- PTAB · Dec 5, 2022 · IPR2022-01107 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1 and 7 are anticipated by Goss and instituting the remaining asserted grounds as well.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Goss was at least considered by the Examiner, even if the Examiner never discussed the references or relied on it in any manner. See Ex. 1001, code (56) (listing Goss among the references cited). Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art reference.” slip op. at 11
- 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Petitioner proposes constructions for the terms “filler material,” “clump strength,” “clumping agent,” and “wetting agent.” Pet. 17. Patent Owner does not dispute Petitioner’s constructions for these terms, but argues that these constructions are unnecessary to resolve any controversy in this proceeding. Prelim. Resp. 12–13. Based on our review of the current record, we agree with Patent Owner that we need not formally construe any claim terms to determine whether to institute an inter partes review. 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record, including the prior art. See Prelim. Resp. 12; GPAC Inc., 57 F.3d at 1579. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,026,397 - PTAB · Sep 14, 2022 · IPR2022-00691 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood of obviousness based on Goss, Winkleman, and House.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under these circumstances, we find the first part of the Advanced Bionics framework is not satisfied because the Petition sets forth prior art and arguments that are not the same or substantially the same as that considered by the Examiner during prosecution. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. §325(d).” slip op. at 8
- 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 ’393 patent on all challenges set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 33 (citing Ex. 1006 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record, including the prior art. See Prelim. Resp. 11; In re GPAC Inc., 57 F.3d at 1579. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Based on our review of the record and the parties’ arguments, we determine that “removably clumpable” in independent claims 1 and 10 refers to a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test” in addition to the other aspects of the “removably clumpable” definition provided in the specification. See Ex. 1001, 5:24–36. This is the same conclusion we reached in IPR2022-00206, which addresses the same issues raised here. See AMCOL, IPR2022-00206, Paper 9, at 9–13. As we noted in that Decision, the paragraph containing the phrase “a clump strength ≤ 1.33 using the Standard Drop Method Test” appears within the “Definitions” section of the specification, and the use of the term “i.e.” just prior to the phrase signals an intent to define the limitation. See id. at 9–10; Ex. 1001, 3:63, 5:24–36.6 We also pointed out that the ’393 patent’s 5 Patent Owner further argues that Petitioner expressly acknowledges the correct definition of “removably clumpable,” but fails to apply it in its proposed construction or apply it to the prior art. Prelim. Resp. 19–21; Surreply 1–3. Petitioner argues that it properly incorporated the narrower definition in its analysis. See Reply 1–3. We address Petitioner’s challenges as to the “removably clumpable” limitation in our discussion of the merits below. 6 Relevant case law supports this interpretation of “i.e.” in the specification. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d, 1322 1334 (Fed. Cir. 2009) (“As the court correctly reasoned, the specification’s use of ‘i.e.’ signals an intent to define the word to which it refers, . . . and that definition was not limited to the embodiment being discussed.”); Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1327–28, 1330 (Fed. Cir. 2003) (holding that the specification’s use of “i.e.” defined the limitation); SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1201 (Fed. Cir. 2013) (finding that reading “‘beads (i.e., two-dimensions)’ as definitional comports with the plain language of the specification as a whole and the inventors clearly expressed Example 26, which discloses a clump strength of ≤ 1.33 at the 24-hour mark but clump strengths above 1.33 at the three other time periods, still falls within the scope of the definition of “removably clumpable.” AMCOL, IPR2022-00206, Paper 9 at 11–12. The “definitional paragraph” relied on by Patent Owner notes that “[a] litter material having a clump strength of ≤1.33 using the Standard Drop Method Test (described below) [at] 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed by exposure to a liquid is removably clumpable.” Ex. 1001, 5:28–33 (emphasis added); Prelim. Resp. 17–18 (referring to “definitional paragraph” that includes this language). Use of the disjunctive “or” in that sentence indicates that a litter having the required clump strength at any of the listed time intervals falls within the scope of “removably clumpable.” Based on the foregoing, we again conclude that “removably clumpable” in independent claims 1 and 10 requires, at a minimum, a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed.” Ex. 1001, 5:28–32 (emphasis added).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,439,393 - Rideco Inc. v. Via Transportation, Inc.InstitutedPTAB · Sep 1, 2022 · IPR2022-00740 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–13, 15, and 17–20, finding a reasonable likelihood that at least one challenged claim is unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial. Fintiv, Paper 11 at 5–16. The Director of the USPTO issued, on June 21, 2022, an Interim Procedure regarding the application of Fintiv factors for purposes of determining whether to exercise discretion to deny a petition. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceeding with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure states: “[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3. Petitioner stipulates that “if the Board institutes the Petition on the same grounds presented, then it will not seek resolution in the district court of any ground of invalidity raised in the Petition or that could have been raised in the Petition.” Pet. 68; see also Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework, (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III(C)(5), first paragraph)).” slip op. at 10
- 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, the Reply, the Sur-reply, 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 ’411 patent. Accordingly, we institute an inter partes review of claims 1–13, 15, and 17– 20 of the ’411 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention (“POSITA” or “PHOSITA”) “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 4–5 (citing Ex. 1003 ¶ 37). “For the purpose of [the] Preliminary Response only, Patent Owner does not dispute Petitioner’s definition.” Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’411 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,197,411 - Carlisle Construction Materials, LLC v. Graco Minnesota Inc.Institution deniedPTAB · Aug 18, 2022 · IPR2022-00635 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because neither asserted obviousness combination showed a reasonable likelihood of establishing that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in chemical engineering, materials engineering, mechanical engineering or equivalent technical degree, with knowledge regarding fluid dynamics, and three years of experience in the research, design, or implementation of systems for mixing and dispensing multiple components. Ex.1003(¶85-86). Additional education might supplement practical experience and vice-versa, i.e., someone with significant industry experience may have developed the engineering skills that would have been taught in a formal degree. Ex.1003(¶85-86). Pet. 30–31. Patent Owner argues that a person of ordinary skill in the art would have at least a bachelor’s degree in mechanical engineering or other related engineering/scientific fields, with at least three years of relevant practical experience in developing fluid component delivery devices. EX2001, ¶¶15-16. Also, an increase in experience could compensate for less education, and an increase in education could likewise compensate for less experience. Id. Prelim. Resp. 6–7. At this stage, the differences between Petitioner’s and Patent Owner’s positions do not affect or influence our Decision. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“listed above in claim 1. On its face, the “two-part assembly” of claim 10 requires more than a one-piece element having front and rear ends. In particular, a one-piece element does not satisfy the requirement of an assembly. Claim 1 is not as clear on that point, though as noted it does include similar structure and similar language as claim 10, including the two parts forming the forward part and rearward part. We now turn to the Specification and file history to further determine how “two parts” would be understood by one of skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (“The risk of systematic overbreadth is greatly reduced if the court instead focuses at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down.”). The figures of the ’172 patent show a single embodiment where, as seen in Figure 4, previously reproduced herein, the mixing and dispensing element (20) is a two-part assembly having a forward element (20a) separate from, but inserted into, a rearward element (20b). Ex. 1001, 5:56–58, Fig. 4. From our review of the Specification, a single piece mixing and dispensing element is not described; however, it also is not expressly excluded.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It is not necessary for us to construe any other terms for the purposes of this Decision. 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.” (internal quotation omitted)).” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,527,172 - Cartessa Aesthetics, LLC / Aesthetics Biomedical, Inc. v. Serendia, LLCInstitution deniedPTAB · Aug 12, 2022 · IPR2022-00593 · APJ Scott Raevsky · IPR · Institution
Institution was denied on the merits because neither asserted obviousness combination showed a reasonable likelihood of rendering claims 1–18 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claims recite, “apply energy to body segments around each electrode rather than to body segments between the electrodes.” Ex. 1001, 10:56–58 (independent claim 1, emphasis added); see also id. at 11:22–25 (independent claim 10). The plain and ordinary meaning of this limitation, as indicated by the phrase “rather than,” precludes applying energy to body segments that extend continuously from one electrode to another electrode. This construction is consistent with the Specification, for example, Figure 5, a copy of which we reproduce below: As shown in Figure 5 of the ’379 patent, energy field 909 occurs around each individual needle 301, without extending from needle-to-needle. See supra § II.B (summarizing Figure 5). The Specification describes certain embodiments in which “the temperature is raised about the tip of each needle, not between needles.” Ex. 1001, 3:32–33 (emphasis added). We understand that by raising the temperature “about the tip of each needle,” while not raising temperature “between needles,” the application of energy would only occur “around each electrode rather than . . . between the electrodes,” as recited in the claims. Id.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Turning to our analysis, we agree with Patent Owner that Petitioner’s own annotated Figures (that is, Mehta’s Figures 13A and 13B) depict energy application that extends continuously between electrodes. As explained above, we construe “apply energy to body segments around each electrode rather than to body segments between the electrodes” to mean that energy application occurs around each electrode without such energy application fully extending from one electrode to another electrode. In other words, the energy application must be configured such that energy application between electrodes does not extend continuously between the electrodes. Instead, Mehta discloses, and Figures 13A and 13B depict, fractional lesions 2 that extend continuously between pairs of electrode probes 105. See Mehta ¶ 241 (referencing Figure 13A); see also id. ¶ 242 (referencing Figure 13B). Mehta discloses that Figures 13A and 13B “show[] an example illustration of an array of probes 108 comprising five electrode pairs 105 inserted into a reticular dermis layer 19 to create a series of discrete fractional lesions 2 leaving tissue in the adjacent epidermal layer 16 and subcutaneous layer 12 undamaged.” Id. ¶ 241; see also id. ¶ 242. Mehta explains that “[t]his is accomplished by passing current 107 between adjacent electrodes 104 of opposite polarity in the electrode pair.” Id. ¶ 241. We refer again to Petitioner’s annotated copy of Mehta Figure 13A, below: As we noted above, Mehta’s Figure 13A above depicts energy application by five bipolar electrodes. Pet. 47; Ex. 1005 ¶¶ 173, 243. Petitioner’s annotation (1) asserts that no energy is deposited in body segments between each electrode, and depicts a green highlighted section between the first pair of bipolar electrodes. Pet. 47. This annotation is unpersuasive because below it in red, energy concentration is shown between that electrode pair. Consequently, energy is applied to body segments between those electrodes, so it is not the case that energy is applied around each of those electrodes “rather than”—i.e., instead of—“body segments between the electrodes.”” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityOther
“To that end, our reviewing court and this Board repeatedly point to the case of In re Wyer, 655 F.2d 221 (CCPA 1981) for the proposition that a video is a “printed publication” so long as it is publicly accessible. There, the court explained that “printed publication” should be approached as a unitary concept. The traditional dichotomy between “printed” and “publication” is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the “probability of dissemination” of an item very often has little to do with whether or not it is “printed” in the sense of that word when it was introduced into the patent statutes in 1836. . . . [T]he printed publication provision was designed to prevent withdrawal by an inventor, as the subject matter of a patent, of that which was already in the possession of the public. Thus, the question to be examined under [the statute] is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded. Id. at 226 (emphases added). In other words, accessibility to the relevant public is the “criterion” by which a prior art reference is judged when resolving the “printed publication” inquiry, not whether the reference is “printed” in the word’s strictest sense. See In re Klopfenstein, 380 F.3d 1345, 1350 n.2 (Fed. Cir. 2004).” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,058,379 - Cartessa Aesthetics, LLC / Aesthetics Biomedical, Inc. v. Serendia, LLCInstitution deniedPTAB · Aug 12, 2022 · IPR2022-00594 · APJ Michael L Woods · IPR · Institution
The Board denied institution on all grounds because the Petition did not show a reasonable likelihood that claims 1–29 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claims recite, “electrodes configured to cause coagulation around each electrode rather than coagulating between the electrodes.” Ex. 1001, 10:55 (independent claim 1, emphasis added); see also id. at 11:29–30 (independent claim 14). The plain and ordinary meaning of this limitation, as indicated by the phrase “rather than,” precludes coagulation that extends continuously from one electrode to another electrode. This construction is also consistent with relevant embodiments disclosed in the Specification, namely, Figure 5, a copy of which we reproduce below: As shown in Figure 5 of the ’836 patent, energy field 909 occurs around each individual needle 301, without extending from needle-to-needle. See supra § I.B (summarizing Figure 5 of the ’836 patent). The Specification describes certain embodiments in which “the temperature is raised about the tip of each needle, not between the needles.” Ex. 1001, 3:30–31 (emphasis added). We understand that by raising the temperature “about the tip of each needle,” while not raising temperature “between the needles,” coagulation would only occur “around each electrode rather than [] between the electrodes,” as recited in the claims. Id.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner’s own annotated Figures (that is, Mehta’s Figures 13A and 13B) depict coagulation of tissue that extends continuously between electrodes. Indeed, Mehta discloses, and Figures 13A and 13B depict, fractional lesions 2 that extend continuously between pairs of electrode probes 105. See Mehta ¶ 241 (referencing Figure 13A); see also id. ¶ 242 (referencing Figure 13B). Mehta discloses that Figures 13A and 13B “show[] an example illustration of an array of probes 108 comprising five electrode pairs 105 inserted into a reticular dermis layer 19 to create a series of discrete fractional lesions 2 leaving tissue in the adjacent epidermal layer 16 and subcutaneous layer 12 undamaged.” Id. ¶ 241; see also id. ¶ 242. Mehta explains that “[t]his is accomplished by passing current 107 between adjacent electrodes 104 of opposite polarity in the electrode pair.” Id. ¶ 241. Turning to Petitioner’s attempt to analogize Figures 7 and 8 of the ’836 patent with Figures 13A and 13B of Mehta (see Pet. 34–35), Petitioner’s misdirection fails. Importantly, subject matter support for claim 1 relies on the embodiment of Figure 5, not of Figures 7 and 8. See Prelim. Resp. 7 (“each of FIG. 5, FIG. 7, FIG. 8, and FIG. 9B in the ’836 patent are different embodiments.”). Rather than focusing on the embodiments described in Figures 7 and 8, we focus on the embodiment of Figure 5, reproduced below: Figure 5 depicts needles 300 with needle tips 302 for generating energy field 909. See Ex. 1001, Fig. 5; see also id. at 7:27–32 (referencing Fig. 6); see also id. at 9:25–26. As can be seen, energy field 909 does not extend continuously between electrodes. Because Mehta discloses and depicts fractional lesions 2 (that is,” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends, with Dr. Grove’s testimonial support, that a person of ordinary skill in the art “as of June 14, 2011, would typically have (1) 7-10 years of experience with developing and/or using treatment systems for delivery of electromagnetic radiation energy to skin or other tissues, and (2) a related graduate engineering degree or M.D.” Pet. 18–19 (citing Ex. 1003 ¶ 27). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. The precise definition of the level of skill in the art is not critical, as we determine that even under Petitioner’s proposed definition, Petitioner has not met its institution burden.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,480,836 - Rideco Inc. v. Via Transportation, Inc.InstitutedPTAB · Jun 28, 2022 · IPR2022-00286 · APJ Richard H Marschall · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of prevailing on obviousness over Lambert, Poykko, and McCall.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“When a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. See Sotera, Paper 12 at 18–19. With such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation. For these reasons, the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Id. at 7. The Interim Procedure “applies to all proceedings pending before the Office,” and therefore governs our treatment of Petitioner’s Sotera 6 Petitioner’s stipulation refers to “any ground of invalidity raised in the Petition or that could have been raised in the Petition” while the stipulation in Sotera refers to “any ground raised or that could have been reasonably raised in an IPR,” but we view the language as similar enough to fall within the scope of Sotera’s analysis. Reply 4; Sotera, Paper 12 at 18–19. Petitioner arguably stipulates to a broader prohibition than the petitioner in Sotera because Petitioner’s stipulation may encompass grounds that it could not have reasonably raised in the Petition. 7 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf stipulation here. Id. at 9. Petitioner’s stipulation tracks the language of the Sotera stipulation that the Interim Procedure addresses and we “will not discretionarily deny institution” when Petitioner submits such a stipulation.8 Id. at 7. Because our analysis of Petitioner’s stipulation alone requires us to not exercise our discretion to deny institution under § 314(a), we need not address the parties’ remaining arguments as to application of the Fintiv factors to the facts in this case.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37). Patent Owner “does not dispute Petitioner’s definition.” Prelim. Resp. 23. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’824 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Under these circumstances, where the parties now agree that the ordinary meaning should apply to the claim limitations in question and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning to those same claim limitations in this proceeding. We therefore apply the plain and ordinary meaning to “virtual bus stops” and “real-time.” In addition, we decline Patent Owner’s request that we deny institution based on alleged inconsistencies between Petitioner’s “ordinary meaning” interpretation urged here versus Petitioner’s rejected proposed constructions in the district court litigation as a sufficient basis to deny institution. As to the construction of dependent claim 8, we need not reach Petitioner’s arguments to determine whether to institute inter partes review. 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also establishes sufficiently, based on the current record, that it would have been obvious to combine Lambert’s system with Poykko’s teaching to store a database of potential pickup and dropoff locations in memory, with those “virtual bus stops” accessed by Lambert’s server. See Pet. 25–26; Ex. 1005 ¶ 48. As Petitioner puts it, “it would have been obvious to a PHOSITA to similarly configure Lambert’s server to access memory including a database of stopping points associated with the rideshare system’s coverage area when dynamically selecting pickup and dropoff locations.” Id. at 26; Ex. 1003 ¶ 168. Petitioner’s assertions are adequately supported, at this stage of the proceeding, by Poykko and declarant testimony. See id. at 25–28 (citing Ex. 1003 ¶¶ 167–172). Similarly, Petitioner’s assertion that the combination of Lambert, Poykko, and McCall discloses the remaining limitations of claim 1 finds adequate support in the current record. See id. at 28–44.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,816,824 - Amcol International Corp. v. Oil-Dri Corporation Of AmericaInstitution deniedPTAB · Jun 10, 2022 · IPR2022-00206 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner did not show that House disclosed the construed “removably clumpable” limitation required by the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“purposes of institution, that House discloses the “removably clumpable” limitation when using the claim construction that Patent Owner proposes and that we adopt above. That construction requires “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed,” but Petitioner provides no argument or evidence to support any conclusion that House discloses a mixture having such a clump strength. See Pet. 53–55. Instead, Petitioner assumes that its broader claim construction of “removably clumpable” applies, and does not attempt to show that House discloses the limitation using a narrower construction such as the construction we adopt here. See id. Patent Owner correctly points out that such a showing fails to establish that House discloses a “removably clumpable” mixture as the claims require because a “litter that clumps does not necessarily mean it is ‘removably clumpable’” under the proper construction. Prelim. Resp. 18– 19. Because all of Petitioner’s challenges depend on the assertion that House alone discloses the “removably clumpable” limitation in independent claims 1 and 10, Petitioner’s failure to establish, for purposes of institution, that House discloses the limitations fatally undermines its challenges. Based on the foregoing, we determine that Petitioner has not established sufficiently that House anticipates any of the independent claims or that the combination of House and Goss renders any of the challenged claims unpatentable. Accordingly, Petitioner has not demonstrated a reasonable likelihood of establishing the unpatentability of any challenged claim.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“determine that “removably clumpable” in independent claims 1 and 10 refers to a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test” in addition to the other aspects of the “removably clumpable” definition provided in the specification. See Ex. 1001, 5:24–36. The claim language, standing alone, sheds little light on this issue because it merely refers to a “removably clumpable” mixture. See id. at 50:4, 50:33. The specification provides further guidance as to the scope of the limitation because the applicant operated as its own lexicographer in defining the limitation in the specification. See id. at 5:24–36. Petitioner relies on the first sentence of the paragraph addressing “removably clumpable” in the specification, while Patent Owner relies on the entire paragraph in its proposed construction. See Pet. 18; Prelim. Resp. 12–13. We conclude that the definition of “removably clumpable” includes the phrase “a clump strength of ≤ 1.33 using the Standard Drop Method Test” for two reasons. First, the phrase appears within a paragraph devoted to addressing “removably clumpable” within a section of the specification titled “Definitions,” which at least suggests that the entire paragraph should be treated as definitional. See Ex. 1001, 3:63, 5:24–36. Second, as Patent Owner correctly points out, the use of the term “i.e.” just prior to the phrase signals an intent to define the limitation. See id. at 5:33–35 (“A litter that is removably clumpable, i.e., has a clump strength of ≤ 1.33 using the Standard Drop Method Test.”). This approach comports with cases finding that the use of “i.e.” in a specification indicates an intent to define the limitation in question.3” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“purposes of institution, that House discloses the “removably clumpable” limitation when using the claim construction that Patent Owner proposes and that we adopt above. That construction requires “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed,” but Petitioner provides no argument or evidence to support any conclusion that House discloses a mixture having such a clump strength. See Pet. 53–55. Instead, Petitioner assumes that its broader claim construction of “removably clumpable” applies, and does not attempt to show that House discloses the limitation using a narrower construction such as the construction we adopt here. See id. Patent Owner correctly points out that such a showing fails to establish that House discloses a “removably clumpable” mixture as the claims require because a “litter that clumps does not necessarily mean it is ‘removably clumpable’” under the proper construction. Prelim. Resp. 18– 19. Because all of Petitioner’s challenges depend on the assertion that House alone discloses the “removably clumpable” limitation in independent claims 1 and 10, Petitioner’s failure to establish, for purposes of institution, that House discloses the limitations fatally undermines its challenges. Based on the foregoing, we determine that Petitioner has not established sufficiently that House anticipates any of the independent claims or that the combination of House and Goss renders any of the challenged claims unpatentable. Accordingly, Petitioner has not demonstrated a reasonable likelihood of establishing the unpatentability of any challenged claim.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“C. Anticipation and Obviousness Challenges Petitioner argues that House anticipates claims 1–5, 8, 10–14, and 16, and that the combination of House and Goss renders those same claims obvious. Pet. 3, 22–69. For both challenges, Petitioner relies solely on House as disclosing the “removably clumpable” limitation. See id. at 53–55, 63. Petitioner’s obviousness challenge assumes that House does not anticipate because House does not disclose “sodium bentonite” and “wherein sodium bentonite comprises at least 47% of the total external surface area of the mixture” based on the particle size distributions provided in House. Id. at 63. Petitioner does not argue that the claims would have been obvious even if House fails to disclose the “removably clumpable” limitation, or otherwise argue that the combination of House and Goss discloses the limitation even if House alone fails to do so. Id. Accordingly, Petitioner’s challenges turn on whether House alone expressly discloses the “removably clumpable” limitation.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,439,393 - Proppant Express Investments, LLC / Proppant Express Solutions, LLC v. Oren Technologies, LLCAll claims unpatentablePTAB · Jun 6, 2022 · IPR2018-00733 · APJ Kevin W Cherry · IPR · Remand
On remand, the Board held claims 1, 3, 6–11, 13–19, and 21–23 unpatentable as obvious over the asserted prior-art combinations.
RulingsRemand decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“it is entitled to a nexus, and, based on the Federal Circuit’s analysis in the - 01918 Proceeding and the analysis in Mr. Hirshfeld’s remand, because the evidence and arguments presented by Petitioner in this case are similar to those found insufficient to rebut the presumption by the Federal Circuit in the -01918 Proceeding. We further find that Petitioner has not rebutted the presumption Accordingly, we address explicitly below Petitioner’s and Patent Owner’s evidence. We begin, however, by reiterating the findings from our Final Written Decision regarding the importance of Patent Owner’s trade secrets in the success of its product. We then address explicitly each piece of evidence that Patent Owner cited in its Response under the heading “Secondary Considerations Demonstrate the Non-Obviousness of the Challenged Claims.” See PO Resp. 57–76.” slip op. at 66
- ExcludeMotion to exclude, deniedOther
“FURTHER ORDERED that Petitioner’s Motion to Exclude is dismissed as moot; FURTHER ORDERED that Patent Owner’s Motion to Exclude is dismissed as moot; and” slip op. at 96
Patent outcomesUS 9,440,785 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,440,785 - Askeladden L.L.C. v. Aml IP LLCInstitution deniedPTAB · May 11, 2022 · IPR2022-00319 · APJ Michael L Woods · IPR · Institution
The Board denied institution on all grounds and claims 1–13 because the Petition did not show a reasonable likelihood that Armes, alone or with Steury or Maritzen, rendered the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to satisfy both the “bridge computer” and at least one “service provider computer,” we do not see how the method steps recited in limitations B, Ci, and Cii are satisfied. Petitioner’s attempt to satisfy these steps with Armes’s card provider 3 computer (i.e., as the “bridge computer”) raises multiple questions that persuade us Petitioner has not demonstrated by a reasonable likelihood that these limitations are satisfied. For example, to satisfy the recited “service providers,” Petitioner relies on “incentive rewards [or MR] companies.” Pet. 25 (citing Ex. 1005 ¶¶ 52, 59, 87); see also id. at 40 (relying on MR company to satisfy limitation B); see also id. at 41 (relying on MR company to satisfy limitation Ci); see also id. at 43 (relying on MR company to satisfy limitation Cii). Petitioner also cites to the testimony of Mr. Zatkovich. See, e.g., id. at 39– 41 (citing Ex. 1002 ¶¶ 120–124). The Petition does not clearly explain how Armes’s “bridge computer” (i.e., the card provider’s computer system) makes a “determin[ation] from among the plurality of service providers,” however, when the card provider itself is a service provider. The testimony of Mr. Zatkovich does not relieve our confusion. Mr. Zatkovich’s testimony merely parrots, verbatim, that which is in the Petition. Compare Ex. 1002 ¶¶ 120–124, with Pet. 39–41. Although Petitioner and Mr. Zatkovich cite to Armes, the citations are to disjointed disclosure whose relevance is not clearly apparent. See Fritch, 972 F.2d 1266 (“one cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art”); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”). For instance, Mr. Zatkovich cites to both Armes’s back end application service 8 and STN system 18 for performing the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider.” See Ex. 1002 ¶¶ 122, 124; see also Pet. 40; see also supra § I.D. It is not clear to us, however, how “STN system 18” and “backend application service 8”—both acting as the “bridge computer”—perform the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider,” as recited in claim 1. In support of his assertions, Mr. Zatkovich quotes Armes’s disclosure that “CAS 7 recognizes the transaction as involving a STN 15, and forwards the request to the STN system 18” (Ex. 1002 ¶ 122, citing Ex. 1005 ¶ 109)) and “backend application service 8, upon receiving a STN 15, recognizes the associated PPC originated with another card issuer 92” (Ex. 1002 ¶ 124 (citing Ex. 1005 ¶ 95)). Even if “CAS 7 recognizes the transaction as involving a STN 15,” for example, we do not see this as performing the step of “determining whether the given vendor is associated with the same service provider,” as Petitioner asserts. See Pet. 40. As explained above, Armes uses STNs to improve credit card security (supra § II.D.1), and the computer system’s mere recognition that “the transaction [] involve[es] a STN” is not a determination of “whether the given vendor is associated with the same service provider.”” slip op. at 36
- Skill levelSkill level board ownDecided for patent owner
“We are not persuaded that a POSITA “would have at least one or two years of experience with payment or credit systems,” as Petitioner proposes (see Pet. 17), or “would have at least a Master of Science [] Degree . . . or equivalent work experience in the field of computer networks,” as Patent Owner proposes. See Prelim. Resp. 6. Rather, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed level of skill. For purposes of this Decision, we find that a POSITA at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study along with knowledge of the general structure of payment or credit systems, its hardware and software components.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“Both parties acknowledge and agree with the final Claim Construction Order. See Pet. 14; see also Prelim. Resp. 4. We further note that the claims of the ’979 patent “shall be construed using the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021). For purposes of this Decision, we consider and adopt the District Court’s claim construction of “bridge computer” in our analysis. Id. (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). 2. “service provider” In the Claim Construction Order, the court concluded that the term “service provider” shall mean “a business that provides internet-related services to customers.” Ex. 1017, 1. Petitioner does not propose a construction of this term. See Pet. 11– 16. Patent Owner, on the other hand, expounds upon the District Court’s claim construction, submitting that there are two different types of “service providers”: (1) “A service provider of [the] type may maintain a virtual presence on the web in the form of a web site”; and (2) one that “may offer on-line access to customers (e.g., broadband or dial-up Internet access using an Internet account associated with the service).” See Prelim. Resp. 4–5. Patent Owner does not dispute the District Court’s interpretation, however, and acknowledges that “[t]hese different types of service providers are referred to collectively herein as ‘service providers’ or ‘Internet service providers’.” Id. 5. For purposes of this Decision, we consider and adopt the District Court’s claim construction of “service provider” in our analysis. 37 C.F.R. § 42.100(b).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Specifically, we agree with Patent Owner that Petitioner improperly uses hindsight “to pick and choose among isolated disclosures in [Armes] to deprecate the claimed invention.” Prelim. Resp. 28 (quoting In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988))); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”).” slip op. at 34
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,876,979
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.