- MPL Brands NV, Inc. v. Buzzballz, LLCInstitutedPTAB · Jan 27, 2025 · IPR2024-01098 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all challenged claims 1–6 based on all asserted grounds, finding a reasonable likelihood that Kick anticipates or renders them obvious.
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.” After considering the briefing and cited evidence of record in view of this standard, we institute an inter partes review. The following preliminary findings of fact and conclusions of law are made solely to determine whether to institute review. Any final decision will be based on the full trial record.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“challenged claims 1, 2, and 6 lack adequate written description support in the ’934 application as filed. See Pet. 10–11. The specification, figures, and claims as originally filed do not disclose any volume limitations. See Ex. 1004 (’934 prosecution history), 1–17. Instead, the volume limitations recited in the challenged claims find their first support in Figure 7, which was filed over one month after the ’934 application was originally filed. Compare id. at 1–17, with id. at 34–56. The addition of new matter during prosecution of a patent application is prohibited. See 35 U.S.C. § 132(a) (“No amendment shall introduce new matter into the disclosure of the invention.”); see also 37 C.F.R. § 1.121(f); Manual of Patent Examining Procedure (“MPEP”) § 608.04. Therefore, we agree with Petitioner that “the new matter improperly added during the prosecution of the ’934 application cannot be considered part of the disclosure of the original, April 19, 2010 application and/or relied upon for claiming priority in subsequent applications.” Pet. 9.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“prosecution history), 34. We agree with Petitioner that “any claims in the subsequent applications that recite the new matter [are] entitled to, at the earliest, a priority date of February 25, 2020—the filing date of the ’195 application.” Pet. 10. As discussed above, challenged claims 1, 2, and 6 recite volume limitations that first find adequate support in Figure 7 of the ’195 application. Accordingly, on this record (and after consideration of Patent Owner’s arguments, discussed below), we determine that the priority date of the challenged claims is no earlier than the February 25, 2020, filing date of the ’195 application. Id. at 10–11. We agree with Petitioner that “Kick is prior art under 35 U.S.C. § 102(a)(1) with respect to the claims of the ’904 patent because it was published more than one year before the February 25, 2020, priority date of the challenged claims.” Pet. 16.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“On this record, we find that the issues the parties raise regarding limitation [1z] are highly fact-intensive and implicate genuine issues of material fact that are more appropriately resolved on a fully-developed record. Accordingly, on this record we reserve judgment on these arguments, to allow the record to develop during trial.” slip op. at 30
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,738,904 - PTAB · Jan 23, 2025 · IPR2024-01157 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–9 across all petition grounds, finding a reasonable likelihood of success on at least one claim, including anticipation of claim 1 by Schaffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. For reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’011 patent’s challenged claims. We institute inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We need not at this time expressly construe the term “filament” in the manner urged by Petitioner. We agree with Petitioner that a filament as claimed encompasses one or more threads, lines, cords, ropes, ribbons, flat wires, sheets, or tapes. The ’011 patent lists those structures explicitly, but suggests those are only examples and, thus, the term “filament” may be broader than those structures. Ex. 1001, 9:18–20 (“In some embodiments, the filament 150 can comprise one or several threads, lines cords, rope, ribbon, flat wire, sheet, or tape.”) (emphasis added). As noted above, Patent Owner also does not disagree that the claimed “filament” encompasses the listed structures. We need only construe terms to the extent necessary to resolve the controversy. Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)) (emphasis omitted). “Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (internal quotation marks omitted). slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to combine Schaffer and Hartley with a reasonable expectation of success. Pet. 35–40. For example, according to Petitioner, a POSA would have regarded a substitution of Schaffer’s U-shaped members for Hartley’s string as little more than a substitution of known hemostasis-valve features with known (and similar) functions to yield a predictable result. Pet. 35–36. Petitioner’s position is supported by Mr. Thornton’s testimony (unrebutted at present) that, in the field of fluid stasis valves, “[t]here were a finite number of ways to compress the resilient material in a stasis valve to create a seal in September 2017” and “Hartley and Schaffer disclose two such methods” that operate in similar and predictable ways to constrict the central lumen to form a seal. Ex. 1003 ¶¶ 82–83. We agree at this time that the proposed technique for coupling Hartley’s string to Schaffer’s actuator buttons would have been a “simple modification” within the ordinary capabilities of the skilled artisan. Id. ¶ 84 (noting a “simple” knotting attachment); see also Ex. 1007, 14:37–54 (suggesting skilled flexible wire to an actuator or housing of a fluid stasis valve). We also agree with Petitioner at this time that the POSA would have considered a more flexible filament (e.g., Hartley’s string or Eller’s wire) as providing expected benefits insofar as such a filament may more precisely and uniformly constrict the lumen against inserted tools of different sizes and shapes. Ex. 1006 ¶ 37 (Hartley’s string can “close over a range of diameters of devices passed through the valve or can close completely down and be self sealing”); Ex. 1003 ¶¶ 80–81.” slip op. at 36
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,697,011 - PTAB · Jan 13, 2025 · IPR2024-01162 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–7, 9–13, and 15 on all asserted grounds, finding a reasonable likelihood of success on claims 1 and 9 over Butler and Jianan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–7, 9–13, and 15. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes 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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 2. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 12; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On the current record, Petitioner adequately explains the reasons to combine Butler with Jianan to arrive at the first two alternative devices. The discussion on the reasons to combine Butler and Jianan spans over nine pages of the Petition, with approximately twenty paragraphs of the Giachetti Declaration supporting that discussion. See Pet. 13–22; Giachetti Decl. ¶¶ 78–98. Patent Owner selects one statement from Petitioner’s discussion and asserts that that single statement is inadequate. Moreover, Patent Owner relies on mere conclusory attorney argument as to the alleged technical issues that would have been identified by one of ordinary skill in the art. See Elbit Sys., 881 F.3d at 1359. On the current record, we determine that Petitioner has made a sufficient showing that a person of ordinary skill in the art would have had reason to modify Butler and Jianan as proposed and that the articulated reasoning is supported by rational underpinning, at least as to the first two alternative devices (as discussed above).” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,903,546 - PTAB · Jan 13, 2025 · IPR2024-01151 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–18. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes 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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 2. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 13; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, Petitioner adequately explains the reasons to combine Dimbylow and Howes. The discussion on these issues spans eight pages of the Petition, with approximately nine paragraphs of the Giachetti Declaration supporting that discussion. In contrast, Patent Owner relies on mere conclusory attorney argument as to the Petition’s alleged failings. See Elbit Sys., 881 F.3d at 1359. Moreover, the relied-upon prior art need not expressly teach or suggest the proposed combination and also need not identify modified components as a “problem.” See KSR Int’l, 550 U.S. at 418 (discussing how the obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Second, Patent Owner argues that because Dimbylow discloses a hand vacuum and Howes discloses an upright vacuum with no attachable cleaning tool, “there is no evidence a [person of ordinary skill in the art] would have looked to Howes to fill in alleged gaps in Dimbylow.” Prelim. Resp. 14–15. On the current record, this argument does not identify a deficiency in Petitioner’s position. As an initial matter, Patent Owner has not adequately explained why the overall form factor of the devices in the relied-upon prior art—i.e., a hand vacuum versus upright vacuum—would impact the motivation to combine when the aspects relied on from Howes relate more narrowly to structures allowing opening of dust collection units (a problem common to both hand vacuums and uprights). See, e.g., Pet. 18 (discussing why one of ordinary skill in the art “would have been particularly motivated to look at similar references (including cyclonic vacuum-cleaner references having the same assignee, Dyson) that teach mechanisms to release a similar component (door catch) on a similar device (dirt collection chamber) to accomplish a similar goal (hygienic and convenient bin emptying)” (citing Giachetti Decl. ¶ 84)); see also In re Paulsen, 30 F.3d 1475, 1481–82 (Fed. Cir. 1994) (affirming rejection of a laptop computer hinge as obvious over hinged cabinets, piano lids, etc., because the “problem is not unique to portable computers”). Patent Owner’s conclusory statement that “no evidence” has been presented does not address Petitioner’s positions.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,910,984 - MPL Brands NV, Inc. v. Buzzballz, LLCInstitutedPTAB · Dec 18, 2024 · PGR2024-00035 · APJ Cynthia M Hardman · PGR · Institution
The Board instituted PGR on all asserted grounds after finding the patent eligible for PGR and each challenged claim more likely than not unpatentable under at least one obviousness ground.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level). However, we find some ambiguity in the last sentence of Petitioner’s proposal (“A POSITA could substitute additional education for industry experience and vice versa.”) because the reference to “additional education” is not tethered to relevant education. Accordingly, we modify the last sentence of Petitioner’s proposal to clarify that the additional education must be relevant. Thus, we restate that for purposes of this Decision, a person of ordinary skill in the art of the ’441 patent would have had: (i) an associate’s or bachelor’s degree in mechanical, industrial or manufacturing engineering and (ii) at least two to three years of practical experience with designing or manufacturing mechanical products such as food or beverage packaging. A POSITA could substitute additional relevant education for practical experience and vice versa. B. Post-Grant Review Eligibility As a threshold matter, we must determine whether Petitioner has” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“In view of the evidence discussed above, we agree with Patent Owner that there is adequate written description support for a transparent container body such that a depression in the container base is “visible through at least a portion of the container body,” as recited in claims 9, 10, 15, and 16. Prelim. Resp. 9. Regarding Petitioner’s assertion that the ’441 patent does not disclose “a transparent/translucent liquid” (Pet. 7), we again disagree. As Patent Owner points out, “the ’441 Patent mentions beverages, such as ‘beer and soda,’ as liquids for which the claimed container would be suitable.” Prelim. Resp. 10 (quoting Ex. 1001, 1:25–27). Patent Owner demonstrates that a person of ordinary skill in the art “would have recognized that beer is typically see-through, or translucent.” Id. (citing Ex. 2012 (Till) ¶ 24 (discussing an inspection apparatus for bottles that “are filled with a transparent liquid (e.g. beer, table water, mineral water, wine etc.)”); Ex. 2013 (Schnuckle) ¶ 8 (noting “translucent to transparent liquids such as water, soda, juice, or the like”)). We agree with Patent Owner that the ’441 patent’s identification of “beer and soda as beverages the described and claimed container was intended to hold” provides adequate written description support “for having transparent or translucent liquids within the container.”12 Prelim. Resp. 10. For the reasons discussed above, on this record Petitioner has not demonstrated that claims 9, 10, 15, and 16 include subject matter having a November 10, 2023, priority date. Thus, Petitioner has not demonstrated that the ’441 patent is eligible for post-grant review under AIA § 3(n)(1)(A).” slip op. at 15
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner’s arguments are unavailing. As an initial matter, Mr. Kirkpatrick is opining about a design patent application, and Patent Owner has not established that Mr. Kirkpatrick possesses the education and experience of a designer of ordinary skill in the art of ornamental aspects of containers for storing liquids or solids. See Ex. 2001 ¶ 5 (implying that Mr. Kirkpatrick is a generalist whose experience with design patents is in preparing formal drawings of designs invented by others).17 For this reason alone, on this record we accord Mr. Kirkpatrick’s declaration little weight on the question of whether the ’195 parent application provides adequate written description support for originally-filed Figure 2 of the ’813 design application. See, e.g., Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case . . . a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.”). Even if Mr. Kirkpatrick’s opinions were relevant, they would not change our conclusion regarding lack of adequate written description. Mr. Kirkpatrick attributes the differences between the drawings to “choices in drafting strategy of the respective illustrators,” such as how to use “contour lines to illustrate sloped surfaces” and how much detail to include for well-known features like pop-tops. See Ex. 2001 (Kirkpatrick Decl.) ¶¶ 19, 23–24, 28–32.18 These arguments are unavailing. First, there is no evidence of record indicating that the figures in the ’195 parent application and ’813 design application were created by different illustrators. Second, 17 Patent Owner also has not established that Mr. Kirkpatrick possesses the education and experience of a person of ordinary skill in the art of the ’441 patent, as we have defined it here. Supra Section II.A. 18 Mr. Kirkpatrick’s analysis of a photograph of a can submitted by the applicant during prosecution (see Ex. 2001 (Kirkpatrick Decl.) ¶¶ 25–32) is additionally unavailing because there is no evidence of record indicating that the patent illustrator(s) used this particular photograph or the depicted can to create the patent illustrations. we agree with Petitioner that even if different illustrators employ different drafting strategies, this “does not absolve Patent Owner’s responsibility not to add new matter.” Prelim. Reply 6.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the ’441 patent is eligible for post-grant review, we turn to an analysis of whether the Petition demonstrates “that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). C. Petitioner’s Grounds of Alleged Unpatentability As noted above in Section I.E, Petitioner asserts four different obviousness grounds. At this stage of the proceeding, Patent Owner does not address the merits of Petitioner’s obviousness grounds. See generally Prelim. Resp. For the reasons discussed below, we determine that Petitioner has demonstrated that it is more likely than not that the challenged claims are unpatentable based on the asserted grounds.” slip op. at 34
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,932,441 - PTAB · Nov 19, 2024 · IPR2024-00938 · APJ Eric C Jeschke · IPR · Institution
The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding 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
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–15. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes 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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or a similar field and 2–3 years of experience in machine design, including machines that include fluid dynamics or fluid paths, such as vacuum cleaners.” Pet. 9. Petitioner also states that “[a]dditional education could offset less experience and vice versa, and [one of ordinary skill in the art] could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 3. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 9; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“[W]e conclude that while “common sense” can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching. And, this is particularly true where the missing limitation goes to the heart of an invention. Arendi, 832 F.3d at 1363. These statements indicate that “common sense” or “common knowledge” may supply a missing limitation if a “searching” reasoned analysis is provided, along with adequate evidentiary support.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,389,038 - PTAB · Nov 19, 2024 · IPR2024-00950 · APJ Eric C Jeschke · IPR · Institution
Instituted inter partes review of claims 1–25 on all asserted grounds after finding 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
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–25. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes 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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or a similar field and 2–3 years of experience in fluid dynamics and/or machine design for devices related to fluid dynamics, such as vacuum cleaners.” Pet. 13. Petitioner also states that “[a]dditional education could offset less experience and vice versa, and [one of ordinary skill in the art] could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 2. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 13; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner adequately explains the reasons to combine Butler and Oh and the nature of the proposed modifications at this stage of the proceeding. The discussion on this issue spans seven plus pages of the Petition, with approximately sixteen paragraphs of the Giachetti Declaration supporting that discussion. In contrast, Patent Owner relies on mere conclusory attorney argument as to the Petition’s alleged failings. See Pearson, 494 F.2d at 1405. At this stage of the proceeding, without countervailing testimony, we need not and do not determine the sufficiency of Dr. Giachetti’s testimony on these issues. Second, Patent Owner argues that Petitioner “manufacture[s] disclosure in Butler, asserting that a ‘[person of ordinary skill in the art] would have been motivated by Butler’s express teachings that it is beneficial to “service” the pre-motor filter.’” Prelim. Resp. 19–20 (quoting Pet. 81; Ex. 1005, 7:27–28, 8:15–17). According to Patent Owner, “[n]either of the cited portions of Butler discuss servicing the pre-motor filter.” Id. at 20. Although Patent Owner is correct that neither of the two passages highlighted expressly references servicing the pre-motor filter, the second passage discloses “the need to service . . . filters,” including post-motor filter 112 “or other filters in the device.” Ex. 1005, 8:15–17 (emphasis added), cited at Pet. 81. Patent Owner quotes but fails to address the reference to “other filters” as part of this argument. See Prelim. Resp. 20. Third, Patent Owner asserts that one of ordinary skill in the art would” slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,080,472 - PTAB · Nov 15, 2024 · IPR2024-00851 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all claims 1–7 because the Petition did not show a reasonable likelihood of prevailing on any challenged ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–7. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“claim element creates a rebuttable presumption that § 112[(f)] applies” and that “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112[(f)] does not apply.”12 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part) (internal citations omitted). Because the “sealing means” limitation includes the word “means,” we start from the rebuttable presumption that § 112(f) applies. Petitioner does not address the applicability of § 112(f) and does not rebut the presumption. We continue the analysis, however, and, for the reasons below, we agree with Patent Owner that § 112(f) applies to the “sealing means” limitation.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “fits behind” In wherein clause (vi), claim 1 recites: “the outwardly pointing outer flange of the first connecting device fits behind the inner flange of the nut unit.” Ex. 1001, 9:4–5 (emphasis added). In the Preliminary Response, Patent Owner discusses the term “fits behind” in this claim language. See Prelim. Resp. 41–45. We need not construe explicitly this language or any other claim terms because doing so would not change the outcome of the analysis. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,851,030 - PTAB · Nov 12, 2024 · IPR2024-00854 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that claims 1 and 9 are obvious over Peter and Neroni.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention (“POSA”). Id. at 13, 17. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or a similar field and 2-3 years of experience in machine design, including machines that include fluid dynamics or fluid paths, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Ex. 1002 ¶ 36; see also Pet. 9 (making the same assertion without citation to declarant). Patent Owner does not contest the level of skill. Prelim. Resp. 3. We are persuaded, on the present record, that the proposal of Petitioner’s declarant is consistent with the problems and solutions in the ’030 patent and prior art of record. We adopt the above definition of the level of skill for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner, nor Patent Owner, provides any express claim constructions. See Pet. 9–10; Prelim. Resp. 3. We agree that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On the current record, we find that the Petition provides sufficient rationale to modify Peter in view of Neroni. See Pet. 57–61 (citing Ex. 1002 ¶¶ 208–217). For example, Petitioner contends that one of ordinary skill in the art would have been motivated to incorporate Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool in order to “improve cleaning . . . by agitating the surface being cleaned.” Pet. 60 (citing Ex. 1007, 1–2; Ex. 1002 ¶ 215). Petitioner explains that Neroni establishes that “powered cleaning tools were common” in the prior art (id. (citing Ex. 1008, 1:17–49; Ex. 1002 ¶ 215)), and, relying on the declaration testimony of Dr. Giachetti, argues that one of ordinary skill in the art would have “understood the well-known benefits of a powered floor tool and would’ve been motivated to incorporate Neroni’s electrical system into Peter to achieve these benefits” (id. (citing Ex. 1002 ¶ 216). Patent Owner argues that one of ordinary skill in the art would not have been motivated to combine the vacuums taught by Peter and Neroni because they “are directed to different types of vacuum cleaners” and “each [is concerned with] solving different problems with their respective vacuum cleaners.” Prelim. Resp. 17. However, other than pointing out that the vacuum cleaners in Peter and Neroni are different, Patent Owner itself provides conclusory statements, and fails to adequately explain what these differences are, or why they would deter one of ordinary skill in the art from combining the two references with a reasonable expectation of success. Patent Owner does not argue, and we see no reason to believe, that incorporating Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool is not within the ability of one of ordinary skill in the art. See KSR Int’l Co., 550 at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, on the current record, we determine that Petitioner has provided sufficient arguments and evidence to support its assertion that one of ordinary skill in the art would have been motivated to combine Peter and Neroni. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Based on the current record, we further determine that Petitioner has demonstrated a reasonable likelihood of showing that the combination of Peter and Neroni teaches the electrical connector limitations listed above.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,478,030 - PTAB · Oct 8, 2024 · IPR2024-00642 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 7, 10–13, 15–18, and 20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the pre-institution filings “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’473 patent on all challenges set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“We begin by interpreting Petitioner’s proposal as to the level of skill in the art, which refers to having a bachelor’s degree and “at least 2 years of experience in product design and development in the field of griddle cooking stations and/or outdoor cooking grills” or no degree and at least 5 years of such experience. See Pet. 15. Because the proposal does not specify the source of the “experience,” we agree with Petitioner that the proposal does not require design and development experience that stems “from working for a company in the griddle or grill industry” and that “the relevant design experience can come from any source, including designing and developing griddles in academia as well as teaching students.” Prelim. Reply 5. Patent Owner does not dispute Petitioner’s arguments on these points and, as noted, adopts the wording of Petitioner’s proposal as its own. See Prelim. Sur-reply 3–4; Prelim. Resp. 12. For purposes of this Decision, we also adopt the wording of Petitioner’s proposal as our own, and note that the relevant design experience can come from any source.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“On this record, we decline to adopt Patent Owner’s proposed construction of “rib” that requires “an elongated raised piece of strong or thick material across a surface or through a structure, serving to support or strengthen the structure.” Prelim. Resp. 13. Several reasons support this conclusion. First, none of the claim language supports Patent Owner’s proposed construction. The claims require a “front rib” and “multiple lateral ribs” that define “heating regions” between the laterally-spaced ribs that “funnel” heat from the gas burners away “from a rear side of the cooking station.” See Ex. 1001, claims 1, 10. None of this language refers to the ribs as “strong” or “thick” such that they serve “to support or strengthen the structure” as required by Patent Owner’s construction. See id. Second, the specification repeatedly describes the ribs as performing the function described in the claims, i.e., a structure for “venting or channeling convection heat” from the burners. Ex. 1001, 7:3–8; see also id. at 7:54–63, 8:46–65, 9:10–29, 10:31–38, 10:51–58. Patent Owner points to portions of the specification that discuss the ribs also providing structural rigidity to prevent warping, but we agree with Petitioner that the cited portions relate to an optional embodiment where the ribs “may also serve as stabilizers.” Ex. 1001, 7:51 (emphasis added). Because we generally do not read in such optional, functional features of a claimed structure to a claim limitation, we find the portions of the specification cited by Patent Owner do not support its proposed construction. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015). For similar reasons, we are unpersuaded by Patent Owner’s argument that Figure 4 supports its construction merely because it discloses ribs that may be viewed as consistent with Patent Owner’s proposed construction. See Prelim. Resp. 13–14; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07 (Fed. Cir. 2003) (“[T]he mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration.”). Based on our review of the claim language and specification, we view the limitations Patent Owner seeks to add via its proposed construction as optional aspects of the claimed ribs. Because we find insufficient support for Patent Owner’s proposed construction in the intrinsic evidence, we find no reason to resort to extrinsic evidence, such as the dictionary definitions proffered by Patent Owner or the background art discussed by Petitioner. See Seabed Geosolutions, 8 F.4th at 1287. Further, even if we agreed with Patent Owner that the claimed ribs must have some thickness and provide some support and strength to the structure, we still would not adopt Patent Owner’s proposed construction because it would introduce unnecessary ambiguity into the claims. For example, Patent Owner’s construction refers to a “piece of strong or thick material,” which would mean that the rib limitation may cover strong and thin material or thick and weak material, but Patent Owner has not supported a construction that expressly covers such structures due to the inclusion of the term “or” in its construction. See Prelim. Resp. 13 (emphasis added). In addition, the references to “strong” and “thick” in the proposed construction have no reference point, and it remains unclear, based on the claim language and specification, how strong and/or thick a rib must be to provide “support” and “strength” to the structure to prevent warping or otherwise meet the proposed construction. See id. Because Patent Owner’s proposed construction lacks sufficient clarity, we do not adopt it. Based on the foregoing, we decline to adopt Patent Owner’s construction at this stage of the proceeding and apply the ordinary meaning to the term “rib” in the challenged claims.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“Based on the current record, we find Petitioner’s arguments as to these “rib” limitations persuasive. Williams discloses longitudinally extending front dam 42 corresponding to the front rib and longitudinally extending sidewalls 44 that correspond to the claimed lateral ribs. See Pet. 19–20. Williams states that “[t]he presence of the perimeter wall (front dam 42, rear dam 46, and sidewalls 44) helps create the upper zone 40 where the portion of the hot combustion gases are at least temporarily trapped.” Ex. 1005, 3:65–4:2. Based on the current record, Petitioner establishes that front dam 42 and sidewalls 44 correspond to the claimed “front rib” and “lateral ribs” limitations, respectively, and that these ribs define regions and channel convection heat and therefore fall within the scope of the claimed ribs. Patent Owner’s arguments do not directly refute Petitioner’s assertions on these points and are unavailing because they rely on Patent Owner’s proposed claim construction.6 For the reasons explained in the claim construction portion of this Decision, we decline to adopt Patent Owner’s proposed construction that requires a certain thickness or strength to meet the rib limitation. We further note that we would reach the same conclusion had we adopted Patent Owner’s construction, as we understand it. Petitioner 6 In a later section of its Preliminary Response addressing the limitation requiring a “front rib . . . integrally formed with the underside surface of the griddle,” Patent Owner argues that “[r]egardless of the construction of ‘rib,’ none of the proposed Grounds of the Petition persuasively demonstrate that such a claim element was disclosed or obvious.” Prelim. Resp. 36. Based on our reading of the Preliminary Response, this argument was meant to state that regardless of the construction of “rib,” the grounds still fail to teach a “front rib . . . integrally formed with the underside surface of the griddle.” See id. (emphasis added). To the extent that Patent Owner sought to argue that the references fail to disclose the claimed “rib” standing alone, even without resort to Patent Owner’s proposed construction, the Preliminary Response fails to explain or develop such an argument.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,660,473
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.