- PTAB · Mar 15, 2022 · IPR2021-01347 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–25 on all asserted grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a)(2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the arguments and evidence of record, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the Challenged Claims of the ’298 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“to modify Birrell to use Logan’s method of transferring power using inductive coupling because this method would avoid interference problems and would allow “flexibility” when wirelessly powering devices having different voltage requirements. Id. at 13–14 (explaining that voltage magnitude adjustments may be made by adjusting the windings of the coils; for example, by including more windings in the transmitting coil than the receiving coil the transmitted voltage may be reduced). On this record, Petitioner explains sufficiently for purposes of institution why one of ordinary skill in the art would have combined the disclosures of Birrell and Logan to arrive at the devices and circuits set forth in Demonstrative A, and as described by Petitioner.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, Petitioner identifies sufficiently for purposes of institution where Birrell discloses every limitation of claim 6. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 6 is anticipated by Birrell.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,966,298 - PTAB · Mar 15, 2022 · IPR2021-01300 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all asserted grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion with Respect to Claim 1 On this record, Petitioner sufficiently identifies where each limitation of claim 1 is taught or suggested by Oba, Sato, Gillespie, and Hara. Petitioner also sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the identified references to arrive at the subject matter of claim 1 with a reasonable expectation of success. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 1 would have been obvious over Oba, Sato, Gillespie, and Hara.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“aspects of notebook computers, or generic computer systems, were known in the art and could be successfully substituted with, or used to modify, specific components of Oba. We disagree that reliance on these types of references is, by itself, evidence of hindsight reconstruction. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). Nor do we find that the Petition and the supporting evidence that it relies upon place an undue burden on the Board to resolve the current dispute between the parties, as argued by Patent Owner. c) Conclusion with Respect to Claim 1 On this record, Petitioner sufficiently identifies where each limitation of claim 1 is taught or suggested by Oba, Sato, Gillespie, and Hara. Petitioner also sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the identified references to arrive at the subject matter of claim 1 with a reasonable expectation of success. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 1 would have been obvious over Oba, Sato, Gillespie, and Hara.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“provides only a single, conclusory assertion regarding expectation of success with respect to implementing Hara’s disclosures in Oba’s notebook computer. Prelim. Resp. 10 (citing Pet. 21). We disagree. As noted above, Petitioner provides specific arguments and citations to record evidence to support its argument that one of ordinary skill in the art would have had a reasonable expectation of success in implementing Hara’s disclosures in the apparatus of Oba, Sato, and Gillespie. Pet. 20–21 (citing Ex. 1002 ¶¶ 106– 108; Ex. 1045, 11:27–35, 11:60–62, Fig. 4D2; Ex. 1013, 4:19–24, Fig. 1; Ex. 1044, 6:3–14, Fig. 14). In the absence of specific reasons to doubt Petitioner’s arguments, on this record Petitioner explains sufficiently for purposes of institution why one of ordinary skill in the art would have had a reasonable expectation of success in implementing Hara’s disclosures in the electronic device of Oba, Sato, and Gillespie.” slip op. at 16
§ 103 obviousnesscites KSRPatents in suitUS 11,019,697 - PTAB · Feb 18, 2022 · IPR2021-01369 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1, 11, and 13 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the Challenged Claims of the ’251 patent. Accordingly, we institute an inter partes review with respect to all Challenged Claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The following two-part framework is used to determine whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition does not provide proposed constructions for any terms of the ’251 patent. Pet. 11. And although Patent Owner disputes Petitioner’s assertions regarding certain claim terms, it does not contend that any terms of the ’251 require express construction for purposes of this Decision. See, e.g., Prelim. Resp. 23–24, 35. Upon review of the parties’ arguments and supporting evidence, we find that no terms of the ’251 patent require construction. 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,492,251 - Home Depot USA, Inc. v. Lynk Labs, Inc.InstitutedPTAB · Feb 18, 2022 · IPR2021-01367 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 5, 7, and 8 on all asserted grounds, finding a reasonable likelihood that Petitioner would show them unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Pursuant to 35 U.S.C. § 325(d), in determining whether to institute review “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The following two-part framework is used to determine whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the Challenged Claims of the ’551 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“circuity that provides an input to another circuit. Ex. 1010, 339. Simply providing an input to another circuit, however, would not allow the driver to accomplish the goals outlined in the ’551 patent. Instead, in each embodiment of the ’551 patent the driver is used to power a device or circuit, not merely provide a generic signal. See Ex. 1001, 6:37–39. This use of the term “driver” generally aligns with the second dictionary definition provided by Petitioner, i.e., “a program, circuit, or device used to power or control other programs, circuits or devices.”8 Ex. 1010, 339 (definition 3); Ex. 1001, 6:37–39; see Vitronics, 1584 n.6 (noting that dictionary definitions may be used when construing claims, “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents”). Thus, we find a “driver,” as that term is used in the ’551 patent, must be capable of providing power to another device or circuit. With respect to Patent Owner’s proposed construction, we note that although the ’551 patent discloses that a driver may be designed to provide a relatively fixed voltage and frequency output to LEDs, the written description does not suggest that the term “driver,” by itself, requires such functionality. Indeed, the ’551 patent reports optionally including an LED circuit inverter driver in order to sense changes to the load and re-adjust the 8 Consistent with this dictionary definition, the “driver” may both power and control another program, circuit, or device. On this record, however, mere control of another program, circuit, or device is insufficient to meet the requirements of the claimed “driver,” which must provide power to the program, circuit, or device. Thus, at this stage we do not find it necessary to include the optional capability of “control” in our adopted construction.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,154,551 - PTAB · Feb 9, 2022 · IPR2021-01370 · APJ Scott Raevsky · IPR · Institution
Instituted IPR of claims 9–17 on all petitioned grounds after finding a reasonable likelihood of success on each ground and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to speculate as to whether Petitioner’s stay request will be granted. See Fintiv, Paper 15 at 12 (PTAB May 13, 2020) (informative); Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative). Under these circumstances, factor 1 is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded there is a reasonable likelihood Petitioner would prevail with respect to the challenged claims. Accordingly, we institute an inter partes review of claims 9–17 on all of the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“indirectly controlled by a user. We agree with Petitioner that the “second switch” limitation does not require that the user directly control the switch. Reply 2. The plain language of the claim is illuminating. Claim 9 recites in part, “a first switch configured to be controlled by a user to control an amount of voltage or current” and “a second switch that allows the first LED circuit to be disconnected from the AC voltage source.” Patent Owner demonstrated that it knew how to claim user control by explicitly reciting that the first switch is “configured to be controlled by a user.” But Patent Owner omitted this same language from the recitation of the second switch, indicating an intentional decision to claim the second switch more broadly. In this situation, Patent Owner is mistaken that the second switch should be interpreted the same as the first switch because the claim explicitly limits each switch differently. The Specification supports our preliminary interpretation. It broadly explains that power to the LEDs “may be adjusted and controlled using any means known in the art.” Ex. 1001, 14:7–9. The Specification then gives an example of a dimmer switch for adjusting the power. Id. at 14:9–11. But not only does the Specification not state that a user directly turns the dimmer switch, it does not state that a user turns the dimmer switch at all. E.g., id. at 14:19–20 (“As the dimmer switch is turned . . . .” (emphasis added)). Even if one of ordinary skill in the art were to understand the dimmer switch to be directly user-actuated, it is merely one example of power adjustment “using any means known in the art.” See id. at 14:7–9. We thus do not see, on this record, any definition or disavowal in the Specification that would require a user to directly select the second switch.8” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Patent Owner because, on this record, Patent Owner’s argument rests on a claim construction of the “second switch” limitation that we have not adopted. That limitation does not require direct user control, as Patent Owner urges. Thus, on this record, Petitioner persuades us that Dowling’s processor-controlled switching discloses the disputed limitation. Patent Owner also attacks Petitioner’s reliance on Dowling’s three- way switch. Id. at 23–24. But this argument is similar to its previous argument—Patent Owner contends that Dowling uses a look-up table, program, or other system controls to control the LEDs via control signals, not a direct user-controlled switch. Id. at 24 (citing Ex. 1004 ¶ 65). This argument also relies on the claim construction that we have rejected at this stage. Lastly, Patent Owner contends that Petitioner’s statement that this three-way switch “could” be used for color control does not “demonstrate that it is in fact used for color control.” Id. We disagree—Patent Owner is splitting hairs. Dowling says that the switch “could be used for . . . color control,” which is sufficient at this stage to show that Dowling teaches color control using the switch.9 See Ex. 1004 ¶ 65. On this record, we agree that Dowling discloses this limitation.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,349,479 - PTAB · Feb 9, 2022 · IPR2021-01368 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1, 4, 8, 11, and 16 over all asserted grounds, finding a reasonable likelihood of success over Grajcar and Walter.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“7. Conclusion On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that the facts against exercising discretion collectively outweigh those favoring discretion. Accordingly, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“three grounds raised by Petitioner and it is unclear whether § 325(d) is sufficiently implicated for the petition as a whole, we need not decide this issue because we find that the same or substantially same art or arguments were not previously before the Office. Petitioner notes that the Office did not consider Grajcar but acknowledges that it did consider “similar patents.” Pet. 12; Ex. 1001, code (56). Patent Owner asserts that the Office considered Grajcar II, a continuation-in-part of Grajcar. Prelim. Resp. 28. For purposes of this analysis, we accept Patent Owner’s undisputed position that Grajcar contains substantially the same disclosure as Grajcar II. See id. Yet Patent Owner does not address that Petitioner’s ground 1 also includes Walter, which the Office did not consider. See id.; Ex. 1001, code (56). Patent Owner also does not contend that Walter is cumulative to or overlaps with other art considered during examination, including Grajcar II. See Prelim. Resp. 28. The parties’ arguments suggest that Walter may not, in fact, be cumulative of Grajcar II. Petitioner contends that to the extent Patent Owner argues that Grajcar’s switch is not integrated into an LED lighting device, this would have been obvious over Grajcar in view of Walter. Pet. 29. Patent Owner argues that Grajcar does not show integration—as predicted by Petitioner—but does not argue that Walter also fails to teach integration. See Prelim. Resp. 25–27 (arguing instead that Walter does not disclose the “switch” limitation). The record therefore suggests that Walter discloses at least some different functionality from Grajcar and thus is not cumulative over the similar reference, Grajcar II. Accordingly, we find that the same or substantially the same art or arguments were not previously before the Office. Thus, we need not address the material error prong of Advanced Bionics, and we decline to exercise our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“demonstrated a reasonable likelihood of prevailing on its challenge to claims 1, 4, 8, 11, and 16 over Grajcar and Walter. We do not decide at this stage whether Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 1, 4, 8, and 16 over Reymond and Stephens and its challenge to claims 1, 4, 8, 11, and 16 over Walter. Nevertheless, in view of SAS, 138 S. Ct. at 1355, we institute on all claims and all grounds presented in the Petition. See also 37 C.F.R. § 42.108(a) (“When 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.”). We do not address claim 17 because Patent Owner disclaimed it. Ex. 2003. At this preliminary stage, we have not made a final determination as to the patentability of the challenged claims or any underlying factual and legal issues. V. ORDER It is, therefore, ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter pates review of claims 1, 4, 8, 11, and 16 of the ’783 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 53
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[a] person of ordinary skill in the art (“POSITA”) . . . would have had a bachelor’s degree in electrical engineering, or similar technical field, with two years of relevant experience in the field of design and/or development of LEDs and circuits in the context of lighting control systems. An increase in experience could compensate for less education. Pet. 9 (citing Ex. 1002 ¶ 35). Patent Owner does not address the level of skill in the art at this stage. See Prelim. Resp. 33 (quoting, but not disputing, Petitioner’s proposed level of skill). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’783 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,757,783 - PTAB · Dec 14, 2021 · IPR2021-00862 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted review of claims 1–24 on all petition grounds, finding a reasonable likelihood of obviousness over the Swinger-based combinations in grounds 1–3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’001 patent is unpatentable. Accordingly, an inter partes review of all of the claims and all of the grounds presented in the Petition is hereby instituted.” slip op. at 2
- Skill levelSkill level board ownOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’001 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1015 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); see also Ex. 1053; Ex. 1054; 1; Ex. 2010; Ex. 2019. However, our decision to institute trial in this proceeding is not dependent upon the specific definition of ordinarily skilled artisan and would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not assert that any claim term requires express construction. See Pet. 6 (stating that it “reserves the right to respond to any constructions that PO submits”). Patent Owner does not present any remarks regarding claim construction. See generally Prelim. Resp. On this record and for purposes of this Decision, we determine that no claim terms require express construction. 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). To the extent further discussion of the meaning of any claim term is” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“After considering both the Petition and the Preliminary Response, we determine that Petitioner’s arguments and evidence on the issues of motivation to combine and reasonable expectation of success provide a sufficient basis on which to institute trial. We recognize the merit of Patent Owner’s counterarguments, which are supported by the expert testimony of Dr. Kang. Prelim. Resp. 21–22, 27–29 (citing generally Ex. 2002). The issues identified by Patent Owner implicate genuine issues of fact more appropriately resolved at trial. 37 C.F.R. § 42.108(c). We decline to engage in weighing of the information presented at this stage of the proceeding. We will evaluate both parties’ arguments and evidence once the record is fully developed during trial.” slip op. at 29
Claim construction§ 103 obviousnessPatents in suitUS 8,709,001 - PTAB · Dec 6, 2021 · IPR2021-00846 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–12 on all asserted grounds after finding a reasonable likelihood that Petitioner would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’356 patent. Accordingly, we institute an inter partes review of” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, Paper 29 at 13 (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 27. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded, on this record, that this disclosure rises to the level of a teaching away. First, Weikert does not address the specific laser system disclosed in Blumenkranz, which is already designed to successfully treat eyes with cataracts, and Patent Owner and Dr. Kang do not persuasively explain why Weikert’s concerns would apply to a non-excimer laser surgery system that is already designed to treat “eyes with cataracts.” See Ex. 1017 ¶ 8; Ex. 2002 ¶ 62; see also Ex. 2002 ¶ 57 (Dr. Kang asserting that the PRK and LASIK excimer laser systems disclosed in Weikert are unrelated to the claimed relaxation incision made during cataract surgery). Second, Weikert suggests that eyes with cataracts “could reduce the efficacy and safety of laser treatment” and that refractive keratotomy “can be an effective” option, but does not indicate that laser surgery is never, or is generally not, suitable for treating astigmatism in eyes with cataracts. Ex. 1019, 227 (emphasis added). As such, we are left with a disputed issue of material fact that is best resolved on a complete trial record.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“The evidence set forth by Patent Owner presents significant issues of fact to be addressed at trial. On the one hand, it is evident that modifying cataract surgical systems for use on the cornea, or providing a system that is capable of performing both corneal and lens surgery, was extremely difficult. Ex. 2006, 5:33–36, 25:27–31; Ex. 2007, 8:32–39, 15:53–58; Ex. 2009, 1209–11. On the other hand, Blumenkranz specifically asserts that its system is useful for not only cataract surgery, but also surgery on other areas of the eye, including the sclera, and Dr. Lubatschowski testifies that the system of Blumenkranz is “well-suited to perform . . . anterior incisions to permit access to the inner eye chamber.” Ex. 1017 ¶ 71; Ex. 1001 ¶¶ 107–108. Such evidence facially supports Petitioner’s case for obviousness. Thus, considering this evidence as a whole, we are left with a material issue of fact as to the capabilities of the Blumenkranz system that is best resolved on a complete trial record, and after reviewing the cross-examination testimony of the parties’ declarants.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,376,356 - PTAB · Dec 6, 2021 · IPR2021-00849 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1–14, finding a reasonable likelihood that the claims would be unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’548 patent. Accordingly, we institute an inter partes review of claims 1–14 of the ’548 patent. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“For purposes of this Decision, we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosures of the ’548 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the appropriate level of ordinary skill in the art may be reflected in “the prior art itself”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which demonstrates individuals having a broad array of scientific degrees that collaborate as a team. We note, however, that our decision to institute trial in this proceeding would not change were we to adopt Patent Owner’s proposed definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Both parties provide a construction of the term “cataract incision.” Pet. 7–9; Prelim. Resp. 17–18. Upon review of the parties’ arguments and supporting evidence, we determine that no claim terms require construction for purposes of this Decision. 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, Paper 29 at 13 (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 28–29. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73. Although minimal, given the type of document involved, and in the absence of any reason to question Petitioner’s and Dr. Lubatschowski’s assertions, Petitioner’s evidence is sufficient to present a reasonable likelihood that Weikert is prior art to the ’548 patent under 35 U.S.C. § 102(b).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,709,548 - PTAB · Nov 18, 2021 · IPR2021-00841 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR of claims 1–15 on all six asserted obviousness grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’648 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–15) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“Guidance”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“For purposes of this Decision, at this stage of the proceeding we generally accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’648 patent; however, we also agree with Patent Owner that such a definition should be flexible enough to include a person with a lesser academic degree and having experience working in the field, such as an engineer with clinical experience in ophthalmic surgery, as well as also including a medical doctor, such as an ophthalmic surgeon with experience working with medical optics and lasers, and that these people may collaborate. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Such an expanded definition of the person of ordinary skill in the art, including aspects of both parties’ definitions, is appropriate based on our review of the record, which includes a significant number of prior art references authored by PhDs, MDs, and BSs and combinations thereof. See, e.g., Ex. 1030 (we understand includes inventors that are PhDs and MDs); Ex. 1039 (we understand includes PhDs and MDs as inventors); Ex. 1040 (we understand inventor is a JD with a BS); Ex. 1041 (we understand authors are MDs); Ex. 1042 (we understand authors are PhDs, MD, and BS); Ex. 1043 (we understand authors are MDs); Ex. 1045 (we understand inventor is MD); Ex. 1046 (we understand the inventor is an MD); see also Ex. 1053; Ex. 1054; Ex. 1055; Ex. 2010; Ex. 2019.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” 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 asserts that, although dependent claim 12 is indefinite, its language, “to determine one or more axial locations of the anterior capsule of the lens; and or more anterior capsule axial locations,” should be construed to mean “to determine one or more axial locations of the anterior capsule of the lens (i.e., one or more anterior capsule axial locations).” Pet. 7–8; see also Ex. 1030, 18:46–50 (claim 12). Petitioner’s position is that, as it reads in the ’648 patent, claim 12’s language is “a nonsense phrase,” rendering it indefinite, but that for the purposes of this proceeding it may be understood by the definition set forth above. Pet. 7–8. Patent Owner does not ask that any claim language be expressly construed. See generally Prelim. Resp. Claim 12 depends from independent claim 1 and is but one of fifteen challenged claims. Ex. 1030, 17:30–18:61. It is not necessary for us to consider the Petition’s specific challenges to claim 12 to render our decision” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“At this stage of the proceeding, we find Petitioner has sufficiently explained how and why the cited prior art would have been combined, why the ordinarily skilled artisan would have had a reasonable expectation of success in doing so, and that such a combination teaches or suggests the limitations or steps of claims 1–5 and 12–15. We address Patent Owner’s preliminary arguments below. Patent Owner addresses Petitioner’s Grounds 1–3 together; each is based on a combination of Swinger, Baikoff, and Li. Prelim. Resp. 10–31 (citing, inter alia, Ex. 1001 (Izatt) ¶¶ 46–49, 143, 149, 159; Ex. 1030, 2:5– 13, 11:19–26, 17:38–45; Ex. 1039 (Swinger), 17:50–54, 19:23–28, 23:28– 31, 34:30–35:3, 35:18–36:17; Ex. 1041 (Baikoff), 1843–45, 1847, 1849, Fig. 10; Ex. 1043 (Hoppeler); Ex. 1044 (Li); Ex. 1046 (L’Esperance); Ex. 2002 (Kang) ¶¶ 32–39, 46–52, 55–57, 60; Ex. 2004 (Walter) ¶¶ 16–17; Ex. 2006, 286, 296–98).15 Patent Owner addresses the claims in this way as a set, presenting the same arguments for all claims, and addresses the dependent claims as not unpatentable because the additionally cited prior art (Hoppeler and L’Esperance) do not remedy the argued shortcomings regarding Swinger, Baikoff, and Li. Id. Patent Owner argues that the ordinarily skilled artisan would not have combined these references because Swinger requires a surgeon’s direct visualization for cataract surgery, foreclosing using OCT, and because Baikoff and Li teach that OCT is limited to the eye’s anterior chamber, which makes it impossible to obtain satisfactory imaging (e.g., of lens portions behind the iris’s shadow). Id. at 15–18. Patent Owner argues that Swinger’s use of direct visualization and Baikoff’s acknowledgement of an inability to OCT-image the lens where shadowed by the iris teaches away from using OCT in cataract surgery and the combination of the references. Id. at 15–19. Patent Owner argues that the prior art combination does not disclose a device that “generate[s] image data for the patient’s crystalline lens,” or “process[ing] the image data to determine an anterior capsule incision scanning pattern for scanning a focal zone of the laser beam for performing an anterior capsule incision,” as recited by claim 1. Id. at 21–30. Patent Owner also argues that Petitioner took positions before the Office contrary to those it now asserts, specifically that in 2010 OCT imaging could 15 Patent Owner cites this evidence by shorthand names, e.g., “Swinger” and “Kang.” Although Patent Owner is free to cite evidence by any manner it desires, it is more useful to the Board if citations reference exhibit numbers, which facilitates review of the record.” slip op. at 29
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,474,648
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.