- The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Jan 19, 2024 · IPR2022-01237 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–24 are unpatentable under § 103 as obvious over the asserted combinations of Krieger, Richardson, Baxter, Tracey, and Lai.
RulingsFinal written decision- Adverse judgmentDenied
“Having considered the parties’ respective arguments as to whether adverse judgment should be entered against Patent Owner under 37 C.F.R. § 42.73(b) based on an abandonment of the contest by Patent Owner, we have decided not to enter adverse judgment against Patent Owner. In light of Patent Owner’s statement regarding the Petition’s merits and Patent Owner’s statement that it does not request adverse judgment, we do not view Patent Owner’s actions as an abandonment of the contest. See Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124, Paper 14 (Dec. 21, 2022) (vacating entry of adverse judgment after determining that it was not sufficiently clear that the patent owner intended to abandon the contest) (precedential); Order Resp. 2–4.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 5. Dr. Wood’s testimony supports Petitioner’s assertion. See Ex. 1003 ¶ 45. We adopt Petitioner’s description of an ordinarily skilled artisan as consistent with the ’077 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, 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); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Conclusion About Obviousness for Claim 1 For the reasons discussed above, Krieger teaches the invention covered by claim 1. See supra §§ III.D.2(a)–(g). Hence, Petitioner has shown by a preponderance of the evidence that claim 1 is unpatentable under § 103 as obvious over Krieger.” slip op. at 27
Patent outcomesUS 11,124,077 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,077 - 3M Company v. Bay Materials, LLCAll claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7, 11–14, 16, 18, and 31 are unpatentable as anticipated by Yu; claims 1–4, 7, and 31 are also anticipated by Stewart.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with the “processing of thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 16 (citing Ex. 2008 ¶ 14); see Pet. 14–15 n.1 (disagreeing with that proposition). Patent Owner’s definition is supported by the plain wording of challenged claim 18, which recites a dental appliance. Resp. 16 (citing Pet. 14 n.1); Ex. 1001, 26:50–52. The ’263 patent, moreover, includes an “extensive discussion of dental appliances and the unexpectedly good properties of dental aligners” thermoformed from polymeric sheets. Resp. 16; Ex. 1001, 1:20–47, 4:57–5:10, 5:26–6:6, 6:39–43, 10:25–51, 11:30–48, 12:22–24, 13:25–29, 21:1–6, 24:2–3, 24:30–57; see id. at 15:23– 38 (describing the thermoforming process for making dental appliances).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“about 60A to about 85D” when employed as the two soft outer layers in an unclaimed and disfavored soft-hard-soft layer composition (id. ¶ 109) does not convey, with reasonable clarity, that the inventors had possession of the inventive hard-soft-hard layer composition in which the single soft, inner layer also is within that same hardness range (id. ¶ 110). Critically, when discussing the soft, inner layer of the inventive hard-soft-hard layer composition, the ’176 application nowhere indicates that the soft inner layer must have “a hardness of from about 60A to about 85D.” Id. ¶ 109 (discussing a prior art embodiment); see id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure in the ’176 application (id. ¶ 109), as a matter of law, that circumstance is insufficient to establish a filing date through that application. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that controlling precedent). Each of Patent Owner’s countervailing arguments is unpersuasive because, at best, Patent Owner attempts to show that it would have been obvious to import––from the description of the soft outer layers in an unclaimed and disfavored soft-hard-soft embodiment––a limitation not expressly imposed on the soft inner layer in the inventive hard-soft-hard embodiment. Ex. 2001 ¶ 109; Resp. 35–42. A showing of obviousness is not enough under the controlling precedent cited by Petitioner. PowerOasis, 522 F.3d at 1306.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the above reasons, we determine that the challenged claims are not entitled to the benefit of the filing date of the ’176 application because the application does not indicate that the inventors had possession of the hardness limitation of the claimed invention. See Reply 7–13 (Petitioner’s arguments on this issue). On the full trial record, we find that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, the filing date of the ’256 application from which the ’263 patent issued. Ex. 1001, codes (21), (22). Every challenged claim recites, or inherits via dependence, the hardness limitation “of from about 60A to about 85D” for the inner elastomeric layers of the inventive hard-soft-hard multilayer composition. Ex. 1001, 25:2–9 (independent claim 1), 26:1–8 (independent claim 11), 27:49–51 (independent claim 31). In view of our determination that the earliest effective filing date to which the challenged claims are entitled is December 18, 2019, we agree with Petitioner that Yu (Example 1) and Stewart (Example 2) qualify as prior art against the challenged claims. Pet. 43–49 (Petitioner’s persuasive arguments and evidence on point).” slip op. at 13
Patent outcomesUS 10,870,263 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites GrahamPatents in suitUS 10,870,263 - 3M Company v. Bay Materials, LLCNo claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01214 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7–11, and 13 were not shown unpatentable because Petitioner did not establish the flexural-modulus limitation over Hinz and the Durasoft data sheets, with or without Sun.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with processing “thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 8; see Pet. 10–11 n.1 (disagreeing with that proposition). We agree with Patent Owner for the following reasons.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“B. Conflicting Opinion Testimony Petitioner’s own witness, Dr. Giacomin, opines that an ordinarily skilled artisan “would have been familiar with various machines and methods that would have enabled the thermoforming of multilayer dental sheets into shapes that conform with the teeth (i.e., creating a dental appliance).” Ex. 1002 ¶ 25. Nonetheless, Petitioner does not contest Patent Owner’s evidence that Dr. Giacomin himself lacks that qualification. Compare Resp. 9–10 (citing Ex. 1002 ¶¶ 1–9, 17 & n.1), with Reply (nowhere contesting that evidence). Petitioner also leaves uncontested Patent Owner’s evidence that Dr. Osswald, by contrast, possesses “the required experience” with dental appliances, including thermoforming processes for their manufacture. Compare Resp. 10 (citing Ex. 2006 ¶¶ 2–8; Ex. 2007), with Reply (nowhere contesting that evidence). Dr. Giacomin possesses excellent qualifications in the field of polymer rheology, but on this record, he demonstrates no, or inadequate, familiarity or experience with methods of thermoforming dental appliances from polymeric materials, which by his own admission is a minimum qualification of the hypothetical person of ordinary skill in the art. Ex. 1002 ¶¶ 1–11 (statement of qualifications), App’x A (curriculum vitae). Patent Owner’s witness, Dr. Osswald, by contrast, has “experience with polymer materials used in dental appliances” and “shaping operations, including thermoforming” processes for such applications. Ex. 2006 ¶¶ 5, 6. Against that backdrop, where the two witnesses’ opinions differ about the level of ordinarily skill in the art of thermoforming processes for dental appliances at the time of the invention, we credit Dr. Osswald’s opinions over those of Dr. Giacomin. We take note, moreover, that Dr. Osswald’s opinions would not change under Petitioner’s somewhat different definition of the level of ordinary skill in the art. Ex. 2006 ¶ 14.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Claim terms are given their ordinary and customary meaning, as understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only terms in controversy and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). No claim term requires express construction for purposes of this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In the absence of explanation by Petitioner, we are left to wonder why either of those two ranges reported in Sun would have been recognized as applicable, without modification, to the three-layer dental splint of Hinz. Starting with a commercially-available, two-layer sheet of hard-soft PC-TPU or hard-soft PETG-TPU thermoplastic polymers, Hinz bonds a third layer, consisting of hard PC or hard PETG, to the soft TPU layer of the two-layer material by a process of thermoforming. No prior art reference explains how that process would have been understood to affect the overall flexural modulus of the resulting three-layer, hard-soft-hard composition. Petitioner does not supply an adequate reason for combining Sun’s preferred flexural modulus range, reported for Sun’s dental appliances at a temperature of 23˚ C, to dental splints formed by Hinz from fundamentally different polymers and a fundamentally different process. See Pet. 65–68 (entirety of four-page analysis on this ground); Resp. 32–38; Sur-reply 7–14 (well-supported explanation of those fundamental differences); Reply 8–16 (Petitioner’s unpersuasive responsive positions). The flexural modulus of Sun’s dental appliance not only is temperature dependent but also varies with the flexural strength of the polymeric material at hand. Ex. 1018 ¶ 12. Too late in the Reply, Petitioner raises fact-intensive reasons why those differences would not have mattered to an ordinarily skilled artisan. Reply 8–16. In any event, we agree with Patent Owner that Petitioner glosses over “[f]undamental differences” between the polymers and processes of Sun and Hinz, differences that “are central to [the] motivation to combine inquiry” and undercut Petitioner’s view that an ordinarily skilled artisan would have understood either of Sun’s flexural modulus ranges to apply, without modification, to Hinz’s polymers and process. Resp. 33 (quoting Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020)) (first alteration in original); see Sur-reply 8–16 (Patent Owner’s persuasive arguments and evidence on point). The ground based on Sun is deficient for the above reasons.” slip op. at 25
Patent outcomesUS 10,946,630 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,946,630 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.Institution deniedPTAB · Jan 12, 2024 · IPR2023-01133 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted Mieth-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “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(a). Upon considering the parties’ submissions and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “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. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(citing Ex. 1007 ¶¶ 30–31). Patent Owner disputes Petitioner’s definition because it excludes “individuals with higher education and less experience.” Prelim. Resp. 7. However, Patent Owner does not argue that the level of ordinary skill in the art impacts the analysis. See id. For the purposes of this Decision, we adopt Petitioner’s proposal because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- BurdenNot shown unpatentable
“We also agree with Patent Owner that Petitioner fails to show Mieth inherently discloses the claimed micro-controller. Petitioner argues that a include a micro-controller” and “the load 20 is analogous to the claimed micro-controller.” Pet. 22–23. Petitioner’s argument itself, however, as noted by Patent Owner (Prelim. Resp. 9), admits that load 20 is not “necessarily” a micro-controller, and that load 20 does not “necessarily” include a micro-controller. Continental Can Co., U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (“Inherency, however, 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.”); see also Pet. 56 (discussing, in the context of claim limitation [7G], “load 20, which may be a micro-controller” (citing Ex. 1002, 17:19–18:3; Ex. 1007 ¶ 170; Ex. 1014, 1180, Fig. 5)). Additionally, Petitioner argues that Mieth’s load 20 is “analogous to” the claimed micro-controller. Pet. 22–23 (citing Ex. 1007 ¶ 97–99 (same language as Petition); Ex. 1014, 1180, Fig. 5). We are not persuaded that Petitioner’s “analogous to” argument comports with the standard for anticipation. Under the applicable standard for anticipation, neither Petitioner nor its declarant provides any analysis that would show that one skilled in the art would have reasonably understood or inferred from Mieth that load 20 is a micro-controller. See Eli Lilly, 849 F.3d at 1074–1075.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,333,405 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Nov 14, 2023 · IPR2022-00381 · APJ Julia Heaney · IPR · Final written decision
Claims 1–10 and 12–18 are unpatentable as obvious; the revised contingent motion to amend is denied because proposed claims 19–25 lack written description support.
RulingsFinal written decision- Skill levelOther
“1. Principles of Law In an inter partes review, the petitioner bears the ultimate burden of persuasion to show unpatentability, which never shifts to the patent owner. Dynamic Drinkware LLC v. National Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). “However, when a patent owner attempts to antedate an asserted prior art reference, the patent owner takes on a temporary burden of production.” Medtronic, Inc. v. Teleflex Innovations S.À.R.L., 68 F.4th 1298, 1303 (Fed. Cir. 2023) (citing Dynamic Drinkware, 800 F.3d at 1378– 79)). “Once that burden is met, the burden shifts back to the petitioner.” Id. “[A] patent’s claims are not entitled to an earlier priority date because the patentee claims priority. . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120,” including a written description in the earlier-filed application that satisfies § 112. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011) (citations omitted)); see also Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010). “[T]he hallmark of written description is disclosure,” and “the test [for satisfaction of the written description requirement] requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description “must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed,’” and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. (alteration in original). Stated another way, “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). To provide sufficient written description support, “[a] ‘disclosure” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Reason to Combine Petitioner contends it would have been obvious to a person of ordinary skill in the art to combine (1) Eckhardt’s method of disinfecting skin using any light source that emits light capable of sterilization or disinfection, with (2) Sosnin’s KrCl or XeBr light sources, which generate photons having a wavelength of 222 nm and 282 nm, respectively. Pet. 21– 22 (citing Ex. 1003 ¶¶ 40, 81; Ex. 1004 ¶¶ 31, 69; Ex. 1005, 1547). Petitioner contends a person of ordinary skill would have been motivated to combine the teachings of Eckhardt and Sosnin for several reasons: (1) Eckhardt’s teaching of using any light source capable of sterilization or disinfection, and specifically “narrow spectrum light (e.g., a line spectrum)” would have suggested to a person of ordinary skill in the art to incorporate other well-known germicidal UV light sources like Sosnin’s, and both references teach that their light sources kill bacteria; (2) a person of ordinary skill would have implemented Eckhardt’s high-level disclosure of using UV- C light to disinfect skin with Sosnin’s 222 nm excimer lamp because Sosnin’s lamp’s wavelength is within the range of 220 to 310 nm suggested by Eckhardt; (3) the effectiveness and relative safety of directing UV-C light of 222 nm on bare skin for disinfection was already understood by persons of ordinary skill in the art, even though there was general caution against exposing skin to excessive UV radiation. Pet. 22–24 (citing Ex. 1003 ¶¶ 40, 81–92; Ex. 1004 ¶¶ 5, 31, 69, 70; Ex. 1005, 1545–47; Ex. 1011 ¶¶ 28, 40; Ex. 1013 ¶ 8; Ex. 1015, 2:22–67; Ex. 1016, 2:23–26; Ex. 1017, 58).” slip op. at 25
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“with our analysis of the effective filing date of original claims 12–18 that Patent Owner does not meet its burden to demonstrate the inventor’s possession in the ’626 provisional of generating photons of at least two single line wavelengths. Having considered the additional disclosures of the ’626 provisional Patent Owner points to in its RMTA (see RMTA 9), we find that none of these disclosures describe using both 222 nm and 254 nm single line wavelengths. See Ex. 1008 ¶¶ 8, 12, 27, claim 9; Ex. 2047, 6–9. For example, the recitation of “apparatus that consists of a NUV source, ESP, ozone generator, mercury lamps, and humidifier with controls as defined in claims 3–8 and any combination therein” in claim 9 of the ’626 provisional generally identifies various sources that may be used, but would not have indicated to a person of ordinary skill that the inventor had possession of generating single line wavelengths of 222 nm and 254 nm. Mr. Lawal’s testimony supports this finding. Ex. 1053 ¶¶ 1–12. Accordingly, we determine that Patent Owner does not meet its burden to demonstrate written description support for generating photons of at least two single line wavelengths, in claims 19–25 of its RMTA.19 Because Patent Owner has not satisfied the statutory and regulatory prohibition against introducing new matter in the revised proposed substitute claims, we deny the RMTA as to claims 19–25. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Accordingly, we need not reach the patentability challenges Petitioner raises with regard to claims 19–25.” slip op. at 77
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteOther
“19 We also determine that claim 19 does not particularly point out and distinctly claim the invention sought to be patented, as required by 35 U.S.C. § 112(b), because “the microorganisms” in element [19B] lacks antecedent basis.” slip op. at 78
Patent outcomesUS 9,700,642 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,700,642 - PTAB · Nov 8, 2023 · IPR2023-00810 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that claims 1–30 are obvious over Baxter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (informative; precedential as to § III.C.5, first paragraph). We apply a two-part framework in deciding discretionary denial under § 325(d), first considering Becton, Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art or arguments were previously presented to the Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 7–11.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “bachelor’s degree in electrical engineering or its equivalent and two years of experience in electrical engineering with some experience in design of power supply management systems, such as battery charging systems.” Pet. 12. Petitioner also contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 12 (citing Ex. 1023 ¶¶ 44–48). Patent Owner does not challenge Petitioner’s definition or offer its own. See generally, Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’971 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’971 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the term “start control module” should be construed as “electronic switch.” Pet. 12 (citing Ex. 1023 ¶¶ 148–150). According to Petitioner, “the ‘971 Patent states that ‘the automobile start control module is the electronic switch.’” Pet. 13 (citing Ex. 1001, 2:29–30, 4:42–45, 4:26–28, 4:29–32). Patent Owner does not address claim construction in its Preliminary Response. We determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,376,971 - PTAB · Nov 6, 2023 · IPR2023-00879 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all claims 1–20 and all asserted grounds, finding a reasonable likelihood that SMA would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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(a) (2018). Upon considering the Petition and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we institute inter partes review of all claims and all grounds asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2023). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “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 then only to the extent necessary to resolve the controversy. 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 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 22 (citing Ex. 1007 ¶ 30); see Ex. 1007 ¶ 31. The level of ordinary skill in the art is further demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,584,021 - PTAB · Oct 26, 2023 · IPR2023-00804 · APJ Julia Heaney · IPR · Institution
Instituted review of claims 1, 2, and 23 on all grounds; the Gowanlock–Swivelpole obviousness challenge met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Gowanlock does not disclose a crown deck, as required by claims 1 and 23. Patent Owner correctly sets forth the construction of “crown deck” the parties agree to apply here (see Section II.A above), which requires a walking surface. None of the figures of Gowanlock’s rig relied upon by Petitioner, i.e., Figures 1A, 1B, and 2, depict a walking surface. The language of claim 1 also requires that a bracket “attach the mounting pole to the crown deck of the rig.” Petitioner asserts that Figure 1B depicts bracket 102, and Figure 2 depicts bracket 204. We do not agree with Petitioner that either structure 102 or 204 attaches a mounting pole to a crown deck, as claim 1 requires. According to Gowanlock, brackets 102 and 204 each connect a light fixture (101 and 203) to a light fixture attachment (103 and 202). Ex. 1003 ¶ 19. Therefore, Petitioner does not sufficiently show that Gowanlock discloses the recited bracket. Having considered the evidence and arguments presented by both parties, we determine Petitioner has not shown a reasonable likelihood of prevailing on its anticipation challenge to claims 1 and 23.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We find that Petitioner sufficiently demonstrates a rational basis for a person of ordinary skill in the art to combine the teachings of Gowanlock and Swivelpole. See Pet. 35–36; Ex. 1008 ¶¶ 84–90. Patent Owner’s argument that Petitioner’s rationale for combining the references is insufficient because it repeats “catchphrases” from KSR is not persuasive. A sufficient rationale to demonstrate obviousness under KSR does not require a showing that a person of ordinary skill in the art would know how to physically combine structures taught by the references. The fact that the references and challenged patent describe the same problems in the industry supports that the references are analogous art, but does not necessarily demonstrate hindsight in an obviousness rationale. Further, Patent Owner’s argument as to problems faced in the field such as harsh environmental conditions is unsupported attorney argument. We disagree with Patent Owner that Mr. Hamdan’s testimony as to prior art methods of attaching mounting poles to guardrails in oil fields (e.g., Ex. 1008 ¶ 87) is unsupported. We find that Mr. Hamdan’s years of experience as an engineer in the oil and gas industry designing rigs supports his testimony. Ex. 1007. Accordingly, we determine that Petitioner has shown a reasonable likelihood of prevailing on its obviousness challenge to claims 1, 2, and 23 based on a combination of Gowanlock and Swivelpole.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“According to the Director’s Guidance Memo, we should not exercise discretion to deny institution where a petitioner submits a Sotera stipulation. Guidance Memo 3. Here, Petitioner’s stipulation is limited to “Grounds 1–4 asserted herein.” Pet. 92. Thus, we agree with Patent Owner that this stipulation is narrower than a Sotera stipulation, and we determine that it does not implicate the Guidance Memo’s prohibition against discretionary denial where a Sotera stipulation is presented. Although Petitioner’s stipulation is not a Sotera-type stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, which both Petitioner and Patent Owner agree are substantial. Accordingly, the considerations of the fourth Fintiv factor weigh against exercising discretionary denial.” slip op. at 48
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,976,016 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Oct 24, 2023 · IPR2022-00682 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 2, 5, and 6 are unpatentable as obvious over Brown-Skrobot and Clauβ, with Liang added for claims 5 and 6.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in an engineering discipline, such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 9 (citing Ex. 1003 ¶ 20). “Such a person would also have had two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps,” but “less education could be compensated by more experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 8. We determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“It is a well-settled principle of claim construction that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in an open-ended claim containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “The exceptions to this rule are extremely limited: a patentee must ‘evince[] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ, 223 F.3d at 1356)). “An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” Id. at 1342–43; see also ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009, at *4 (Fed. Cir. Oct. 19, 2023) (discussing and applying the general rule).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“obvious to implement the sterilization method disclosed in Brown-Skrobot by combining the monochromatic UV sources disclosed in Clauβ. Pet. 13–15; Pet. Reply 7–16. Our finding is supported by Brown-Skrobot’s teaching concerning the benefits of using two or more monochromatic UV radiation sources having different wavelengths. The different wavelengths may provide increased levels of sterility, because different microorganisms that have to be sterilized on a medical device may have greater or lesser sensitivities to uv radiation at different wavelengths; therefore, multiple monochromatic uv radiation sources can be used which produce monochromatic uv radiation at different wavelengths which when used together will successfully sterilize all the microorganisms, that might not otherwise be sterilized, or would require greater levels of energy if only one monochromatic uv radiation source is used. Ex. 1004 ¶ 42. In our view, the above-quoted passage in Brown-Skrobot provides strong evidence that a POSITA would have had a reason to combine two or more monochromatic UV radiation sources having different wavelengths. Particularly persuasive is Brown-Skrobot’s teaching that different microorganisms have different sensitivities to different wavelengths of radiation such that combining sources that emit different wavelengths will provide more effective sterilization. Id. Brown-Skrobot also teaches that combining two or more monochromatic UV radiation sources having different wavelengths may require less energy than using a single monochromatic UV radiation source to provide the same level of sterilization. Id.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“For many polymers which are commonly used for contact lens containers and contact lenses, which were described earlier, radiation at wavelengths less than 240 nm is absorbed by the polymers and may cause chain scissions within the polymers. Since the laser emits at a single wavelength or a narrow range of wavelengths, a source which produces radiation below 240 nm can be avoided which is a benefit over broad band radiation sources. Ex. 1004 ¶ 54. Patent Owner’s argument overlooks the breadth of Brown- Skrobot’s disclosure, which is not limited to contact lenses or lasers, as discussed above. Nor is Brown-Skrobot’s process limited to sterilization of polymeric materials; the medical devices that may be sterilized include those made from metals. Ex. 1004 ¶ 45; Ex. 1037 ¶ 18. The disclosure of a preferred embodiment does not, in any event, teach away from non-preferred embodiments. Mouttet, 686 F.3d at 1333–34; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 28
Patent outcomesUS 8,975,605 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,975,605 - PTAB · Sep 19, 2023 · IPR2023-00695 · APJ Julia Heaney · IPR · Institution
The Board instituted inter partes review of claims 1–5 and 7–18 on the asserted obviousness ground over Eckhardt and Sosnin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.2” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in an engineering discipline such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 16 (citing Ex. 1003 ¶ 21). Petitioner further argues that “[s]uch a person would also have two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps” but, “less education could be compensated by more experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 15. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’951 patent and the asserted prior art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Having considered the evidence and arguments presented by both parties on the present record, we find sufficient support for Petitioner’s contentions that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and that a person of ordinary skill in the art would have combined Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. Petitioner relies on Eckhardt’s teachings, as follows. Eckhardt teaches that “[a] region of tissue to be sterilized or disinfected may include unbreached skin.” Ex. 1004 ¶ 29. Eckhardt describes its Figure 1 as illustrating “a method for sterilizing or disinfecting a region of skin or tissue of a patient using sterilizing or disinfecting light” and that the light may be UV light, such as UVA, UVB, and UVC light. Id. ¶ 31. Eckhardt also teaches that the light may be generated in one or more flashes and that the energy of a single flash might be sufficient to deliver a sterilizing or disinfecting dosage. Id. ¶ 32. On the present record, we disagree with Patent Owner’s argument that Eckhardt’s bandages teach away from the use of UV light on skin. Eckhardt does not teach bandages as a way to block all UV light, but rather, uses bandages to control the intensity of UV light reaching the skin. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV-Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See id. ¶¶ 69– 72.” slip op. at 15
- Obviousness (§103) › KSR rationalesMotivation foundReasonable expectation foundInstituted
“Having considered the evidence and arguments presented by both parties on the present record, we find sufficient support for Petitioner’s contentions that Eckhardt and Sosnin teach or suggest all of the limitations in claim 1, and that a person of ordinary skill in the art would have combined Eckhardt’s teaching of narrow spectrum light in the range of 220 to 310 nm to disinfect skin, with Sosnin’s implementation of excimer lasers including 222 nm to kill bacteria, to arrive at the method of claim 1 with a reasonable expectation of success. Petitioner relies on Eckhardt’s teachings, as follows. Eckhardt teaches that “[a] region of tissue to be sterilized or disinfected may include unbreached skin.” Ex. 1004 ¶ 29. Eckhardt describes its Figure 1 as illustrating “a method for sterilizing or disinfecting a region of skin or tissue of a patient using sterilizing or disinfecting light” and that the light may be UV light, such as UVA, UVB, and UVC light. Id. ¶ 31. Eckhardt also teaches that the light may be generated in one or more flashes and that the energy of a single flash might be sufficient to deliver a sterilizing or disinfecting dosage. Id. ¶ 32. On the present record, we disagree with Patent Owner’s argument that Eckhardt’s bandages teach away from the use of UV light on skin. Eckhardt does not teach bandages as a way to block all UV light, but rather, uses bandages to control the intensity of UV light reaching the skin. Indeed, Eckhardt’s embodiment that Petitioner relies upon is titled “UV-Transmissive Bandage” and explains how to choose bandage materials that transmit UV-C light. See id. ¶¶ 69– 72.” slip op. at 15
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,246,951
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.