- PTAB · Mar 27, 2025 · IPR2024-01451 · APJ Erica A Franklin · IPR · Institution
The Board instituted review of claims 1–19 on all petition grounds, finding a reasonable likelihood that claim 1 would have been obvious over Larson alone.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“of whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). Rather, when considering the Fintiv factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, factors one and six are neutral, factors two and three weigh against discretionary denial, and factors four and five favor denial. We assign less weight to the existence of an overlap in asserted claims and prior art, in view of there being no trial date scheduled in the District Court case and no persuasive evidence that the court’s trial date would be expected to be significantly before the due date of our Final Written Decision. Therefore, after weighing all of the factors, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage in the proceeding, Patent Owner does not dispute Petitioner’s description of the person of ordinary skill in the art. Prelim. Resp. 27. In view of this, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition for purposes of this Decision. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Therefore, we do not apply this aspect of Petitioner’s formulation.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that there is no need to expressly construe any claim term to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that any discussion regarding the scope of a claim term is relevant to our decision, we address that issue in our analysis of the asserted grounds of unpatentability.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Owner that Petitioner has not demonstrated sufficiently in the Petition, for purposes of institution, that all of the portions of Saxonov relied upon in the Petition are prior art. In particular, we determine that Petitioner has not established that the disputed portions of Saxonov are entitled to claim the benefit of the ’013 provisional filing date because Petitioner has failed to satisfy the second condition for this benefit, i.e., by showing that the provisional application provides sufficient support for certain subject matter in Saxonov relied upon for prior art purposes in the Petition.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,827,921 - PTAB · Feb 25, 2025 · IPR2024-01296 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR of claims 1–46 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 1 and 5 are neutral, factors 2 and 3 weigh against denial, and factor 4 is of institution, does not outweigh factors 1–3 and 5. As a result, we need not and, therefore, do not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Fintiv Determination The balance of all Fintiv factors do not favor the exercise of our discretionary powers to deny institution. Therefore, we determine that discretionary denial is not appropriate in this case.” slip op. at 20
- Parallel petitionsDenied
“B. 35 U.S.C. § 314(A) – PARALLEL PETITION The Petition seeks inter partes review of the same claims of the ’380 patent that Petitioner previously requested review of in IPR2024-00953. Pet. 1. Patent Owner argues that the Petition should be discretionarily denied under § 314(a) for failure to show good cause for a second petition. Prelim. Resp. 67–73. The Board denied institution in IPR2024-00953, exercising discretion under § 314(a) based on the existence of the petition in this proceeding. IPR2024-00953, Paper 18. We thus decline to deny institution based on a parallel petition.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“However, we find that Fang is not cumulative of the art considered by the Examiner in prosecution. Further, Patent Owner does not direct attention to, and we do not see, how or where the Examiner considered Khalil for teaching removing the air line for directly connecting the external pump to connecting a pump housing to a diaphragm housing” (POPR 50), the Examiner specifically found that Khalil did not teach the diaphragm housing being fixed to a recessed surface of the pump housing (Ex. 1002, 24), for which Petitioner relies on Fang (Pet. 37). And we note that Petitioner relies on Fang for the element the Examiner found was not taught by the prior art, including Khalil. Ex. 1002, 24; Pet. 37. Accordingly, we determine that discretionary denial is not warranted because the asserted combinations, all of which include Fang, were not previously presented to the Office. Because we determine that part one of the framework is not satisfied, we need not, and therefore do not, turn to part two of the analysis, which concerns whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 5. Conclusion Regarding Discretionary Denial under § 325(d) The Advanced Bionics framework “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics, IPR2019-01469, Paper 6 at 9. Under the present circumstances, we determine that the same or substantially the same prior art combinations or arguments were not previously presented to the Office. Accordingly, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 27
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the claims challenged in the Petition. Accordingly, inter partes review of the ’380 patent shall proceed in this case on all of the grounds raised in the Petition. See SAS, 138 S. Ct. at 1359–60; PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 65
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,413,380 - PTAB · Jan 23, 2025 · IPR2024-01095 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that claim 9 is unpatentable over Suzuki and Caldwell.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Patent Owner that this second factor favors denial based on the trial date set for the District Court action, as well as the District Court’s median time-to-trial data.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. REASONABLE LIKELIHOOD OF PREVAILING Although we have closely reviewed each asserted ground, in evaluating Petitioner’s reasonable likelihood of prevailing, we focus our discussion on Ground IX, which concerns the asserted unpatentability of claim 9. As claim 9 depends from claim 1, we additionally discuss that claim. We determine that Petitioner’s arguments regarding claim 9 demonstrate a reasonable likelihood of prevailing with respect to at least one claim.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Caldwell teaches that “[b]ecause backlighting can be advantageously aligned with an operative touch surface, it is sometimes desirable to locate a touch sensor in close proximity to and/or atop a light emitting device.” Ex. 1011 ¶ 6; see Pet. 74. Petitioner argues that integrating a touch sensor into a light emitting device can “greatly reduce the cost and complexity of using backlighting with touch sensors” and can “reduce or eliminate the extra material and manufacturing cost associated with the separate touch sensor and lighting assemblies known in the art, which must be electrically coupled and aligned.” Pet. 74 (quoting Ex. 1011 ¶ 7). Petitioner argues that such reduction of cost and complexity, as well as a desire for a thinner OLED profile, would have motivated one of skill in the art to combine touch sensor functionality into the device of claim 1. Id.; see also Ex. 1003 ¶¶ 241, 242.” slip op. at 22
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,828,425 - PTAB · May 21, 2024 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding compelling evidence that Hirler anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). We may institute review, however, only upon a determination that “there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, for reasons set forth below, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Id. 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. We also apply additional guidance issued by the Director on the application of the Fintiv factors. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022).12 The Fintiv Memo states that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Id. at 2.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“1. “the sidewalls of said trenches in said base layer” Petitioner requests an express construction of a single claim term, namely, the term in claim 1 that specifies “the sidewalls of said trenches in said base layer.” Pet. 17. We agree with Patent Owner that no express construction of that term is necessary to resolve whether to institute review. See Prelim. Resp. 4 (arguing that this term “has no apparent relevance to any of the asserted prior art grounds”). We thus decline to expressly construe the term at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (claim terms are construed only to the extent necessary to resolve the controversy).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, on this record, we preliminarily determine that the phrase “lateral contact layer” does not require “a dopant concentration between P and P+ (P* doping) for an N-channel MOSFET or between N and N+ (N* doping) in a P-channel MOSFET.” Prelim. Resp. 8. b. Dopant Implantation We next consider Patent Owner’s view that “the lateral contact layer” of claim 1 requires “a region of dopant which is implanted into sidewalls of the source contact trenches.” Prelim. Resp. 8. We discern no words in claim 1, and the parties identify none, that even remotely touch upon a requirement related to dopant implantation. See id. at 7–8; Ex. 1001, 5:37– 6:17 (claim 1). Patent Owner argues that the written description “makes clear that the lateral contact layer is implanted into the sidewall of the source contact trenches.” Prelim. Resp. 7. However, by way of support, Patent Owner again merely directs the Board to written descriptions of embodiments of the invention. See id. at 7–8 (highlighting portions of the specification that describe embodiments of the invention). Patent Owner does not argue that the phrase “lateral contact layer” is” slip op. at 12
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,629,634 - PTAB · Oct 11, 2023 · IPR2023-00756 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–21 on all petitioned grounds, finding a reasonable likelihood that Samsung would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–21 of the ’545 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered” is an IDS statement. Ex. 2003; cited at Prelim Resp. 23. The IDS statement contains two sets of documents. Ex. 2003, 1–12 (first set); 15–22 (second set). The first set lists over 250 references, one of which includes Brown. Id. at 6, reference 4E. The Examiner signed the bottom of the page citing Brown on Sept. 24, 2015. Where the Examiner signed the page, it states that the Examiner “CONSIDERED” on that date (i.e., on Sept. 24, 2015). What precisely the Examiner “considered” on that date is unclear because none of the citations, including to Brown, have been initialed. This evidence which amounts to a single uninitialed citation to Brown among hundreds of other citations does not provide a sufficient basis for the Board to exercise its discretion to deny institution under § 325(d).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Lenovo ’545 IPR [i.e., IPR2019-00988 (see footnote 2)], the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Ex. 2001 at 9. [Patent Owner] agrees that this is the correct standard for a POSITA and [Petitioner] has also adopted this definition. Therefore, there is no dispute about the skill level of a POSITA. Prelim. Resp. 12. Patent Owner does not propose a definition for the level of skill in the art possessed by a POSA that is significantly different from that proposed by the Petitioner. Also, as Patent Owner indicates, Petitioner’s proposal is consistent with the one adopted in IPR2019-00988. See Ex. 2001, 9. We adopt Petitioner’s asserted level of ordinary skill in the art. E. Claim Construction” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,369,545 - PTAB · Jun 28, 2023 · IPR2023-00326 · APJ Jane E Inglese · IPR · Institution
The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the totality of the information presented in the record before us, we conclude that the Petitioner has shown a reasonable likelihood of prevailing in its challenge to the patentability of claim 12.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Considering the totality of the information on the record before us, we determine that Deane, Dubois, and Hill previously were presented to the Examiner during prosecution, and Berntson is cumulative to Cole, which previously was presented to the Examiner during prosecution. 2. Advanced Bionics Part 2: Becton, Dickinson factors (c), (e), and (f) Having determined that the same or substantially the same art previously was presented to the Office, we turn to the second part of the Advanced Bionics framework and consider Becton, Dickinson factors (c), (e), and (f) to determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10.” slip op. at 40
- Skill levelSkill level board ownOther
“The Petitioner proposes that a person of ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent degree, in mechanical engineering, chemical engineering, or a related field, and 2–3 years of experience in the research, design, or development of portable oxygen concentrators and related hardware, software, and firmware, or equivalent experience.” Pet. 21 (citing Ex. 1003 ¶¶ 226–229). The Petitioner further proposes that “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. At this stage of the proceeding, the Patent Owner does not dispute the Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 14. We find, at this stage, that the asserted prior art itself is sufficient to demonstrate the level of ordinary 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). To the extent a more precise definition is required, we apply the Petitioner’s unopposed definition for purposes of determining whether to institute review, because it is consistent, on this record, with the disclosures of the asserted prior art references.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petitioner presents express constructions for three claim terms: “separation cartridge,” “receptacle,” and “selectively removable.” Pet. 21– 26. Although the Patent Owner contests the Petitioner’s proposed constructions of these terms, the Patent Owner proposes an alternative construction of only the term “separation cartridge.” Prelim. Resp. 14–23, particularly 20. Nonetheless, the Patent Owner further indicates that construction of “separation cartridge,” “receptacle,” and “selectively removable” is not needed at this stage because the Petitioner’s proposed constructions are “not related to any controversy in this IPR proceeding.” Prelim. Resp. 14–23, particularly 16. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,389,614 - PTAB · May 23, 2023 · IPR2023-00198 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–19 and all petitioned grounds, finding a reasonable likelihood of success on Ground I’s Burton obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“However, if Petitioner has provided a Sotera4 stipulation, we will not discretionarily deny institution under § 314(a) in view of a District Court Action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director Memo”), at 3, 7, 9. Petitioner argues: the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition (i.e., a “Sotera stipulation”). In that regard, the Petition provided this stipulation: Petitioner[] want to make clear they are consenting to a full Sotera stipulation and Petitioner will not pursue in the parallel district court litigation or other parallel proceedings the same grounds as raised in this Petition or any grounds that Petitioners could have reasonably raised before the PTAB. Petitioners agree to not pursue any of the grounds raised in this Petition, any grounds raised within Petitioners’ invalidity contentions, or any grounds Petitioners could have reasonably raised before the PTAB in the parallel district court litigation or any parallel proceeding.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments are new ones because no arguments during prosecution were presented for a first and second reflector. Therefore, there is no overlap between the arguments made during examination and the manner in which Petitioner relies on Burton, Schuknect, and Baek. Cf. Becton, Dickinson factor (d). Relying on materially-different references not before the Examiner, that is, Burton, Schuknecht, and Baek, Petitioner presents arguments addressing the now-claimed first and second reflector limitations that the Examiner did not examine. See Pet. 21–23 (Burton); 45–48 (Schuknecht); and, 73–75 (Baek). For the reasons discussed related to Becton, Dickinson factors (a), (b), and (d), we find the art and arguments are not the same or substantially the same as was previously presented to the Office. 2. Second step of the framework Because the same or substantially the same art or arguments were not previously presented to the Office, we do not consider whether Petitioner has demonstrated a material error by the Office. See Advanced Bionics, Paper 6 at 9–11.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 6. Upon consideration of the arguments and evidence presented by Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–19 of the ’114 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“reasoning Petitioner provides for why the claimed device would have been obvious to one of ordinary skill in the art over the combination of Schuknecht, Hsu, Leong, and the knowledge of a POSITA is insufficient. Obviousness requires showing that a POSITA would have had a motivation to combine Schuknecht, Hsu, Leong, and the knowledge of a POSITA in the way required to achieve the claimed device and would have had a reasonable expectation of success in doing so. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (emphasis added). Rather than explaining why one would have included LEDs in Schuknecht’s device with a reasonable expectation of success at arriving at the claimed device, Petitioner explains why a POSITA could have generally substituted fluorescent bulbs for LEDs. Schuknecht is directed to an air flow management specifically designed for vent chambers containing high wattage lamps such as fluorescent lamps. See Ex. 1041 ¶¶ 2 (“The devices presented here are directed to a compact fluorescent lamp (‘CFL’) type lighting fixture that has improved cooling capability.”), 7 (The invention “is primarily, but not exclusively, directed at CFL fixtures where the sum of wattage of all of the lamps in the fixture exceeds 200 watts.”). We agree with Patent Owner that Petitioners do not provide any argument that an optimal temperature of an LED bulb matches that of a CFL fixture. Nor do Petitioners provide any argument that an LED bulb, as disclosed by Hsu, might generate output in excess of 200 watts/fixture, as required by Schuknecht. Prelim. Resp. 38 (citing Ex. 1041 ¶¶ 4–7). Petitioner does not address why a POSITA would have modified Schuknecht’s vent chamber that is specifically designed for managing heat associated with using fluorescent bulbs to manage heat from LEDs, if any, with a reasonable expectation of success in arriving at the claimed illumination device. For that reason, a reasonable likelihood of prevailing in demonstrating that claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of Schuknecht, Hsu, Leong, and the knowledge of a POSITA on this record has not been demonstrated.” slip op. at 47
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,721,114 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- BurdenNot shown unpatentable
“In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14
- Expert testimonyOther
“Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11
§ 103 obviousnesscites GrahamPatents in suitUS 9,644,126 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01602 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource Minerals’ rehearing request, leaving undisturbed the final written decision that claims 1–18 were not shown unpatentable on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“to ppm by weight” (Req. 8) was not before us, therefore, we could not have overlooked it. Nevertheless, even if we take account of this new argument, the discussion on page 4 of the Reply does not support Petitioner’s position that one ordinary skill in the art reading Christopher would have no other choice but to understand “1.0” “PPM” (Ex. 1006, 42) to mean parts–per– weight. This is so because Petitioner concedes that “ppm can generally be reported as either by weight or by volume.” Req. 8. This is consistent with Dr. Gallup’s testimony. See Dec. 18: According to Patent Owner, “Dr. Gallup explained [that] ppm may be reported as ppm by weight or ppm by volume. (Ex. 2025, 119:16-25; Ex. 2002, ¶64).” Id. [PO Resp. 20] Because we are directed to no evidence contradicting it, we credit Dr. Gallup’s testimony that ppm can be reported by weight or by volume. Given this, one of ordinary skill in the art reading that iron is at a concentration of “1.0 ppm” for stream 3 in Figure 20 may understand it to refer to ppm by volume. Notwithstanding the discussion on page 4 of the Reply that the “general convention” for ppm is that it is weight based, the evidence before us showed, as Petitioner concedes, that ppm can “generally be reported” (Req. 8) by weight or volume. Thus, as we determined, it is possible that one of ordinary skill in the art may understand “ppm” in Figure 20 to “refer to ppm by volume” (Dec. 18).” slip op. at 12
- Strike new argumentNew argument disregardedOther
“Regarding Petitioner’s assertion that “[d]uring these proceedings, Petitioner has submitted that when Christopher reduces silica, it necessarily also reduces the elemental components of silicon (Si) and oxygen (O2)” (Req. Sur–Reply 1), this is not a position that Petitioner had previously taken. Rather, Petitioner’s position was only that “Christopher states the silica concentration is reduced.” Pet. 23; cf. Pet. Reply 8–9. A rehearing request is not an opportunity to raise new arguments. We could not have overlooked or misapprehended an argument not raised prior to our decision.” slip op. at 6
- BurdenNot shown unpatentable
“brine (Pet. 22; Dec. 7), Petitioner had to show that “the brine of Table 1 must ‘have been processed such that the concentration of at least one metal or elemental component has been reduced in the brine.’ Ex. 1001, 7:18–21.” Dec. 9 (emphasis added). As noted in our Decision: In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
NonePatents in suitUS 9,650,555 - Apple, Inc. v. Omni Medsci, Inc.Rehearing deniedPTAB · Feb 6, 2020 · IPR2019-00916 · APJ John F Horvath · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 5, 7–10, 13, and 15–17.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition . . . will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“court invalidity contentions as asserted in the [p]etition,” it would be an inefficient use of Board resources to grant the petition because “the district court proceeding will [1] analyze the same issues and [2] be resolved before any trial on the [p]etition concludes.” NHK Spring, Paper 8 at 19–20 (emphases added). Agreeing with that argument, the Board denied the petition because granting it “under these circumstances would not . . . provide an effective and efficient alternative to district court litigation.” Id. at 20 (emphasis added). Thus, the critical factor in NHK Spring was not simply the similarity between the prior art raised in the petition and district court proceeding, but the similarity of the prior art and arguments (i.e., the unpatentability/invalidity contentions) raised in the petition and district court proceeding combined with evidence that the district court was scheduled to decide invalidity before the Board would decide unpatentability over similar prior art and arguments.” slip op. at 8
Discretionary denialPatents in suitUS 9,651,533
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.