- PTAB · Nov 19, 2024 · IPR2024-00938 · APJ Eric C Jeschke · IPR · Institution
The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
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) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–15. We thus institute 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); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or a similar field and 2–3 years of experience in machine design, including machines that include fluid dynamics or fluid paths, such as vacuum cleaners.” Pet. 9. Petitioner also states that “[a]dditional education could offset less experience and vice versa, and [one of ordinary skill in the art] could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 3. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 9; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in 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)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“[W]e conclude that while “common sense” can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching. And, this is particularly true where the missing limitation goes to the heart of an invention. Arendi, 832 F.3d at 1363. These statements indicate that “common sense” or “common knowledge” may supply a missing limitation if a “searching” reasoned analysis is provided, along with adequate evidentiary support.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,389,038 - PTAB · Nov 19, 2024 · IPR2024-00950 · APJ Eric C Jeschke · IPR · Institution
Instituted inter partes review of claims 1–25 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
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) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–25. We thus institute 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); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or a similar field and 2–3 years of experience in fluid dynamics and/or machine design for devices related to fluid dynamics, such as vacuum cleaners.” Pet. 13. Petitioner also states that “[a]dditional education could offset less experience and vice versa, and [one of ordinary skill in the art] could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 2. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 13; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in 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)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner adequately explains the reasons to combine Butler and Oh and the nature of the proposed modifications at this stage of the proceeding. The discussion on this issue spans seven plus pages of the Petition, with approximately sixteen paragraphs of the Giachetti Declaration supporting that discussion. In contrast, Patent Owner relies on mere conclusory attorney argument as to the Petition’s alleged failings. See Pearson, 494 F.2d at 1405. At this stage of the proceeding, without countervailing testimony, we need not and do not determine the sufficiency of Dr. Giachetti’s testimony on these issues. Second, Patent Owner argues that Petitioner “manufacture[s] disclosure in Butler, asserting that a ‘[person of ordinary skill in the art] would have been motivated by Butler’s express teachings that it is beneficial to “service” the pre-motor filter.’” Prelim. Resp. 19–20 (quoting Pet. 81; Ex. 1005, 7:27–28, 8:15–17). According to Patent Owner, “[n]either of the cited portions of Butler discuss servicing the pre-motor filter.” Id. at 20. Although Patent Owner is correct that neither of the two passages highlighted expressly references servicing the pre-motor filter, the second passage discloses “the need to service . . . filters,” including post-motor filter 112 “or other filters in the device.” Ex. 1005, 8:15–17 (emphasis added), cited at Pet. 81. Patent Owner quotes but fails to address the reference to “other filters” as part of this argument. See Prelim. Resp. 20. Third, Patent Owner asserts that one of ordinary skill in the art would” slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,080,472 - PTAB · Nov 15, 2024 · IPR2024-00851 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all claims 1–7 because the Petition did not show a reasonable likelihood of prevailing on any challenged ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–7. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“claim element creates a rebuttable presumption that § 112[(f)] applies” and that “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112[(f)] does not apply.”12 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part) (internal citations omitted). Because the “sealing means” limitation includes the word “means,” we start from the rebuttable presumption that § 112(f) applies. Petitioner does not address the applicability of § 112(f) and does not rebut the presumption. We continue the analysis, however, and, for the reasons below, we agree with Patent Owner that § 112(f) applies to the “sealing means” limitation.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “fits behind” In wherein clause (vi), claim 1 recites: “the outwardly pointing outer flange of the first connecting device fits behind the inner flange of the nut unit.” Ex. 1001, 9:4–5 (emphasis added). In the Preliminary Response, Patent Owner discusses the term “fits behind” in this claim language. See Prelim. Resp. 41–45. We need not construe explicitly this language or any other claim terms because doing so would not change the outcome of the analysis. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in 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)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,851,030 - PTAB · Nov 12, 2024 · IPR2024-00854 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that claims 1 and 9 are obvious over Peter and Neroni.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention (“POSA”). Id. at 13, 17. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or a similar field and 2-3 years of experience in machine design, including machines that include fluid dynamics or fluid paths, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Ex. 1002 ¶ 36; see also Pet. 9 (making the same assertion without citation to declarant). Patent Owner does not contest the level of skill. Prelim. Resp. 3. We are persuaded, on the present record, that the proposal of Petitioner’s declarant is consistent with the problems and solutions in the ’030 patent and prior art of record. We adopt the above definition of the level of skill for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner, nor Patent Owner, provides any express claim constructions. See Pet. 9–10; Prelim. Resp. 3. We agree that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in 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)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On the current record, we find that the Petition provides sufficient rationale to modify Peter in view of Neroni. See Pet. 57–61 (citing Ex. 1002 ¶¶ 208–217). For example, Petitioner contends that one of ordinary skill in the art would have been motivated to incorporate Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool in order to “improve cleaning . . . by agitating the surface being cleaned.” Pet. 60 (citing Ex. 1007, 1–2; Ex. 1002 ¶ 215). Petitioner explains that Neroni establishes that “powered cleaning tools were common” in the prior art (id. (citing Ex. 1008, 1:17–49; Ex. 1002 ¶ 215)), and, relying on the declaration testimony of Dr. Giachetti, argues that one of ordinary skill in the art would have “understood the well-known benefits of a powered floor tool and would’ve been motivated to incorporate Neroni’s electrical system into Peter to achieve these benefits” (id. (citing Ex. 1002 ¶ 216). Patent Owner argues that one of ordinary skill in the art would not have been motivated to combine the vacuums taught by Peter and Neroni because they “are directed to different types of vacuum cleaners” and “each [is concerned with] solving different problems with their respective vacuum cleaners.” Prelim. Resp. 17. However, other than pointing out that the vacuum cleaners in Peter and Neroni are different, Patent Owner itself provides conclusory statements, and fails to adequately explain what these differences are, or why they would deter one of ordinary skill in the art from combining the two references with a reasonable expectation of success. Patent Owner does not argue, and we see no reason to believe, that incorporating Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool is not within the ability of one of ordinary skill in the art. See KSR Int’l Co., 550 at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, on the current record, we determine that Petitioner has provided sufficient arguments and evidence to support its assertion that one of ordinary skill in the art would have been motivated to combine Peter and Neroni. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Based on the current record, we further determine that Petitioner has demonstrated a reasonable likelihood of showing that the combination of Peter and Neroni teaches the electrical connector limitations listed above.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,478,030 - PTAB · Oct 8, 2024 · IPR2024-00642 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 7, 10–13, 15–18, and 20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the pre-institution filings “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’473 patent on all challenges set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“We begin by interpreting Petitioner’s proposal as to the level of skill in the art, which refers to having a bachelor’s degree and “at least 2 years of experience in product design and development in the field of griddle cooking stations and/or outdoor cooking grills” or no degree and at least 5 years of such experience. See Pet. 15. Because the proposal does not specify the source of the “experience,” we agree with Petitioner that the proposal does not require design and development experience that stems “from working for a company in the griddle or grill industry” and that “the relevant design experience can come from any source, including designing and developing griddles in academia as well as teaching students.” Prelim. Reply 5. Patent Owner does not dispute Petitioner’s arguments on these points and, as noted, adopts the wording of Petitioner’s proposal as its own. See Prelim. Sur-reply 3–4; Prelim. Resp. 12. For purposes of this Decision, we also adopt the wording of Petitioner’s proposal as our own, and note that the relevant design experience can come from any source.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“On this record, we decline to adopt Patent Owner’s proposed construction of “rib” that requires “an elongated raised piece of strong or thick material across a surface or through a structure, serving to support or strengthen the structure.” Prelim. Resp. 13. Several reasons support this conclusion. First, none of the claim language supports Patent Owner’s proposed construction. The claims require a “front rib” and “multiple lateral ribs” that define “heating regions” between the laterally-spaced ribs that “funnel” heat from the gas burners away “from a rear side of the cooking station.” See Ex. 1001, claims 1, 10. None of this language refers to the ribs as “strong” or “thick” such that they serve “to support or strengthen the structure” as required by Patent Owner’s construction. See id. Second, the specification repeatedly describes the ribs as performing the function described in the claims, i.e., a structure for “venting or channeling convection heat” from the burners. Ex. 1001, 7:3–8; see also id. at 7:54–63, 8:46–65, 9:10–29, 10:31–38, 10:51–58. Patent Owner points to portions of the specification that discuss the ribs also providing structural rigidity to prevent warping, but we agree with Petitioner that the cited portions relate to an optional embodiment where the ribs “may also serve as stabilizers.” Ex. 1001, 7:51 (emphasis added). Because we generally do not read in such optional, functional features of a claimed structure to a claim limitation, we find the portions of the specification cited by Patent Owner do not support its proposed construction. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015). For similar reasons, we are unpersuaded by Patent Owner’s argument that Figure 4 supports its construction merely because it discloses ribs that may be viewed as consistent with Patent Owner’s proposed construction. See Prelim. Resp. 13–14; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07 (Fed. Cir. 2003) (“[T]he mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration.”). Based on our review of the claim language and specification, we view the limitations Patent Owner seeks to add via its proposed construction as optional aspects of the claimed ribs. Because we find insufficient support for Patent Owner’s proposed construction in the intrinsic evidence, we find no reason to resort to extrinsic evidence, such as the dictionary definitions proffered by Patent Owner or the background art discussed by Petitioner. See Seabed Geosolutions, 8 F.4th at 1287. Further, even if we agreed with Patent Owner that the claimed ribs must have some thickness and provide some support and strength to the structure, we still would not adopt Patent Owner’s proposed construction because it would introduce unnecessary ambiguity into the claims. For example, Patent Owner’s construction refers to a “piece of strong or thick material,” which would mean that the rib limitation may cover strong and thin material or thick and weak material, but Patent Owner has not supported a construction that expressly covers such structures due to the inclusion of the term “or” in its construction. See Prelim. Resp. 13 (emphasis added). In addition, the references to “strong” and “thick” in the proposed construction have no reference point, and it remains unclear, based on the claim language and specification, how strong and/or thick a rib must be to provide “support” and “strength” to the structure to prevent warping or otherwise meet the proposed construction. See id. Because Patent Owner’s proposed construction lacks sufficient clarity, we do not adopt it. Based on the foregoing, we decline to adopt Patent Owner’s construction at this stage of the proceeding and apply the ordinary meaning to the term “rib” in the challenged claims.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“Based on the current record, we find Petitioner’s arguments as to these “rib” limitations persuasive. Williams discloses longitudinally extending front dam 42 corresponding to the front rib and longitudinally extending sidewalls 44 that correspond to the claimed lateral ribs. See Pet. 19–20. Williams states that “[t]he presence of the perimeter wall (front dam 42, rear dam 46, and sidewalls 44) helps create the upper zone 40 where the portion of the hot combustion gases are at least temporarily trapped.” Ex. 1005, 3:65–4:2. Based on the current record, Petitioner establishes that front dam 42 and sidewalls 44 correspond to the claimed “front rib” and “lateral ribs” limitations, respectively, and that these ribs define regions and channel convection heat and therefore fall within the scope of the claimed ribs. Patent Owner’s arguments do not directly refute Petitioner’s assertions on these points and are unavailing because they rely on Patent Owner’s proposed claim construction.6 For the reasons explained in the claim construction portion of this Decision, we decline to adopt Patent Owner’s proposed construction that requires a certain thickness or strength to meet the rib limitation. We further note that we would reach the same conclusion had we adopted Patent Owner’s construction, as we understand it. Petitioner 6 In a later section of its Preliminary Response addressing the limitation requiring a “front rib . . . integrally formed with the underside surface of the griddle,” Patent Owner argues that “[r]egardless of the construction of ‘rib,’ none of the proposed Grounds of the Petition persuasively demonstrate that such a claim element was disclosed or obvious.” Prelim. Resp. 36. Based on our reading of the Preliminary Response, this argument was meant to state that regardless of the construction of “rib,” the grounds still fail to teach a “front rib . . . integrally formed with the underside surface of the griddle.” See id. (emphasis added). To the extent that Patent Owner sought to argue that the references fail to disclose the claimed “rib” standing alone, even without resort to Patent Owner’s proposed construction, the Preliminary Response fails to explain or develop such an argument.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,660,473 - Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution deniedPTAB · Sep 20, 2024 · IPR2024-00822 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5‒6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. There is some overlap among these factors and some facts may be relevant to more than one factor. Id. In evaluating the factors, the Board takes a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review. Id.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“from his Declaration cited on page 17 of the Petition, however, Dr. Harwell essentially repeats verbatim the conclusions from the Petition quoted above: 98. As such, Ayers discloses that subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid. For example, fracturing fluid containing polyacrylamide, a common polymer additive to fracturing fluid, may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex with metal ions naturally present in the formation. Harwell Decl. ¶ 98, cited at Pet. 17. Dr. Harwell provides no additional scientific or technical basis for these conclusory restatements of Petitioner’s assertions, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15– 17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 31 (arguing that paragraph 98 of the Harwell Declaration “repeats the Petition essentially verbatim and fails to provide any further evidence or explanation on how Ayers discloses (or even suggests) the claimed subject matter”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also view Petitioner’s and Dr. Harwell’s conclusions as lacking because they fail to demonstrate that a “subterranean-formed metal-polymer complex” would necessarily have been present in Ayers’s subterranean formations. Instead, as noted by Patent Owner, both Petitioner and Dr. Harwell can muster only that “subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid” and that “fracturing fluid containing polyacrylamide . . . may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex . . . .” Pet. 17; Harwell Decl. ¶ 98 (emphasis added); see Prelim. Resp. 31–32 (presenting this argument). Even assuming these statements to be accurate, and even if the statements are unrebutted at trial, they are not sufficient on the record here to demonstrate compelling merits of anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).9” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states—without any supporting evidence—that Patent Owner (assumedly in the Parallel Litigation) has described a person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the [challenged p]atent [as having] at least a bachelor’s degree in chemistry, chemical engineering, petroleum engineering, geology, or the equivalent, and at least two years of experience in oil and natural gas well treatments, or an equivalent amount of relevant work and/or educational experience. Pet. 5. Petitioner “is prepared to adopt” this definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10–11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose constructions for any claim terms. See Pet. 11–12. In response, Patent Owner “agrees to accept the construction for any claim terms from the [challenged] patent it presented in district court . . . [,] none of which require a construction different from the plain import of the claim language itself.” Prelim. Resp. 12. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in 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))).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,697,282 - Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution deniedPTAB · Sep 20, 2024 · IPR2024-00815 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of review of claims 1–13 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“currently scheduled to begin on January 14, 2025. Prelim. Resp. 55 (citing Ex. 2003 (Specialized Scheduling Order in the Parallel Litigation) at 2). Based on the date of issuance of this Decision, the beginning of the trial in the Parallel Litigation is over eight months before any final decision would have been due had inter partes review been instituted. This large length of time from the trial in the Parallel Litigation to the due date of the final decision in this proceeding weighs strongly in favor of discretionary denial. As stated in the Guidance Memo, “when considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.” Guidance Memo 3. Patent Owner provides median time-to-trial statistics for the Oklahoma District Court, which predict a trial date approximately 26.9 months after the Parallel Litigation’s filing date of April 13, 2023. See Prelim. Resp. 56 (citing Ex. 2005 at 2). Because the predicted trial date—approximately July 17, 2025—still precedes by two months the due date of any final decision had inter partes review been instituted, the statistics provided also weigh in favor of denial of institution. Given the proximity of the current trial date—less than four months from the date of this Decision—and the lack of any indication from the parties that the trial date will not hold or that either party seeks a later trial date, we view this factor as strongly favoring discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“in which the evidence, if unrebutted in trial,” show it is “highly likely that the petitioner would prevail with respect to at least one challenged claim.” Guidance Memo 4; OpenSky, Paper 102 at 49. For the reasons above, Petitioner’s arguments and evidence do not satisfy the “compelling merits” standard as to any ground presented. D. Overall Balancing of the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. As discussed above, we have determined that the first five Fintiv factors overall weigh in favor of discretionary denial of institution. Moreover, we have further determined that the Petition does not show compelling merits under the sixth Fintiv factor. We therefore conclude that the evidence of record favors exercising our discretion to deny institution. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is hereby: ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 29
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Harwell Decl. ¶¶ 167–169); see also Prelim. Resp. 28–29 (presenting this argument). In the three relevant paragraphs from his Declaration cited on page 18 of the Petition, Dr. Harwell, however, merely restates, word for word, two disclosures from Frenier8 quoted from the same page of the Petition, and contends (essentially repeating verbatim the statement from the Petition quoted at the beginning of this paragraph): “It would have been obvious to [one of ordinary skill in the art] in light of Frenier to apply the methods and compositions disclosed therein to ‘subterranean formation[s] having low permeability,’ including nano-darcy shale formations.” Harwell Decl. ¶ 169.9 Dr. Harwell provides no additional scientific or technical basis for this conclusory restatement of the Petition’s assertion, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 28–29 (“The Harwell Declaration repeats the same conclusory arguments presented in the petition without further evidence or 8 Page 18 of the Petition quotes column 1, lines 6–9 and column 1, lines 39–54 of Frenier. 9 Paragraphs 167–169 of the Harwell Declaration ostensibly address “Ground II: Claims 1–13 are obvious under 35 U.S.C. § 103(a) over Frenier alone and/or in combination with Reyes.” See Harwell Decl. pp. 40–41. In the discussion of “Ground I: Claims 1, 2, 4, 5, 7, and 13 are Anticipated by Frenier,” however, paragraphs 75–77 include the same or substantially similar statements from Dr. Harwell. Thus, the analysis would be the same even if Petitioner had cited paragraphs 75–77. explanation.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). This inadequate showing as to a requirement in limitations 1[b] and 1[c] reveals a lack of compelling merits.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10. Petitioner “does not fully concur” with this definition of one of ordinary skill in the art but “is prepared to adopt” the definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,944,843 - Axonics, Inc. v. Medtronic, Inc.No claims unpatentablePTAB · May 30, 2024 · IPR2020-00712 · APJ James A Tartal · IPR · Remand
Claims 3–6, 9–12, and 15–18 were not proven unpatentable because the petitioner failed to show the required two inputs in the asserted prior art.
RulingsRemand decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“The Specification of the ’148 patent states that “an alignment measurement may be made by measuring a value, e.g., current or voltage, associated with, e.g., proportional to, the current passing through [the] rechargeable power source.” Id. at 21:3–6. We therefore find that the Specification expressly identifies “current or voltage” as examples of “a value.” Id. In the FWD, we stated that “[a]lthough the ’148 patent makes clear that ‘a value’ may include, for example ‘voltage,’ we agree with Patent Owner that the two independent limitations should be construed such that the Value Limitation does not render superfluous the Signal Limitation or the Measured Voltage Limitation.” FWD 26. We further determined that “the Value Limitation and the Signal Limitation, as well as the Value Limitation and the Measured Voltage Limitation both require two separate inputs to the external power source.” Id. That determination is not at issue here. See Axonics, 75 F.4th at 1379–80 (stating that Petitioner did “not argue the Board erred in adopting the two-input claim construction”). 2. Additional Claim Terms We find no additional claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in 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))).” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references . . . is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.3 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a value associated with current passing through the internal battery, as required by the Value Limitation, is not in dispute. Dr. Mihran, for example, states that “Schulman discloses that the sole input provided to the external power” slip op. at 34
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues, and we agree, that the measured current through R9 is the only input to the external power source Schulman APO Sur-reply 14–15. Patent Owner further argues, and we further agree, that the voltage across output leads 51 and 52 of Schulman is not an input to the external power source separate from the measured current through R9 in Schulman. See APO Sur-reply 11–16 (citing, e.g., Ex. 1003 ¶ 75; Ex. 2002 ¶ 46; Ex. 1005, 6:35–38; Ex. 2010 ¶¶ 4–7). In support of Patent Owner, Dr. Mihran states that “[t]he voltage between nodes 51 and 52 is never provided to the external power source in Schulman.” Ex. 2010 ¶ 4. According to Dr. Mihran, “Schulman discloses that the sole input provided to the external power source that the external power source uses to automatically regulate its power output is the input that derives from the amount of current flowing through the current sampling resistor R9.” Id. ¶ 5 (emphasis omitted) (citing Ex. 1005, 4:45–53, 6:35–38; Ex. 2002 ¶ 46). Dr. Mihran further states as follows: My understanding of Dr. Panescu’s opinion is that he does not contend that the voltage between nodes 51 and 52 is ever sent to the external power source as an input, and instead simply asserts that if “the voltage across leads 51 and 52 exceeds a predetermined amount,” then the current through R9 increases, which in turn “causes the power supplied by the external power source to decrease.” (Ex. 1012 at ¶16.) This does not represent a separate input, however, because the input derived from the current flowing through the current sampling resistor R9 (i.e. the load modulation frequency of telemetry circuit 12, the components of which “form a free-running multivibrator”) is what Dr. Panescu also identifies as satisfying the first input, “a value associated with said current passing through said internal battery.” (Ex. 1012 at ¶14 (“when the current through the internal battery . . . increases above a predetermined target value, the current regulator turns on, increasing the current through current sampling resistor R9.”) operating conditions may influence the value” of the amount of current flowing through current sampling resistor R9, and the current through R9 is the “only value that is communicated to the external power source,” corresponding to a single input that “cannot satisfy both of the two inputs required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent.” Id. ¶ 6. Dr. Mihran further states as follows: I understand Dr. Panescu’s opinion to be that, because Schulman discloses that the current through R9 is used by the external charger to automatically vary its output, any “value” that influences the amount of current through resistor R9 is a “separate respective input[] used by the external power source as a basis for automatically varying its power output.” ([Ex. 1012 ¶14].) In other words, Dr. Panescu simply identifies a voltage across two points in the circuit that he claims affects the current through R9 and contends that that voltage satisfies one of the two required separate inputs based on its alleged indirect impact on the output of the external charger. This strained interpretation of the claims renders superfluous the two separate inputs to the external power source required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent: (1) “a value associated with said current passing through said internal battery” and (2) “a signal proportional to said current passing through said internal battery” (claims 3, 9, and 15) and “measured voltage associated with said current passing through said internal battery” (claims 6, 12, and 18). In any circuit, there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor. For example, in Schulman the current drawn by the stimulation portion of the implant circuit will influence the amount of current through R9. Dr. Panescu’s interpretation that a voltage or current at these components represents a “separate input” in Schulman is incorrect, because the sole input that is telemetered back to the external charger is the input derived from the amount of current flowing through R9.” slip op. at 35
Patent outcomesUS 8,738,148 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,738,148 - Axonics, Inc. v. Medtronic, Inc.No claims unpatentablePTAB · May 30, 2024 · IPR2020-00680 · APJ James A Tartal · IPR · Remand
On remand, the Board determined that claims 1, 5, and 9 were not shown unpatentable as anticipated by Schulman, Fischell, or Baumann.
RulingsRemand decision- BurdenNot shown unpatentable
“consider for purposes of the FWD. We also consider Patent Owner’s Amended Sur-reply, as supported by the Rebuttal Declaration of Dr. Mihran, and the arguments and evidence advanced in the post remand briefs of the Parties. Based on the totality of the record in this case, we determine, for the reasons that follow, that Petitioner does not show by a preponderance of the evidence that any of claims 1, 5, or 9 is anticipated by Schulman, Fischell, or Baumann. A. Principles of Law A claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11–12 (stating that “the ’758 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.2 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a measured current, as required by the challenged claims, is not in dispute. Dr. Mihran,” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We find that because it is largely unsupported and conclusory, the opinion of Dr. Panescu in his Supplemental Declaration that “Schulman teaches automatically varying the output power of the external power source based on a value, where the value is the voltage across the output leads 51 In his original declaration, Dr. Panescu made clear that, according to Schulman, the output of the external power source was lowered if the charging current, as measured at sampling resistor R9, “exceeds a maximum capacity,” not because of the voltage across output leads 51 and 52. See Ex. 1003 ¶ 127 (quoting Ex. 1005, 7:25–29). Petitioner does not allege that any measurement of voltage across output leads 51 and 52 in Schulman is conveyed to an external power source to automatically vary its power output. Instead, Petitioner’s argument is premised on the notion that if the voltage across leads 51 and 52 exceeds a predetermined amount, then it will affect the current sampled by resistor R9. We also find persuasive Dr. Mihran’s testimony that Petitioner’s strained interpretation renders the Value Limitation superfluous to the Measured Current Limitation because the voltage across leads 51 and 52 was not shown by Petitioner to be a separate input to the external power source. See Ex. 2010 ¶ 7 (explaining that “there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor,” and that influencing the current measured at R9 does not constitute a separate input to the external charger from the measured current at R9). To be clear, we need not resolve whether the challenged claims require each separate input be separately conveyed to the external power source. Here, the burden to show anticipation is on Petitioner and Petitioner offers no persuasive evidence or explanation to establish by a preponderance of the evidence that a person of ordinary skill in the art would have understood the voltage across output leads 51 and 52 corresponds to “a value” based upon which the external power source “automatically” varies its power output, as required by the challenged claims. Nor does skill in the art would have understood the voltage across leads 51 and 52 in Schulman to be a separate input from the measured current at R9 when, at most, Petitioner alleges the voltage across leads 51 and 52 may, in certain circumstances, have some effect on the measured current at R9, itself. Thus, Petitioner does not show by a preponderance of the evidence that Schulman discloses to a person of ordinary skill in the art two separate inputs to the external power source, as Petitioner conceded is required by the Value Limitation and the Measured Current Limitation.” slip op. at 35
Patent outcomesUS 8,457,758 not shown unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 8,457,758 - Nespresso USA, Inc. v. K-Fee System GMHBNo claims unpatentablePTAB · Apr 10, 2024 · IPR2022-01574 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 were not shown unpatentable because the asserted combinations did not teach or render obvious the claimed groove entirely to the side of the chamfered mandrel.
RulingsFinal written decision- Skill levelSkill level board ownPatent owner expert discountedDecided for patent owner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Expert testimonyPatent owner expert discountedDecided for petitioner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the information above, we conclude that the limitation “a groove that is laterally offset from the chamfered mandrel” requires the groove to be entirely to the side of any part of the mandrel. This construction is consistent with the words of the claim—the claim states that the groove is laterally offset from, or to the side of, the chamfered mandrel, not merely offset from a portion of or the centerline of the mandrel. This construction is also consistent with the one embodiment describing the relationship between the mandrel and groove containing the seal, which depicts the groove entirely to the side of the chamfered mandrel. We do not accept Mr. Jobin’s testimony that laterally offset is determined relative to the centerline of an object. Neither the intrinsic record nor other extrinsic evidence provides support for Mr. Jobin identifying the centerline of an object as the reference point for determining if a point is laterally offset from the object.” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not agree with Petitioner that Yoakim teaches a groove that is laterally offset from the chamfered mandrel. As we indicated in our claim construction section, we construe the claim term to require the groove to be entirely to the side of any part of the mandrel. We agree with Patent Owner that, as depicted in Yoakim’s Figure 35, the alleged groove is not entirely to the side of any part of the mandrel. See Pet. 69; see also Pet. Reply 19 (showing the alleged groove, in red, including a portion over the chamfered mandrel); PO Resp. 55 (same). Even if Petitioner’s position is that all of the groove must be to the side of the centerline of the mandrel, Petitioner fails to prove that Yoakim teaches such a structure. As seen in Petitioner’s illustration at page 19 of Petitioner’s Reply (reproduced above), a small portion of the groove (which Petition colorizes in red) is to the left of the centerline (shown in green). See Pet. Reply 19.” slip op. at 40
Patent outcomesUS 11,254,491 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,254,491
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.