- Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCInstitution deniedPTAB · Mar 19, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 6–9, and 11–24 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. 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 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.” Having considered the arguments and the associated evidence, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this institution decision, and based on the present record including the disclosure in the ʼ473 patent, we apply Petitioner’s definition of the level of ordinary skill in the art at the time the invention was made, consistent with pre-AIA section 103(a). See Pet. 9–10. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ473 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for several terms, all such constructions based on statements in the ’473 patent. See Pet. 10–12. Patent Owner presents no claim construction issues. Prelim. Resp. 8 n.3. For purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Petitioner’s representation of the problem as merely converting Petrauskaite’s disclosed mol% of triglycerides into wt% of triglycerides with simple calculations represents a form of prohibited reliance on hindsight. See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012) (hindsight to use the invention to define the problem the invention solves); see also Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000) (”Defining the problem in terms of its solution reveals improper hindsight in the selection of the prior art relevant to obviousness.”). “[W]hen someone is presented with the identical problem and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention.” Mintz, 679 F.3d at 1377. Here, Petitioner urges that one of ordinary skill in the art need merely convert mol% of triglycerides in a specific fat blend into wt% of triglycerides in the specific fat blend. See Pet. 14–15 (“[T]he wt% of Petrauskaite’s fat blends can easily be calculated based on the generally available prior art knowledge of fatty acid compositions of palm stearin and soybean oil.”). Petitioner’s reasoning says no more than that a skilled artisan, once presented with Petrauskaite and prior art knowledge, “would have understood that they could be combined, but that is not enough.” PersonalWeb Techs., LLC, v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (that two references could be combined does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention). Our reviewing court instructs that indicating that a skilled artisan could have made modifications to arrive at the claimed invention does not establish that a person of ordinary skill would have made such modifications. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“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.” (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Petitioner attempts to check the “would have been motivated to modify Petrauskaite” box with testimony from its declarant, Dr. Maragoni. See Pet. 37–38. Such testimony includes [C]ombining such prior art elements according to known methods would have yielded nothing more than predictable results. A POSITA would naturally have turned to these references to understand Petrauskaite’s references better. Ex. 1003 ¶ 178. [T]he corresponding wt% of Petrauskaite’s fat blends] was readily-available and well-known in the art. Id. at ¶ 181. [T]he available information [on characterizations of oils and fats] is voluminous. Id. at ¶ 182. See Pet. 38. We find that such testimony fails to explain why the skilled artisan would have been motivated, without hindsight, to take the steps to reproduce the claimed invention, and to be conclusory, at best. On this record, we detect the taint of impermissible hindsight bias in” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,645,473 - Lam Research Corp. v. Inpria Corp.InstitutedPTAB · Apr 24, 2024 · IPR2024-00033 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–12 on all asserted grounds, finding a reasonable likelihood that the ’888 Publication anticipates the claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). We may institute review, however, only upon a determination that “there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, for reasons set forth below, we institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“The test for written description support “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Specification must clearly allow persons of ordinary skill in the art to recognize that the inventors invented what is claimed, and “reasonably” convey to those skilled in the art that the inventors “had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Specification must clearly allow persons of ordinary skill in the art to recognize that the inventors invented what is claimed, and “reasonably” convey to those skilled in the art that the inventors “had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Even if we accept that the Examiner previously considered the effective filing date of claims 1–12, we determine that Petitioner identifies a material error by the Examiner. Id. We agree with Petitioner that “the Examiner never questioned the priority claim made by” the applicant during prosecution. Pet. 63. Further, the Examiner did not issue any rejection concerning whether the application that led to the ’564 patent supports the challenged claims. Id.; see id. at 63 n.20 (citing Ex. 1007, 489). Against that backdrop, we find Petitioner shows sufficiently that the Examiner materially erred by accepting the applicant’s priority date claim, as shown by our analysis above, and, as a result, materially erred by failing to appreciate the prior art status of the ’888 Publication, which Petitioner has demonstrated by a reasonable likelihood, on this record, anticipates the challenged claims. Id. at 63. Accordingly, we do not exercise our discretion to deny review under Section 325(d) with respect to the ground that asserts anticipation by the ’888 Publication.10” slip op. at 16
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 9,823,564 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00776 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Corning’s rehearing request and left institution denied for claims 1–4 because the petition did not show a reasonable likelihood of proving obviousness on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,488,115 B2 (Ex. 1001, “the ’115 patent”). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the choosing limitation of the claims would have been obvious over cited references in view of the knowledge of one of ordinary skill in the art. Dec. 20, 26, 29. We, thus, found that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’115 patent are unpatentable as obvious on any asserted ground. Id. at 22, 23, 27–30.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’115 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 42 (citing Ex. 1005 ¶ 252).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The second part of Petitioner’s first argument is that we “committed legal error by construing claim 1” of the ’115 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction, either expressly or implicitly. In fact, we determined that no claim term required express construction. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing (Reh’g Req. 6–9), but Petitioner identifies nothing in our Decision that indicates we construed the “choosing” limitation of claim 1 to require that the DMD slope always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,488,115 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Rehearing
Denied Corning’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood that claims 1–4 were obvious on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2018). In pertinent part, 37 C.F.R. § 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, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,351,027 B2 (“the ’027 patent,” Ex. 1001). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the combined teachings of the prior art would have rendered obvious the limitation of claim 1 that requires “choosing for use in a communications network those optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number” (“the choosing step”). Dec. 23–25, 29–30, 32. We, thus, determined that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’027 patent would have been obvious based on any asserted ground. Id. at 25–26, 30–33.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot reached
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’027 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))); see also Dec. 25 (concluding that Petitioner’s argument appears to be the product of hindsight). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 44 (citing Ex. 1005 ¶ 164).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“legal error by construing claim 1” of the ’027 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction. In fact, we determined that no claim term required express construction, expressly or implicitly. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing, see Reh’g Req. 6– 9, but does not identify anything in our Decision that indicates we construed the choosing step of claim 1 as requiring that the DMD slope should always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027 - Corning Incorporated v. Panduit Corp.Institution deniedPTAB · Sep 16, 2019 · IPR2019-00776 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 obvious over any of the three asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “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). Applying that standard, and upon considering the information presented in the Petition and the Preliminary Response, we determine Petitioner does not show a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claims. Accordingly, we do not institute an inter partes review as to claims 1–4 of the ’115 patent.” slip op. at 2
- BurdenNot shown unpatentable
“On this record, we agree with Patent Owner that Petitioner fails to set forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number. Prelim. Resp. 14; Ex. 1005 ¶ 252 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument.” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“On this record, we agree with Patent Owner that Petitioner fails to set forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number. Prelim. Resp. 14; Ex. 1005 ¶ 252 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Moreover, although Petitioner argues that it would have been obvious for a POSITA to have chosen a MMF on the basis of calculating a negative DMD slope given Abbott’s disclosure, we agree with Patent Owner that Petitioner’s showing falls short on this record. Specifically, Petitioner does not direct us to a teaching or suggestion in Abbott of choosing a MMF based on the negative slope or DMD shift. Rather, Petitioner’s argument that “it would have been obvious to a POSITA to choose for use in a communications network those optical fibers in which the results of subtracting the pulse delay at the first radius from the pulse delay at the second radius is a negative number in order to obtain the optimized MMF described in Abbott (Pet. 42), appears to be the product of hindsight, coupled with Dr. Ralph’s conclusory testimony that the choosing step would have been obvious in view of Abbott’s teaching that its new MMF “has a variety of uses in the telecommunication industry.” Ex. 1005 ¶ 252 (quoting Ex. 1006, 4:1–6); see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (in reaching a conclusion on obviousness, “the court must avoid ‘hindsight bias and must be cautious of arguments reliant upon ex post reasoning’” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”); 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts “is entitled to little weight”). Accordingly, we determine that Petitioner fails to show a reasonable likelihood of prevailing in its assertion that claim 1 of the ’115 patent would have been obvious over Abbott and a POSITA’s knowledge.” slip op. at 22
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,488,115 - Corning Incorporated v. Panduit Corp.Institution deniedPTAB · Sep 16, 2019 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–4 were unpatentable as obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “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). Applying that standard, and upon considering the information presented in the Petition and the Preliminary Response, we determine Petitioner does not show a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claims. Accordingly, we do not institute an inter partes review as to claims 1–4 of the ’027 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“ordinary skill in the art at the time of the invention of the ’027 patent would have “a working knowledge of fiber optic systems, a bachelor’s degree in Engineering or Physics or equivalent coursework, and approximately two years of professional experience or graduate studies involving optical fiber data transmission.” Pet. 15–16 (citing Ex. 1005 ¶ 20). At this stage of the proceeding, Patent Owner does not propose a definition for the level of ordinary skill in the art, or otherwise dispute Petitioner’s definition. See generally Prelim. Resp. Petitioner’s definition appears consistent with the level of ordinary skill in the art reflected in the prior art, and we apply it for purposes of this decision. 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))). Further, based on the information presented at this stage of the proceeding, we consider Petitioner’s declarant, Dr. Ralph, qualified to opine from the perspective of an ordinary artisan at the time of the invention. See Ex. 1005 ¶¶ 5–11 (Dr. Ralph’s background and qualifications); Ex. 1036 (Dr. Ralph’s curriculum vitae).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“282(b).” 37 C.F.R. § 42.100(b) (2018).7 Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we expressly construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proposes that we construe the term “peak delay” recited in claim 1 of the ’027 patent. Pet. 14–15. Patent Owner does not challenge Petitioner’s proposed construction, but reserves the right to do so “at a later time.” Prelim. Resp. 10. Our resolution of the parties’ disputes does not turn on our interpretation of the term “peak delay.” Accordingly, it is not necessary to construe that term for purposes of this decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“forth a sufficient basis as to how an ordinarily skilled artisan would have arrived at the choosing step from Abbott’s disclosures and the knowledge of a POSITA, relying instead on conclusory statements from Dr. Ralph to bridge the gaps in Abbott. As Patent Owner highlights, and Dr. Ralph acknowledges, Abbott does not explicitly disclose that its MMF must be chosen based on the criterion in claim 1, i.e., choosing optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number. Prelim. Resp. 13; Ex. 1005 ¶ 164 (“Abbott does not explicitly teach choosing multimode optical fibers on the specific basis of calculating a negative DMD slope (or shift).”). Although Petitioner argues that such a choosing step would have been obvious, Petitioner does not direct us to sufficient evidence to support that argument. For example, Petitioner argues that “[a]s exhibited by Figures 2 and 3 of Abbott, the preferred embodiment of Abbott would always have a negative DMD slope when measured at a 850 nm wavelength.” Pet. 43 (emphasis added). Dr. Ralph testifies similarly. Ex. 1005 ¶ 162 (“As exhibited by Figures 2 and 3 of Abbott, the preferred embodiment of Abbot would always have a negative DMD slope when measured at a 850 nm wavelength.”). However, as Patent Owner highlights with its annotation to Figure 2, some portion of Figure 2 has an upward or positive slope. Prelim. Resp. 14; see Ex. 1006, 9:44–46 (explaining that the slope is upward or positive in a certain region of the DMD curve). And Petitioner does not explain how Abbott’s Figure 3, which depicts a DMD curve at a 1300 nm wavelength, supports its negative DMD slope argument.11 See Pet. 43. Thus, the record does not support Petitioner’s assertion that Abbott’s Figures 2 and 3 show that Abbott’s DMD slope would “always” be negative. 11 Like Figure 2, Figure 3 also has a positive slope in a certain region of the DMD curve, as Patent Owner’s annotation to the figure indicates. See Prelim. Resp. 14; Ex. 1006, Fig. 3. Moreover, although Petitioner argues that it would have been obvious for a POSITA to have chosen a MMF on the basis of calculating a negative DMD slope given Abbott’s disclosure, we agree with Patent Owner that Petitioner’s showing falls short on this record. Specifically, Petitioner does not direct us to a teaching or suggestion in Abbott of choosing a MMF based on the negative slope or DMD shift. Rather, Petitioner’s argument that “Abbott teaches the desirability of optical fibers exhibiting a negative DMD slope in telecommunications systems” (Pet. 44), appears to be the product of hindsight, coupled with Dr. Ralph’s conclusory testimony that the choosing step would have been obvious in view of Abbott’s teaching that its new MMF “has a variety of uses in the telecommunication industry.” Ex. 1005 ¶ 164 (quoting Ex. 1006, 4:1–6); see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016) (in reaching a conclusion on obviousness, “the court must avoid ‘hindsight bias and must be cautious of arguments reliant upon ex post reasoning’” (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”); 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts “is entitled to little weight”).” slip op. at 23
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027
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.