- PTAB · Mar 29, 2024 · IPR2023-01439 · APJ Tina E Hulse · IPR · Institution
The Board instituted IPR on claims 1–7, 9–11, 24–26, 28, 29, 35, and 36 on all asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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 considering the argument and evidence presented in the Petition, 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. Accordingly, we institute an inter partes review of the challenged claims of the ’803 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention (“POSITA”) would have had “a bachelor’s degree and two or more years of experience or a master’s degree in organic synthesis or chemical engineering, with education substituting for experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 15–16). We adopt Petitioner’s definition as it appears to be consistent with the prior art’s demonstration of 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) (explaining that specific findings regarding 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 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Claim Construction › Intrinsic evidence (Phillips canons) › Conventional terms ('about', 'substantially', 'a'/'an', 'configured to')Term construed petitioner constructionDecided for petitioner
“At this stage of the proceeding—and without a substantive response from Patent Owner—we determine Petitioner’s construction is consistent with the plain ordinary meaning of “about” and the intrinsic evidence. The claim recites that the carbon chain length of the bio-alkene is “about 5 to about 20 carbons atoms.” Ex. 1001, claim 1 (emphasis added). We agree with respect to the claimed range. See Cohesive Techs., Inc. v. Waters. Corp., 543 F.3d 1351, 1368 (Fed. Cir. 2008) (“When ‘about’ is used as part of a numeric range, the use of the word ‘about,’ avoids a strict numeric boundary to the specified parameter.”) (internal quotations omitted). In other words, the claim term “about 5 to about 20 carbon atoms” does not require precisely 5 to 20 carbon atoms. Moreover, we agree that a carbon atom in a compound is not divisible. Keeping these principles in mind, we find “about 5” at the lower end of the range encompasses a carbon chain length of 4 carbon atoms, and “about 20” at the upper end of the range encompasses a carbon chain length of 21. We also agree with Petitioner that the prosecution history of the related ’902 Application—which also claims the benefit of the ’985 Provisional and shares a virtually identical specification as the ’803 Patent— supports construing “about” to encompass one additional carbon atom, as evidenced by the amendment after allowance amending the term “carbon chain length of about 8 to about 20” to “carbon chain length of 7 to 20.” See Ex. 1006, 335 see also id. at 16, 23–63. Thus, the intrinsic evidence supports Petitioner’s construction and the plain ordinary meaning of “about.”” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,882,803 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 9, 2024 · IPR2023-01098 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 1, 2, 5, 8, and 12, finding the Fintiv factors favored denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Patent Owner’s analysis based on the schedule in the district court’s docket control order. Ex. 2007. The fact that the time-to-trial statistics cited by Petitioner predict that a trial in May 2024 (Pet. 89), a date even earlier than the trial date set in the court’s docket control order, confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 89. As the Texas Litigation is scheduled to go to trial in August 2024, approximately six months before a final written decision would be entered, we determine that Factor 2 weighs in favor of discretionary denial.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002, Declaration of Dr. R. Jacob Baker (“Baker Decl.”) ¶¶ 20–21). Petitioner further states that slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01099 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 21–26 because the Fintiv factors favored discretionary denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“It strikes us as inefficient to conduct, in parallel with the Texas Litigation, numerous inter partes reviews of the same seven patents. This is particularly the case here where the best available evidence indicates that the Texas Litigation will go to trial approximately six months prior to when a final written decision would be entered if inter partes review were to be instituted. Thus, this additional reason weighs in favor of discretionary denial. G. Fintiv Conclusion As a whole, the Fintiv factors weigh in favor of discretionary denial of the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
- Obviousness (§103) › KSR rationalesNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01096 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 20–23 and 30 because the Fintiv factors favored denial and the petition lacked a compelling unpatentability challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“NHK applies to the situation where the district court has set a trial date to occur earlier than the Board’s deadline to issue a final written decision in an instituted proceeding. In a case where, in contrast to the facts present in NHK, the district court has set a trial date after the Board’s deadline to issue a final written decision in an instituted proceeding, the Board may be less likely to deny institution under 35 U.S.C. § 314(a) based on district court trial timing depending on other factors as set forth below. Fintiv at 3. The instant situation is the former one described above by Fintiv and to which “NHK applies.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Here, Petitioner argues that a person of ordinary skill in the art would have “modif[ied] the Okada system to use ‘a receiver coil which has a substantially planar shape and is located parallel to a surface of the portable device’ (and complimented such a design with corresponding planar primary coil).” Pet. 21 (quoting claim 20). Petitioner states that the skilled artisan would have done so “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices.” Id. (citing Ex. 1002 ¶135). The cited declaration testimony repeats this statement and adds that the modification could reduce size and/or weight of a device and, due to the “close proximity of coupling,” could improve power transmission efficiency, reduce energy waste, and shorten charging time. Ex. 1002 ¶135.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard. III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” CommScope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’371 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,316,371 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 10, 2024 · IPR2023-01087 · APJ David Cotta · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 27 would have been obvious over Nakamura, Odendaal, and Calhoon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“established a reasonable likelihood that it will prevail on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Harmonic Inc., 815 F.3d at 1363; 35 U.S.C. § 312(a)(3). 2. Conclusion Based on the record before us, Petitioner has not presented adequate reasoning to show a reasonable likelihood that one having ordinary skill in the art would have been led to modify Nakamura with the teachings of Odendaal in the manner claimed. Having considered all of the arguments and evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood of that it will prevail in establishing that claims 1 and 27 would have been obvious over the combination of Nakamura, Odendaal, and Calhoon. IV. CONCLUSION On this preliminary record, Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable based on the ground advanced in the Petition.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On the present record, we are not persuaded that Petitioner has shown that the POSA would have been motivated to modify Nakamura to include Odendaal’s spiral coils in place of Nakamura’s multiple winding sections wound around a ferrite core. As discussed above, the configuration of multiple winding sections wound around a common ferrite core allows Nakamura’s system to provide multiple different power levels and to align charging and receiving equipment for optimal transmission. The Petition asserts that “the Nakamura-Odendaal system/device [would] include features and perform functionalities like those described by Nakamura.” Pet. 29. But the Petition does not explain how it proposes to obtain multiple power level functionality using Odendaal’s simple untapped planar coils. Nor does the Petition explain how it proposes to preserve Nakamura’s alignment functionality using Odendaal’s untapped planar coils. See 8 Odendaal also discloses bi-filar and multi-filar spirals (id. at 2:51–55; Fig 1B) but Petitioner does not rely on those disclosures (see, e.g., Ex. 1002 ¶¶ 75–77; 129–134 (discussing the disclosures of Odendaal relied upon for obviousness without discussing bi-filar and multi-filar spirals)). In addition, as Patent Owner explains (Prelim. Resp. 47–48), Odendaal does not describe these bi- and multi-filar spirals as having the ability to act separately. Rather, Odendaal teaches that the spirals are placed on top of each other and separated by a dielectric film that forms a capacitor. Ex. 1008, 3:32–40. Thus, Odendaal’s bi- and multi-filar spirals would act like a single coil. Id.” slip op. at 20
- Expert testimonyPetitioner expert discountedOther
“have known how to configure the modified system/device such that it operated as intended consistent with Nakamura’s teachings/designs.” Pet. 30 (citing Ex. 1002 ¶ 141). But Petitioner and Dr. Baker never explain what the combined system would look like or how it would work. Petitioner’s omission to address how its combined system would work is illustrated in how it addresses the claim requirement that a magnetic field is received “in a direction substantially perpendicular to the plane of the receiver coil.” Ex. 1001, 27:17–18 (claim limitation reciting “the receiver coil has a generally planar shape so that a magnetic field received in a direction substantially perpendicular to the plane of the receiver coil is used to inductively generate a current in the receiver coil,”); 30:15–18 (same). To address this requirement, Petitioner relies not on a discussion of how the magnetic field in the proposed combined system of Nakamura and Odendaal would work (i.e., in the planar coil configuration), but on the magnetic field generated by Nakamura’s multi-section winding and ferrite core – i.e., the very winding it proposes to replace with Odendaal’s planar coils. Pet. 19–20. The significant differences between Nakamura’s multiple winding sections and Odendaal’s simple planar coil make it difficult to discern, on this record, how Odendaal’s coils would be incorporated in Nakamura’s 9 To the extent Petitioner contends that the combined Nakamura/Odendaal system would lack these functionalities, it undermines the POSA’s motivation to use planar coils in Nakamura’s system. 21 system without compromising functionality.10 Absent further explanation as to how the combined system of Nakamura and Odendaal would preserve Nakamura’s functionality, we give little weight to Dr. Baker’s conclusory testimony that the POSA would have known how to do so. Ex. 1002 ¶ 141; 37 C.F.R. § 42.65(a) (“expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no 10 Petitioner extensively relies on internal cross-references in both the Petition and in Dr. Baker’s Declaration. For example, paragraph 141 of Dr. Baker’s Declaration, refers to “my analysis and discussions above in this section,” “my analysis and discussions in Sections IX.A.1(a)-1(b),” and “my analysis and discussions in Sections VIII.A-B, IX.A.1(a)-(b).” As another example, paragraph 140 of Dr. Baker’s Declaration refers to “my analysis and discussions above in this section,” “my analysis and discussions above regarding state of art disclosures such as those in Exs. 1006–1007, 1009– 1011, 1015, 1024–1030,” “my discussions above in Section V.B and those above where I reference state-of-art references supporting such understanding,” and “my analysis and discussions in Sections IX.A.1(a)– (l).” Similarly, the Petition states that “[o]ther disclosed features would have been included in the Nakamura-Odendaal system (including as further modified below) for reasons explained,” and provides a citation to “§§IX.A.1(a)–(l)).” Pet. 30. Although there is no rule against internal crossreferencing, and we recognize that it can be useful to avoid duplication, Petitioner’s cross-referencing here results in a lack of clarity. Our Consolidated Trial Practice Guide (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) provides that “parties should avoid submitting a repository of all of the information that a judge could possibly consider, and instead focus on concise, well-organized arguments, easy-to-follow arguments supported by readily identifiable evidence of record.” Petitioner has failed to follow this guidance, which has made it difficult to discern Petitioner’s precise contentions as to the combination of Nakamura and Odendaal, and further supports that Petitioner has not shown “with particularity” why the ’440 patent is unpatentable over Nakamura, Odendaal, and Calhoon. 22 weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning).” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends: A person of ordinary skill in the art as of the claimed priority date of the ’440 patent (“POSITA”) would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems. More education can supplement practical experience and vice versa. Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not challenge Petitioner’s proposed definition of the POSA for purposes of its preliminary response. Prelim. Resp. 6. Petitioner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’440 9 patent. Accordingly, for purposes of this Decision, we accept Petitioner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,577,440 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 10, 2024 · IPR2023-01102 · APJ William V Saindon · IPR · Institution
Institution was denied for claims 15, 17, and 20–23 because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). At the institution phase of an inter partes review, Petitioner’s burden is to show 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“POSITA”) would have had “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 21–22, 23–66). slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“requires a microcontroller configured for “operating in a first mode of operation using a first protocol,” wherein that protocol “is an inductive charging communication-and-control protocol that comprises uni-directional messaging.” In this mode, the claim requires a first communication sent from the receiver (the charged device) to the base system (the charger). Ex. 1001, 72:6–9 (“sending . . . a first communication”). The claim also requires the microcontroller to be configured for “operating in a second mode of operation using a second protocol,” wherein that protocol “is an inductive charging communication-and-control protocol that defines bi-directional messaging.” Id. at 72:12–16. In this mode, the claim requires a second communication sent from the receiver to the base system, and also a third communication sent from the base system to the receiver. Id. at 72:18– 26 (“sending . . . a second communication” and “receiving . . . [a] third communication”). We also note that claim 5, which depends from independent claim 1 (which is similar to claim 15), specifies that “the first mode of operation is a subset of the second mode of operation,” but also note that claim 15 does not have a similar claim that depends from it. Id. at 71:11–12. Independent claim 24 is similar, but states that the second protocol “comprises bi-directional messaging” (emphasis added), instead of claim 1’s recitation of “defines bi-directional messaging” (emphasis added). Compare id. at 72:16 with id. at 74:1. The fact that the two modes of operation specified in claim 15 are otherwise effectively identical but for the unidirectional and bidirectional aspects, suggests that the claims use these terms to distinguish the two modes. In other words, it tends to indicate that the words “uni-directional” and “bi-directional” in claim 15 are intended to refer to distinct messaging protocols (rather than “uni-directional” being merely half of “bi-directional”). See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”). Likewise, the first mode recites “sending . . . a first communication,” whereas the second mode recites both “sending” and “receiving” communications. Although not dispositive (given the “comprising” language of the claims), this language is consistent with an understanding that unidirectional modes only have a sending of information (from the perspective of the power receiving device) whereas bidirectional modes have two-way messaging between the charger and receiver.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testimony of Petitioner’s expert and find that it does not provide a factual basis for Petitioner’s assertion that unidirectional messaging is just one leg of bidirectional messaging. See, e.g., Pet. 23 (citing Ex. 1002 ¶¶ 112). In particular, the expert’s testimony largely just repeats the assertions of the Petition, without providing sufficient additional analysis or evidence useful to determine how a person of ordinary skill in the art would construe those terms. See Ex. 1002 ¶¶ 112–114; see also 37 C.F.R. § 42.65(a) (“expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB 2022) (precedential) (holding declaration is entitled to little weight when it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning). Instead, Petitioner’s expert appears to largely assume that the prior art reference Sogabe discloses unidirectional messaging, giving the expert’s opinion little probative value. Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,342,777 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 10, 2024 · IPR2023-01101 · APJ William V Saindon · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–3, 5–11, 13, 14, and 24 would have been obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review (“Decision”) under 35 U.S.C. § 314(b) and 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 “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 provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’777 patent is unpatentable, we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are otherwise effectively identical but for the unidirectional and bidirectional aspects suggests that the claims use these terms to distinguish the two modes. In other words, it tends to indicate that the words “uni-directional” and “bi-directional” in claim 1 are intended to refer to distinct messaging protocols (rather than “uni-directional” being merely half of “bi-directional”). See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“POSITA”) would have had “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 21–22). Patent Owner does not challenge Petitioner’s proposed level of skill. Prelim. Resp. 11. We adopt Petitioner’s definition for purposes of this Decision. slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testimony of Petitioner’s expert and find that it does not provide a factual basis for Petitioner’s assertion that unidirectional messaging is just one leg of bidirectional messaging. See, e.g., Pet. 25 (citing Ex. 1002 ¶¶ 120–121). In particular, the expert’s testimony largely just repeats the assertions of the Petition, without providing sufficient additional analysis or evidence useful to determine how a person of ordinary skill in the art would construe those terms. See Ex. 1002 ¶¶ 120–125; see also 37 C.F.R. § 42.65(a) (“expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB 2022) (precedential) (holding a declaration is entitled to little weight when it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning). Instead, Petitioner’s expert in the cited paragraphs appears to largely assume that the prior art reference Sogabe discloses unidirectional messaging, giving the expert’s opinion little probative value. Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient . . . it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,342,777 - Mylan Pharmaceuticals Inc. v. Regeneron Pharmaceuticals, Inc.All claims unpatentablePTAB · Jan 9, 2024 · IPR2023-00566 · APJ John G New · IPR · Final written decision
Claims 1–9, 34–39, 41–43, and 45 are unpatentable as anticipated by Dixon; the Board did not reach the other grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“inter partes review are anticipated by Dixon and therefore unpatentable (Ground 1). Because we reach this conclusion, we do not reach Petitioner’s contentions that the claims are obvious on the basis of Ground 5. Nor does our analysis rely upon, or cite to, Exhibit 1058. We consequently dismiss as moot Patent Owner’s motion to exclude Exhibit 1058.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Owner and its experts proposed claim construction of “effectively treating” as meaning “noninferior,” “statistically noninferior,” or “comparable.” Pet. Reply 4. Petitioner asserts that Patent Owner, and its expert, Dr. Do, advance the proposed construction of “effectively treating, ” with no explanation for what that means, or how it comports with the challenged dependent claims that recite visual acuity limitations ranging from losing less than 15 letters to gaining more than 15 letters. Id. at 4–5.” slip op. at 32
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“inter partes review are anticipated by Dixon and therefore unpatentable (Ground 1). Because we reach this conclusion, we do not reach Petitioner’s contentions that the claims are obvious on the basis of Ground 5. Nor does our analysis rely upon, or cite to, Exhibit 1058. We consequently dismiss as moot Patent Owner’s motion to exclude Exhibit 1058.” slip op. at 24
Patent outcomesUS 10,888,601 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,888,601 - Mylan Pharmaceuticals Inc. v. Regeneron Pharmaceuticals, Inc.All claims unpatentablePTAB · Jan 9, 2024 · IPR2023-00533 · APJ John G New · IPR · Final written decision
Claims 1–9, 34–39, 41–43, and 45 are unpatentable as anticipated by Dixon; the Board did not reach the other grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“inter partes review are anticipated by Dixon and therefore unpatentable (Ground 1). Because we reach this conclusion, we do not reach Petitioner’s contentions that the claims are obvious on the basis of Ground 5. Nor does our analysis rely upon, or cite to, Exhibit 1058. We consequently dismiss as moot Patent Owner’s motion to exclude Exhibit 1058.” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Id. at 18. The similar language of the challenged claims of the ’601 patent, and our reasoning in the related -00881 Decision, compel the same conclusion here, i.e., that the preamble is limiting upon the claims.” slip op. at 43
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“inter partes review are anticipated by Dixon and therefore unpatentable (Ground 1). Because we reach this conclusion, we do not reach Petitioner’s contentions that the claims are obvious on the basis of Ground 5. Nor does our analysis rely upon, or cite to, Exhibit 1058. We consequently dismiss as moot Patent Owner’s motion to exclude Exhibit 1058.” slip op. at 24
Patent outcomesUS 10,888,601 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,888,601 - Mylan Pharmaceuticals Inc. v. Regeneron Pharmaceuticals, Inc.All claims unpatentablePTAB · Jan 9, 2024 · IPR2023-00532 · APJ John G New · IPR · Final written decision
Claims 1, 3–11, 13, 14, 16–24, and 26 are unpatentable as anticipated by Dixon; the Board did not reach Grounds 2–6.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Decision. See Ex. 3001, 12–23. As an initial matter, we are not persuaded by Patent Owner’s reliance on Sanofi and Eli Lilly. See PO Resp. 9. In Sanofi, a non-precedential decision, the Federal Circuit held that the preamble to the claims at issue, reciting “[a] method of increasing survival comprising administering to a patient in need thereof” was limiting upon the claims, in conformance with the court’s prior decisions in Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003) and Rapoport v. Dement, 254 F.3d 1053 (Fed. Cir. 2001). Sanofi, 757 F. App’x at 992–93. Furthermore, the court held that, because the preamble was limiting, and recited a “method of increasing survival” the proposed claims would now clearly require “increasing survival.” Id. at 994. The preamble to claim 1 of the ’681 patent, however, recites no such “increase” with respect to efficacy, but merely recites “A method for treating an angiogenic eye disorder in a patient,” and the remainder of the claim requires no specific efficacy requirement. Nor does Eli Lilly support Patent Owner’s position. In Eli Lilly, the court upheld the Board’s conclusion that the preamble reciting “a method for treating headache in an individual” was limiting upon the claims. Eli Lilly, 8 F.4th at 1343. However, it noted, in upholding the Board’s conclusion, the Board also “found that while the claims encompass a clinical result, they do not require such a result.” Id. (emphasis added). We also find that the similar language of the preamble to challenged claim 1 of the ’681 patent, although encompassing clinical efficacy, does not require it, let alone a “high degree of efficacy.”” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“the preamble’s recitation of a “method for treating” requires a high level of efficacy. In the -00881 Decision, the Board rejected Patent Owner’s similar argument because it required improperly importing limitations into the claims. See Ex. 3001, 22. Specifically, the Board found that: [W]hen the Specification explains that “[t]he amount of VEGF antagonist administered to the patient in each dose is, in most cases, a therapeutically effective amount,” and discloses that “a therapeutically effective amount can be from about 0.05 mg to about 5 mg,” we find that a POSA would have understood that any dosage amount within that range administered according to the invention may, in some cases, result in a detectable improvement in “one or more symptoms or indicia of an angiogenic eye disorder,” or be one that “inhibits, prevents, lessens or delays the progression of an angiogenic eye disorder,” or it may not. In either event, the VEGF antagonist would have been administered for the purpose of treating the eye disorder. In other words, the method of treating the patient with the eye disorder is performed upon administration of the VEGF antagonist to the patient for the purpose of achieving an improvement or beneficial effect in the eye disorder, regardless whether the dosage amount administered actually achieves that intended result. Id. at 21–22 (citation omitted). Furthermore, the Board found that: Patent Owner proposes that the claims require not only achieving a therapeutically effective result, but more specifically, achieving a “high level of efficacy that was noninferior to the standard of care by the time the patent was filed in 2011.” In the Sur-reply, Patent Owner describes a “highly effective treatment for angiogenic eye disorders” as “one that is on par to Lucentis or off-label Avastin and can produce visual acuity gains, not just slow vision losses.” The Specification refers to “a high level of efficacy” in one instance, i.e., in the “Background” section. The Specification does not describe there, or elsewhere that “treating,” in the context of the claims or in the art, requires achieving a “high level of efficacy” or providing results “on par to Lucentis or off-label Avastin.” Id. at 22 (citations omitted). We adopt the same reasoning here, and find that, for the purposes of this Decision, the evidence of record and the Specification support construing the preamble’s recitation of a “method for treating a patient with an angiogenic eye disorder” as meaning administering a compound, i.e., the recited VEGF antagonist, to such patient for the purpose of improving or providing a beneficial effect in their angiogenic eye disorder. We find that, as in Eli Lilly, although the claims “encompass a clinical result, they do not require such a result.” Eli Lilly, 8 F.4th at 1343. We consequently reject” slip op. at 35
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The terms “initial dose,” “secondary doses,” and “tertiary doses,” refer to the temporal sequence of administration of the VEGF antagonist Thus, the “initial dose” is the dose which is administered at the beginning of the treatment regimen (also referred to as the “baseline dose”) ; the “secondary doses” are the doses which are administered after the initial dose; and the “tertiary doses” are the doses which are administered after the secondary doses. The initial, secondary, and tertiary doses may all contain the same amount of dosing regimens, but will generally differ from one another in terms of frequency of administration. Ex. 1001, col. 3 ll. 34–44. Petitioner also notes that the Specification further explains that “the immediately preceding dose” means “in a sequence of multiple administrations, the dose of VEGF antagonist which is administered to a patient prior to the administration of the very next dose in the sequence with no intervening doses.” Pet. 24 (citing Ex. 1001, col. 3, ll. 54–59; Ex. 1002 ¶¶ 44–45). We adopt Petitioner’s proposed construction of the claim terms “initial dose,” “secondary dose,” and “tertiary dose.” Petitioner proposes adoption of the definitions expressly set forth in the Specification of the ’681 patent, viz., that the initial dose is the dose “administered at the beginning of the treatment regimen,” and is followed by the secondary doses that are “administered after the initial dose,” and the tertiary doses are “administered after the secondary doses” and may be distinguished from the secondary doses “in terms of frequency of administration.” Ex. 1001, col. 3, ll. 36–44.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“As Petitioner states, Patent Owner relies upon these Exhibits as objective secondary evidence of non-obviousness. See, e.g., PO Resp. 65– 69. However, and as we explain below, because we find that the challenged claims are anticipated by Dixon, we do not reach Patent Owner’s arguments that the claims are non-obvious (Grounds 4–6) or its contentions regarding secondary considerations of non-obviousness. See Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (holding that “secondary considerations are not an element of a claim of anticipation”). Consequently, we dismiss Petitioner’s motion to dismiss the Financial Documents as moot.” slip op. at 10
Patent outcomesUS 10,130,681 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,130,681
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.