- PTAB · May 12, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all petition grounds, and granted …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 10–116, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 5. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the supporting declaration of Dr. Bretschneider submitted by Feit Electric adopts the opinions of Cree Lighting’s expert, Dr. Lebby, in full, with minor clarifications . . . that are immaterial to the broader analysis.” Id. at 8, n. 1; see also Ex. 1021 (declaration of Dr. Bretschneider). Petitioner further states that it will rely on the declaration of Dr. Bretschneider “only in the event that Cree Lighting is terminated from the proceedings.” Mot. 8, n. 1. Patent Owner waives its preliminary response, and it does not dispute Petitioner’s arguments or evidence. See generally Waiver.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that its Petition is “essentially a copy of the Cree Lighting Petition.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR.” slip op. at 6
NonePatents in suitUS 6,465,961 - PTAB · May 12, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 21–91 listed in the order on all petition grounds and granted joinder in IPR2022-00847.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. INSTITUTION OF INTER PARTES REVIEW The Petition in this proceeding asserts the same grounds of unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 12–124, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 1. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the expert declaration of Dr. Christian Wetzel (Ex. 1021, “Wetzel Decl.”), [] is substantively identical to the declaration put forth in the Cree IPR.” Id. at 2. Petitioner further states that Dr. Wetzel agrees with the opinions of Cree’s expert and “adopts them as his own.” Id. at 2, n. 1.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that it uses “the same arguments, analysis, evidence, and grounds of unpatentability as the Cree IPR.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR. Petitioner agrees that, if joinder is granted, it will have a “true understudy role.” Reply. 1–2. Petitioner agrees to various restrictions as a true understudy and further agrees to any further limitations the Board may impose. Reply 2; Mot. 7–8 (“Petitioner will also abide by any additional conditions the Board deems appropriate”). Along these lines, Petitioner will abide by the following conditions so long as Cree is actively participating in this proceeding: 1. Petitioner will not take any depositions or otherwise participate in the proceeding (Reply 2);” slip op. at 6
NonePatents in suitUS 6,465,961 - Nespresso USA, Inc. v. K-Fee System GMHBInstitutedPTAB · Apr 14, 2023 · IPR2022-01574 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR of claims 1–13, finding a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, and Rossi.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier filed application only if the disclosure of the earlier application provides [written description] support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); see also In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“[A] patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority. Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.” (citations omitted)). The written-description inquiry is a question of fact, is context-specific, and must be determined on a case-by-case basis. Ariad banc). The test for sufficiency of support is whether the disclosure of the application relied upon “reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations . . . .” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). We determine that Patent Owner has not demonstrated, at this stage of the proceeding, that the Challenged Claims are entitled to claim priority to the second German application, and, as such, Jarisch ’929 is prior art on the current record. We determine that Patent Owner has not sufficiently demonstrated that the second German application provides written description support for at least the identifier as recited in independent claims 1, 7, and 10. We determine, at this stage of the proceeding and on the current record, that the embodiment of Figures 16, 17, and 18 does not show an identifier with a repeat pattern on the bottom side of the flange as required by the claims. The disclosure of the second German application explains that the means 2.4.2 is a toothed ring, with the teeth formed in the outer circumference of the flange, not on the bottom of the flange. See, e.g., Ex. 1047, 41:17–27 (explaining that the annular peripheral region 2.4 has “in its outer region” means 2.4.2 (emphasis added)); id., Fig. 18 (showing that the outer edge of the flange interacts with pinion 24).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Env’t Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe each claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).” slip op. at 16
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Yoakim, Jarisch ’929, and Rossi to arrive at the subject matter of the claims challenged in Ground 1. As an initial matter, Petitioner contends that Yoakim, Jarisch ’929, and Rossi are “analogous art in the field of portion 10 The U.S. patent statute precludes the type of multiple dependent claims appearing in the second German application. See 35 U.S.C. § 112(e) (2011) (“A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim.”). applied in automatic coffee/expresso machines.” Pet. 44 (referencing Ex. 1004 ¶¶ 2–3; Ex. 1006 ¶¶ 1–2; Ex. 1041, 1; Ex. 1003 ¶ 188); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention.” slip op. at 27
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,254,491 - PTAB · Mar 30, 2023 · IPR2023-00026 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claims 1 and 5 are anticipated by Prevost-2006.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We understand “filled” to have a broad plain and ordinary meaning. That is, “filled” broadly embraces the circumstances where something is fully filled or partially filled. Here, Petitioner’s declarant, Dr. Hoare, provides an opinion that is consistent with our understanding of the regular meaning of the word. Pet. 23; Ex. 1002, ¶ 142. We understand that Patent Owner’s position essentially contends that “filled” does not include “fully filled”—arguing that Prevost-2006 does not describe the extent to which the core material “filled” the shell structure, or that Petitioner does not show sufficiently that “filled” means “completely occupies.” Prelim. Resp. 8–10; Ex. 2001, ¶ 39. As an initial matter, we observe that neither Petitioner’s nor Patent Owner’s declarant directs us to information that would help us understand why an ordinarily skilled artisan would have understood “filled” to exclude the circumstance of being completely filled. Because of this, for purposes of deciding whether to institute review, we see no reason to interpret “filled” in a manner inconsistent with the term’s plain and ordinary meaning, which broadly includes the circumstance of being completely filled. Patent Owner is free to develop this issue in timely filed response to the Petition. On this record, however, we preliminarily find that Prevost-2006 meets the “completely occupies” limitation of claim 1 because its fiber is described as a shell structure that is “filled” with a core structure. Ex. 1010, 345, 349. That circumstance distinguishes Provost-2006 from the Lee reference, which unlike Provost-2006 concerned “hollow fibers” and, during examination, was overcome by an amendment that added the “completely occupies” limitation. Prelim. Resp. 9 (quoting Ex. 1004, 616) (emphasis omitted).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We understand “filled” to have a broad plain and ordinary meaning. That is, “filled” broadly embraces the circumstances where something is fully filled or partially filled. Here, Petitioner’s declarant, Dr. Hoare, provides an opinion that is consistent with our understanding of the regular meaning of the word. Pet. 23; Ex. 1002, ¶ 142. We understand that Patent Owner’s position essentially contends that “filled” does not include “fully filled”—arguing that Prevost-2006 does not describe the extent to which the core material “filled” the shell structure, or that Petitioner does not show sufficiently that “filled” means “completely occupies.” Prelim. Resp. 8–10; Ex. 2001, ¶ 39. As an initial matter, we observe that neither Petitioner’s nor Patent Owner’s declarant directs us to information that would help us understand why an ordinarily skilled artisan would have understood “filled” to exclude the circumstance of being completely filled. Because of this, for purposes of deciding whether to institute review, we see no reason to interpret “filled” in a manner inconsistent with the term’s plain and ordinary meaning, which broadly includes the circumstance of being completely filled. Patent Owner is free to develop this issue in timely filed response to the Petition. On this record, however, we preliminarily find that Prevost-2006 meets the “completely occupies” limitation of claim 1 because its fiber is described as a shell structure that is “filled” with a core structure. Ex. 1010, 345, 349. That circumstance distinguishes Provost-2006 from the Lee reference, which unlike Provost-2006 concerned “hollow fibers” and, during examination, was overcome by an amendment that added the “completely occupies” limitation. Prelim. Resp. 9 (quoting Ex. 1004, 616) (emphasis omitted). Claim 5 further recites that “a cell or cell culture is contained in the micro gel fiber.” As we observe above, Prevost-2006 discloses that its “hollow fibers were filled with islets [cells] suspended in agarose.” Ex. 1010, 345; Pet. 24. Thus, on this record, we also find that Prevost-2006 discloses the claimed microfiber containing “a cell or cell culture” within the micro gel fiber. Accordingly, we determine that Petitioner has established a reasonable likelihood that it “would prevail with respect to” claim 1 and claim 5 based on anticipation by Provost-2006. 35 U.S.C. § 314(a). To provide guidance to the parties and streamline the issues for trial, we discuss below the other challenges asserted in the Petition.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“For example, Petitioner does not identify a reason why an ordinarily skilled artisan would have combined the teachings of double-layer and single-layer fibers. We recognize that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Nevertheless, to support a conclusion of obviousness when combining the teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we have doubts that Petitioner provides sufficient reasons an ordinarily skilled artisan would have combined the teachings of the multiple references asserted in this challenge to achieve the claimed invention or would have reasonably believed they would have been successful in doing so. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (showing of a motivation to combine references must include evidence that a skilled artisan would have reasonable expectation of success in doing so).” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“We have concerns about whether Petitioner shows sufficiently that Nelson- 603’s disclosures would have led an ordinarily skilled artisan to create an “alginate-alginate bicomponent fiber.” Petitioner’s arguments and Dr. Hoare’s opinions contain similar wording and do not explain adequately why an ordinarily skilled artisan would have created such a fiber—beyond Nelson-603’s general disclosure that “it will be apparent to those of skill in the art that variations may be applied to the compositions and methods.” Pet. 39–40; Ex. 1002, ¶¶ 162, 199, 120; Ex. 1011, 12:57–66; 33:58–66. Without additional evidence and reasoning, we assign Dr. Hoare’s testimony on this issue little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (designated: February 10, 2023) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). On this record, that general instruction is not sufficient to establish that Nelson-603 would have prompted an ordinarily skilled artisan to modify any fiber disclosed in the reference to achieve the claimed invention.” slip op. at 15
§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,785,195 - 3M Company v. Bay Materials, LLCInstitutedPTAB · Jan 18, 2023 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7, 11–14, 18, and 31 on all asserted grounds, finding at least one claim sufficiently shown anticipated by Yu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition includes detailed arguments that map the limitations of the challenged claims to specific disclosures in Yu (Sample 1). Id. at 50–62. The Petition also maps adequately the limitations of the challenged claims to specific disclosures in Stewart (Example 2). Id. at 62–66. For example, Petitioner shows sufficiently that Yu (Example 1) coextrudes “a multilayered polymeric film,” that is, a “sheet,” arranged in the hard-soft-hard-soft-hard, five-layer configuration required by claim 11. Pet. 50–51; Ex. 1002 ¶¶ 124, 126–128; Ex. 1012 ¶¶ 63, 78, 92. Petitioner also shows sufficiently that the hard layers in that configuration of Yu (Example 1) are “hard” and the hard layers are “hard” within the meaning of claim 11. Pet. 53; Ex. 1002 ¶ 131; Ex. 1012 ¶ 78. In other words, Petitioner shows sufficiently, on this record, that Yu (Example 1) anticipates claim 11. Based on the information presented, we find that Petitioner shows sufficiently, for purposes of trial institution, that at least one challenged claim of the ’263 patent is anticipated by Yu (Sample 1).” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“That prior art disclosure of elastomeric materials for use as the outer layers in an unclaimed and disfavored soft-hard-soft layer configuration does not convey, with reasonable clarity, that the inventors had possession of the claimed subject matter, in which the elastomeric material forms the inner layer of a polymeric sheet in a hard-soft-hard layer configuration. See id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure of the ’176 application (Ex. 2001 ¶ 109), that circumstance is insufficient to establish written description support. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that precedent). Accordingly, we agree with Petitioner that the invention that Patent Owner seeks to protect in the ’263 patent does not appear to be “part of the invention” described in the ’176 application. Pet. 40; see Ex. 2001 ¶ 109 (describing elastomeric materials, having the specified hardness, only in the context of an unclaimed prior art soft-hard-soft embodiment). On this record, we preliminarily agree with Petitioner that the earliest effective filing date to which the ’263 patent appears to be entitled is December 18, 2019, namely, the filing date of the ’256 application, from which the ’263 patent issued. Ex. 1001, codes (21), (22). Patent Owner may contest this issue in a timely response to the Petition.” slip op. at 9
- Skill levelNot reached
“The parties disagree about whether the ordinarily skilled artisan would have had specific “experience with dental appliances or access to individuals with such experience.” Prelim. Resp. 17; see Pet. 14–15 n.1 (disagreeing with that proposition). Neither party explains why a resolution of that Stat. 284 (September 16, 2011), includes revisions to Section 102(a) that became effective on March 16, 2013. For reasons explained in this Decision, on this record it appears Petitioner is correct that the challenged claims are entitled to an effective filing date no earlier than December 18, 2019 and, therefore, the AIA provisions apply in this proceeding. See Pet. 22, 39–40; Ex. 1001, code (60). 2 WO 20010/043419 A1, published Apr. 22, 2010, with English Translation (Ex. 1015). 3 We take notice that the first and second grounds identified in the Petition assert anticipation based on the same prior art disclosure. 4 US Pub. 2004/0224283 A1, published Nov. 11, 2004 (Ex. 1008). dispute is necessary to this Decision to institute review. See, e.g., Prelim. Resp. 17 n.2 (“even under Petitioner’s proposed definition, the Petition fails to show a reasonable likelihood that any claim is unpatentable”); Pet. 14–15 & n.1 (arguing about the issue without explaining how a resolution of the dispute would change the outcome of the decision on institution). If either party believes that the difference in level of skill would have a material effect on the analysis of the patentability of the challenged claims, that issue should be specifically addressed in briefing during the trial. We will resolve that dispute only to the extent necessary in any final written decision. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). “Petitioner discusses the terms “layer A,” “layer B,” “layer C,” “layer C,” “layer B',” inner layer B,” “inner layer B',” and “inner layer D.” Pet. 15–20. Patent Owner discusses the terms “layer” and “inner.” Prelim. Resp. 19–22. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 15–20 (addressing issues of claim construction, without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 19–22 (same).” slip op. at 7
Claim construction§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,870,263 - 3M Company v. Bay Materials, LLCInstitutedPTAB · Jan 18, 2023 · IPR2022-01214 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted IPR of claims 1–4, 7–11, and 13 on all asserted obviousness grounds, including grounds without Sun despite concerns about their sufficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusions on the Sufficiency of Petitioner’s Information Petitioner shows sufficiently that the subject matter of at least one challenged claim would have been obvious based on the ground that asserts Sun. See Pet. 6 (Ground 3). We have concerns about the sufficiency of Petitioner’s showing with respect to the grounds that do not assert Sun. See id. (Grounds 1 and 2). We institute an inter partes review of all challenged claims based on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)8 (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 20
- Skill levelSkill level board ownOther
“The parties disagree about whether the ordinarily skilled artisan would have had specific “experience with dental appliances or access to individuals with such experience.” Prelim. Resp. 9; see Pet. 10–11 n.1 (disagreeing with that proposition). Neither party explains why a resolution of that dispute is necessary to this Decision to institute review. See, e.g., Prelim. Resp. 9 n.2 (“even under Petitioner’s proposed definition, the Petition fails to show a reasonable likelihood that any claim is unpatentable”); Pet. 14–15 & n.1 (arguing about the issue without explaining how a resolution of the dispute would change the outcome of the decision on institution). If either party believes that the difference in level of skill would have a material effect on 5 US Pub. 2004/0224283 A1, published Nov. 11, 2004 (Ex. 1008). the analysis of the patentability of the challenged claims, that issue should be specifically addressed in briefing during the trial. We will resolve that dispute only to the extent necessary in any final written decision. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (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
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner discusses certain terms at issue in the District Court action, such as “layer A,” “layer B,” “layer C,” “inner layer B,” and “flexural modulus” ranges, without proposing any express constructions. Pet. 12–15. Patent Owner does not provide arguments directed specifically to proposed claim constructions. See generally Prelim. Resp. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 12–15 (addressing issues of claim construction, without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 12–39 (addressing the merits of Petitioner’s challenges, without asserting an express claim construction).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We preliminarily find that Hinz would have alerted the ordinarily skilled artisan that the choice of “layer thicknesses” in a multilayer dental structure “ensure[s] very good mechanical properties.” Ex. 1002 ¶ 100; Ex. 1015, 4:116–119. Where Sun teaches that the flexural modulus of dental structures would have been recognized as one such mechanical property (id. ¶ 160; Ex. 1018 ¶ 12), we further accept, at this preliminary stage, that an ordinarily skilled artisan would have understood how variations “in the relative thicknesses of the respective layers” desirably impact the flexural modulus (id. ¶ 105). Furthermore, in view of Sun’s disclosure of advantages associated with dental structures having a preferred flexural modulus, and the fact that those exact same advantages expressly were of interest to Hinz, we are not persuaded by Patent Owner’s argument, on this record, that it makes a difference that Sun discusses two-layer structures, whereas Hinz discusses three-layer structures. Pet. 65–66 (citing Ex. 1002 ¶¶ 158–160; Ex. 1015, 3:74–76; Ex. 1018 ¶ 4); see Sur-reply 5 (Patent Owner, identifying distinctions without a difference in Sun). In other words, Sun’s teachings appear, on this record, to apply generally to multilayer dental structures, including the multilayer structures of Hinz. For the above reasons, although the issue is a close one, we find that Petitioner shows sufficiently for purposes of trial institution that the ordinarily skilled artisan would have had a reason, and possessed the technical acumen, to select combinations of layer thickness values, from among the ranges disclosed in Hinz, to attain a multilayer dental structure having a desirable flexural modulus, as suggested by Sun. Patent Owner may address that preliminary finding in a timely response to the Petition.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,946,630 - PTAB · Dec 20, 2022 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Institution
The Board instituted post-grant review of the sole claim on the Petition’s grounds and granted Samsung’s motion to join PGR2022-00031.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS Before deciding joinder questions, the Board first determines whether the petition “warrants the institution of a post-grant review under section 324.” See 35 U.S.C. §§ 325(c), 324(a) (stating that the petition “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”); see also Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020) (interpreting joinder requirements in inter partes review under 35 U.S.C. §§ 314(a), 315(c)). When a second petition is a “me-too” or “copycat” petition, the institution analysis may include a General Plastic analysis. See Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) (designated as precedential on December 4, 2020) (“Uniloc”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Although the decision in Uniloc informs that a petitioner’s failure to adequately address these factors may weigh in favor of discretionary denial, this case is distinguishable because Petitioner has not previously filed a petition challenging the validity of the ’702 patent claim. See, e.g., Uniloc, Paper 9 at 11. The Petition is substantively the same as the petition in PGR 031 and includes notice of Petitioner’s intention to file the joinder motion. See Pet. 1; Mot. 1–2. This factor is neutral given Petitioner’s willingness “to proceed solely on the grounds, evidence, and arguments advanced, or that will be advanced, in” PGR 031. Mot. 1– 2.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder must be filed “no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner timely filed the Motion for Joinder on October 28, 2022, within one month of the Decision of Institution in PGR 031. See Mot. 14; PGR 031, Paper 22. The Petition indicates Petitioner’s intent to file the Motion for Joinder. See Pet. 1. The Petition is substantively identical to the petition in PGR 031 and, accordingly, presents no new grounds. Mot. 6–8. Because Petitioner seeks only to join the first proceeding as a party, and makes no arguments in its Petition that differ from those already being addressed in PGR 031, we grant the Motion for Joinder. In so doing, we take account of Petitioner’s assertions that joinder will not impact the trial schedule because there are no new grounds and, furthermore, Petitioner “consents to any trial schedule adopted in” PGR 031. Mot. 7–8. The Board agrees that joinder should not impact the trial schedule.” slip op. at 11
Discretionary denial - PTAB · Mar 16, 2022 · IPR2021-01497 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR of claims 1–22 on all petitioned grounds, finding a reasonable likelihood that Pohlert anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been anticipated by or obvious over the proposed prior art. 6 At this stage of the proceeding, the parties have not asserted or otherwise directed our attention to any objective evidence of nonobviousness.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a good working knowledge of electrical engineering and entertainment lighting systems, controls, and effects.” Pet. 7 (citing Ex. 1006 ¶ 36). Accordingly, Petitioner states that such a person would have had “an undergraduate Bachelor’s degree in electrical engineering, or a comparable field, as well as some experience in the field” and that “the more education one has, the less experience needed to attain an ordinary level of skill. . . . [and] [s]imilarly, more experience in the field may serve as a substitute for formal education.” Id. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Patent Owner’s Preliminary Response Waiver, passim. On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on 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))). We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim terms for construction. See Pet. 7. For purposes of this Decision, we need not expressly construe any claim terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
Claim constructioncites KSR · GrahamPatents in suitUS 10,197,258 - PTAB · Mar 16, 2022 · IPR2021-01496 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood that Pohlert anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the evidence and argument presented in the Petition and determine, for purposes of this Decision, that Petitioner has shown a reasonable likelihood of prevailing with respect to its contention that the subject matter of claim 1 of the ’257 patent is anticipated by Pohlert. Therefore, Petitioner establishes a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose any claim terms for construction. See Pet. 7. For purposes of this Decision, we need not expressly construe any claim terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“2. Analysis of Claim 1 Petitioner alleges that Pohlert anticipates claim 1. Pet. 58. Petitioner asserts that “Pohlert discloses a method for controlling a lighting system having LED ‘light panels’ controlled by a ‘power controller,’ enabling users to select and modify lighting special effects such as patterns of strobing, flashing, and dimming and brightening the lights” as claimed in claim 1. Id. (citing Ex. 1003, Abstract, ¶¶ 20, 50, 63, 67, 103). According to Petitioner, Pohlert’s method “can be used for ‘photography, film, television, and other applications.’” Id. (quoting Ex. 1003 ¶ 3); see also Ex. 1003, Figs. 1, 3 (illustrating both video cameras and still cameras).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“84–89, 94–99) and that Pohlert would have rendered claims 11 and 16 of the ’257 patent obvious (id. at 83–84, 90–94). We have reviewed the evidence and arguments Petitioner provides, including the relevant portions of the Wood Declaration, and determine, on this record, that Petitioner’s challenges to claims 2–21 based on anticipation or, alternatively, obviousness (claims 11 and 16), in view of Pohlert, are adequately supported for institution purposes.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,197,257 - PTAB · Mar 16, 2022 · IPR2021-01498 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–21 on all grounds, finding a reasonable likelihood that Edwards anticipates or renders obvious at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2020); 37 C.F.R. § 42.4(a). The standard for instituting 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” that “there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the following reasons, we determine Petitioner shows a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition, and institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“2. Analysis of Claim 1 Petitioner shows sufficiently that Edwards discloses each limitation of claim 1. Pet. 8–36. For example, the preamble of claim 1 recites, “A method” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“2. Analysis of Claim 1 Petitioner shows sufficiently that Edwards discloses each limitation of claim 1. Pet. 8–36. For example, the preamble of claim 1 recites, “A method” slip op. at 12
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,203,101
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.