- Nespresso USA, Inc. v. K-Fee System GmbHInstitution deniedPTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,542,094 - PTAB · May 20, 2024 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–8 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been obvious over DiPerna964 and Strack.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine below that Fintiv factors 1–5 do not favor discretionary denial. Thus, we do not reach the issue of whether the merits are compelling. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential) (Board must first address Fintiv factors 1–5, and should engage the compelling merits question only if that analysis favors discretionary denial) (“CommScope”). 7. Balancing the Fintiv Factors Weighing against exercising our discretion to deny institution is factor 3 involving the parties’ limited investment and lack of substantive orders in the District Court litigation. Factor 4 concerning the limited overlap of the issues in the two cases also weighs against discretionary denial. Only factor 5, that Petitioner and the defendant in the District Court litigation are the same party, weighs in favor of discretionary denial. Factor 1 concerning the absence of a stay in the District Court litigation, and factor 2 concerning the close proximity between the start of trial in the District Court litigation and the estimated deadline for the final written decision, are neutral on the facts of this case. We therefore determine that the balance of factors 1–5 weighs against discretionary denial. Accordingly, we do not consider the issue of whether compelling merits have been shown under factor 6. See CommScope, Paper 23 at 4–5.2” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Pet. 9 (citing Ex. 1006, 23) (emphasis added). From this passage, we understand the “safety” switch to be “separate” from the panic button, not a part of it. This understanding is reinforced by claim 7 which depends from claim 1 and recites that the mobile device “further compris[es] a safety switch,” meaning it is a separate element from the panic button. Ex. 1001, 9:3–4. Thus, moving the safety switch into position readies the panic button, which is not the same as the panic button readying itself to perform functions in claims 1–8 of the ’404 patent. Patent Owner does not sufficiently address this issue in its assertions. See Prelim. Resp. 5–7. Patent Owner’s reliance on disclosures elsewhere in the ’404 patent is likewise not persuasive. Prelim. Resp. 5–6. For example, the ’353 application mentions “ready” in relation to using a self-defense mechanism such as pepper spray, which has not been shown to be related to the panic button. Ex. 1006, 5, 9–10. Although Patent Owner relies on the ’353 application’s description of voice activation using a codeword, voice activation does not ready the panic button for activation to perform functions, but actually activates the panic button to perform those functions. Prelim. Resp. 6 (citing Ex. 1006, 17). Petitioner thus met its burden here to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority. Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for this limitation, which it has not done on this record. Prelim. Resp. 5–7.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 1–8 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the ground set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–8 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18. DiPerna964 and Strack are directed to similar mobile devices for use in security and emergency situations. Id. at 16–17. Petitioner demonstrates sufficiently that a POSITA would have regarded Strack’s arming and timer technique as an improvement that would have been useful with DiPerna964’s mobile device (at least in some circumstances) to provide the user with additional time to evaluate whether triggering the 911 call is warranted. Id. at 17–18. This amounts to the use of a known technique to improve similar devices in the same way, which is a recognized rationale for combining prior art references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 417 (2007). Accordingly, on this record, Petitioner has presented a reasonable likelihood that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - PTAB · May 20, 2024 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 9–15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We do not agree with Patent Owner’s argument that Petitioner wrongly considered the parties’ investment in the parallel litigation as of when the Petition was filed as opposed to when the institution decision is made. Prelim. Resp. 21. Petitioner indicated that “investment in the parallel litigation will have remained low at the time of institution,” thus indicating the proper timeframe for consideration of this factor. Pet. 69. Although the parties have expended some resources in the District Court litigation, the evidence shows that the District Court has not issued any substantive orders, a Markman hearing has not yet been conducted, and expert reports have not been exchanged. Id. (citing Ex. 1035). Accordingly, this factor weighs against exercising our discretion to deny institution. Fintiv at 10; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential, designated May 7, 2019) (determining that “the advanced state of the district court proceeding is an additional factor that weighs in favor of denying the Petition,” where the district court proceeding was “nearing its final stages, with expert discovery ending” soon).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION In light of the foregoing, based on the current record and at this stage of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 9–15 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the grounds set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018); 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim”). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 9–15 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial and that the trial will commence on the entry date of this decision.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art (“POSITA”) at the time of the ’404 patent’s priority date would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 1-2 years of experience working with telematics systems (e.g. familiarity with wireless communications, geolocation systems, and human-computer interfaces). A greater amount of education in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience, and more years of work experience would compensate for less education. This is the appropriate level of skill, whether the claims are entitled to priority as of January 2005 or January 2019. Pet. 7–8 (citing Ex. 1002 ¶¶ 14–16). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that “no express constructions of the claims are necessary to assess whether the prior art reads on the [challenged claims]” and that “the claims should be given their plain and ordinary meaning.” Pet. 8. Patent Owner states that “at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’404 patent’s claim terms.” Prelim. Resp. 4. As Petitioner and Patent Owner do not dispute the meaning of any claim term at this time, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). We address claim interpretation to the extent necessary in our obviousness analysis below.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - Nespresso USA, Inc. v. K-Fee System GMHBNo claims unpatentablePTAB · Apr 10, 2024 · IPR2022-01574 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 were not shown unpatentable because the asserted combinations did not teach or render obvious the claimed groove entirely to the side of the chamfered mandrel.
RulingsFinal written decision- Skill levelSkill level board ownPatent owner expert discountedDecided for patent owner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Expert testimonyPatent owner expert discountedDecided for petitioner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the information above, we conclude that the limitation “a groove that is laterally offset from the chamfered mandrel” requires the groove to be entirely to the side of any part of the mandrel. This construction is consistent with the words of the claim—the claim states that the groove is laterally offset from, or to the side of, the chamfered mandrel, not merely offset from a portion of or the centerline of the mandrel. This construction is also consistent with the one embodiment describing the relationship between the mandrel and groove containing the seal, which depicts the groove entirely to the side of the chamfered mandrel. We do not accept Mr. Jobin’s testimony that laterally offset is determined relative to the centerline of an object. Neither the intrinsic record nor other extrinsic evidence provides support for Mr. Jobin identifying the centerline of an object as the reference point for determining if a point is laterally offset from the object.” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not agree with Petitioner that Yoakim teaches a groove that is laterally offset from the chamfered mandrel. As we indicated in our claim construction section, we construe the claim term to require the groove to be entirely to the side of any part of the mandrel. We agree with Patent Owner that, as depicted in Yoakim’s Figure 35, the alleged groove is not entirely to the side of any part of the mandrel. See Pet. 69; see also Pet. Reply 19 (showing the alleged groove, in red, including a portion over the chamfered mandrel); PO Resp. 55 (same). Even if Petitioner’s position is that all of the groove must be to the side of the centerline of the mandrel, Petitioner fails to prove that Yoakim teaches such a structure. As seen in Petitioner’s illustration at page 19 of Petitioner’s Reply (reproduced above), a small portion of the groove (which Petition colorizes in red) is to the left of the centerline (shown in green). See Pet. Reply 19.” slip op. at 40
Patent outcomesUS 11,254,491 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,254,491 - Crusoe Energy Systems, LLC v. Upstream Data Inc.Institution deniedPTAB · Mar 29, 2024 · PGR2023-00052 · APJ Matthew S Meyers · PGR · Institution
Institution was denied because Petitioner did not show it was more likely than not that claims 1–41 were unpatentable under any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that claim 1 is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disagrees with Petitioner’s articulation of the level of ordinary skill in the art, but does not offer a definition of its own. Prelim. Resp. 5. According to Patent Owner, “[t]his Petition and related declaration propose two alternative levels of ordinary skill in the art, where the second alternative does not require any formal education or any experience in the field of oil or gas production.” Id. While Patent Owner disagrees with Petitioner’s characterization of the level of ordinary skill in the art, Patent Owner does not explain how a different level of skill is likely to alter Petitioner’s analysis. Instead, Patent Owner contends that it “applied Petitioner’s articulation and confirmed the analysis detailed below would not change based on disagreements over the level of ordinary skill in the art.” Id. (citing Ex. 2101 ¶¶ 16–17). 8 To the extent necessary, and for purposes of this Decision, we accept Petitioner’s statement on the level of skill in the art. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the meanings of the claim terms “blockchain mining devices,” “mining processor,” and “adapted to mine transactions” are inextricably linked with Petitioner’s indefiniteness grounds, we will address the meaning of those terms in the context of the parties’ arguments to the extent necessary to resolve the controversy as set forth below in Section III.C. Similarly, we will address the parties’ arguments regarding the disputed means-plus-function limitations in our discussion of 35 U.S.C. § 112(f) as set forth below in Section III.E. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not shown unpatentable
“To satisfy the definiteness requirement of § 112(b), a patent’s claims must, when “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910. We are not persuaded that the Petition shows that it is more likely than not that Petitioner would prevail in demonstrating that the term “blockchain mining devices,” as recited by independent claims 1 and 24, is indefinite. As an initial matter, we agree with Patent Owner that “Petitioner’s indefiniteness theory is flawed because its ‘alternative interpretations’ are of its incorrect claim construction rather than the claim language in view of the specification as required by Nautilus.” Prelim. Resp. 13. We find the Specification informs, with reasonable certainty, those skilled in the art about the meaning of the term “blockchain mining devices.” The 18 Specification informs us that “each blockchain mining device 12 may be composed of suitable components. The blockchain mining device 12 may have a network interface, such as network equipment 88, and one or a plurality of mining processors 92 (92A-92E for example).” Ex. 1001, 15:21–25. And, claim 1 recites that the “blockchain mining devices [are] connected to the generator” and “each have a mining processor and are connected to a network interface.” Id. at 19:59–62. Thus, reading the term “blockchain mining devices” in light of the language of the claim and the Specification, an ordinarily skilled artisan would have understood “blockchain mining devices” to mean a device composed of, for example, a network interface and one or more processors. Id. at 15:21–25, 19:59–62.” slip op. at 18
Claim construction§ 112 disclosureDiscretionary denialPatents in suitUS 11,574,372 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). 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.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01319 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–27 based on a reasonable likelihood that claims were obvious over Crossley and Albers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner requests that we exercise discretion to deny the Petition under 35 U.S.C. § 325(d). Prelim. Resp. 14–25. We decline. Contrary to Patent Owner’s argument, we do not perceive Crossley as “cumulative” of Weaver. Id. at 17–20. Crossley explicitly describes two separate fluid delivery lines as follows: [Fluid distribution] Lines 428 and 428′ are preserved for the delivery of chemicals, such as hydrate inhibition fluids. Chemicals may be delivered from the lines 428, 428′ and then through the manifold 115 for treatment of flow lines, valves, and even the wellbores as appropriate. a disclosure. Thus, Patent Owner does not persuade us that exercising our § 325(d) discretion is appropriate where, on their face, the asserted references do not appear to be cumulative of the references cited during prosecution.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The paragraphs highlighted by Patent Owner include extensive citations in support of the statements made by Dr. Nikolaou. For example, paragraph 95 of Dr. Nikolaou’s declaration includes four citations to three different documents and refers back to a prior paragraph in the declaration. The noted paragraphs all appear to include support in the evidence of record. Further, Patent Owner only provides a general allegation without discussing any particular paragraph or opinion. Thus, it is unclear which opinions Patent Owner considers conclusory. Further, whether the declaration and Petition include similar or even identical statements is not a reason, by itself, to give the declaration little to no weight. As noted by Patent Owner (Prelim. Resp. 47–49), it is only when these statements are conclusory that they should be given little to no weight. See, e.g., TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination”). For these reasons, and at this stage, we decline Patent Owner’s invitation to give little to no weight to Dr. Nikolaou’s testimony as a whole.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had: at least a bachelor of science in chemical engineering, mechanical engineering, materials science, or metallurgical engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. A person having [more] education but less professional experience, and vice versa, may . . . also qualify as a POSITA. Pet. 3–4 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this. Prelim. Resp. 2. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’394 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,841,394 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 25, 2024 · IPR2023-01314 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17
- PTAB / AIA Trials › Discretionary denialNot reached
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’553 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 43–48.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Regarding the preambles of independent claims 1 and 22, as well as the claim term “excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation,” Petitioner asserts that it “applies the claim construction previously adopted by the district court in the co-pending litigation.” Pet. 9–10. Petitioner asserts that “the parties agreed that the preambles of independent claims 1 and 22 are limiting, and the district court adopted this construction in its order.” Id. at 9–10 (citing Ex. 1011, 2 (district court claim construction order)). Petitioner also asserts that “the district court adopted Patent Owner’s preferred construction of [‘excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation’]: ‘excluded volume in space that is common to both the first and second 3D representations where no surface from either of the 3D representations should be present.” Id. at 10 (citing Ex. 1011, 2). Patent Owner does not respond other than to repeat Petitioner’s assertions regarding the district court’s claim constructions. Prelim. Resp. 9. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,064,553 - Omega Liner Company, Inc. v. Buergofol GmbHInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01402 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 would have been obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Those arguments are insufficient to support trial institution because neither Petitioner nor Dr. MacLean sufficiently explains why an ordinarily skilled artisan would have been interested in selecting a material capable of withstanding temperatures “incurred when using a heat-based curing process.” Id. To the contrary, elsewhere in the Petition, Petitioner consistently and repeatedly identifies UV-radiation curing (as opposed to heat-curing) as providing the impetus for selecting and combining other features from Glover and Brandenburger to attain a modified insertion tube that meets the challenged claims. Pet. 20–41 (relying on UV-radiation curable resins and UV-radiation curing). Critically lacking on this record is any explanation why an ordinarily skilled artisan would have been led to select one structural feature of the invention (the required “layer (a)” material, Ex. 1001, 14:50) to facilitate a heat-curing process, where the reasons for selecting every other structural feature of the invention are keyed to facilitating a UV-radiation curing process.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disagrees, arguing that Petitioner’s proposed definition “completely ignores having any experience” within the field of “an insertion tube suitable for the renovation of subterranean pipes.” Prelim. Resp. 17. In Patent Owner’s view, the ordinarily skilled artisan would have had “some knowledge and experience in the end-use performance of polymeric films and sheet products” and, moreover, “would not necessarily have experience in the formulation or manufacturing of” those films and products. Id. On that basis, Patent Owner proposes modifying Petitioner’s definition by deleting “experience in the formulation or manufacturing of polymeric films and sheet products.” Id. The prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Each asserted reference in this case refers to manufacturing or formulating processes for polymeric materials useful in subterranean pipe renovation, which supports Petitioner’s proposed definition. See Ex. 1005, code (57), 3:33–4:58; Ex. 1006, code (57), 1:56–2:46, 4:8–41; Ex. 1007, code (57), 4:19–63; Ex. 1009, code (57), 2:28–3:5. Only Petitioner’s definition, moreover, is supported by declaration testimony. Pet. 3 (citing Ex. 1003 ¶ 23). In our analysis, therefore, we apply Petitioner’s definition, but note that neither party indicates that the result on institution would change under Patent Owner’s slightly different definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits that “[n]o formal claim construction [is] necessary” for purposes of deciding whether to institute review. Pet. 19. Patent Owner does not address claim construction, except to observe that “Petitioner proposes no construction of the claims.” Prelim. Resp. 17. On this record, no express claim construction is necessary. This Decision turns on the sufficiency of Petitioner’s showing that the asserted prior art suggests an internally situated tube having “a layer (a),” as specified in claim 1, which is characterized by a “VICAT softening point” that “is at least 100˚C.” Ex. 1001, 14:50–63. Neither party argues that the result would change in this case based on the meaning applied to those terms. See Pet. 19; Prelim. Resp. 17.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Those arguments are insufficient to support trial institution because neither Petitioner nor Dr. MacLean sufficiently explains why an ordinarily skilled artisan would have been interested in selecting a material capable of withstanding temperatures “incurred when using a heat-based curing process.” Id. To the contrary, elsewhere in the Petition, Petitioner consistently and repeatedly identifies UV-radiation curing (as opposed to heat-curing) as providing the impetus for selecting and combining other features from Glover and Brandenburger to attain a modified insertion tube that meets the challenged claims. Pet. 20–41 (relying on UV-radiation curable resins and UV-radiation curing). Critically lacking on this record is any explanation why an ordinarily skilled artisan would have been led to select one structural feature of the invention (the required “layer (a)” material, Ex. 1001, 14:50) to facilitate a heat-curing process, where the reasons for selecting every other structural feature of the invention are keyed to facilitating a UV-radiation curing process.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,794,269 - PTAB · Mar 19, 2024 · IPR2023-01372 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1, 3–7, and 10–13 on all asserted grounds, finding a reasonable likelihood of prevailing on the Hummel–Schuhmann and Hummel–Nagai obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the above reasons, we determine that Petitioner establishes “a reasonable likelihood” of prevailing with respect to claims 1, 10, and 11 based on the ground that asserts obviousness over Hummel and Schuhmann. 35 U.S.C. § 314(a).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also adequately explains why an ordinarily skilled artisan would have been led to apply Schuhmann’s coating to the external surface of Hummel’s insertion tube; namely, “to provide a good release effect between the inner tubular film and the cured carrier material to prevent ‘tearing’ of the inner tubular film as desired by Hummel.” Id. at 43 (citing Ex. 1003 ¶ 194; Ex. 1005, 23:1–3). Accordingly, on this preliminary record, Petitioner shows sufficiently that independent claim 1 is unpatentable as obvious over the combined disclosures of Hummel and Schuhmann. Petitioner also shows sufficiently that dependent claims 10 and 11, which relate to applying a lipophilic migrating compound, such as a wax, over the external side of a tubular film, are unpatentable based on this ground. Id. at 49–51 (and evidence cited therein).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“that appear in claim 1. Even on this preliminary record, we have concerns about whether a migrating compound incorporated into an inner tubular film is “a coating or covering” of that film within the scope of claim 1. See id. at 30 (citing Ex. 1003 ¶ 134) (Petitioner’s reliance on extrinsic evidence to show that waxes migrate to the surface of the inner tubular film and, thereby, create “a ‘coating’” on that structure). To the contrary, claim 1 expressly requires that “the coating is applied over a section or an entire circumferential area of the outer facing external side” of the inner tubular film. Ex. 1001, 20:34–36 (Board’s emphasis). We need not resolve that issue, however, for purposes of deciding whether to institute review. See Nidec Motor Corp., 868 F.3d at 1017. Petitioner proposes two grounds that do not depend on a finding that a migrating compound incorporated into a film is “a coating or covering” as specified in claim 1, but instead are based on prior art that allegedly teaches a migrating compound applied over a film to satisfy the second, alternative prong of Petitioner’s proposed definition. Ex. 1001, 20:32; see Pet. 42–44, 55–57 (proposing that a coating containing a wax, as disclosed in Schuhmann or Nagai, would have been applied over the external surface of Hummel’s insertion tube).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,657,882
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.