- PTAB · Jan 24, 2025 · IPR2024-01194 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted review of claims 16 and 19 on all grounds, finding a reasonable likelihood that the challenged claims would have been obvious.
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 . . . and any response . . . 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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’315 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of claims 16 and 19 of the ’315 patent. A. Real Parties in Interest” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“therefore, must show that metal impurities are necessarily present in Li’s Ntype region 308 and P-type region 310 formed over dielectric film 320 (the claimed “first emitter region” and “second emitter region” “formed over the dielectric region.”). On this record, we are persuaded that Petitioner sufficiently establishes that the natural result of the structures and processes described in Li is the gettering of metal impurities from substrate 304 to N-type region 308 and P-type region 310 in material layer 302, such that N-type region 308 and P-type region 310 contain metal impurities. In particular, Dr. Banerjee testifies, with objective evidentiary support, that “multicrystalline silicon substrates were known to contain substantial concentrations of metal impurities.” Ex. 1003 ¶ 90 (citing Ex. 1010, 283; Ex. 1021, 402; Ex. 1020 ¶ 6). Hu teaches that when a semiconductor body (substrate) and polycrystalline layer are subjected to processing steps at temperatures ranging from 870° C to 1000° C, “getterable impurities such as copper, lithium, sodium, potassium, iron, cobalt, nickel, chromium, and gold will diffuse to, and become trapped in,” the polycrystalline layer. Ex. 1017, 5:61–6:3. Ramappa and Liu–2 teach that a silicon dioxide layer placed between the substrate and the polycrystalline layer does not impede the gettering of metal impurities at increased diffusion temperatures. See Ex. 1025, 3775 (Ramappa stating “for a given SiO2 thickness, there exists a diffusion temperature beyond which the oxide fails to mask the silicon bulk from iron impurity incorporation”); Ex. 1029, 139 (Liu-2’s Figure 3(a) illustrating gettering effectiveness), 140 (“At lower diffusion temperatures, the samples with no oxide show the best gettering efficiency, but a similar efficiency can be achieved in the presence of a thin [approximately 1.3 nm] chemical oxide by increasing the diffusion” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, Petitioner, with supporting testimony from Dr. Banerjee, provides adequate reasons why using the front portion doping concentration of 1x1018 cm-3 or less as disclosed in King, Swanson- 352, or Marvin with Li’s back contact solar cell would have been a “predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); see Pet. 32–35 (and evidence cited therein). We acknowledge that Patent Owner disagrees, but find that Patent Owner’s disagreement raises issues of fact” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We, however, decline to speculate on how Judge Gilstrap may rule on a future motion for a stay should one be filed. Accordingly, in view of the fact that no motion for a stay has been filed, we determine that Fintiv factor 1 is neutral.” slip op. at 29
§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,251,315 - PTAB · Jan 14, 2025 · IPR2024-01040 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 9–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Director review) (precedential). Here, we determine that Fintiv factor 1 is neutral, factors 2 through 4 all weigh against exercising our discretion to deny institution, and factor 5 weighs in favor of discretionary denial. Accordingly, when considered in combination, Fintiv factors 1–5 do not favor discretionary denial, and we do not consider the question of compelling merits. 7. summary We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6; Guidance Memorandum. On this record, after weighing all of the factors and taking a holistic view, we determine that the facts presented weigh against exercising our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner contends that “[b]ecause this term is in a dependent claim, construction is not necessary to resolve the issues presented at institution.” Prelim. Resp. 4–8. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,878,053 - PTAB · Jan 14, 2025 · IPR2024-01039 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 9–12, finding a reasonable likelihood of obviousness over Froitzheim and Gan and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential). Here, we determine that Fintiv factor 1 is neutral, factors 2 through 4 all weigh against exercising our discretion to deny institution, and factor 5 weighs in favor of discretionary denial. Accordingly, when considered in combination, Fintiv factors 1–5 do not favor discretionary denial, and we do not consider the question of compelling merits. 7. Conclusion – Fintiv Absent a compelling reason to the contrary, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating the Fintiv factors. Fintiv at 6; see Guidance Memorandum. Having evaluated all of the factors on this record, we determine that the circumstances presented do not support exercising our discretion under § 314(a) to deny institution of this inter partes review.” slip op. at 34
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.’” Google, 54 F.4th at 1381 (quoting In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)).” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner directs us to evidence in Gan and testimony from Dr. Banerjee that suggests Gan provided information regarding how to form an oxide layer and doped polysilicon layer on a silicon substrate. Pet. 47– 10 Jon-Yiew Gan, Polysilicon Emitters for Silicon Concentrator Solar Cells, A Dissertation Submitted to the Department of Materials Science and Engineering and the Committee on Graduate Studies of Stanford University, July 1990 (Ex. 2003). 48; Ex. 1003 ¶¶ 152–155; Ex. 1007, 246–247. On this record, this evidence provides sufficient support for Petitioner’s argument that the proposed combination involves the use of a known technique from Gan to improve Froitzheim’s solar cell, and could have been accomplished with a reasonable expectation of success. Patent Owner’s arguments to the contrary are unavailing. First, Patent Owner’s argument regarding “no assurances” suggest that it is applying an incorrect standard on this issue. “Only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness.” In re Longi, 759 F.2d 887, 896 (Fed. Cir. 1985). Second, Patent Owner directs us to evidence from the Gan Thesis, not Gan itself. Prelim. Resp. 41–42 (citing Ex. 2003). Patent Owner, however, does not direct us to sufficient evidence demonstrating when this reference became available to the public. Absent such evidence, we are unable to agree with Patent Owner’s conclusion of what a person of ordinary skill in the art at the time of the invention would have understood based on the Gan Thesis. Accordingly, on this record, we are persuaded by Petitioner’s arguments and evidence, and determine that Petitioner has demonstrated sufficiently for purposes of this Decision that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the claimed invention.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,222,516 - PTAB · Jan 14, 2025 · IPR2024-01038 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 10–15 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim and no basis for discretionary denial.
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 . . . and any response . . . 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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’315 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of claims 10–15 of the ’315 patent. A. Real Parties in Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“Skilled Artisan”) would have had “an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field,” or “a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” Pet. 5–6 (citing Ex. 1003 ¶ 47). Patent Owner states that, for purposes of the Preliminary Response, “Maxeon applies CSI’s level of ordinary skill.” Prelim. Resp. 13. On this record, we preliminary adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’315 patent. 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 need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on the record before us, we determined that no claim term requires express construction for purposes of this Decision. C. Asserted Obviousness over Li and King, Swanson-352, or Marvin” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“7. Motivation to Combine Petitioner contends that it would have been obvious “to combine Li’s back contact solar cell with the front portion doping concentration of 1x1018 cm-3 or less as disclosed in King, Swanson-352, or Marvin.” Pet. 30–31. Petitioner contends that Li, King, Swanson-352, and Marvin “all relate to solar cell design and in particular, back contact solar cells” and are analogous art. Id. at 30. Petitioner also contends that King teaches “that this concentration was the ‘optimum’ for back-contact solar cells,” and Swanson-352 teaches “to use it as the maximum concentration for this portion of a back contact solar cell.” Id. at 31 (citing Ex. 1003 ¶ 124). Petitioner contends that Marvin likewise teaches “that for space applications, a ‘peak doping concentration of 1E18 [1 x 1018] cm-3’ or lower with a resulted in better efficiency metrics than higher doping concentrations.” Id. (citing Ex. 1035, 826–827). Petitioner contends: Given Li’s acknowledgement that “[e]fficiency is an important characteristic of a solar cell as it is directly related to the solar cell’s capability to generate power” and that “[a]ccordingly, techniques for increasing the efficiency of solar cells are generally desirable” (EX1005, ¶0005), the Skilled Artisan reviewing Li would further have been motivated to select the efficient front doping concentration disclosed by any of King, Swanson-352, or Marvin. EX1003, ¶126.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,251,315 - Voltage, LLC v. Shoals Technologies Group, LLCInstitution deniedPTAB · Nov 22, 2024 · IPR2024-00877 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties dispute whether a person of ordinary skill in the art must have experience with photovoltaic (solar) systems or whether such experience may be in the broader field of electrical wiring and connectors. 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. On this preliminary record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’739 patent and the prior art. But, for purposes of this institution decision, and on the present record, we observe that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“The Board “need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (internal citation omitted). Because no claim construction is required in order to address the issues presented in this proceeding, we need not address claim construction for purposes of institution.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“On this record, we are not persuaded Petitioner has adequately shown a reason to combine Fan and Ba. Petitioner argues that the ordinarily skilled artisan would have modified the in-line fuse assembly of Fan to include the plug and connector of Ba that physically integrates with the fuse in order to eliminate extra wire pieces. Pet. 14. But the details of Petitioner’s combination end there. Eliminating extra wire pieces may be advantageous and might be a reason for a person of ordinary skill in the art to modify the teachings of Fan. However neither Petitioner nor its declarant, Dr. Kenny, identify what wires are eliminated or explain why the elimination of wires in this case is advantageous. Furthermore, Petitioner does not direct our attention to any teaching in Ba that discusses the elimination of wires as a benefit to its structure. Thus, even if an ordinarily skilled artisan could have made the combination, Petitioner failed to sufficiently explain why an ordinary artisan would have been motivated to do so. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,553,739 - Voltage, LLC v. Shoals Technologies Group, LLCInstitution deniedPTAB · Nov 18, 2024 · IPR2024-00876 · APJ Michael G Mcmanus · IPR · Institution
The Board denied institution on all asserted obviousness grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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); see also 37 C.F.R. § 42.108(c). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’254 patent. Accordingly, we decline to institute an inter partes review of claims 1–15 based on the grounds articulated in the Petition. B.” slip op. at 2
- Skill levelOther
“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.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are 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). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, for purposes of this institution decision, and on the present record, we determine that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions. B.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Although claim 1 is to an apparatus (a lead assembly), this limitation includes functional language (“combines” and “transmits”). We construe this limitation to require that the lead assembly have structure capable of performing the recited act. See, e.g., Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (where claims reciting a computer processor that performs several functions were construed to be “clearly limited to a . . . processor possessing the recited structure and capable of performing the recited functions”). Accordingly, we construe the claim to require structure capable of combining and transmitting power to an inverter without use of a combiner box.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“cable, Petitioner asserts that Amphenol lists feeder cables of various gauges (thicknesses) that may be selected for lead assemblies and that a person of ordinary skill in the art “would recognize that either 8AWG or 10AWG cables are rated for 30 amps; thus, Amphenol discloses at least one 30 amp feeder cable.” Pet. 18. Petitioner, however, does not explain why one would have had reason to choose a cable rated for 30 amps rather than one of the other feeder cables disclosed having some other rating. “Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). Here, Petitioner does not supply any reasoning or evidence, in the cited references or elsewhere, that would lead one of ordinary skill in the art to employ a feeder cable rated for 30 amps over the other cables listed in Amphenol. See Pet. 18; Ex. 1003 ¶ 135. That such cables were known in the prior art is not, of itself, a sufficient basis for combination with the other cited teachings of the art.” slip op. at 32
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,992,254 - Helena Laboratories Corporation v. SebiaInstitution deniedPTAB · Oct 23, 2024 · IPR2024-00801 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution for claims 1–24 under § 325(d), finding the asserted art previously presented or substantially similar and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“previously was presented to the Office, we now consider whether Petitioner sufficiently demonstrates that the Office materially erred. In assessing the second part of the Advanced Bionics framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether material error has been shown. Advanced Bionics, Paper 6 at 10. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 6 n.9. However, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. Petitioner bears the burden of showing that the Examiner materially erred. Id. at 8.” slip op. at 17
Discretionary denialPatents in suitUS 7,887,686 - PTAB · Oct 16, 2024 · IPR2023-01218 · APJ Avelyn M Ross · IPR · Director review
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Astera and Edwards anticipate or render the claims obvious.
RulingsDirector review decision- Director reviewOther
“under 35 U.S.C. § 314(a), to deny the Petition because it challenges a patent that was previously challenged before the Board. Paper 9; see generally IPR2022-00099 (challenging the ’944 patent). On April 19, 2024, the Director of the United States Patent and Trademark Office granted Director Review, vacated our prior decision, and remanded the case for further proceedings. Paper 12. We have authority to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, we institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any claim terms for construction.5 See Pet. 10; Prelim. Resp. 3–4. For purposes of this Decision, we need not expressly construe any claim terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 10. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See generally Prelim. Resp. On this record, Petitioner’s proposed definition appears consistent with the prior art of record and we apply it for purposes of this Decision.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims is anticipated by or would have been obvious over the asserted prior art.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,845,044 - Voltage, LLC v. Shoals Technologies Group, LLCInstitution deniedPTAB · Sep 30, 2024 · PGR2024-00022 · APJ Michael G Mcmanus · PGR · Institution
The Board denied institution on claims 1–24 because Voltage did not show that any challenged claim was more likely than not unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute a post-grant review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). A post-grant review may not be instituted “unless. . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that Petitioner has not demonstrated that the ’153 patent is eligible for post-grant review. Accordingly, we decline to institute a post-grant review of claims 1–24 based on the grounds articulated in the Petition.” slip op. at 2
- Skill levelOther
“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.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are 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). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, for purposes of this institution decision, and on the present record, we determine that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions. C. Claim Construction” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The parties put forward several terms for construction. Pet. 14–17; Prelim. Resp. 9–12. With respect to Grounds I through VII, we have determined that no claim constructions are required in order to address the points at issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy” (internal citation omitted)). Claim construction is required to resolve certain issues arising in connection with Ground VIII. Accordingly, we construe certain terms in our discussion of that ground, infra.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“through the undermold.” The term “aperture only partially extending through said undermold” was added to the claims of the ’254 parent application by amendment. Ex. 1021, 103–105; Ex. 1020, 6:60–8:47. With this amendment, the claims of the ’254 patent align with Figure 7, reproduced below. Figure 7 of the ’254 Patent (Figure 7 of the ’153 patent is identical to Figure 7 of the ’254 patent except for minor stylistic changes). As can be seen, the aperture occupied by drop line 12 extends partially through the undermold to compression lug 20 while the aperture occupied by feeder cable 14 extends completely through the undermold. This suggests a construction of “aperture extending partially through the undermold” where such aperture does not extend completely through the undermold. Such a construction of “aperture extending partially through the undermold” is consistent with the plain meaning of “extending partially.”” slip op. at 62
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,689,153 - PTAB · Aug 29, 2024 · IPR2024-00671 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 15, 17, 18, 51, 54, and 57 on all four asserted obviousness grounds, finding a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Here, Petitioner relies on modifying Richardson with Zhao to increase the USB input voltage. See Pet. 25–27; 34–42. Therefore, because Petitioner has shown sufficiently, based on the current record, that Zhao teaches the USB charging limitations missing from Tinaphong, Balmefrezol, and Lenk, Zhao is therefore not substantially the same as Tinaphong, Balmefrezol, or Lenk. Thus, Petitioner does not rely on Zhao in the same manner as the Examiner relied on Tinaphong, Balmefrezol, or Lenk during prosecution and we are not persuaded that the combination of Richardson and Zhao, a combination not considered by the Examiner, is duplicative or cumulative of prior art and arguments previously considered by the Examiner. Accordingly, we are persuaded, based on the totality of the evidence presented, that the combination of Richardson and Zhao does not present “the same or substantially the same prior art that was previously presented to the Office.”” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, Patent Owner’s arguments are unpersuasive. Although Patent Owner contends that Petitioner fails to address “the nature” of Richardson’s jump starter (see Prelim. Resp. 45), Richardson’s jump starter charges batteries at various voltages (see Ex. 1005 ¶ 54). Petitioner, at this stage of the proceeding, has established that an ordinary artisan would have understood that Zhao’s step-up convertor can “charge a plurality of series connected (e.g., lithium) batteries” (see Ex. 1006, 6–11) and that Zhao would “be well-suited for starting a traditional lead-acid vehicle starter battery” like the one in Richardson (see Pet. 35–36). Moreover, the claims recite “converting power from a USB power source to increase power voltage.” At this stage and on this record, the Board disagrees that this limitation requires increasing to a particular power voltage. See Ex. 1001, 8:40–9:6, 11:4–6, 11:46–12:49, 13:29–65, 14:11–15:12. Patent Owner’s contrary argument that an ordinary artisan would not have been motivated to modify Richardson to include a charging port because Richardson did not have a charging port (see Prelim. Resp. 45–47) is conclusory. In contrast, Petitioner argues that an ordinary artisan would have been motivated to include Zhao’s charging port in Richardson’s jump starter for convenience, as USB connectors are considered “standard” and to avoid the need to supply proprietary chargers. Pet. 35–39. Petitioner’s proposed reasons to combine Richardson and Zhao have rational underpinnings. Accordingly, we are persuaded that Petitioner has shown sufficiently at this stage of the proceeding that an ordinarily skilled artisan would have had reason to combine Richardson and Zhao with a reasonable expectation of success in the combination.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On this record, Patent Owner’s arguments are unpersuasive. Although Patent Owner contends that Petitioner fails to address “the nature” of Richardson’s jump starter (see Prelim. Resp. 45), Richardson’s jump starter charges batteries at various voltages (see Ex. 1005 ¶ 54). Petitioner, at this stage of the proceeding, has established that an ordinary artisan would have understood that Zhao’s step-up convertor can “charge a plurality of series connected (e.g., lithium) batteries” (see Ex. 1006, 6–11) and that Zhao would “be well-suited for starting a traditional lead-acid vehicle starter battery” like the one in Richardson (see Pet. 35–36). Moreover, the claims recite “converting power from a USB power source to increase power voltage.” At this stage and on this record, the Board disagrees that this limitation requires increasing to a particular power voltage. See Ex. 1001, 8:40–9:6, 11:4–6, 11:46–12:49, 13:29–65, 14:11–15:12. Patent Owner’s contrary argument that an ordinary artisan would not have been motivated to modify Richardson to include a charging port because Richardson did not have a charging port (see Prelim. Resp. 45–47) is conclusory. In contrast, Petitioner argues that an ordinary artisan would have been motivated to include Zhao’s charging port in Richardson’s jump starter for convenience, as USB connectors are considered “standard” and to avoid the need to supply proprietary chargers. Pet. 35–39. Petitioner’s proposed reasons to combine Richardson and Zhao have rational underpinnings. Accordingly, we are persuaded that Petitioner has shown sufficiently at this stage of the proceeding that an ordinarily skilled artisan would have had reason to combine Richardson and Zhao with a reasonable expectation of success in the combination.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 41–44; Ex. 1014 at 10–11). Patent Owner “does not propose a different level of skill in the art[.]” Prelim. Resp. 25. 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 ’243 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 the ’243 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,584,243
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.