2. Advanced Bionics Part Two Patent Owner argues that the Petition “fails to show any error in the Examiner’s application during prosecution of the prior art teachings Petitioner now purports to invoke from . . . McCloskey.” Prelim Resp. 23; see also id. at 24–25 (“Revisiting the same art and arguments already overcome during prosecution is a waste of the Board’s limited resources and would unfairly burden PO.”). However, Petitioner argued that “the Examiner committed major error in Examination by erroneously stating that the prior art fails to teach a dual tagging approach when, in fact, this approach is plainly taught in both McCloskey and McCloskey II.” Pet. 67. The record supports Petitioner’s position, and we agree that the error was material to patentability. See Ex. 1005, 131 (Notice of Allowance). Accordingly, and having considered all of the Becton, Dickinson factors, we do not exercise discretionary denial.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey with the knowledge of a person of ordinary skill in the art to obtain the claimed subject matter. 8. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 21
- Obviousness (§103) › Analogous artNot reached
“the three references is analogous art to the ’013 patent as opposed to each other. Prelim. Resp. 46 (citing Pet. 35; Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi- Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’013 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,697,013 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing granted and IPR instituted on claims 1–26; the Board found a reasonable likelihood that claim 1 would have been obvious over Linnarsson and McCloskey.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can ‘provide a distinction based on a polynucleotide’s sequence.’” Req. 6 (quoting Dec. 15 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we denied the Petition because “adding a second tag sequence to Linnarsson’s CDS and/or TSO would do nothing to achieve such a distinction,” i.e., “a distinction based on a polynucleotide’s sequence.” Id. at 15. That was error. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the ’197 patent. See Ex. 1001, code (56) (listing McCloskey II under “References Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey to obtain the claimed subject matter. 6. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 18
- Obviousness (§103) › Analogous artNot reached
“GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi-Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’197 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,240,197 - PTAB · Feb 1, 2024 · IPR2023-01298 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Chell anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have possessed a strong understanding in the use and development of genetics and genomics approaches for detecting or monitoring human diseases, such as spatial detection of a target analyte (e.g., mRNA or DNA) in a tissue, and would typically have a Ph.D. in a relevant field (e.g., molecular biology, genetics, and bioinformatics) with two years of experience. Pet. 14 (citing Ex. 1002 ¶¶ 24–25). For the purposes of its Preliminary Response, Patent Owner does not provide its own proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s unchallenged definition as it is consistent with the cited prior art and disclosure of the ’689 patent.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“a) contacting the tissue sample with a plurality of nucleic acid probes, wherein each of the nucleic acid probes comprise a target binding domain that binds to the at least one target analyte, wherein the tissue sample [has been] is treated to facilitate binding of the nucleic acid probes to the target analyte b/c) collecting the nucleic acid probes, or portions thereof, bound to the at least one target analyte in a first/second location of the tissue sample under conditions that release the nucleic acid probes, or portions thereof, from the first/second location of the tissue sample d/e) performing an extension reaction that incorporates at least one nucleic acid sequence that identifies the first/second location of the tissue sample into each of the nucleic acid probes, or portions thereof, collected in step (b), thereby forming a first plurality of extension products that comprise the nucleic acid probes, or portions thereof, collected in step (b) and the at least one nucleic acid sequence that identifies the first/second location of the tissue sample Ex. 1001, 145:51–147:11 (emphasis added). Thus, according to claim 1, the “nucleic acid probe” must 1) comprise a target binding domain that binds to the at least one target analyte, 2) be bound to the at least one target analyte; 3) be released in whole or as a portion, and 4) have a location-identifying nucleic acid sequence incorporated into it through an extension reaction. Steps a), b), and c) occur in relation to the target analyte, while steps d) and e) occur after the probe is” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We further interpret “collecting the nucleic acid probes” to mean “releasing all or a portion of the nucleic acid probe bound to the at least one target analyte through application of a force followed by retrieval of the released probe or portion of the probe.” The question then becomes whether So-465, which teaches replication of a probe that was bound and then at least partially released to make genomic amplicons, followed by collection of those genomic amplicons, anticipates collection of probes as recited in claims 1 and 16. On this record, we do not see sufficient evidence that the genomic amplicons disclosed in So-456 that Petitioner identifies as “captured” were ever “bound to the analyte” in part or in whole as required by the claim language, but rather were amplified in situ from the probe or partial probe that was released. Ex. 1005 ¶¶ 181–183. In particular, the process of So-456 differs from the ’689 patent claims in that the extension reaction to incorporate the tissue-identifying nucleic acid sequence in So-465 occurs after the identifier nucleotide is cleaved from the tissue sample. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Petitioner has not demonstrated that So-456 teaches this claim limitation or otherwise demonstrates that this limitation would have been inherent in the disclosure of So-456 for claims 1 and 16. For these reasons, on this record we determine that Petitioner has not shown a reasonable likelihood that So-456 anticipates either of independent claims 1 or 16.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,377,689 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Jan 29, 2024 · IPR2024-00035 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–30, finding a reasonable likelihood that claims 1–30 are unpatentable under § 103, and granted AO Kaspersky Lab’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“which provides that 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.” For the reasons described below, we institute inter partes review of all the challenged claims, and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the” slip op. at 3
NonePatents in suitUS 8,726,389 - PTAB · Jan 29, 2024 · IPR2023-01296 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 56–87 on the asserted grounds and granted Porsche’s motion to join IPR2023-00318, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. INSTITUTION OF INTER PARTES REVIEW Petitioner represents that the “Petition is essentially a copy of the petition filed in” the VW IPR and that the Petition is “based on the same grounds.” Mot. 1, 2–3. Our independent review of the Petition and the VW IPR petition confirms Petitioner’s representations, and that the petitions in the two proceedings are substantially the same. Further, although Petitioner relies on a different expert declarant, Petitioner submits that the two declarations are “substantively identical.” Id. at 3. Having already considered the merits of those challenges and the evidence in the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–40) are not persuasive.9 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00318, Paper 11.” slip op. at 7
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–40) are not persuasive.9 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00318, Paper 11.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. Mot. 4–5.” slip op. at 8
Discretionary denialPatents in suitUS 9,955,551 - Trend Micro, Inc. v. Open Text Inc.InstitutedPTAB · Jan 25, 2024 · IPR2023-01459 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–30 based on a reasonable likelihood of unpatentability under § 103 and granted Trend Micro’s motion to join the CrowdStrike IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that 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.” For the reasons described below, we institute inter partes review of all the challenged claims, and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. SoftView LLC, Case IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 4
NonePatents in suitUS 8,726,389 - PTAB · Jan 22, 2024 · IPR2023-01225 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 24–55 on the asserted §103 grounds and granted Porsche’s motion to join IPR2023-00315, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–39) are not persuasive.8 Therefore, for the same reasons stated in our 8 Patent Owner notes that “the non-institution arguments in this Preliminary Response essentially repeat the non-institution arguments that were raised in the already-instituted target case.” Prelim. Resp. 1. Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00315, Paper 11.” slip op. at 7
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–39) are not persuasive.8 Therefore, for the same reasons stated in our 8 Patent Owner notes that “the non-institution arguments in this Preliminary Response essentially repeat the non-institution arguments that were raised in the already-instituted target case.” Prelim. Resp. 1. Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00315, Paper 11.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. Mot. 4.” slip op. at 8
Discretionary denialPatents in suitUS 9,955,551 - PTAB · Jan 19, 2024 · IPR2023-01034 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–33, finding a reasonable likelihood that Petitioner would prevail on its obviousness challenges over Alden and Kobayashi, and Alden, Beam, and Kobayashi.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“regarding a statutory bar or estoppel, arguing that we should therefore not assess the potential relationship. Prelim. Reply 1; see SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020) (precedential). Regardless of whether an RPI relationship may, in some case, influence factor 1, we determine that it would not support discretionary denial here. In particular, in IPR2022-01500, we instituted review and did not find the petition deficient. IPR2022-01500, Paper 15. Thus, Petitioner’s assertion of a different reference does not appear to have resulted from that prior IPR. And that proceeding settled without a final written decision, further supporting that Petitioner received no benefit from Unified’s IPR.” slip op. at 6
- 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 9. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“shaping light” as claimed. Prelim. Resp. 31–33. In that regard, Patent Owner asserts Alden’s Figure 11 application “merely changes the direction of light emitted by the headlight . . . but does not shape the light emitted.” Id. at 32 (emphasis omitted). Patent Owner further supports its position by pointing out that Alden never discusses “shaping” the projected light. Id. As discussed above, Petitioner relies on Alden’s disclosures that the Figure 11 application can “concentrate light to look around corners in response to road conditions” and that the headlights “direct light into the corner.” Pet. 25–26 (citing Ex. 1005 ¶¶ 36, 54, Fig. 11). Petitioner relies additionally on Kobayashi’s teaching of controlling light according to “the road profile.” Pet. 23 (quoting Ex. 1006, 5:5–8). Patent Owner asserts that Petitioner’s contentions conflate “directing” light with “shaping” light, but Patent Owner does not explain further. Patent Owner appears to be relying on particular view of what “shaping” requires but has not offered a claim construction at this stage. It seems that light projected out at different angles through Alden’s or Kobayashi’s optical system would have different shapes, as a result of each system’s characteristics. Moreover, Alden’s teaching to “concentrate” light appears to address the claims’ requirement for shaping light. We determine that Petitioner’s contentions support institution. slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,208,029 - PTAB · Jan 19, 2024 · IPR2023-01231 · APJ Aaron W Moore · IPR · Institution
The Board instituted inter partes review of claims 20–25 and 59–64 on all asserted grounds and granted Porsche’s motion to join IPR2023-00197, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 65–74) are not persuasive.9 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4.” slip op. at 7
NonePatents in suitUS 10,894,503 - PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- BurdenMixed
“Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503
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.