- Kohler Co. v. Delta Faucet Co.InstitutedPTAB · Oct 4, 2024 · IPR2024-00700 · APJ Jane E Inglese · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that Kohler would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner provides sufficient information for purposes of institution to show that Tseng discloses or would have suggested a translucent light pipe defining a closed loop to diffuse light from light emitters outwardly away from a housing. Tseng’s Figures 30 and 37 show that rib 371 and protrusion 383 of translucent light conductors 37, 38 (light pipes), respectively, are both shaped as unbroken circles. Ex. 1004, Figs. 37, 38; see also id. ¶ 24 (describing “circular” rib), ¶ 26 (indicating that the “light conductor is formed in a sleeve shape”). Tseng discloses that light from LED elements 40 enters input face 311 of Tseng’s light conductors 37, 38, travels through transmission portion 312, and is emitted through downward facing output face 313. Ex. 1004 ¶¶ 91, 94, 97, 98, Figs. 30, 31, 35, 36, 37. Light is also emitted from outwardly extending annular rib 371 and protrusion 383 of light conductors 37, 38, respectively, which “enhance[s] light transmission.” Id. Petitioner, therefore, provides sufficient information to show that Tseng’s translucent light conductors 37, 38 (light pipes) define a closed loop to diffuse light from LED elements 40 (light emitters) outwardly away from external sleeve 34 (housing).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had a degree in industrial design or an equivalent field, and two years of professional experience working with kitchen, bath, or other plumbing fixtures (or similar products), or an equivalent level of skill, knowledge, and experience. Pet. 14. Petitioner asserts that a POSITA also would have been aware of, and generally knowledgeable about, the standard features and functionality of kitchen, bath, or other plumbing fixtures (or similar products). Id. Patent Owner neither adopts nor disputes Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s definition of a POSITA, which is undisputed on this record, and is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action held under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it “has applied the plain and ordinary meaning of the claim terms.” Prelim. Resp. 10. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.7” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“its sprayhead by routing an electric wire connected to an external power supply through the shower head. Pet. 44 (citing Ex. 1004 ¶ 68, Figs. 1–5). Petitioner asserts that because Tseng’s shower head is designed to be pulled out, the wire is subject to stress and strain, which could lead to failure over time. Id. (citing Ex. 1003 ¶¶ 251–253). According to Petitioner, incorporating Mizuno’s hydroelectric generator into Tseng’s shower head would obviate the need for an external power supply or battery, which would reduce installation and operation costs, prevent a potential wiring failure, and eliminate periodic battery replacement. Id. at 45 (citing Ex. 1003 ¶¶ 257–260). Petitioner asserts that a person of ordinary skill in the art, therefore, would have been motivated to incorporate Mizuno’s hydroelectric generator into Tseng’s shower head, and would have had a reasonable expectation of success in doing so because Mizuno’s hydroelectric generator is designed and intended to be integrated into a faucet’s shower head to reliably power LEDs. Id. at 45–46 (citing Ex. 1008 ¶¶ 1, 2). Patent Owner counters that a person of ordinary skill in the art would not have had any reason to modify Tseng in view of Mizuno. Prelim. Resp. 32. Patent Owner contends that Tseng expressly set out to develop a design that includes electrical wiring, and did so successfully by improving the integration of electrical wiring into its shower head design. Id. at 33–34 (citing Ex. 1004 ¶¶ 9, 102–110). Patent Owner further contends that a person of ordinary skill in the art would not have been motivated to completely redesign Tseng’s shower head to change the power source entirely to eliminate wiring. Id. Patent Owner contends that a person of ordinary skill in the art also would not have had a reasonable expectation of success in incorporating Mizuno’s hydroelectric generator into Tseng’s shower head because Tseng explicitly discloses that the space in its shower head is narrow. Id. at 36 (citing Ex. 1004 ¶¶ 7, 108). According to Patent Owner, Mizuno’s hydroelectric generator requires room for additional components beyond the hydrogenator, including a voltage stabilizer, cooling components, and a relief valve, which Patent Owner contends would have discouraged the ordinarily skilled artisan from a major redesign of Tseng’s faucet necessary to incorporate these elements. Id. at 37. We have considered Petitioner and Patent Owner’s assertions for ground 2. Because Petitioner demonstrates a reasonable likelihood of prevailing in its challenge to the patentability of claim 1 for ground 1, resolution of the disputed factual issues raised by Petitioner and Patent Owner in ground 2 is best left for trial after full development of the record.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,393,363 - Wenzhou Xin Xin Sanitary Ware Co., Ltd. v. Delta Faucet CompanyInstitution deniedPTAB · Feb 7, 2024 · IPR2023-01332 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7, 10–17, 20, 21, 23, and 24 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Principles of Law “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). When an obviousness challenge asserts a combination of identified prior art, “it [is] important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The relevant inquiry is “whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (internal citations omitted) (emphasis added); Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.”).” slip op. at 12
- BurdenDenied
“We are unable to discern how the Petitioner proposes modifying Van Der Linden’s vessel rinsing apparatus “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” however. Neither the Petitioner nor Mr. Cook describes the proposed modifications with sufficient particularity to allow us to understand the specific nature of the proposed modifications. Pet. 9; Ex. 1005 ¶ 59. Furthermore, the Petitioner does not provide any objective evidence to support the Petitioner’s assertions that modifying Van Der Linden’s vessel rinsing apparatus as the Petitioner proposes would minimize the number of components in the apparatus “for cost and reliability,” and would provide “increased standalone stability.” Pet. 9. Although the Petitioner cites the Cook Declaration when making these assertions, the cited paragraph of the Declaration simply mirrors the Petitioner’s conclusory statements without providing any objective, supporting evidence. Ex. 1005 ¶ 59. In contrast, as discussed above, Van Der Linden explicitly describes advantages associated with the approach Van Der Linden uses to mount its washing device. Specifically, Van Der Linden discloses that mounting the washing device to the base of a kitchen faucet permits a common channel to be used for the tap of the kitchen faucet and for a supply line of the washing device, which advantageously reduces the number of bores in a kitchen worktop required to mount the washing device. Ex. 1006 ¶¶ 17, 39, Fig. 5. Van Der Linden further discloses that positioning the abutment surface defined by the abutment member of the device at “an angle of about 45 degrees with the vertical” directs the washing device “towards the user . . . which is advantageous for ergonomic reasons.” Id. ¶ 32. Due to the absence of any objective evidence to support the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found
“Due to the absence of any objective evidence to support the Petitioner’s asserted advantages of modifying Van Der Linden’s washing device “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” and Van Der Linden’s disclosure of advantages associated with its mounting approach, the Petitioner’s rationale for the proposed modifications appears to be based on impermissible hindsight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Simply because Van Der Linden’s washing device could be modified as the Petitioner proposes,7 in the absence of reasoning supported by objective evidence that explains why one of ordinary skill in the art actually would have so modified the device, the Petitioner does not establish that the proposed modification would have been obvious under section 103. This is because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action held under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,473,277 - W.R. Grace & Co.-Conn v. Cochise Technology, LLCInstitution deniedPTAB · Dec 11, 2023 · IPR2023-01063 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The disclosures of the ’864 patent thus align with the Patent Owner’s position that the recitation of a “CO to CO2 combustion promoter” in claim 1 constitutes a claim limitation because the disclosures show that the phrase is “necessary to give meaning to the claim[s] and properly define the invention” as described in the patent. In re Fritch, 972 F.2d 1260, 1262 (Fed. Cir. 1992); see also Kropa v. Robie, 187 F.2d 150, 151–152 (CCPA 1951) (determining that a preamble reciting “an abrasive article” should be given patentable weight for a claim further reciting that the article comprised abrasive grains and a binder because “it is only by that phrase that it can be known that the subject matter defined by the claims is comprised as an abrasive article” in view of the fact that “[e]very union of substances capable inter alia of use as abrasive grains and a binder is not an ‘abrasive article.’”). The Patent Owner thus provides factual and legal bases for determining that a “CO to CO2 combustion promoter,” as recited in the preamble of claim 1, is a claim limitation. By not taking a position as to whether a “CO to CO2 combustion promoter” constitutes a claim limitation, the Petitioner does not establish that this recitation is not limiting. We determine that the intrinsic evidence of record is sufficient to establish that a “CO to CO2 combustion promoter” is a limitation of claim 1 because the evidence shows that this phrase is necessary to give meaning to the claim and to properly define the invention. This determination is consistent with the District Court’s corresponding determination in the Markman Memorandum and Order. Ex. 2024, 12–19.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find, at this stage, that the asserted prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply the Petitioner’s definition for purposes of determining whether to institute review, because it is consistent, on this record, with the disclosures of the asserted prior art references.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied merits
“Under Rule 42.104(b)(3)–(4), a Petition must identify “[h]ow the challenged claim is to be construed,” and “[h]ow the construed claim is unpatentable,” by “specif[ing] where each element of the claim is found in the prior art.” 37 C.F.R. § 42.104(b)(3)–(b)(4). The Petitioner’s provision of an unsupported, implicit interpretation of a “CO to CO2 combustion promoter” does not meet these requirements. The Petitioner does not take a definitive position as to whether a “CO to CO2 combustion promoter” constitutes a limitation of claim 1. Nor does the Petitioner provide an express construction of this phrase. Instead, the Petitioner implicitly interprets a “CO to CO2 combustion promoter” in a particular manner, and bases assertions of the unpatentability of claim 1 on this implicit interpretation, without providing any support for the implicit interpretation. The Petitioner’s contentions, therefore, are not sufficient to support institution on Ground 1 because the Petitioner does not establish a reasonable likelihood of prevailing in its challenge to the patentability of at least one claim asserted in this ground. Nor are the Petitioner’s contentions sufficient to support institution on Grounds 1A and 1B, because the Petitioner does not rely on any disclosure in Vaughn ’290, Peters, or Vaughn ’516 for any information that remedies the deficiencies in the Petitioner’s showing for Ground 1.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“In light of the state of the art as demonstrated by the Patent Owner’s evidence, the Petitioner does not persuasively explain why one of ordinary skill in the art seeking to produce a CO to CO2 promoter would have looked to Miura’s disclosure of a three-way exhaust gas purifying catalyst capable of oxidizing CO formed of platinum supported on the surface layer of microparticles. Nor does the Petitioner explain why this disclosure in Miura would have prompted one of ordinary skill in the art seeking to produce a CO to CO2 promoter to depart from the conventional approach in the art of producing such a catalyst by uniformly distributing platinum throughout a porous support, and instead distribute the platinum on the surface layer of a support. On the record before us, therefore, the Petitioner does not provide sufficient information and explanation to demonstrate that Miura in view of AAPA discloses or would have suggested a “CO to CO2 combustion promoter” as recited in claim 1.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,224,864 - Gce Gas Control Equipment Inc. v. Vbox, Inc.Institution deniedPTAB · Sep 1, 2023 · IPR2023-00527 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because the petition did not show that Deane disclosed or suggested the claimed removal direction for claims 1–23.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, when addressing Ground 1 in the Petition, the Petitioner contends that Berntson (in addition to Deane) teaches a separation cartridge selectively removable from a receptacle, but contends that Deane alone renders obvious a separation cartridge selectively removable from a receptacle “by movement relative to the receptacle in a first direction.” Pet. 54–55, 82. For the first time in the Reply, however, the Petitioner contends that “applying Berntson’s basic teachings to Deane . . . would result in a cartridge removable through the POC bottom.” Reply 4; see also id. at 1 (describing Petitioner’s Scenario A). In neither the Petition nor the Reply, however, does the Petitioner identify with any degree of specificity the “basic teachings” of Berntson that a POSITA would have applied to Deane, nor without relying on impermissible hindsight, how the combined teachings of Deane and Berntson would have led the POSITA to the claimed subject matter. In particular, the Petitioner does not describe how or why Berntson would have led a POSITA to modify Deane’s gas fractionalization apparatus, much less describe any specific modifications that would have resulted in a separation cartridge removable through the bottom of Deane’s gas fractionation apparatus. Equally importantly, the Petitioner does not provide a sufficient rationale for combining the prior art teachings. The Petitioner does not explain why one of ordinary skill in the art would have considered any modifications of Deane’s apparatus in view of Berntson. The Petitioner, therefore, does not provide sufficient information to establish that combining Berntson with Deane would remedy the deficiencies of the Petitioner’s contentions based on Deane alone, discussed above.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“would be used to construe the claims in a civil action held under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“E. Discretion under 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 28–29; Prelim. Resp. 45–57.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,357,628
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.