- Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Nov 4, 2022 · IPR2021-00662 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over Yamazaki, Schubert, and Tadatomo; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have been knowledgeable regarding conventional designs and fabrication techniques pertaining to LEDs, including LED package designs, and would have had at least 2 years of experience in LED design and fabrication as well as at least a master’s degree in a relevant field (e.g., chemical engineering, materials engineering, or electrical engineering), or alternatively would have an equivalent combination of advanced education and practical experience.” Pet. 10–11 (citing Ex. 1035 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We have reviewed Petitioner’s proposal and find it reasonable and consistent with the prior art, and apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Third, and most significantly, Petitioner points to Shimizu, a patent filed in 1999, as repeatedly referring to phosphor as a garnet-based fluorescent material. Reply 3 (citing Pet. 27; Ex. 1013, 10:16–13:50). We agree that Shimizu appears to use the two terms interchangeably. For example, Shimizu states that “[t]he phosphor is specifically garnet fluorescent material” and “the fluorescent material is preferably yttrium- aluminum-garnet fluorescent material (YAG phosphor) activated with cerium.” Ex. 1013, 10:17–30. Patent Owner does not dispute this reading of Shimizu, but argues instead that it is “impermissible to rely on an entirely different reference” in a Reply. See Sur-Reply 4–5 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)). For the same reasons discussed above, we do not agree that Petitioner’s use of Shimizu is improper, but is instead a proper response to Patent Owner’s argument that a person of ordinary skill in the art would not have understood Yamazaki to disclose phosphor. Ariosa, relied upon by Patent Owner, confirms that the Board should consider an exhibit “for what it show[s] about the background knowledge that a skilled artisan would have possessed.” Ariosa, 805 F.3d at 1365 (“The Board’s language on its face supports Ariosa’s interpretation of what the Board meant—that the Board was declining to consider Exhibit 1010, even as evidence of the background understanding of skilled artisans as of January 2010, simply because the brochure had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness. If that is what the Board meant, the Board erred. Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.”). The Petition relies on Shimizu to show such background understanding. Pet. 27. Specifically, the Petition states that conventional LEDs “were made using the III-nitride material system, with semiconductor layers formed on sapphire substrates and combined with YAG phosphors to efficiently generate white light output.” Id. (citing Ex. 1013, 10:30–11:35). Thus, Shimizu is properly objective evidence supporting a finding that at least as early as 1999, a person of ordinary skill in the art would have used the terms “phosphor” and “fluorescent material” interchangeably. Moreover, Dr. Schubert’s textbook published in 2018 explicitly references Shimizu. Ex. 1039, 3-4. In this context, we find that Dr. Schubert’s textbook and testimony indicate that a person of ordinary skill in the art, at the relevant time, would have understood the terms to be interchangeable.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Based on the complete record, Petitioner establishes by a preponderance of the evidence that an ordinarily skilled artisan would have found the sapphire growth substrate obvious in light of Yamazaki’s disclosure. Petitioner cites Schubert to show an ordinarily skilled artisan’s knowledge about conventional blue LEDs as disclosed in Yamazaki, i.e., that “conventional blue LEDs were III-nitride-based LEDs that commonly included sapphire growth substrates.” See Pet. 71–72, 76–77; Ex. 1007 ¶ 27 (stating the disclosed light-emitting chip “is of a publicly known structure”); Ex. 1008, 166 (discussing “commonly used sapphire and SiC substrates”). We credit Dr. Dupuis’ testimony that is consistent with the prior art of record. Ex. 1035 ¶¶ 238, 248–251 (citing Ex. 1008, 166); Ex. 1007 ¶ 27; Ex. 1009, 1:10–17, 4:61–67; Ex. 1012, 243; Ex. 2013, 10:30–11:35. We are not persuaded otherwise by the deposition testimony of Dr. Dupuis pointed to by Patent Owner. PO Resp. 44 (citing Ex. 2016, 53:7– 12). This testimony confirms that Schubert does not explicitly discuss whether the sapphire growth substrate is included in an LED package. Id. (citing Ex. 2016, 53:7–12). However, Patent Owner does not dispute that sapphire growth substrates were commonly used (as confirmed by Schubert) or that a person of ordinary skill in the art would have reasonably expected a blue LED to include a sapphire growth substrate. See PO Resp. 42–43 (stating only that sapphire is one among several materials that could be used as a growth substrate); Sur-Reply 9–10 (same). Petitioner is not required to show that the proposed combination would have been preferred over other alternatives. Infineum USA L.P. v. Chevron Oronite Co. LLC, No. 2020-1333, 2022 WL 3147683, at *6 (Fed. Cir. Aug. 8, 2022) (“We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”). Instead, the question is whether a person of ordinary skill in the art would have understood the disclosure of Yamazaki, in light of the disclosure in Schubert, to teach or suggest the sapphire growth substrate limitation. As discussed above, persuasive evidence in the record establishes that this is true.” slip op. at 38
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“offered to show that the ’213 patent solved a long-felt, but unresolved need in the field and the merits of the challenged claims. See PO Resp. 67–68. First, Patent Owner has not shown a presumption of nexus because none of the cited evidence involves any particular product. Second, Patent Owner 22 Exhibit 2111 is a redacted version of Exhibit 2105. has not established that the any long-felt need resulted directly from the unique characteristics of the claimed subject matter. Other than a general statement that the technology addressed by the ’213 patent is a continuation of Dr. Nakamura’s prize-winning work (see Ex. 2112 ¶ 231), we see no evidence in the record that the subject matter recited by claims 1 and 2 of the ’213 patent, itself, solved the need for a more efficient LED without a heat sink or mirrors. See PO Resp. 65–66; Sur-Reply 23–24.” slip op. at 46
Patent outcomesUS 10,644,213 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,644,213 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHNo claims unpatentablePTAB · Aug 8, 2022 · IPR2021-00474 · APJ Christopher L Crumbley · IPR · Final written decision
Claim 13 was not shown unpatentable because Petitioner did not establish a reason to modify Brown; challenges to claims 1–12 and the contingent motion to amend were dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’581 patent is a person holding a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems. DI 8 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 5 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that the terms of the challenged claims should be given their ordinary and customary meaning, but does not state with specificity what the ordinary and customary meaning of any term may be. Pet. 17. In our Decision on Institution, we interpreted Petitioner’s position to be that no claim term of the ’581 patent requires express construction, and Petitioner did not disagree with this understanding during trial. Patent Owner agreed that no claim term required construction beyond its plain and ordinary meaning. PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties. See Nidec Motor,868 F.3d at 1017; Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“the output conductor of a battery cell appears “simple” and that the proposed modification to Brown may be one of a small set of possible options. But that does not remove Petitioner’s obligation to explain why a person of ordinary skill in the art would have had some reason to make the modification to the prior art that has been proposed. Requiring a petitioner to articulate a reason to modify the prior art guards against hindsight evaluation of a modification which may only appear obvious after the fact. For this reason, the Supreme Court has noted that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” and that “[t]o facilitate review, this analysis should be made explicit.” See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, after evaluating the entirety of the factual record adduced at trial, we cannot conclude that Petitioner has set forth a sufficiently supported reason why a person of ordinary skill in the art would have modified Brown. First, we agree with Patent Owner that Petitioner’s articulated goal of maximizing the volume of active material in the cell is undercut by the modification it proposes. As Petitioner’s expert Mr. Juzkow admitted, relocating Brown’s output conductor to the bottom of the cell would reduce the volume available for active material by approximately one percent. While we do not disregard Mr. Juzkow’s subsequent testimony that other modifications to Brown’s cell (such as removal of the central screw cavity) could compensate for this loss in volume, the fact remains that Petitioner did not propose these additional modifications in the Petition. It is incumbent on Petitioner to set forth all modifications to the prior art it plans to rely on, and justify why a person of ordinary skill in the art would have had reason to make them, so that we may fully evaluate whether it would have been obvious to do so. In any event, even if we were to accept Mr. Juzkow’s late assertion of other modifications that could be used to compensate for the loss in volume of active material, the fact remains that it is these other modifications that would be serving the motivation proposed by Petitioner of maximizing the volume of active material; relocating the output conductor would have no positive effect towards this modification. Thus, we conclude that Petitioner’s expressed motivation of maximizing active material volume has no rational relationship to the modification of Brown that is central to its Petition, of relocating the output conductor from the side of the casing to the bottom.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“propose substitute claims 26–38 in the event that we determined original claims 1–13 to be unpatentable. MTA 4. Original claims 1–12 are no longer at issue in this proceeding, having been canceled and replaced by substitute claims 14–25 via a granted Motion to Amend in IPR2020-01211. And we have found that Petitioner has not established by a preponderance of 13 Although not raised in briefing by either party, we have also evaluated whether estoppel under 37 C.F.R. § 42.73(d)(3)(i) would require a finding of unpatentability of claim 13 in light of our prior determination in IPR2020- 01211 that claims 1–12 are unpatentable. See 37 C.F.R. § 42.73(d)(3)(i) (“A patent applicant or owner is precluded from . . . obtaining in any patent: A claim that is not patentably distinct from a finally refused or canceled claim.”). We conclude that it does not. The Board has previously held that defending the patentability of a previously-issued claim in an inter partes review does not qualify as “obtaining in a patent” that claim, and therefore patent owner estoppel does not apply in this situation. See Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00458, Paper 9, 8 (PTAB July 15, 2015). the evidence that claim 13 is unpatentable. The contingency on which Patent Owner’s Motion to Amend is based, therefore, has not occurred. We dismiss the Motion to Amend as moot.” slip op. at 27
Patent outcomesUS 9,496,581 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,496,581 - Fluid Energy Group Ltd. v. Green Products And Technologies, LLCNo claims unpatentablePTAB · Jul 5, 2022 · IPR2021-00357 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–8 were not shown unpatentable: the asserted obviousness combinations failed to establish claim 1’s required removal of cementitious material from a distinct surface, and the precise limitations of claims 5 and 6.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, we agree with Petitioner that Patent Owner’s argument, that “[p]roviding a composition does not require understanding the nuances of each chemical contained therein,” is flawed. Sur-reply 1. To determine whether a claim is unpatentable for obviousness to one of ordinary skill in the pertinent art, we consider “the differences between the subject matter sought to be patented and the prior art.” 35 U.S.C. § 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Here, Patent Owner acknowledges that “[t]he primary difference between known methods and the claimed invention of the ’912 Patent is a novel composition that solved problems associated with the previously used prior art compositions.” Sur-reply 11. Further, the specification informs that “[o]ne of skill in the art will recognize that these compositions are not intended to be limiting, and variations in ingredients and proportions can be made without departing from the spirit of the invention.” Ex. 1001, 3:13–16. Accordingly, Patent Owner’s view that an ordinarily skilled artisan would only need to rely on pre-formulated cleaning compositions and reported safety information, without “their own chemical knowledge,” is inconsistent with the disclosure of the ’912 patent. Sur-reply 2–3. An ordinarily skilled artisan, as required by the ’912 patent, would understand the nuances of the chemicals required by the terms of the claims. Therefore, we find that Petitioner’s definition, on this record, is representative of the level of ordinary skill in the art and consistent with the disclosures of the ’912 patent. See Ex. 1001, 3:13–16.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“of intended purpose or use, “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim” as drafted, taking care to avoid importing “‘extraneous’ limitations from the specification.” MPEP § 2111.02 (9th ed. rev. 10.2019 June 2020) (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). Particularly, the MPEP explains that: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Based on the information presented on this record, we determine that nothing in the body of claim 1 supports a determination that the “cleaning” clause of the preamble represents an additional method step of the claimed invention. Ex. 1001, 3:23–24. To the contrary, the body of the claim fully and completely sets forth all of the required method steps of the invention, as well as the components of the required composition. See id. at 3:25–4:2. Specifically, independent claim 1 comprises three method-step limitations, namely, “providing a composition,” “applying the composition to a surface,” and “removing the composition . . . from the surface.” Id. Those limitations, taken together, indicate that the preamble’s mention of “cleaning” is a non-limiting intended use of the composition specified in the body of the claim.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“To be clear, claim 1 requires removing a “released cementitious material” from “a surface.” Id. at 3:28–4:2. Petitioner provides no persuasive reason why an ordinarily skilled artisan would have understood the term “cementitious material” to include “an efflorescence”—indeed, as just noted, the ’912 patent expressly distinguishes those two materials. Id. at 2:59–61. Claim 1 does not broadly encompass a step of removing a released efflorescence from a cementitious material, but is limited to by its plain terms to removing a “released cementitious material” from “a surface.” Id. at 3:28–4:2; see also id. at 2:61–62 (distinguishing “an efflorescence” from “cementitious materials”). In a nutshell, the claim language does not explicitly or implicitly support a construction that broadly encompasses a method of “applying the composition to a surface” of a cementitious material to “release” an efflorescense (id. at 3:28–29), even though one embodiment seems to allow for such use (id. at 2:38–39, 2:59–61). Taking account of the totality of the information presented, we determine that construing “surface” and “cementitious material” using the examples in the majority of the embodiments provided in the ’912 patent specification is necessary to “tether the claims to what the specification[] indicate[s] the inventor actually invented.” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). In doing so, we adopt “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention . . . [which] in the end, [is] the correct construction.” Phillips, 415 F.3d at 1312. Accordingly, on this record, we construe claim 1, and each other challenged claim through dependence from claim 1, to require a step of applying a composition to “a surface” structurally separate and distinct from the “cementitious material” that is released and removed “from the surface.” Id. at 3:28–4:2.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Sargent discloses “that urea hydrochloride is an inexpensive and useful agent for the removal of the build-up of water-insoluble metal salts on surfaces, and the dissolution of water-insoluble metal salt dispersions or suspensions.” Resp. 21–22 (quoting Ex. 1006, 2:3–6). Although the background section of the ’912 patent describes the “removal of water-insoluble cementitious and lime materials” as “a difficult process,” Petitioner directs us to no evidence sufficient to establish that calcium carbonate is “a cementitious material” within the meaning of claim 1. Ex. 1001, 1:13–14, 3:28–29; see Pet. 22; Reply 14 (totality of Petitioner’s information on point). Instead, in conclusory fashion, Petitioner simply assumes that Sargent’s disclosure of “water-insoluble metal salt dispersions or suspensions” and “calcium carbonate” constitute “cementitious material” within the scope of claim 1. Reply 14; see Pet. 22 (relying on Sargent’s disclosure of the removal of “calcium carbonate”); see also Ex. 1003 ¶ 103 (conclusory opinion cited at Pet. 22 and Reply 14). Further, Petitioner assumes that the “applying” and “removing” steps of claim 1 are satisfied by Sargent’s application of a composition “to a surface of a cementitious material to release a portion of the cementitious material therefrom.” Pet. 16 (Petitioner’s emphasis). Specifically, Petitioner argues that Sargent teaches the removal of released cementitious material from the surface because an ordinarily skilled artisan “would understand that a result of Sargent’s rinsing process is to remove the composition by rinsing with water, which will also release at least a portion of any cementitious material, such as calcium carbonate, dissolved from the surface.” Id. at 22 (citing Ex. 1006, 6:57–7:2; Ex. 1003 ¶ 103). For reasons explained above in our claim construction analysis, however, we construe claim 1 to require application of the composition to a surface distinct from the cementitious material being removed from the surface. See supra II.C.2. As Patent Owner contends, “It would be absurd to hold that cleaning a surface involves removing the surface from the surface,” because “[t]he background section of the ’912 Patent clearly contemplates that surfaces to be cleaned include surfaces of vehicles and that it is undesirable to ‘damage the target surface.’” Resp. 7 (citing Ex. 1001, 1:46). As explained above, we do not give limiting effect to the preamble of” slip op. at 25
Patent outcomesUS 7,938,912 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,938,912 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01031 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Petitioner did not establish that the prior art taught or suggested the claimed narrow band-rejection filter or a sufficient reason to add one.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“patent. Petitioner, who bears the burden to show Hirose is prior art, asserts that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective filing date of the ’657 patent. See Pet. 5. Patent Owner responds that Hirose does not qualify as prior art to the ’657 patent because the inventors of the ’657 patent conceived and reduced to practice the ’657 invention on or before Hirose’s filing date of July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support this position, Patent Owner provides argument and evidence relating to the conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15– 39. An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Evidence of such conception and reduction to practice must be provided on a claim-by-claim basis.” slip op. at 18
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Dr. Glew’s testimony that Hong, like Barber, does not suggest that a filter is required to protect a DC power source applied to a target from an RF power source applied to substrate. Ex. 2009 ¶ 152. We further agree that, rather than supporting Petitioner’s position, Hong supports Patent Owner’s position that at the time of the invention, one of ordinary skill in the art would not have thought that RF coupling into a remote pulsed DC power source was a concern or that it would have been desirable to place a filter between the DC power source and the substrate. Id. ¶ 153.” slip op. at 39
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01091 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because the petitioner failed to establish the claimed narrow band-rejection filter or a sufficient reason to add one to Barber’s system.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner assert that construction of any claim term is required to resolve any issues in dispute. See Pet. 11 (citing Ex. 1002 ¶ 54); PO Resp. 10–11. In our Decision on Institution we invited the parties to address whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“narrow band-rejection filter (aka notch filter).” Pet. 22–23. Petitioner’s expert, Dr. Subramanian, testified that the difference between a narrow band-rejection filter and a band-rejection filter depends on the relationship between the bandwidth and the center frequency. See, e.g., Ex. 2030, 95:15– 21 (explaining that the bandwidth is “much, much, much smaller than the center frequency”). There is inadequate evidence that the bandwidth of Hirose’s filter is sufficiently narrow to constitute a narrow band-rejection filter. Rather, the evidence of record shows that Hirose’s filter is a band-rejection filter, not a narrow band-rejection filter.” slip op. at 29
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’657 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presents evidence it contends shows a date of conception of claims 1–8 and 10–21 prior to July 18, 2001, followed by reasonably continuous diligence. For the purposes of this decision, we need not determine whether Hirose qualifies as prior art, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that all of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 18
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-00104 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Petitioner did not establish the asserted obviousness grounds, including the required narrow band-rejection filter and motivation to modify Barber.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In our Decision on Institution, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the range without an upper bound, i.e., encompassing an unlimited amount of years of experience, and thus, does not meaningfully indicate the level of ordinary skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“whether the claim term “providing an RF bias that corresponds to the narrow band rejection filter to the substrate” requires that (1) the frequency of the RF bias be the same as the frequency at which the filter operates or whether (2) the frequency of the RF bias could be a shift from the frequency at which the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be construed according to its plain and ordinary meaning, which the parties in the copending litigation allegedly agreed requires the claimed filter “to have a rejection band set at a frequency of the RF bias power supply.” PO Resp. 10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions are not dispositive because they do not distinguish the prior art.” Reply 1. On the full record now before us, we agree that express construction of this term is not necessary as resolution of the present dispute does not turn on whether the frequency of the RF bias is the same as, or a shift from, the frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached
“patent. Petitioner, who bears the burden to show Hirose is prior art, asserts that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective filing date of the ’657 patent. See Pet. 5. Patent Owner responds that Hirose does not qualify as prior art to the ’657 patent because the inventors of the ’657 patent conceived and reduced to practice the ’657 invention on or before Hirose’s filing date of July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support this position, Patent Owner provides argument and evidence relating to the conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15– 39. An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). Evidence of such conception and reduction to practice must be provided on a claim-by-claim basis.” slip op. at 18
- BurdenFwd all claims patentableNot shown unpatentable
“It is Petitioner’s burden to demonstrate that the cited art teaches each limitation of the challenged claims and to show by a preponderance of the evidence that the claims are unpatentable. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This burden never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d 1378. Here, Petitioner does not sufficiently demonstrate that Hirose teaches or suggests a narrow band-rejection filter as recited in claim elements 2[c] and 2[d]. See Pet. 21–22.” slip op. at 33
Patent outcomesUS 7,381,657 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,381,657 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01030 · APJ Kristina M Kalan · IPR · Final written decision
Petitioner did not prove claims 1–13 unpatentable because the grounds failed to establish the claimed filter limitations or a reason to combine Barber and Hirose.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“An inventor may antedate a § 102(e) reference by showing that the invention was conceived before the effective date of the reference, followed by reasonably continuous diligence until the constructive reduction to practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Just the knowledge, however, that a filter can be used to protect or isolate one power supply from another in various types of plasma systems is not sufficient to show that one of ordinary skill in the art would have been motivated to use a filter in Barber’s system to protect Barber’s pulsed DC power source from its RF power supply. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363. In support of its challenge, Petitioner and Petitioner’s expert may rely on general knowledge, supported by evidence, to argue that a challenged claim would be obvious in light of the general knowledge of a skilled artisan. Koninklijke Philips v. Google, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (stating that although the prior art that can be considered in inter partes review is limited to patents and printed publications, “it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art”). Although the Petition on its face relies on Barber and Hirose to meet the limitations of claim 1[f] (Pet. 24–36), Petitioner’s arguments rely not only on Barber and Hirose, but on numerous additional references, ostensibly to demonstrate the general knowledge of a skilled artisan. Id. For example, Petitioner cites to a number of references (i.e., Licata (Ex. 1010), Joo (Ex. 1014), Celestino (Ex. 1016), Quon (Ex. 1017), Johnson (Ex. 1018), Hong (Ex. 1019), Ohmi (Ex. 1020), and Keller (Ex. 1021)) that use different types of filters in various plasma systems for the “known use and benefits of filters in plasma systems for blocking interference/current of one power supply from another.” Pet. 32–33. Petitioner asserts that a POSITA would have understood that choosing to reject a narrow band of frequencies depending on the bandwidth of Barber’s RF supply, was a known way to achieve “the benefits” of Hirose. Id. at 31–32 (citing Ex. 1023 (Miller), 7:51–61; Ex. 1057 (Sill), 7:23–34; Ex. 1058 (Zennamo), 1:63–2:1). Petitioner also relies on a number of manuals (i.e. Exs. 1025, 1026, 1062, 1067, 1024, 1065, 1066) that illustrate “design concepts/guidance associated with use of such supplies in a plasma system with an RF power source.” Id. at 34–35. Even considering all the references in the Petition and the declaration, Petitioner does not adequately explain how the filters and principles in these relied-upon references and manuals would lead one of ordinary skill in the art to use a filter, let alone a narrow-band rejection filter, in Barber’s system.” slip op. at 36
Patent outcomesUS 7,544,276 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,544,276 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-01090 · APJ Kristina M Kalan · IPR · Final written decision
The Board held claims 1–13 not unpatentable because Petitioner failed to show the asserted combinations disclosed or motivated use of the claimed narrow band-rejection filter.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10. 14 Because we determine Petitioner has not sufficiently shown the challenged claims would have been obvious, we do not reach Patent Owner’s asserted objective evidence of non-obviousness. PO Resp. 70–72. Patent Owner does not appear to dispute this definition. See generally PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we retain our modified adoption of Petitioner’s definition. We further note that the prior art itself demonstrates 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) (explaining that “specific findings on the level of skill in the art . . . [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))).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the full record now before us, we determine it is not necessary to construe any claim term expressly, because resolution of the present dispute does not turn on whether the frequency of the RF bias power supply is the same as, or offset from, the frequency at which the filter operates. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot reached
“Petitioner met its burden of production to demonstrate that Hirose, which has a filing date prior to the filing date of the ’276 patent, was prior art by asserting Hirose was prior art under § 102(e). See Dynamic Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden of production to Patent Owner to produce evidence supporting a date of invention before Hirose’s filing date. See id. With its Response, Patent Owner presented evidence it contends shows a date of conception prior to July 18, 2001, followed by reasonably continuous diligence. PO Resp. 11– 41. For the purposes of this decision, we do not determine whether Hirose qualifies as prior art to claims 1–13, because, as explained below, even if Hirose qualifies as prior art, Petitioner has not sufficiently shown that any of the asserted claims would have been obvious over the grounds asserting Hirose.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“frequency response and that a POSITA would have understood that Hirose’s filter is “tuned to reject a narrow band of frequency,” which operates “like a narrow band-rejection filter (aka notch filter).” Pet. 28–29. Petitioner’s argument that Hirose discloses or suggests a narrow band-rejection filter is contained in this short portion of the Petition and relies on an inference that a V-shaped curve necessarily signifies a narrow band-rejection filter. Any such inference that a V-shaped curve is sufficient to characterize a filter as a narrow band-rejection filter, however, is belied by Dr. Subramanian’s own testimony. Indeed, Dr. Subramanian explains that the shape of a curve alone, including the shape of the curves of Figures 2–9(G) and (H) of Gibilisco, is not sufficient on its own to determine whether a filter corresponding to that curve is a narrow band-rejection filter or a broad bandrejection filter. See, e.g., Ex. 2030, 69:13–18 (stating, just looking Figure 2– 9(H), he could not tell if the figure corresponds to a narrow band-rejection filter because “I don’t have enough information”). Dr. Subramanian further testified that additional information beyond the mere shape of the curve is required to determine if the curve represents a narrow band-rejection filter; for example, Dr. Subramanian states that it was Gibilisco’s characterization of Figure 2–9(G) as having a sharp band rejection response that led him to conclude it was a narrow band-rejection filter. See Ex. 2030, 68:20–69:4 (Dr. Subramanian testifying that he would not “characterize the figure depicted in G as a narrow band” based just on the figures, but “on all the information that’s given,” which includes “this reference specifically [stating] at G, ‘sharp band rejection response’”); see also id. at 60:24–61:23, 62:7–63:11. Significantly, Petitioner does not point to statements in Hirose itself” slip op. at 32
Patent outcomesUS 7,544,276 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,544,276 - Applied Materials, Inc. / Intel Corporation et al. v. Demaray LLCNo claims unpatentablePTAB · Jun 29, 2022 · IPR2021-00103 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–13 were not shown unpatentable because Petitioner failed to establish the claimed filter limitations and a reason to combine Barber and Hirose.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Pet. 9 (citing Ex. 1001, 1:10–14, 2:45–47; Ex. 1002 ¶¶ 18–19). In our Institution Decision, we adopted Petitioner’s proposal regarding the level of one of ordinary skill in the art, except that we deleted the qualifier “at least” to eliminate vagueness as to the appropriate amount of relevant experience. Inst. Dec. 10.” slip op. at 9
- BurdenFwd mixedNot shown unpatentable
“4. Conclusion On this record, we find that Petitioner has not sufficiently shown by a preponderance of the evidence that a person of ordinary skill in the art would have combined Barber and Hirose in a manner that discloses all of the limitations of independent claims 1 or 6, as set forth above, or all of the limitations of the challenged dependent claims 2, 3, 7, and 8, which carry forward the same limitations as independent claims 1 and 6.” slip op. at 47
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“frequency response and that a POSITA would have understood that Hirose’s filter is “tuned to reject a narrow band of frequency,” which operates “like a narrow band-rejection filter (aka notch filter).” Pet. 28–29. Petitioner’s argument that Hirose discloses or suggests a narrow band-rejection filter is contained in this short portion of the Petition and relies on an inference that a V-shaped curve necessarily signifies a narrow band-rejection filter. Any such inference that a V-shaped curve is sufficient to characterize a filter as a narrow band-rejection filter, however, is belied by Dr. Subramanian’s own testimony. Indeed, Dr. Subramanian explains that the shape of a curve alone, including the shape of the curves of Figures 2–9(G) and (H) of Gibilisco, is not sufficient on its own to determine whether a filter corresponding to that curve is a narrow band-rejection filter or a broad bandrejection filter. See, e.g., Ex. 2030, 69:13–18 (stating, just looking Figure 2– 9(H), he could not tell if the figure corresponds to a narrow band-rejection filter because “I don’t have enough information”). Dr. Subramanian further testified that additional information beyond the mere shape of the curve is required to determine if the curve represents a narrow band-rejection filter; for example, Dr. Subramanian states that it was Gibilisco’s characterization of Figure 2–9(G) as having a sharp band rejection response that led him to conclude it was a narrow band-rejection filter. See Ex. 2030, 68:20–69:4 (Dr. Subramanian testifying that he would not “characterize the figure depicted in G as a narrow band” based just on the figures, but “on all the information that’s given,” which includes “this reference specifically [stating] at G, ‘sharp band rejection response’”); see also id. at 60:24–61:23, 62:7–63:11.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the full record now before us, we determine it is not necessary to construe any claim term expressly, because resolution of the present dispute does not turn on whether the frequency of the RF bias power supply is the same as, or offset from, the frequency at which the filter operates. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 11
Patent outcomesUS 7,544,276 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,544,276 - PTAB · Apr 26, 2022 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–5 over all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining §325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless 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.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, FFP has established a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. KGSI has not persuaded us that we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution. We thus institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019)2 (“TPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“§ 325(d), the Board applies a two-part framework: (1) first, we determine 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, we examine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 8.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Our preliminary construction at this stage of the proceeding is that claim 1 does contain a nested product-by-process limitation, which defines the claimed curing agent as containing a plant-based nitrite derived using a particular process involving heat treatment prior to introduction of the nitrite-producing organism. We are not persuaded on the current record, however, that this process imparts any structural or functional differences to the recited curing agent product, as opposed to curing agents produced by other means. KGSI contends that “the variations inherent in the biological processes for producing plant-derived nitrite, in addition to selecting the plant material and organism, result in qualitative differences in the curing agent that, when applied to meat, affect taste, smell, texture, and color, while also impacting the safety of the product.” Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 127–131). But Dr. Milkowski does not provide any evidence of these “qualitative differences” beyond citations to FFP’s marketing materials. Ex. 2001 ¶ 129 n.23. On this preliminary record, therefore, we construe the product-by-process element of claim 1 to not be limited by the process steps recited.10” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Upon review, we are persuaded that FFP has set forth a sufficient rationale why a person of ordinary skill in the art would have modified Voorde’s process to use Hara’s sterilization step. We do not, on this record, believe the two disclosures to be incompatible or that application of Hara would render Voorde’s process inoperable. While recognize that Voorde warns against heating to 90°C as disclosed in Hara’s sterilization process, we note that the heating of Hara is at a different point in the curing process than Voorde’s heating. Specifically, Hara discloses heating prior to storage of the plant-derived solution, to sterilize it, whereas Voorde’s heating step is during treatment, to encourage the nitrate conversion process. We do not understand combining these two heating steps into one process to be incompatible. We do not understand Voorde’s disclosure to exclude processes in which the nitrite-generating microbes are added via starter culture, rather than naturally occurring in the plant material. Voorde does not express any preference for naturally-occurring microbes, or suggest that results are superior to processes in which a starter culture is added. Nor are we persuaded that a person of ordinary skill in the art, having used Hara’s sterilization step, would have been unaware that the sterilization would have reduced the microbial load of the plant material and that addition of a starter culture—which Voorde expressly suggests—would be beneficial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,071,304
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.