- PTAB · May 16, 2025 · IPR2024-01487 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claim 1 would have been obvious over Nakazawa and Glaug.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition in view of the record at this stage, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“person of ordinary skill would modify either Nakazawa’s diffusion sheet or Glaug’s fluid acquisition system, but rather Petitioner argues “various layers in absorbent articles are invariably interchangeable.” Prelim. Resp. 41–42. Contrary to Patent Owner’s argument, as discussed above, Petitioner explains why and how a person of ordinary skill would modify Nakazawa’s diffusion sheet, and provides reasons for doing so. On this record, we find Petitioner’s reasoning sufficient.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner further argues Nakazawa teaches away from Petitioner’s asserted modification in which Glaug’s lower non-perforated layer is added to Nakazawa’s diffusion sheet. Prelim. Resp. 42. Specifically, Patent Owner argues Nakazawa teaches that its embodiment in which the second absorbent material is wrapped in a hydrophilic sheet has the advantage of preventing leakage of super absorbent polymer (“SAP”) from the second absorbent material without impeding permeation of excretory fluid through the hydrophilic sheet. Id. at 43 (citing Ex. 1008 ¶ 85, Fig. 15). Patent Owner further relies on Petitioner’s argument that Nakazawa’s hydrophilic layer is analogous to the lower non-perforated layer in Glaug. Id. (citing Pet. 93–94). Therefore, Patent Owner argues, Nakazawa teaches that Glaug’s fluid acquisition system would impede permeation of fluid rather than promote it. Id. Patent Owner’s teaching away argument is unavailing based on the current record. Patent Owner improperly relies on Petitioner’s contention in its anticipation challenge based on Nakazawa, and characterizes it as an argument about Glaug. As further discussed in Section II.G below, Petitioner’s anticipation challenge is based on analogizing Nakazawa’s hydrophilic sheet to a core wrap feature identified in Patent Owner’s infringement contention in parallel district court litigation. See Pet. 92–93. Contrary to Patent Owner’s argument, Petitioner’s obviousness contention does not argue Nakazawa’s hydrophilic layer is analogous to Glaug’s nonperforated fibrous layer. Because Patent Owner is not properly characterizing Petitioner’s obviousness contention, Patent Owner’s teaching away argument is not persuasive.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under Fintiv, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv at 5–6.” slip op. at 35
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,308,138 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01377 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review pursuant to 35 U.S.C. § 6(b). Under 35 U.S.C. § 314(a), an 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.” The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’227 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01376 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–30 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–30 of the ’602 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–30 of the ’602 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 36
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’602 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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))). If either party intends to argue a claim construction at trial, however, including what is the ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“CTPG”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least [a] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’649 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,636,649 - PTAB · Dec 16, 2024 · IPR2024-01006 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR of claims 1–8 on all petitioned grounds, finding a reasonable likelihood of success on the Ohata–Kavan obviousness challenge and no basis for discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’909 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’909 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Contrary to Patent Owner’s arguments, the law on overlapping ranges in obviousness challenges is clear. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Here, Petitioner directs us to evidence of an overlapping range, which is not meaningfully disputed by Patent Owner. As to Patent Owner’s arguments regarding the lower end of the claimed range of aspect ratios and Ohata’s warning about aspect ratios below 100, we note that Ohata states that its carbon nanotubes “preferably have an aspect ratio . . . of not less than 100,” and expressly includes examples with an aspect ratio of 50. Ex. 1004 ¶ 20 (emphasis added), Table 2 (Examples 12 and 14). Patent Owner also criticizes Petitioner for relying on oxidizing Ohata’s nanotubes in view of Kavan (discussed in more detail below). Prelim. Resp. 6. According to Patent Owner, oxidation is known to shorten the length of nanotubes, which would impact the aspect ratio of the nanotubes in the proposed combination. Prelim. Resp. 6. Specifically, Patent Owner contends that oxidizing Ohata’s nanotubes will reduce the aspect ratio below 100, and argues that “Petitioner has not explained why a [person of ordinary skill in the art] would ignore Ohata’s warning nor has Petitioner provided evidence that the resulting combination will perform as Petitioner alleges.” Prelim. Resp. 7; see also Prelim. Resp. 8 (arguing Petitioner has not explained why a person of ordinary skill in the art would try to retain Ohata’s aspect ratio and expect success when Ohata is altered in view of Kavan). Even giving Patent Owner’s arguments their full weight, there is no evidence on the present record as to how much the aspect ratio of Ohata’s nanotubes would be reduced as a result of oxidation. Rather, based on the present record, namely, the broad range of aspect ratios disclosed in Ohata (preferably 100–1000), it seems reasonably likely that the aspect ratio of at least some of the oxidized nanotubes in the proposed composition would remain within the range disclosed in Ohata and overlap the claimed range, as Petitioner asserts. Nevertheless, the parties may address during trial the expected level of carbon nanotube shortening in the proposed combination of Ohata and Kavan.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“To the extent Patent Owner is presenting a teaching away argument, these statements do not rise to the level of criticizing, discrediting, or discouraging investigation into the claimed invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Indeed, in addition to its statement regarding oxidation not being necessary for anchoring to TiO2, Kavan also states that oxidation of carbon nanotubes “was sometimes mentioned to improve anchoring of TiO2.” Ex. 1005, 2. Moreover, the full statement from Kavan regarding storage capacity reads: “The Li-storage capacity of TiO2 is not enhanced in the composite, but the rate of electrochemical charge transfer is higher due to nanotube networking.” Ex. 1005, 9. Thus, in its entirety, this statement supports Petitioner’s argument that there are advantages to using oxidized nanotubes, and, in turn, provides a reason why a person of ordinary skill in the art would have used oxidized nanotubes. Moreover, the evidence Petitioner presents regarding the use of oxidized nanotubes in combination with TiO2, coupled with Ohata’s statement that the electrode active material to be used can vary depending on the battery type (Ex. 1004 ¶¶ 26–27), undermines Patent Owner’s criticism that Petitioner’s arguments are circular.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Although the parties appear to agree that this factor is neutral, we note that a district court denial of a motion to stay without prejudice, accompanied by an indication that the district court would consider a renewed motion, “suggests the district court may be willing to avoid duplicative efforts and await the PTAB’s final resolution of the patentability issues raised in the petition before proceeding with the parallel litigation.” Fintiv at 6–7. “This fact has usually weighed against exercising authority to deny institution.” Id. (also noting that factors 2 and 3 are relevant to how much weight to give to the court’s willingness to reconsider a stay); see also T-Mobile, Paper 16 at 12 (noting that a stay was unlikely in that case given the proximity of the trial date to the entry of the institution decision). In view of the forgoing, we determine that Fintiv factor 1 weighs against exercising our authority to deny institution.” slip op. at 37
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,808,909 - PTAB · Sep 13, 2024 · IPR2024-00609 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”). We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner proposes a slightly different formulation of the level of skill in the art, namely, that a POSITA “would have a bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, and such a person would have at least 3 years of academic or industry experience in nucleation and epitaxial growth processes, or other comparable industry experience,” where “[t]his level of skill is approximate and more experience would compensate for less formal education, and vice versa.” Prelim. Resp. 7. Nevertheless, Patent Owner asserts that “the result here does not depend on which of the two articulations that the Board chooses.” Id. at 8. For the purposes of this Decision, we adopt Patent Owner’s proposal because we find Patent Owner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We also note that the outcome of this Decision would be the same under Petitioner’s proposed definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s arguments. The plain language of claim 1 does not recite any limitation regarding whether or not a group III/II reactant must continue to flow or must stop after the pretreatment step. Claim step [1b] simply recites “pre-treating a surface of the substrate with at least one group III reactant or at least one group II reactant at an elevated growth temperature prior to introducing a group V reactant or a group VI reactant.” Claim steps [1c] and [1d] simply recite “introducing a group V reactant or a group VI reactant to grow a nucleation layer on the surface of the substrate” ([1c]) and “growing a buffer layer on said nucleation layer, said buffer layer providing a surface upon which said epitaxial layer is grown” ([1d]). None of these steps contain any language either requiring or prohibiting the flow of the at least one group III/II reactant recited in step [1b]. Similarly, none of the cited portions of the Specification requires that at least one of the group III/II reactant must continue to flow after the pretreatment steps.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’360 patent. Thus, we institute an inter partes review of all challenged claims of the ’360 patent on all grounds asserted in the Petition. 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
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,250,360 - PTAB · May 9, 2024 · IPR2024-00084 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–3 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’484 patent, and we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Sotera Wireless, Inc., the 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.” Guidance Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Here, in an email to Patent Owner, Petitioner “stipulates that if the PTAB institutes IPR, Structural Wrap will not pursue in [the Florida Litigation] the same grounds asserted in the petition, or any grounds that could have reasonably been raised in the petition.” Ex. 1022, 1.” slip op. at 12
- Adverse judgmentDecided for petitioner
“Patent Owner’s argument is not persuasive because the cited discussion in the prosecution history does not relate to the challenged claims in this proceeding. Pages 25–26 of Exhibit 2008 correspond to the Declaration of Christopher Mouriz (“Mouriz Declaration”). The Mouriz Declaration relates to claim language that “recites attaching the construction material to a specific component of a roof, namely, the vertical, outward facing [fascias] of the eaves of the roof.” Ex. 2008, 25 ¶ 7. The Mouriz Declaration explains that “the roof component to which a waterproofing membrane is attached is not recognized as a particular parameter that can be experimented with, in order to increase or optimize the waterproofing process in a structural waterproofing system.” Id. at 26 ¶ 8. Thus, the claim language discussed in the Mouriz Declaration relates to attaching construction material specifically to “vertical, outward facing facias of the eaves of the roof.” Id. at 25 ¶ 7. There is no discussion of wrapping battens. Pages 40–41 of Exhibit 2008 correspond to a Response to Office Action wherein the applicant distinguishes the ’554 application claims over prior art references cited by the Examiner, namely, Lennox and Wiki. Ex. 2008, 40–41. The applicant argues that “neither Lennox nor Wiki discloses attaching the construction material that was rolled in the end of the strip to the vertical, outward-facing fascia of the eaves of the roof, as claimed by Applicant.” Ex. 2008, 41 (emphasis original). Again, the claim limitation at issue, which Patent Owner directs us to, relates to the location for attaching construction material, namely, vertical outward-facing fascia. We see no similar limitation in the challenged claims. We also note that Petitioner does not rely on Lennox and Wiki in this proceeding. Accordingly, we are not persuaded that Petitioner should be estopped from arguing that the challenged claims of the ’484 patent are obvious based on arguments presented to the Office concerning claims and references that are not involved in this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not explicitly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375. We encourage the parties to further discuss an express construction for “sheet” during trial if they choose.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,168,484 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.Rehearing deniedPTAB · Apr 2, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied SMA’s rehearing request, leaving institution denied for claims 1–20 because the request showed no overlooked matter, misapplication of law, or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Rule 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reads on the micro-controller recited in the claims of the ’848 patent” (Req. 6), the test for anticipation is not whether the prior art reads on the claims, but rather whether the claims read on the prior art. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth. slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“D. Petitioner’s Section 103 Argument Petitioner argues throughout the Request that Mieth also discloses the “micro-controller” limitation under 35 U.SC. § 103. See Req. 7, 9–11, 13– 15. As explained above, however, the Request does not identify any matters that the Board misapprehended or overlooked. We addressed Petitioner’s obviousness arguments in our Institution Decision, and determined that those arguments failed to demonstrate a reasonable likelihood that Petitioner would prevail on its arguments that Mieth and Balogh, or Mieth, Balogh, and Liu, teach or suggest the claimed “micro-controller” limitation. Inst. Dec. 13–15.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,966,848 - The Noco Company, Inc. v. Pilot, Inc.All claims unpatentablePTAB · Jan 19, 2024 · IPR2022-01237 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–24 are unpatentable under § 103 as obvious over the asserted combinations of Krieger, Richardson, Baxter, Tracey, and Lai.
RulingsFinal written decision- Adverse judgmentDenied
“Having considered the parties’ respective arguments as to whether adverse judgment should be entered against Patent Owner under 37 C.F.R. § 42.73(b) based on an abandonment of the contest by Patent Owner, we have decided not to enter adverse judgment against Patent Owner. In light of Patent Owner’s statement regarding the Petition’s merits and Patent Owner’s statement that it does not request adverse judgment, we do not view Patent Owner’s actions as an abandonment of the contest. See Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124, Paper 14 (Dec. 21, 2022) (vacating entry of adverse judgment after determining that it was not sufficiently clear that the patent owner intended to abandon the contest) (precedential); Order Resp. 2–4.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a Bachelor’s Degree in a relevant engineering discipline such as electrical engineering and at least two years of relevant experience in the design and/or development of automotive electrical systems, or a Masters or more advanced degree in a relevant engineering discipline such as electrical engineering.” Pet. 5. Dr. Wood’s testimony supports Petitioner’s assertion. See Ex. 1003 ¶ 45. We adopt Petitioner’s description of an ordinarily skilled artisan as consistent with the ’077 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Conclusion About Obviousness for Claim 1 For the reasons discussed above, Krieger teaches the invention covered by claim 1. See supra §§ III.D.2(a)–(g). Hence, Petitioner has shown by a preponderance of the evidence that claim 1 is unpatentable under § 103 as obvious over Krieger.” slip op. at 27
Patent outcomesUS 11,124,077 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,077 - 3M Company v. Bay Materials, LLCNo claims unpatentablePTAB · Jan 16, 2024 · IPR2022-01214 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–4, 7–11, and 13 were not shown unpatentable because Petitioner did not establish the flexural-modulus limitation over Hinz and the Durasoft data sheets, with or without Sun.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties disagree about the appropriate definition of the ordinarily skilled artisan and, in particular, whether that artisan would have had experience or familiarity with processing “thermoformable polymer sheets” to form “orthodontic and dental appliances.” Resp. 8; see Pet. 10–11 n.1 (disagreeing with that proposition). We agree with Patent Owner for the following reasons.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“B. Conflicting Opinion Testimony Petitioner’s own witness, Dr. Giacomin, opines that an ordinarily skilled artisan “would have been familiar with various machines and methods that would have enabled the thermoforming of multilayer dental sheets into shapes that conform with the teeth (i.e., creating a dental appliance).” Ex. 1002 ¶ 25. Nonetheless, Petitioner does not contest Patent Owner’s evidence that Dr. Giacomin himself lacks that qualification. Compare Resp. 9–10 (citing Ex. 1002 ¶¶ 1–9, 17 & n.1), with Reply (nowhere contesting that evidence). Petitioner also leaves uncontested Patent Owner’s evidence that Dr. Osswald, by contrast, possesses “the required experience” with dental appliances, including thermoforming processes for their manufacture. Compare Resp. 10 (citing Ex. 2006 ¶¶ 2–8; Ex. 2007), with Reply (nowhere contesting that evidence). Dr. Giacomin possesses excellent qualifications in the field of polymer rheology, but on this record, he demonstrates no, or inadequate, familiarity or experience with methods of thermoforming dental appliances from polymeric materials, which by his own admission is a minimum qualification of the hypothetical person of ordinary skill in the art. Ex. 1002 ¶¶ 1–11 (statement of qualifications), App’x A (curriculum vitae). Patent Owner’s witness, Dr. Osswald, by contrast, has “experience with polymer materials used in dental appliances” and “shaping operations, including thermoforming” processes for such applications. Ex. 2006 ¶¶ 5, 6. Against that backdrop, where the two witnesses’ opinions differ about the level of ordinarily skill in the art of thermoforming processes for dental appliances at the time of the invention, we credit Dr. Osswald’s opinions over those of Dr. Giacomin. We take note, moreover, that Dr. Osswald’s opinions would not change under Petitioner’s somewhat different definition of the level of ordinary skill in the art. Ex. 2006 ¶ 14.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Claim terms are given their ordinary and customary meaning, as understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only terms in controversy and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). No claim term requires express construction for purposes of this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In the absence of explanation by Petitioner, we are left to wonder why either of those two ranges reported in Sun would have been recognized as applicable, without modification, to the three-layer dental splint of Hinz. Starting with a commercially-available, two-layer sheet of hard-soft PC-TPU or hard-soft PETG-TPU thermoplastic polymers, Hinz bonds a third layer, consisting of hard PC or hard PETG, to the soft TPU layer of the two-layer material by a process of thermoforming. No prior art reference explains how that process would have been understood to affect the overall flexural modulus of the resulting three-layer, hard-soft-hard composition. Petitioner does not supply an adequate reason for combining Sun’s preferred flexural modulus range, reported for Sun’s dental appliances at a temperature of 23˚ C, to dental splints formed by Hinz from fundamentally different polymers and a fundamentally different process. See Pet. 65–68 (entirety of four-page analysis on this ground); Resp. 32–38; Sur-reply 7–14 (well-supported explanation of those fundamental differences); Reply 8–16 (Petitioner’s unpersuasive responsive positions). The flexural modulus of Sun’s dental appliance not only is temperature dependent but also varies with the flexural strength of the polymeric material at hand. Ex. 1018 ¶ 12. Too late in the Reply, Petitioner raises fact-intensive reasons why those differences would not have mattered to an ordinarily skilled artisan. Reply 8–16. In any event, we agree with Patent Owner that Petitioner glosses over “[f]undamental differences” between the polymers and processes of Sun and Hinz, differences that “are central to [the] motivation to combine inquiry” and undercut Petitioner’s view that an ordinarily skilled artisan would have understood either of Sun’s flexural modulus ranges to apply, without modification, to Hinz’s polymers and process. Resp. 33 (quoting Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020)) (first alteration in original); see Sur-reply 8–16 (Patent Owner’s persuasive arguments and evidence on point). The ground based on Sun is deficient for the above reasons.” slip op. at 25
Patent outcomesUS 10,946,630 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,946,630
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.