- PTAB · Mar 22, 2023 · IPR2022-01263 · APJ Paul J Korniczky · IPR · Institution
The Board instituted IPR of claims 1, 2, 4–7, 10–12, 15, 16, 21, and 22 because Petitioner showed a reasonable likelihood that claim 1 is obvious over Ziff, Saito, and Ferrel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“authority to institute an inter partes review if “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) (2018). After considering the Petition and other evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we institute an inter partes review on all challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a). Specifically, we grant Petitioner’s request to institute an inter partes review of claims 1, 2, 4–7, 10, 12, 15, 16, 21, and 22 of the ’576 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states a person of ordinary skill in the art would have had (1) at least an undergraduate degree in electrical engineering, computer science, a closely related scientific field, or similar advanced post-graduate education in this area; (2) a working knowledge of electronic content distribution systems; and (3) at least two years of experience with such systems. Additional education may substitute for lesser work experience and vice-versa. Pet. 10 (citing Ex. 1003 ¶¶ 71–74). We adopt Petitioner’s definition of the level of ordinary skill for the purposes of institution.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In its Petition, Petitioner proposes that the “claim terms of the ’576 Patent [should] be given their ordinary and accustomed meaning.” Pet. 10– 11. For purposes of institution, we determine that we do not need to expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“According to Petitioner, because Ziff’s CPU 42 executes its software applications and Saito teaches a distributed processor system for cooperatively executing a plurality of disparate programs, a skilled artisan would have been motivated to make the simple modification allowing Ziff’s non-distributed subsystems to execute on distributed processors as taught by Saito. Id. at 37. Petitioner explains that “Ziff’s various software components are subsystems in a cooperative system, but Ziff does not expressly teach that each software application—which perform the respective functions of Ziff’s story creation subsystems—are implemented on separate processors.” Id. at 20. Petitioner states that, while Ziff expressly teaches its distinct subsystems are executed on the same CPU, a person of ordinary skill in the art would have been motivated to utilize the well-known benefits of Saito’s distributed processing architecture to implement Ziff’s subsystems. Id. at 20–21 (citing Ex. 1003 ¶¶ 104–114; Ex. 1004, 6:37–41). Petitioner further explains that Saito expressly teaches the benefit in distributed computer systems of being able to utilize distributed processors to take advantage of different computers’ “performance, load, and type.” Id. at 22 (citing Ex. 1005, 3:36–49; Ex. 1003 ¶ 112). According to Petitioner, a person of ordinary skill in the art would have understood that it would have been an obvious design choice to use either distributed or nondistributed processors to execute Ziff’s subsystems, and this skilled artisan would have understood that implementing a distributed system with multiple processors, as in Saito, would enhance Ziff’s goals of improving speed as well as efficiency. Id. at 21–22 (citing Ex. 1004, 2:45–60; Ex. 1003 ¶¶ 107– 110).” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,339,576 - PTAB · Mar 2, 2023 · IPR2022-01462 · APJ Jeffrey N Fredman · IPR · Institution
Instituted IPR of claims 1–3, 9–13, 16, and 17 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness over Keller ’574 and Yu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the preliminary record, Petitioner has met its institution burden and demonstrated to a reasonable likelihood that it will prevail in showing the claim 1 would have been obvious over Keller ’574 and Yu.” slip op. at 31
- Skill levelOther
“While we appreciate that the parties differ on the number of years of experience, we do not find a difference that affects our Decision. The parties may provide briefing at trial, if appropriate, to explain why adoption of one definition over the other changes the remaining analysis. We also note the level of ordinary skill in the art usually is evidenced by the prior art references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We agree with Patent Owner because on the current record, there is no controversy over the meaning of the term and Petitioner does not identify any way that claim construction impacts the decision. If the parties believe that further argument on any claim term’s interpretation is needed to resolve any disputed issue, they may and are encouraged to provide such argument in briefing permitted in trial.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On this record, we agree with Petitioner that the ordinary artisan concerned with separation of the nozzle during operation, whether due to backpressure or other reasons, would have found it obvious based on Yu’s teaching to include Yu’s tangs to engage the nozzle and lock and seal at locations disclosed by Keller ’574. On this record, Patent Owner does not persuasively explain why the ordinary artisan would have found these disclosures of a locking location in Keller ’574 and tangs in Yu insufficient to select tang locations in Keller ’574 that would function to enforce locking and sealing of the combined device.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,010,578 - Unified Patents, LLC v. Joseph Y. Yoon Intellectual Property LLCAll claims unpatentablePTAB · Mar 2, 2023 · IPR2022-00002 · APJ Michael L Woods · IPR · Final written decision
Claims 1–12 are unpatentable as obvious: claims 1, 4, 6, and 9 over Foo; claims 1, 2, 4–9, 11, and 12 over Foo and Mazur; claim 3 over Foo and Canterberry; and claims 1, 4, …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, and is supported by the accompanying declaration testimony of Mr. Andrews, that a POSITA would have had “at least a [B]achelor’s degree in electrical engineering, or a related field, and at least two years of practical experience in automotive safety systems.” Pet. 9 (citing Ex. 1003 ¶¶ 80–83). Petitioner adds that “[t]hese descriptions are approximate, and a higher level of education or skill might make up for less experience, and vice-versa.” Id. In our Institution Decision, we adopted Petitioner’s definition of the level of ordinary skill in the art. Pet. 9. We invited the parties to address this definition in further briefing if there was any disagreement. See id. Neither party disputed the initial definition and we maintain that definition in this Decision. In particular, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“limitation by reciting a function to be performed rather than by reciting structure or materials for performing that function.” Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003). Use of the term “means” creates a rebuttable presumption that a claim term is a means-plus- function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption may be rebutted if the claim recites structure sufficient to perform the described functions in their entirety. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). A term written in means-plus-function form is construed to cover “the corresponding structure, material, or acts described in the specification and equivalents thereof” for performing the recited functions. 35 U.S.C. § 112, ¶ 6. Construction of means-plus-function claim terms is a two-step process. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). First, we determine the claimed function. Id. Second, we “identify the corresponding structure in the written description of the patent that performs the function.” Id.; see also Williamson, 792 F.3d at 1351. A “[s]tructure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function(s). See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). Because the claim limitation recites the term “means,” there is a rebuttable presumption that the claim term is a means-plus-function limitation. Williamson, 792 F.3d at 1348. Furthermore, claim 1 does not identify sufficient structure for the “means for detecting a vehicle occupant.” Accordingly, on the record, we agree with Petitioner that this limitation should be interpreted as a means-plus-function term. Cf. TriMed, 514 F.3d at 1259. Based on the evidence in the record, we further agree with Petitioner’s proposed claim construction. In particular, we identify the claimed function as “detecting a vehicle occupant” and the structure corresponding to the function is a “seat mounted sensor,” such as, but not necessarily including, one “used to detect the approximate size of the passenger occupant by weight,” and equivalent structures. Ex. 1001, 6:56– 58; see also Micro Chemical, 194 F.3d at 1258 (“[T]he statute [does not] permit incorporation of structure from the written description beyond that necessary to perform the claimed function.”). For these reasons, we adopt Petitioner’s proposed construction that the “means for detecting a vehicle occupant” shall be construed under 35 U.S.C. § 112, ¶ 6, and that the corresponding structure for performing the function of “detecting a vehicle occupant” is “a weight sensor located in a seat, and equivalents thereof.” See Pet. 9.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. The claim language does not use the word “means” or other nonce words and does not recite a function to be performed. Rather, the language connotes structure. The ’076 patent uses the term “sensing and diagnostic module” (see, e.g., Ex. 1001, 11:4–5) and we find persuasive Mr. Andrews’s unrebutted testimony that a “POSITA would have understood that a ‘sensing and diagnostic module’ or ‘SDM’ was the name for a known component of vehicle restraint system—namely, the airbag microcontroller that was typical as of the asserted priority date” (Ex. 1003 ¶ 93). We further agree with Mr. Andrews’s testimony that an “airbag microcontroller” is often referred to as a “sensing and diagnostic module.” Id. ¶ 94. Giving the claim language “airbag module controller” its ordinary and customary meaning, in light of the Specification and in agreement with Mr. Andrews’s testimony, we interpret the term “airbag module controller” as an airbag microcontroller, including, but not limited to, the “sensing and diagnostic modules” described in the ’076 patent. Phillips, 415 F.3d at 1312–17.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In the alternative, Petitioner reasons that, to the extent that Foo does not expressly disclose this limitation, it would have been obvious to a POSITA “at the time of filing to ensure that no unfired initiator remained following airbag deployment, for example, to prevent the risk of unintentional follow-on explosions at the crash scene, which could harm the vehicle occupants and emergency responders.” Pet. 20. Mr. Andrews testifies that “[i]t was also critical that no unreacted propellant remained in the air bag module and that the combustion reaction went to completion to prevent the risk of unintentional follow-on explosions at the crash scene, which could cause further harm to the vehicle occupants and emergency responders.” Ex. 1003 ¶ 158 (citing as evidence Ex. 1011, 4:17–23). Although we do not find that Foo explicitly discloses that there will be no unfired initiator remaining in Foo’s airbags are actuated, Petitioner has demonstrated by a preponderance of the evidence that it would have been obvious to modify Foo’s airbag module controller, if necessary, so that it provides “a sequential firing of both said pair of initiators such that there will be no unfired initiator left in said airbag module” for the purpose of improving safety, thereby satisfying the limitations recited in 1.2.” slip op. at 20
Patent outcomesUS 9,376,076 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,376,076 - Comotomo Inc. / Comotomo Corporation v. Mayborn (UK) LimitedInstitution deniedPTAB · Jan 24, 2023 · IPR2022-01326 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution for claims 1–31 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that the challenged claims of the ’244 patent are unpatentable. We, therefore, deny the Petition requesting institution of an inter partes review of claims 1–31 of the ’244 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–31 of the ’244 patent is denied.” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical engineering or a related field, with at least two years of professional experience working in bottle manufacturing” but “[w]ith more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill” and “[s]imilarly, with more experiential knowledge of bottle manufacturing, less professional experience is needed to attain the ordinary level of skill.” Pet. 8 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. Prelim. Resp., passim. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on these disclosures in the ’244 specification, we agree with Patent Owner that the “flex region” is understood to be more than just a region made of flexible material. See Prelim. Resp. 9–12. Specifically, we agree with Patent Owner that the “flex region” contains structural components that provide the “surface characteristics that control flexing.” Id. at 12. Accordingly, based on the ’244 specification, we determine that the “flex region” is reasonably interpreted to contain structural components that provide characteristics that control flexing of the structure, such as grooves or flex channels surrounding the teat portion, these grooves or flex channels can be either on the inner or outer surface of the teat portion, forming circular thinned regions of parallel/concentric channels, providing for a bellows action as well as flexing in a direction perpendicular to the fluid flow direction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“would prevent liquid from flowing out of the product.” Id. Hakim further explains that the second valve opening seals “when the user is not applying negative pressure at the spout (i.e. when the user is not drinking).” Id. at 6. Hakim teaches that “[t]he nipple itself is made of a flexible material, and has the no-spill valve provided inside the nipple.” Id. at 11. Hakim, however, does not teach a nipple containing structural elements such as grooves or flex channels surrounding the teat portion, forming circular thinned regions of parallel/concentric channels, providing for a bellows action as well as flexing in a direction perpendicular to the fluid flow direction. For the reasons discussed above in the claim construction section (II.C), we are not persuaded by Petitioner’s contention that merely describing that the nipple is made of flexible material supports the “flex region” limitation as recited in the claims and described in the ’244 specification. See Pet. 23–24; Ex. 1003 ¶ 71. Petitioner also has not identified a reason to add structural elements, such as grooves or flex channels surrounding the teat portion, forming circular thinned regions of parallel/concentric channels to Hakim’s nipple. Based on our review of this record, Petitioner has not sufficiently shown a reasonable likelihood that Hakim would have rendered claim 1 obvious.” slip op. at 20
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,207,244 - PTAB · Jan 24, 2023 · IPR2022-01325 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–20; Petitioner showed a reasonable likelihood that claim 13 would have been obvious over Hakim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “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). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’930 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’930 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA”) would have had a bachelor’s degree in mechanical engineering or a related field, with at least two years of professional experience working in bottle manufacturing. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of bottle manufacturing, less professional experience is needed to attain the ordinary level of skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner proposes formal construction of any term. See Pet. 7; see also generally Prelim. Resp. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner gives no reason why a skilled artisan would have relocated Hakim’s air valve from the lower right corner (see Ex. 1005, Fig. 4e (depicting “vent” at the lower right corner)) to the location in Petitioner’s annotated figure, reproduced above and circled in red. We agree with Patent Owner that “Petitioner does not explain why its cherry-picked located marked by a red circle is consistent with Hakim’s directive to locate the air valve ‘at the bottom of the bottle nipple.’” Prelim. Resp. 15 (citation omitted); see also Ex. 1005, 13, 28. Although Mr. Goldman provides a reason why a skilled artisan would not have located the valve at the top of the teat (Ex. 1003 ¶ 81), Mr. Goldman provides no reason for relocating the valve to its proposed location. We further agree that the proposed location would appear to promote leaking by transplanting the air valve—‘a slit or cross-cut’ in a shallow surface depression . . . from a protected location at the ‘bottom rim,’ which is ‘covered by the hard portion of [a] screw cap,’ . . . to an exposed location amongst Hakim’s teething bumps, where the valve would be susceptible to inadvertent actuation by an infant squeezing or gnawing on the nipple. Prelim. Resp. 17 (citing Ex. 1005, 29–30). Accordingly, Petitioner fails to show a reasonable likelihood that a skilled artisan would have had reason to modify Hakim by relocating its vent valve to satisfy an “air valve extending through said nipple and disposed (i) radially inwardly from the collar and (ii) above the flange,” as recited in claim 1.” slip op. at 18
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,952,930 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCInstitution deniedPTAB · Jan 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institute an inter partes review if “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). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims. We thus deny institution of inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d). B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “POSA,” or “skilled artisan” ) “would have had (i) at least a bachelor’s degree in the study of wildlife management or 5 At the time this Decision was in the final stages of panel review, the parties e-mailed the Board informing the Board that Patent Owner withdrew its argument under Fintiv. See Ex. 3001. We need not and do not address, however, whether this e-mail effectuated withdrawal of Patent Owner’s Fintiv argument.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’374 patent. See Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 8
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. We are not persuaded by Petitioner’s definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a POSITA if that artisan had several years of experience trapping flying animals. See Pet. 6. Further, we are not persuaded by Patent Owner’s definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 6–7. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definition of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’374 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,251,374 - Meridian Wildlife Service, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCInstitution deniedPTAB · Jan 10, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Institution
The Board denied institution on all challenged claims 1–8 because Petitioner did not show a reasonable likelihood that any claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III. ANALYSIS A. DISCRETION TO DENY UNDER 35 U.S.C. § 325(D) Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution because Petitioner presents the same 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103, effective March 16, 2013. Because the’683patent has an effective filing date after the effective date of the applicable AIA amendments, we refer to the AIA version of § 103. 3 Brugh, U.S. Patent Application Publication No. 2017/0238524, published Aug. 24, 2017 (Ex. 1005, “Brugh”), issued as US Patent No. 9,943,073 B2 on Apr. 17, 2018. 4 ECOLOGICAL AND BEHAVIORAL METHOD FOR THE STUDY OF BATS (Thomas H. Kunz, 1998). EX. 1010. 5 Bird Barrier, Mist Kit Assembly and Use, YouTube (Aug. 19, 2014). Ex. 1009 (“Bird Barrier Video”). 6 Petitioner also submits a screenshot from a Bird Barrier webpage advertising “mist nets” (Ex. 1011), a transcript from the Bird Barrier Video (Ex. 1014), and a “Bird Barrier Product Catalog 2013” (Ex. 1015). or substantially the same prior art or arguments that were previously presented to the Office during the prior prosecution of the ’683 patent. Prelim. Resp. 21–23. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 325(d).” slip op. at 11
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. The evidence does not support Petitioner’s proposed definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a person of ordinary skill in the art if that artisan had several years of experience trapping flying animals. See Pet. 7. Further, the evidence does not support Patent Owner’s proposed definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 13. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definitions of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’683 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Figure 2 of the ’683 patent (as shown above in Section II.C) depicts a preferred net set up depicting two perimeter nets 12 “set up around the perimeter of the enclosure 36” and three trapping nets 14, one located proximate to the perimeter and two located in the interior. Ex. 1003, 3:56–57, 4:29–42. Although the ’683 patent does not provide a specific definition for a “perimeter net” and describes that the “perimeter net” is only “preferably . . . set up around the perimeter of the enclosure” (id. at 4:29–30), the term “perimeter” qualifies the term “net” and connotes structure, namely, the location of the “net” in relation to the “structure” recited in the preamble of independent claim 1, i.e., the enclosure. Here, the term “perimeter” before net connotes a relationship between the “structure” of the preamble and the location of the net. In other words, “perimeter” is a meaningful modifier for the location of the net as being at or proximate to the perimeter of the enclosure, i.e., the “structure” recited in the preamble of claim 1. Thus, we agree with Patent Owner and determine that the term “perimeter net” is a net located at or proximate to the perimeter.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,064,683 - Meridian Wildlife Service, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCInstitution deniedPTAB · Jan 10, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were obvious over Brugh, Brugh and Kunz, or Bird Barrier Video and Kunz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“LEGAL STANDARDS B. In an inter partes review, the petitioner has the burden of showing there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. ANALYSIS A. DISCRETION TO DENY UNDER 35 U.S.C. §§ 314(A) AND 325(D) Patent Owner argues that we should exercise discretion under 35 U.S.C. § 314(a) and deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Prelim. Resp. 25–26. Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’108 patent. Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’108 patent. Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 12
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. The evidence does not support Petitioner’s proposed definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a person of ordinary skill in the art if that artisan had several years of experience trapping flying animals. See Pet. 6. Further, the evidence does not support Patent Owner’s proposed definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 14. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definitions of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’108 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,729,108 - Lti Flexible Products, Inc. D/B/A Boyd Corporation v. The Regents Of The University Of CaliforniaNo claims unpatentablePTAB · Jan 9, 2023 · IPR2021-01189 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–13 were not shown unpatentable because MacDonald was not prior art and the petition failed to establish anticipation or obviousness; the contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“The full record makes clear that the parties do not dispute the portion of Petitioner’s proposed level of ordinary skill regarding education and years of experience. Compare Pet. 14–15, with PO Resp. 3. Patent Owner acknowledges that the analysis does not depend on whether Petitioner’s proposed level of ordinary skill or Patent Owner’s proposal is adopted. See PO Resp. 3–4; Ex. 2003 ¶ 34 (testifying that Patent Owner’s declarant has an understanding of the capabilities of one of ordinary skill in the art irrespective of which proposed skill level is adopted), ¶ 35. The parties’ proposals are consistent with the factors of GPAC, the disclosure of the ’728 patent, and the prior art of record. Ex. 1012 ¶ 71 (testifying that Petitioner’s proposed level of ordinary skill is based on considering the factors of GPAC); Ex. 2003 ¶ 32 (testifying that Patent Owner’s proposed level of ordinary skill is based on the ’728 patent); GPAC, 57 F.3d at 1579. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art would have had “(1) a bachelor’s degree in mechanical engineering or a similar field that includes thermal sciences; and (2) at least two years of industrial experience on the design and evaluation of thermal management of electronic systems and heat pipes/TGPs.” Pet. 14–15; Ex. 1012 ¶ 71; Ex. 2003 ¶ 35. We agree with Patent Owner that the analysis would not be affected by adopting Patent Owner’s proposed level of ordinary skill in the art. PO Resp. 3–4; Ex. 2003 ¶ 35.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner contends that “the ordinary and customary meaning of the term ‘pitch’ in [c]laim 9 encompasses the definition of ‘pitch’ given in [c]laim 1—‘a distance from a center of one microfabricated structure to a center of a next neighboring microfabricated structure.’” Pet. 15. No claim term was interpreted expressly for our Institution Decision. Inst. Dec. 10. Patent Owner does not propose expressly any interpretation for any claim term. See generally PO Resp. Patent Owner, however, states that “claim 1 of the ’728 Patent expressly defines the claimed ‘pitch’ of the microfabricated structures as being ‘a distance from a center of one microfabricated structure to a center of a next neighboring microstructure.’” Id. at 12 (citing Ex. 1001, 14:45–48). Patent Owner notes that “[c]laim 9 does not include this particular definition, but the Board apparently applied the definition of the ‘pitch’ limitation in claim 1 to claim 9, as did Petitioner.” Id. “Patent Owner does not dispute or disagree with this.” Id. Based on the full record and because the parties do not dispute it, we apply the definition of pitch in claim 1 to the recited pitch of claim 9. Also, based on the full record, we determine that no other claim term requires express interpretation. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable
“Petitioner appears to be seeking verbatim support, when, as argued by Patent Owner, the Specification does not need to provide exact or verbatim support to meet the written description requirement. See Pet. 20; PO Resp. 32. One of ordinary skill in the art would have immediately discerned that 5–500 microns is well within 2–1500 microns calculated by Petitioner using the parent applications’ claim 2. See Pet. 21–22; PO Resp. 16–17; Ex. 2003 ¶ 47. The numerical differences between the derived and claimed ranges do not address sufficiently why one of ordinary skill in the art would not discern the claimed range. See Pet. 20. As determined above, the disclosure would allow one of ordinary skill in the art to recognize that the claimed “distance from a center of one microfabricated structure to a center of a next neighboring microfabricated structure” has a range of values, such as the 2– 1500 microns calculated by Petitioner. See id. at 22. The numerical differences between the calculated ranges and the claimed ranges alone fail to show that the ordinarily skilled artisan would not have discerned the claimed range of 5–500 microns from the range of 2–1500 microns.” slip op. at 42
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner responds that “[b]ecause MacDonald does not qualify as prior art against the claims of the ‘728 Patent, Petitioner has failed to show that the challenged claims of the ‘728 Patent . . . would have been obvious over MacDonald in view of Ding.” PO Resp. 40. No reply arguments are presented specifically for the obviousness challenge. See generally Pet. Reply; PO Sur-reply. For the reasons given above, we agree with Patent Owner that MacDonald is not prior art to the ’728 patent. PO Resp. 39. Accordingly, based on the full record, Petitioner fails to show by a preponderance of the evidence that MacDonald and Ding would have rendered obvious claims 2, 3, and 7.” slip op. at 51
Patent outcomesUS 10,309,728 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,309,728 - PTAB · Dec 20, 2022 · IPR2022-01138 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds after finding a reasonable likelihood that claims 1 and 7 would have been obvious based on Goss.
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) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’397 patent on all challenges set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that both House and Goss were at least considered by the Examiner, even if the Examiner never discussed the references or relied on them in any manner. See Ex. 1001, code (56) (listing both House and Goss among the references cited, and identifying Goss as cited by the Examiner). Under these circumstances, we find the first part of the Advanced Bionics framework satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art references.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner provides very little argument or evidence in support of its motivation to combine argument in the Petition. See Pet. 46. We note that Petitioner does not explain why a “PHOSITA would understand that there is a rational underpinning to combine” Goss and House or cite to any declarant support for its argument. See id. Based on the limited argument, evidence, and explanation provided by Petitioner, on the current record, we question whether Petitioner establishes sufficiently that one of ordinary skill in the art would have had a reason to modify Goss with the teachings of House. Even if Petitioner fails to establish adequately a motivation to combine the references, that does not end our analysis. A “patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016); see also Game & Tech Co. v. Activision Blizzard Inc., 926 F.3d 1370, 1381 (Fed. Cir. 2019). For the limitations in independent claims 1 and 7, Petitioner does rely on House, but only as an additional reason why the references disclose a limitation in question. See Pet. 46–61 (relying on Goss for every limitation in claims 1, 3–8, 10–16, and 18). Based on our review of the Petition, Petitioner sets forth an analysis based on Goss alone for at least claims 1 and 7, within the context of its second challenge based on Goss and House. See id. Although Petitioner may not need to rely on a combination of Goss and House for the limitations of independent claims 1 and 7, the additional reliance on House may buttress Petitioner’s arguments as to these and other claims. Consequently, the motivation to combine issue may impact whether Petitioner ultimately prevails as to this challenge. The parties may address the motivation to combine issue further during trial.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“adequately that Goss discloses the surface area limitation. We have also reviewed Petitioner’s arguments and evidence as to the remaining limitations of claims 1 and 7. Based on our review of the current record, Petitioner establishes sufficiently that Goss discloses or renders obvious all of the limitations of claims 1 and 7 for the reasons provided by Petitioner. See Pet. 46–51, 53–55. Accordingly, Petitioner establishes a reasonable likelihood that independent claims 1 and 7 would have been obvious based on Goss alone. We have also reviewed Petitioner’s arguments and evidence as to dependent claims 2–6 and 8–19. See Pet. 62–68. Patent Owner does not separately address the dependent claims. Prelim. Resp. 29–36. Because we institute inter partes review as to the independent claims 1 and 7, we also institute inter partes review as to dependent claims 2–6 and 8–19. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Because Petitioner relies on Goss for every limitation in dependent claims 3–6, 8, 10–16, and 18, the Petition sets forth a challenge based on Goss alone for these claims as well as claims 1 and 7. See Pet. 49–61. These challenges, as well as the challenge to claims 1–19 based on a combination of Goss and House set forth in the Petition, are part of the instituted grounds at issue during the trial. See id. at 46–61; SAS, 138 S.Ct. at 1359–60. We note that Petitioner relies exclusively on House for dependent claims 2, 9, 17, and 19, and any deficiency in Petitioner’s showing as to the motivation to combine Goss and House may impact whether Petitioner can establish the obviousness of those claims, apart from whether House discloses the limitations in question. See Pet. 51, 53, 55, 60–61 (relying on House as disclosing the limitations in dependent claims 2, 9, 17 and 19).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,026,397
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.