- PTAB · Jun 12, 2024 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 14–16, 18, 27–29, 31, and 32 on all asserted grounds, finding a reasonable likelihood of success on the Worm–Levitz obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“To anticipate a claim, a reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369. The prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Although the various embodiments of Worm contain similar features, we are not persuaded that Petitioner sufficiently demonstrates that the various embodiments disclose a single vaporizer device that anticipates the challenged claims. As Patent Owner notes, “for limitations [14.A] and [14.B], Petitioners rely on the embodiment of Figure 2 (Pet. 28–29), whereas for limitation [14.C], which requires a pressure sensor, Petitioners rely on Figure 5” (id. at 32), and “for limitations [14.D], [14.E], and [14.F], Petitioners rely on the different embodiment of Figure 7” (id. at 34–45). Worm’s description of the figures suggests each of Figures 2, 5, and 7 relate to different embodiments of Worm. See Ex. 1004 ¶¶ 14 (“FIG. 2 is a sectional view through an electronic smoking article comprising a cartridge and a control body according to an example embodiment of the present disclosure”), 17 (“FIG. 5 is a detailed view of the proximal end of the control body illustrated in FIG. 3 that also illustrates a sealing member” (emphasis added)), 20 (FIG. 7 is a partial sectional view of an electronic smoking article according a further example embodiment of the present disclosure showing a control body connected to a cartridge via the control body coupler and the cartridge base” (emphasis added)). Based on Worm’s descriptions, it appears that Figure 2 relates to one embodiment, Figures 3–5 relate to another embodiment, and Figure 7 relates to yet another embodiment. See id. ¶¶ 13–20, 53, 59. In addition, Petitioner does not argue that a single embodiment of Worm discloses all limitations of challenged claim 14. See generally Pet. Nor does Petitioner direct our attention to any disclosure in Worm that show how Figures 2, 5, and 7 interrelate as a single embodiment or present any argument that a person skilled in the art “would ‘at once envisage’ the claimed arrangement or combination.” Id.; Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). Thus, Petitioner fails to show that the cited material in Worm discloses the limitations of claim 14 arranged in the same way as claimed without resorting to the need to pick and choose from disparate disclosures. Net MoneyIN, 545 F.3d 1371 (“[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the prior art might somehow combine to achieve the claimed invention.”).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“that outside air enters between the battery and cartridge connection. Id. at 56 (citing Ex. 1003 ¶¶ 168–169; Ex. 1007, 4:41–43). Petitioner contends that air inlets are a design choice and having the channel between the battery and the cartridge would enable the smoker to clean the channel simply by removing the cartridge. Id. at 57–60 (citing Ex. 1003 ¶¶ 170–173; Ex. 1004 ¶ 72; Ex. 1007, 1:64–2:1, 4:15–18, 4:41–43, Figs. 3a, 3b; Ex. 1009, 4:45–48, Fig. 3; Ex. 1011, 4:9–12, Fig. 5A; Ex. 1012 ¶ 28, Fig. 6; Ex. 1013 ¶ 97, Fig. 16). Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Worm and Levitz because both disclose two-piece e-cigarettes and an ordinary artisan would have understood that placing the air inlet on the periphery of the device would not disrupt its operation and the channel would be along either a male-female or female-male connection. Id. at 60–62 (citing Ex. 1003 ¶¶ 174–178; Ex. 1004 ¶ 76; Ex. 1010 ¶ 48). Patent Owner argues that neither Worm nor Levitz discloses or renders obvious the air flow and air inlet claim limitations, and that combining Worm and Levitz would be redundant. Prelim. Resp. 20–22 (citing Ex. 2001 ¶¶ 68–72). In reply to Petitioner’s assertion that air inlets are a design choice and that an additional air inlet would alleviate backflow, Patent Owner argues that having additional air inlets is not a design choice because “the size, shape, and location of air inlets affect draw resistance, which impacts, among other things, vapor production, the size of the visible vapor cloud, and nicotine delivery to a user.” Id. at 22. Patent Owner also argues that a person of ordinary skill in the art would not be motivated to include the additional air inlet because Worm already addresses backflow with the existing inlet 789. Id. at 22–24 (citing Ex. 1004 ¶ 76; Ex. 2001 ¶¶ 73–77). Based on the information presented in the Petition, we are persuaded that Petitioner demonstrates a reasonable likelihood of prevailing at trial in showing that claims 14 and 27 of the ’123 patent are unpatentable as obvious based on Worm and Levitz. Because Worm discloses a non-airtight gap and Levitz discloses airflow from the periphery of the device between the battery and the cartridge, we are persuaded, for the purposes of institution, that an ordinary artisan would have had reason to modify Worm in view of Levitz to render obvious limitations [14.E], [14.F], [27.G], and [27.H] for the reasons asserted by Petitioner. At this stage, Patent Owner’s arguments to the contrary are unavailing because they are directed to Worm’s airflow and backflow rather than Petitioner’s proposed combination of Worm and Levitz.” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields” and that a person of ordinary skill in the art “would have been familiar with electrically powered vaporizing articles, their components or the underlying technologies.” Pet. 7. Patent Owner argues that a person of ordinary skill in the art “at the time of the ’123 patent would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also states that “Patent Owner’s arguments herein apply regardless of which definition of a [person of ordinary skill in the art] is adopted.” Id. (citing Ex. 2001 ¶¶ 20–21). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’123 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,130,123 - Juul Labs, Inc. v. Njoy, LLCInstitutedPTAB · May 24, 2024 · IPR2024-00161 · APJ Kristina M Kalan · IPR · Institution
Inter partes review was instituted for claims 1–27 on all asserted grounds, based on a reasonable likelihood that JUUL would prevail on its obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting inter partes review is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the parties’ papers and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the aperture is “in the housing.” Rather, the claims recite a “housing includes/having a first end” and a “housing includes/having a first aperture on the first end.” Thus, the plain and ordinary understanding of the claim language “housing includes/having a first aperture on the first end” does not require that the aperture be “in the housing.”” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“demonstrate a reasonable likelihood of prevailing on its Xia-based obviousness arguments. With reference to our claim construction of the “first aperture on the first end” of the housing, supra, we agree that Petitioner has demonstrated, on this record, Xia’s (1) “housing includes/having a first aperture on the first end” and (2) “housing includes/having a first aperture on the first end,” more particularly, that Xia’s first aperture is sufficiently located on the first end of Xia’s housing. Pet. 10–13, 32–35. Notwithstanding Patent Owner’s arguments to the contrary, namely, that Petitioner’s “first aperture” “is not in Xia’s stainless steel shell,” nor “is that aperture at the first end of the housing” (Prelim. Resp. 25–26), the record before us supports Petitioner’s position and claim construction at this stage in the proceeding. We have concerns as to whether Petitioner sufficiently shows a reason to modify Xia in view of Wang/Fang, including showing why a POSITA would have extended Xia’s passageway to the very end of the housing (as in limitations 1[b2] and 1[c]), and whether Mr. Sturges provides sufficient support for his contentions. See generally Pet.; see also 37 C.F.R. § 42.22(a)(2) (stating that the petition must contain a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); see, e.g., Ex. 1007 ¶ 90 (stating that a POSITA would have been motivated to modify Xia’s cartridge “to be a simpler design, which is easier and cheaper to manufacture”). However, we are sufficiently persuaded on this record that Petitioner has met its burden of demonstrating a reasonable likelihood of prevailing on its contentions of obviousness of claim 1. Because we institute inter partes review on at least one claim, we institute on all claims. SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”).” slip op. at 29
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“We decline to deny the Petition for this reason. Although the text in the shorthand column does bring the total number of words to over the 14,000-word limit, the column does not contain any substantive argument. Rather, the column merely provides a shorthand notation of how Petitioner refers to the claim elements within the Petition’s headings. Because the table and the Petition also refer to claim element numbers (i.e., claim element 1[a1]), the shorthand notations were not necessary to Petitioner’s arguments or to understand the Petition’s headings. As such, it is not necessary to consider the shorthand column to render this decision. Moreover, we determine that shorthand column was added to aid the Board’s review of the Petition and for this additional reason, the additional text in the shorthand column does not warrant denial of the Petition.” slip op. at 37
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,334,881 - Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution deniedPTAB · May 24, 2024 · IPR2024-00223 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on the merits because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 7, 15, 16, 18–25, 28, and 30 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not established that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition based on Verleur and the knowledge of a person of ordinary skill in the art. E. Challenge based on Verleur, Knowledge of a Person of Ordinary Skill in the Art, and Plojoux Petitioner also contends Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux would have rendered claims 2, 4, 21, and 23 obvious. Pet. 70–78. Petitioner does not present any arguments or evidence with respect to claims 2, 4, 21, and 23 that would remedy the defects noted above with respect to independent claims 1 and 20. Thus, Petitioner fails to demonstrate that the subject matter of claims 2, 4, 21, and 23 would have been obvious over the combined disclosures of Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art would have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields, and such [person of ordinary skill in the art] would have been familiar with electrically powered vaporizing articles, their components, or the underlying technologies. Pet. 5. Patent Owner contends that a person of ordinary skill in the art “would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also states that “Patent Owner’s arguments herein apply regardless of which definition of a [person of ordinary skill in the art] is adopted.” Id. (citing Ex. 2001 ¶¶ 20–21). On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “contend[s] the term ‘mouthpiece’ means a ‘separate component from the storage compartment to be used by a mouth.’” Pet. 6. Petitioner additionally contends the construction of the term “is not material to the grounds in the Petition.” Id. Patent Owner contends that the term “mouthpiece” “means ‘portion to be used by a mouth.’” Prelim. Resp. 5. Patent Owner additionally “agrees with Petitioners that, at least in this preliminary stage, it is not necessary for the Board to resolve this construction.” Id. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s position is unpersuasive. It is not evident from the record that the skilled artisan would have understood that a window equates to a hole or “air inlet passage” as claimed. Indeed, the record suggests otherwise. For example, Verleur explains that: The shell may include a window provided at the cartomizer receiving segment so that a portion of the chamber is visible from outside the shell. [Ex. 1005 ¶ 27]. One or more windows 130 may be provided in outer shell 106 (see FIG. 1). Windows 130 may be made of a translucent material, such as glass or substantially clear plastic, in order to view internal components of battery portion 100. [Id. ¶ 37] For instance, in one embodiment, window 130 may be provided on or proximate to cartomizer receiving segment 104 and, more particularly, cartomizer chamber 108 so as to permit a user of electronic cigarette 10 to view the cartomizer 200 when it is inserted into cartomizer chamber 108. [Id.]. At least a portion of body 208 may be composed of translucent or substantially translucent material, such as glass or plastic, so that a user may see fluid 300A held within. The portion of body 208 composed of translucent material may be alignable with window 130 . . . . [Id. ¶ 38]. Petitioner itself acknowledges that window 130 of Verleur “may be made of a translucent material, such as glass or substantially clear plastic” and that the purpose of window 130 is “to view internal components of battery portion 100.” Pet. 29 (quoting Ex. 1005 ¶ 37). Thus, Verleur provides that window 130 may be translucent to allow a user to view internal components, and Verleur makes no mention that window 130 is a hole or slit that allows air to enter. Ex. 1005 ¶¶ 37–38. Neither Petitioner nor its declarant Dr. Singhose adequately explains why the ordinarily skilled artisan would have understood window 130 to be an air inlet passage that allows air to enter gap “formed by an exterior surface of the cartridge and . . . an internal surface of the receptacle.” In contrast, Patent Owner, through the testimony of Dr. Collins, persuasively explains that the skilled artisan would have understood that Verleur’s window 130 is not an air inlet passage. Ex. 2001 ¶¶ 48–49; Prelim. Resp. 11–13. Dr. Collins explains that “[w]indow 130 is a window . . . ‘to view internal components of battery portion 100,’ such as ‘to permit a user . . . to view the cartomizer 200 when it is inserted into cartomizer chamber 108.’” Ex. 2001 ¶¶ 46–47 (third alteration in original). Dr. Collins further testifies that “Verleur knew how to describe an air inlet on the outside of the shell, since one is described in a different embodiment.” Id. ¶ 45. Alternatively, Petitioner contends that “to the extent window 130 is not a slit, but instead comprises glass or plastic, a hole would nonetheless be needed elsewhere in the shell to permit air into the gap between the cartomizer 200/200A and the outer shell 106.” Pet. 34. Petitioner points to Verleur paragraph 39, which describes holes or ducts in the outer shell. Id. However, where Verleur describes the existence of holes or ducts for air flow, the air flow is described as flowing though the cartomizer body itself and not through the gap or channel formed where the cartomizer is inserted into the shell chamber. Ex. 1005 ¶ 39 (stating that “[i]nhalation tube 222 may also be in fluid communication with one or more holes or ducts provided, for instance, in sides of outer shell 106 in order to permit air flow through cartomizer body 208” (emphasis added)). This is consistent with Dr. Collins’s testimony that “[s]uch a mechanism would allow air to flow directly into the cartomizer through aligned holes.” Ex. 2001 ¶ 66 (emphasis added). In addition, Petitioner fails to demonstrate that an air inlet passage” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,709,173 - Juul Labs, Inc. v. Njoy, LLCInstitutedPTAB · May 24, 2024 · IPR2024-00160 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted review of claims 1–48 on all asserted §103 grounds, finding a reasonable likelihood that JUUL would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of all challenged claims of the ’864 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Director has the discretion to deny a petition that presents the same or substantially the same prior art or arguments as previously presented to the Office. The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution. (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, 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider the following non-exclusive factors:” slip op. at 10
- Skill levelSkill level board ownOther
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of invention. Graham, 383 U.S. at 17. Petitioner does not provide its own definition of the level of ordinary skill in the art. Instead, Petitioner asserts: In previous litigation involving the ’881 patent – the parent patent to the ’864 patent (Fuma International LLC v. R.J. Reynolds Vapor Company, Case No. 1:19-cv-260 (M.D.N.C. 2019)) with an identical specification – Patent Owner’s predecessor-in-interest asserted that a person of ordinary skill in the art (“POSITA”) at the time of the purported invention would have had a mechanical or electrical engineering degree, industrial design degree, or a similar technical degree, or equivalent work experience, and 5 to 10 years of experience in electromechanical devices. Ex. 1007, ¶¶14-17. Pet. 11–12; see also Ex. 1007 ¶ 16 (Mr. Sturges testifying that he meets “that qualification” without affirmatively providing a definition for a POSITA). Patent Owner “does not challenge the definition of a POSITA set forth in the Petition.” Prelim. Resp. 9. In light of the record before us, and for purposes of this Decision, we adopt the level of ordinary skill in the art set forth in the above block-quote of the Petition as this definition appears to comport with the qualifications a person would have needed to understand and implement the teachings of the ’864 patent and the prior art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“b) Analysis We start with the claim language itself. The claims do not recite that the aperture is “in the housing.” Rather, the claims recites a “housing having a first end” and a “housing having a first aperture proximate the first end.” The plain and ordinary meaning of “proximate” is near or close to, not on. Thus, the plain and ordinary understanding of the claim language “housing having a first aperture proximate the first end” of the housing is that the first aperture is near, though not necessarily on, the first end of the housing.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,497,864 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01450 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the cited art previously considered or cumulative and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and evidence of record, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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 the 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).” slip op. at 9
Discretionary denialcites PhillipsPatents in suitUS 10,513,801 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01451 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the prior art previously considered and no material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“b) Advanced Bionics Framework Part (2) Having determined that the “same or substantially the same prior art” previously was presented to the Office, we now consider whether Petitioner sufficiently demonstrates that the Office materially erred. In assessing the second part of the Advanced Bionics Framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether material error has been shown. Advanced Bionics, Paper 6 at 10. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. However, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. Petitioner bears the burden of showing that the Examiner materially erred. Id. at 8.” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,326,276 - Cardiovascular Systems, Inc. v. Shockwave Medical, Inc.Rehearing grantedPTAB · Feb 2, 2023 · IPR2019-00405 · APJ Mitchell G Weatherly · IPR · Rehearing
On rehearing, the Board held claims 1–4 and 6–17 unpatentable as obvious, claim 5 not shown unpatentable, and denied both motions.
RulingsRehearing decision- RehearingGranted in part
“preponderance of evidence that claims 1–4 and 6–17 are unpatentable, but for the reasons expressed below rather than those expressed in our Decision. Additionally, we maintain our prior conclusion that Petitioner has failed to demonstrate that claim 5 is unpatentable without any modification to our reasoning expressed in the Decision. We repeat our prior analysis of claim 5 from our Decision so that this single paper contains the substance of our analysis of all of Petitioner’s challenges to the claims. Accordingly, for the reasons set forth below, we determine that Petitioner has demonstrated by a preponderance of evidence that claims 1–4 and 6–17 are unpatentable but has failed to show that claim 5 is unpatentable.” slip op. at 6
- ExcludeMotion to exclude, deniedDenied
“FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits 2002–2004, 2006, 2008, 2016, 2017, 2124, 2125, 2126, 2132, 2133, 2139, 2141, 2149, 2152, 2161, 2162, 2163, 2164, 2170–2176, 2196, and 2100 (¶¶ 18, 19, 59, 60, 66, 132, 143, 144, 165, 170, 175, 199, 201, 205, 217, 218, 220, 221, 222, and 229) is denied;” slip op. at 96
- Additional discoveryAdditional discovery, deniedDenied
“FURTHER ORDERED that Patent Owner’s Motion for Additional Discovery is denied; and” slip op. at 96
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“laser as enough of a concern that its balloon could be cooled by circulating liquid through the balloon. Pet. 18, 29 (citing Ex. 1002 ¶¶ 96, 120); Reply 31 (citing Ex. 1003, 3–5). However, Petitioner fails to adduce evidence that an EHL shockwave generator produces less heat than a laser-based shockwave generator such as Levy’s. Accordingly, we determine that Petitioner has failed to prove by a preponderance of evidence that an ordinarily skilled artisan would have been motivated to substitute an EHL probe for Levy’s laser probe to reduce heat generated by the probe.” slip op. at 38
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,956,371 - BTC Corporation v. TG Biotech Co., Ltd.InstitutedPTAB · Nov 15, 2022 · IPR2022-00998 · APJ Ulrike W Jenks · IPR · Institution
The Board instituted IPR on claims 1–13 because Petitioner showed a reasonable likelihood that the claims were unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary of the Institution Decision For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’786 patent is unpatentable, we institute an inter partes review of all challenged claims based on the grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018), available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (“Guidance”). Our findings of fact, conclusions of law, and reasoning discussed below are based on the evidentiary record developed thus far, and made for the sole purpose of determining whether the Petition meets the threshold for initiating review. This decision to institute trial is not a final decision as to the patentability of any challenged claim or the construction of any claim limitation. Any final decision will be based on the full record developed during trial.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art would have had “an undergraduate science degree and would also have a Ph.D. in chemistry, pharmaceutical science, food science, or chemical engineering, pharmaceutically active materials from plant-based materials in an industrial or academic setting” and “would be familiar with the structure and utility of saponins, and generally aware of the scientific literature related to the extraction and pharmaceutical utility of gypenosides from GP and ginseng.” Pet. 13 (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. Prelim. Resp. 12. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner requests construction of the terms “an effective amount for improving or treating the metabolic syndrome” in claims 11–13 as meaning “an amount that produces any measurable amount of improvement in the metabolic syndrome” (Pet. 13–15 (citing Ex. 1003 ¶ 91)) and “[a] pharmaceutical composition for improving and treating a metabolic syndrome, comprising at least one of at least 0.7% damulin A and at least 0.5% damulin B . . . and a pharmacologically acceptable carrier or excipient” in claim 8 as meaning “a pharmaceutical composition that includes an extract with 0.7% and 0.5% of damulin A and damulin B[, respectively,] along with a carrier or excipient” (id. at 15–16 (citing Ex. 1002, 64–65, 251–52, 280; Ex. 1001, 12:15–67, Table 2)). Patent Owner argues that “these constructions are not necessary.” Prelim. Resp. 13. We determine that is not necessary for purposes of this Decision to construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy)” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on these teachings in Kim 460, we agree with Petitioner that it would be reasonable to expect that the same source material derived from a different plant would behave similarly to heat treatment. See Pet. 24. Razmovski teaches that GP is suitable source of ginsenosides. See Ex. 1007, 199–200 (“These ginsenosides [identified from G. pentaphyllum] make up around 25% of the total gynosaponin in the plant and is the first example of ginseng saponins found outside of the Araliaceae family.”). malonyl-Rd are found in GP and are the same as those in P. ginseng. Id. at 200. The record, therefore, supports Petitioner’s position that substituting GP for the ginseng starting material in Kim 460 as suggested by Razmovski would similarly increase the amount of ginsenoside Rg3 + Rg5 in an extract made from the GP starting material. See also Ex. 1005, 4:26–31 (“[T]he processed ginseng product according to the present invention wherein a ratio of ginsenoside (Rg3+Rg5) to (Rc+Rd+Rb1+Rb2) is above 1.0 shows superior physiological activities as different from the prior processed ginseng product in which ginsenoside components such as Rg3 and Rg5 are hardly present.”). Our reviewing court has “recognized that inherency may supply a missing claim limitation in an obviousness analysis.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014). “[O]ur early precedent, and that of our predecessor court, established that the concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.” Id. at 1195. Inherency may supply a missing claim limitation in an obviousness analysis. An inherent characteristic of a formulation can be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan. It is long settled that in the context of obviousness, the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art. The Supreme Court explained long ago that it is not invention to qualities they failed to detect. Persion Pharms. LLC v. Alvogen Malta Operations Ltd., 945 F.3d 1184, 1189 (Fed. Cir. 2019) (citations, internal quotations marks, brackets and parentheticals omitted).” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,357,786 - PTAB · Oct 27, 2022 · IPR2022-00682 · APJ Avelyn M Ross · IPR · Institution
Instituted IPR of claims 1, 2, 5, and 6 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition, and institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in an engineering discipline, such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 9 (citing Ex. 1003 ¶ 20). “Such a person would also have had two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps,” but “less education could be compensated by more experience and vice versa.” Id. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp. 7. On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner that Petitioner has shown two single line wavelengths from two separate sources. Prelim. Resp. 8–9. But, we do not view Petitioner’s showing as fatal to Petitioner’s contentions nor do we understand claim 1 to require a single “‘non-coherent light source’ that ‘generat[es] photons of at least two single line wavelengths.’” Id. at 9. Rather, on this record, the plain language of the claim simply requires “generating photons of at least two single wavelengths from a non-coherent light source,” which suggests only that the photons generated are from a non-coherent light source, not whether one or more radiation sources may be utilized. In this case, neither party proposes an express construction of this term for our consideration. See generally Prelim. Resp.; Pet. 10. And, Patent Owner does not direct us to any teaching in the ’605 patent that requires the two or more single line wavelengths to be generated by a single light source. Prelim. Resp. 8–9. Thus, we determine that it is not necessary, at this stage of the proceeding, to provide an express construction for this term. Vivid Techs., 200 F.3d at 803. We encourage the parties to address this issue in subsequent briefing and we will revisit the issue based on the full record developed over the course of trial, if needed.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We determine that Petitioner’s evidence is sufficient, at this stage of the proceeding, to show that the combined references would have suggested, to the ordinarily skilled artisan, a reason to include the low-pressure mercury lamp of Clauβ in combination with Brown-Skrobot’s 222 nm KrCl excimer lamp. We disagree with Patent Owner that Petitioner’s motivation to combine is limited to the fact that Brown-Skrobot’s preferred wavelength of 254 nm is taught by Clauβ. See Prelim. Resp. 9–10. Rather, Petitioner persuasively explains that Brown-Skrobot describes using two or more monochromatic UV radiation sources with different wavelengths in order to increase the levels of sterility and to use less energy to sterilize. Pet. 15 (citing Ex. 1003 ¶ 73; Ex. 1004 ¶ 42). Brown-Skrobot describes multiple different monochromatic UV light sources having the preferred wavelength range of 220 to 320 nm and also suggests “other monochromatic UV radiation sources can be used.” Ex. 1004 ¶¶ 33, 34, 38. Petitioner explains that the skilled artisan “would have been motivated to supplement Brown- Skrobot’s high-level disclosure . . . with the implementation details provided by Clauss.” Pet. 14. On this record, we determine that Petitioner has sufficiently shown that the ordinarily skilled artisan would have had reason to include the 254 nm low-pressure mercury lamp of Clauβ in combination with the 222 nm KrCl excimer lamp of Brown-Skrobot, as Brown-Skrobot describes the advantages of using two or more sources having different wavelengths. Further, we determine that the person of ordinary skill in the art would have had a reasonable expectation of success in the combination, as a mere substitution of one known element for another, according to its known function. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,975,605 - Tekni-Plex, Inc. v. Converter Manufacturing, LLCAll claims unpatentablePTAB · Oct 20, 2022 · IPR2021-00918 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–20, 22–26, and 29 are unpatentable; Portelli anticipation and Portelli-based obviousness grounds are dispositive.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art We review the grounds of unpatentability in view of the understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “would be a person with either (1) a Bachelor of Science degree in packaging science, mechanical engineering, material science, or chemistry and two years of experience designing and manufacturing thermoformed plastic items, or (2) three years of experience designing and manufacturing thermoformed plastic items.” Pet. 7–8 (citing Ex. 1002 ¶ 35). Patent Owner states that Petitioner’s proposed level of skill “is acceptable” with a series of “clarifications,” which do not address the relevant level of skill, but instead purport to list activities a person of ordinary skill in the art can, or cannot, do “without considerable experimentation.” PO Resp. 6–7 (citing, e.g., Ex. 2007 ¶ 31). Patent Owner directs us to no authority, and we are aware of none,” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“1. “an article formed from a thermoplastic sheet” Claim 1 (and claim 24) recites, in the preamble, “[a]n article formed from a thermoplastic sheet.” Ex. 1001, 41:13. The Specification does not otherwise describe a “formed from a thermoformable sheet.” According to Patent Owner, “‘thermoformable sheet’ excludes sheets made of paperboard or sheets made by injection molding,” because during prosecution of a related application “the Applicant argued that ‘thermoplastic sheet’ excluded paperboard and injection molded material.” PO Resp. 8 (citing Ex. 2012, 8). We disagree with Patent Owner’s characterization of the relevant prosecution history, as explained below. A parent application to the ’624 patent recited “[a] method of making a container . . . the method comprising thermoforming a thermoplastic sheet to yield a precursor article.” Ex. 1046, 63. In regard to that claim, the Applicant argued that it recited “a method in which a thermoplastic sheet (i.e., not paperboard . . .) is thermoformed (i.e., not injection molded . . .) into a precursor article having a rim.” Ex. 2012, 8. “Petitioner agrees that paperboard is not a thermoplastic, but not that ‘thermoplastic sheet’ excludes injection molded materials.” Reply 1. Petitioner argues that “[t]he prosecution statements cited by [Patent Owner] have no relevance to whether the phrase ‘thermoplastic sheet,’ requires the sheet to be thermoformed because the pending claim being discussed (claim 1) already contained the limitation ‘thermoforming a thermoplastic sheet.’” Id. at 1–2. Therefore, “[t]he reference to the ‘thermoplastic sheet . . . is thermoformed,’ was to the explicit claim limitation ‘thermoforming,’ not restricting the term ‘thermoplastic’ to thermoformed materials.” Id. at 2. Petitioner also asserts that “the term ‘thermoplastic’ does not exclude items made by injection molding, since many thermoplastics are commonly injection molded.” Id. (citing Ex. 1044 ¶ 327).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. Additional Claim Terms We find that no other claim term requires an express construction for” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundUnpatentable
“PO Resp. 76. As we discussed (supra Section II.D.1.b and infra Sections II.D.6.d–e), we are not convinced that Portelli only results in failure. Further, the evidence suggests that Portelli’s figures, depicting numerous flange shapes and edges, are known alternatives and can be substituted for one another with a reasonable expectation of success. Accordingly, we find no evidence if improper hindsight reconstruction and determine that Petitioner has shown by a preponderance of the evidence that the ordinarily skilled artisan would have has reason to combine the features of Portelli, and specifically, Figures 8 and 13.” slip op. at 53
Patent outcomesUS 10,189,624 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,189,624
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.