• Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentable
  PTAB · Aug 13, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not determined unpatentable under the asserted prior-art grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the ’336 patent’s effective filing date would have had “a bachelor’s degree in mechanical engineering, electrical engineering, optics, or physics with at least three years of experience working in the design of LED lights or lighting fixtures; a master’s degree in one of the above disciplines with at least two years of experience; or equivalent experience.” Pet. 14 (citing Ex. 1004 ¶¶ 26–29). Dr. Eden’s testimony supports Petitioner’s assertion. See Ex. 1004 ¶¶ 27–28. Patent Owner “adopts for purposes of this proceeding only” Petitioner’s description of an ordinarily skilled artisan. Resp. 10 (citing Pet. 14). We adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’336 patent as” slip op. at 40

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016); see Ancora Techs., Inc. v. Roku, Inc., 140 F.4th 1351, 1361 (Fed. Cir. 2025) (noting that the Board did not err by requiring “a nexus to the challenged claims as opposed to the patent as a whole”). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by” slip op. at 76

  Patent outcomesUS 10,299,336 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,299,336
• Innoscience America, Inc. v. Infineon Technologies Americas Corp.Instituted
  PTAB · Jul 10, 2025 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the patentability of at least one claim of the ’562 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’562 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Neither party proposes any explicit construction of any term. See Pet. 7 (“For the purposes of this IPR, the plain meaning of each term can be applied.”). We do not expressly construe any term for purposes of this Decision.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “On this record, we are persuaded that Petitioner adequately establishes that Usui discloses all of the limitations of claim 1. Usui discloses that aluminum or aluminum alloy layer 15 is in electrical contact with titanium underlayer 13, and titanium nitride layer 14 is located “intermediate the [titanium underlayer] 13 and the aluminum or aluminum alloy layer 15” to prevent “reaction between the aluminum layer 15 and underlayer 13.” Ex. 1004, 3:27–29, 3:38–41, 3:58–63. Usui further discloses that “a capping layer is provided above layer 15,” and that “[p]referred capping layers are titanium nitride and combinations of as layer 18 of a group IVA metal, preferably titanium with a titanium nitride layer 19.” Id. at 3:67–4:6. Usui teaches that titanium nitride layer 19 is about 150 to 800 Å thick, and that the thickness of titanium underlayer 13 is between about 90 to 110 Å. Id. at 3:31–33, 4:6–8. Usui also teaches that the interconnect metallurgy structures described therein “exhibit[] enhanced electromigration characteristics” and “are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.” Id. at 1:8–14. Usui’s description of a plurality of metal layers (layers 13–18) and a capping layer formed over the plurality of metal layers (layer 19), along with its description of the structure’s usefulness for forming electrical connections in an integrated circuit structure, is sufficient, on this record, to establish that Usui discloses “an electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. Usui’s teaching that the capping layer is a refractory metal nitride (titanium nitride) that has a thickness (150–800 Å) greater than the bottommost layer of the plurality of metal layers (layer 13, 90–110 Å), sufficiently establishes, on this record, that Usui discloses the “said capping layer consisting only of a refractory metal nitride, said refractory metal nitride forming a top of said electrical contact and having a thickness greater than that of a bottommost layer of said plurality of metal layers” limitation of claim 1.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,686,562
• Billerud Aktiebolag (Publ) v. Westrock MWV, LLCSome claims unpatentable
  PTAB · Mar 12, 2025 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 2, and 4–22 are unpatentable as obvious; claim 23 was not shown unpatentable. Substitute claims 25–26 are allowed, while 24 and 27 are denied for lack of written-description support.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Exhibits 1013 and 1014 are also not admissible as expert testimony because Mr. Wirén is not “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 703. “To 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. Without that skill, the witness’ opinions are neither relevant nor reliable.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Mr. Wirén does not meet our definition of a person of ordinary skill in the art. See Section II.B, supra. That definition is based on the undisputed testimony of Messrs. Zotterman and Klass. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. Although Mr. Wirén has a Master’s of Science in chemical engineering, he lacks any experience or specialization in paperboard manufacturing. Ex. 2011, 12:1–10, 19:6–25, 20:2–7. We therefore agree with Patent Owner that Exhibits 1013 and 1014 are the testimony of Mr. Wirén and should be excluded from evidence because Mr. Wirén is not a person of ordinary skill in the relevant art. PO MTE 5–6, 9; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008) (“Unless a patent lawyer is also a qualified technical” slip op. at 61

  • Skill levelSkill level board ownOther

    “Level of Ordinary Skill in the Art Based on the testimony of the parties’ witnesses, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in paper science and engineering, chemical engineering, process engineering, mechanical engineering, or a related degree, with three to five years of experience in paperboard manufacturing, or a master’s degree in paper science and engineering, chemical engineering, process engineering, or mechanical engineering, or a similar field with a specialization in paperboard manufacturing. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’142 Patent Specification and the asserted prior art references.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “A claim construction that excludes a particular element is viewed as a “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, we find no claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Petitioner shows persuasively that the temperature limitation is taught by the combination of Fugitt and Papermaking. Pet. 32–34. Fugitt discloses that “[t]he rolls of the calender may be steam heated.” Ex. 1004 ¶ 26. In a section titled “Heated Rolls,” Papermaking discloses that “Steam can be used up to 170°C [338°F] surface temperature.” Ex. 1010, 95, 98. Petitioner is thus correct that, “[w]hile Fugitt teaches that a hot calender may be steam heated, Papermaking clarifies that one of ordinary skill in the art would understand that steam heated thermo-rollers may reach up to 338°F.” Pet. 36. Based on these disclosures, we are persuaded by Mr. Zotterman’s testimony that it would have been “obvious to heat the thermo-roller of Fugitt to at least 250°F.” Ex. 1003 ¶ 159. combine Fugitt and Papermaking because of Papermaking’s status as a “trusted handbook[],” because both references disclose a method of manufacturing a paperboard structure with hot calendering,” and “because of the known advantages of heated rollers.” Pet. 36–37; Ex. 1003 ¶¶ 157, 159, 162. Petitioner’s contention is supported by Papermaking’s disclosures that, for cartonboard, “[p]recalendering is used before the coater to reduce roughness and porosity” and “[h]igh thermo roll temperatures (in some cases over 200°C) result in bulk savings because of the temperature gradient.” Ex. 1005, 80–82; see also Pet. 38; Ex. 1003 ¶ 164 (citing these disclosures). Papermaking’s disclosed range of “up to 170°C [338°F]” for steam- heated rolls (Ex. 1010, 98), overlaps the claimed range of “at least 250°F.” Patent Owner agrees. Tr. 27:11–13. “If the relevant comparison between a disputed claim limitation and the prior art pertains to a range of overlapping values, ‘. . . even a slight overlap in range establishes a prima facie case of obviousness.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). “[S]uch an overlap creates a presumption of obviousness, and . . . the burden of production falls upon the patentee to come forward with pertinent evidence that the overlapping range would not have been obvious in light of the prior art.” Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018)). slip op. at 21

  Patent outcomesUS 11,293,142 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,293,142
• Apple Inc. v. THL Holding Company, LLCInstituted
  PTAB · Jul 25, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been shown obvious over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “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.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Patent Owner does not request that we exercise our discretion to deny institution of either parallel petition. On the present record, we find that Petitioner’s explanation of the need for two parallel petitions is sufficient to justify not exercising discretion to deny institution in either case. The parallel petitions challenge different sets of claims of the ’246 patent, and there are a large number of claims challenged collectively between the two petitions.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). Patent Owner does not dispute Petitioner’s assertion on the present record. Prelim. Resp. 1–22. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’246 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Buehrer. See Ex. 1003 ¶ 35.10” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioner proposes construing two terms. Pet. 5–6 (citing Ex. 1011, 6–11). First, Petitioner proposes that we construe “[t]ime of flight calculations” as “[d]etermining the amount of time between when a signal is transmitted and when a reply signal is received.” Id. at 6. Second, Petitioner proposes that we construe “[s]ignal delay” as “[d]ifference in time between when a signal is received at two or more antennas.” Id. On the present record, Patent Owner does not dispute these proposed constructions. Prelim. Resp. 1–22. For the purposes of this Decision, we adopt the constructions proposed by Petitioner. Those constructions are supported by briefing in the parallel district court case, in which they were proposed by Patent Owner. Ex. 1011, 6–11.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,350,246
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Nanofiber Solutions, LLC v. Acera Surgical, Inc.Some claims unpatentable
  PTAB · Dec 13, 2022 · IPR2021-01016 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 2, 4–7, and 13 are unpatentable: claims 1, 2, 4, 5, and 13 as anticipated by Johnson, and claims 6 and 7 as obvious over Johnson and Johnson–Liu, respectively.

  RulingsFinal written decision

  • Skill levelOther

    “Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of filing the ‘228 Patent would have been a person having a bachelor's degree in science or engineering, for example in the fields of chemistry, chemical engineering, or biomedical engineering, with undergraduate research experience, coupled with at least three years of industry experience, that linked the fabrication of fibrous polymeric materials to performance requirements for scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues. Pet. 11–12 (citing Ex. 1002 ¶¶ 112–116). In response, Patent Owner notes that all challenged claims recite electrospun fibers but that Petitioner’s proposed level of skill “requires (1) no coursework, training or experience with electrospinning and (2) improperly focuses on scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues.” PO Resp. 7 (citing Ex. 2001, ¶¶ 38–39). But Patent Owner then concedes that this “difference is immaterial to deciding the issues raised by the Petition.” Id. at 8.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “construe claims “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), including construing 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.” 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Furthermore, we expressly construe the claims only to the extent necessary to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). The parties agree that the terms of the challenged claims should be given their “plain and ordinary meaning” and that no express claim construction is necessary to address Petitioner’s challenges. Pet. 12; PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Upon review, we are unpersuaded that Petitioner has improperly mixed and matched disclosures from Johnson to arrive at an anticipatory reference. Patent Owner is correct that Petitioner primarily relies on Example 1 as evidence for the method by which its scaffold is made. But the disclosure found in paragraph 98 is not a “distinct” teaching of the type described in Net MoneyIN; rather, it is a general description of the structures that may be created by Johnson’s method: “A scaffold may comprise any number of layers, including about 1 layer, about 2 layers, about 3 layers, about 4 layers, about 5 layers, and so on.” Ex. 1009 ¶ 98. Patent Owner has not directed us to anything in the disclosure of Johnson that indicates that this is a “distinct” teaching or embodiment, instead of a general description of the types of scaffolds that Johnson encompasses. We see no reason why the general disclosures regarding Johnson’s scaffolds should be limited to specific embodiments, or precluded from applying to the method of Example 1.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “We are unconvinced by Petitioner’s arguments and evidence. While we recognize that the range of claim 3 is very broad, and it is possible that scaffolds having fiber diameters as set forth in Johnson could have a mean pore size falling within the range, inherency “may not be established by probabilities or possibilities.” Par Pharm., Inc. v. Twi Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). Nor does Petitioner sufficiently explain why a person of ordinary skill in the art would have understood the process of Example 1 to necessarily result in the claimed mean pore size. We are also persuaded by Patent Owner’s argument that Boland 2005’s disclosure of a fiber diameter similar to Johnson’s that nevertheless falls outside the claimed mean pore size range. We note that Petitioner never addresses Boland 2005 in its Reply. 4. Conclusion as to Anticipation For these reasons, we find that Petitioner has met its burden of showing that claims 1, 2, 4, 5, and 13 are anticipated by Johnson, but has failed to meet its burden as to claim 3.” slip op. at 18

  Patent outcomesUS 10,632,228 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,632,228
• Pillar Biosciences, Inc. v. Swift Biosciences, Inc.All claims unpatentable
  PTAB · Jun 27, 2022 · IPR2021-00401 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Gardner and Lao; the Board did not reach anticipation by Xie or Lao.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes constructions for five terms: “third amplicon,” “target-specific primer,” “complementary sequence,” “noncomplementary sequence,” and “PCR.” Pet. 22–28. Patent Owner disputes only the proposed constructions of “third amplicon” and “target-specific primer.” PO Resp. 9–17. As discussed in more detail below, the parties do not dispute that the combination of Gardner and Lao teaches or suggests the subject matter of the challenged claims, so there is no need for us to resolve the parties’ claim-construction dispute as to either of the terms on which they disagree in order to resolve the question of obviousness. In addition, although the parties’ dispute over the construction of “target-specific primer” is germane to whether Petitioner has proven the anticipation of the challenged claims by either Lao or Xie, we do not reach the anticipation grounds. Thus, we need not, and we do not, construe any claim terms in order to resolve this proceeding.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We agree with Petitioner. Although Gardner does, as Patent Owner notes, teach a method of avoiding the production of short amplicons, it does so only by carrying out two separate reactions. Ex. 1016, 4 (suggesting combining “the primers from parts 0, 2, and 4 . . . in one reaction and the primers from parts 1 and 3 . . . in another, so that short products would not be produced”). But Gardner makes clear that carrying out a single multiplex reaction would be preferable. Id. at 2 (“The method here . . . seeks to automatically design a minimal, degenerate set of multiplex compatible primers to amplify all the strains for a given region in a single reaction.”), 4 (carrying out “whole genome amplification in a single reaction . . . may yield longer amplicons . . . and should facilitate assembly across amplified regions”). Thus, Gardner favors finding a way to carry out a single reaction rather than settling for its collection of separate reactions. Gardner teaches that, without “staggering the primer sets into different multiplex reactions,” the short amplicons produced by “overlapping primer sets would dominate the PCR reaction.” Id. at 6. Patent Owner argues that this shows that Gardner disapproves of any means of controlling short amplicons other than its multiple-reaction approach and is “quite opposed to a single reaction.” Sur-Reply 6–7. We disagree. As noted above, Gardner also teaches that “a step to remove short amplicons before sequencing may be desired.” Ex. 1016, 4. Gardner’s multi-reaction solution avoids production of short amplicons in the first place, and amplicons that are never produced do not need to be removed. Thus, the fact that Gardner teaches the removal of short amplicons means that Gardner does not disapprove of the use of solutions other than its multi-reaction approach. Instead, Gardner considers its multi-reaction approach to be a compromise between the goal of avoiding problems caused by the production of short amplicons and the goal of minimizing the number of reactions carried out. Gardner’s teaching that adding “a step to remove short amplicons before sequencing may be desired,” id. at 4, is an express invitation to a person of ordinary skill in the art to find and incorporate such a removal step in lieu of avoiding the production of short amplicons. As discussed above, Lao teaches a method of removing short amplicons from a reaction. Specifically, Lao discloses “an event or state in which a portion of a nucleic acid strand is hybridized to another portion of itself,” which Lao refers to as “self-hybridizing.” Ex. 1014 ¶ 69. This “selfhybridized structure [may only be] formed for the shorter insert sections,” allowing for “selective amplification of longer insert sections over shorter insert sections.” Id. ¶ 116. This happens because the shorter insert sections “take themselves out of a reaction” through self-hybridization. Id. Because Gardner expressly teaches combining its method with “a step to remove short amplicons before sequencing,” and because Lao teaches such a step, we find that a person of ordinary skill in the art would have had a reason to combine the teachings of Lao with those of Gardner. The parties raise several other arguments, including whether the combination of Lao and Gardner would in fact achieve both Gardner’s benefit of avoiding overlapping amplicons and Lao’s benefit of saving time and cost due to avoiding having to run separate reactions, but we need not resolve those disputes. The presence of an express reason to combine is sufficient.” slip op. at 18

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “In reaching our conclusions on Petitioner’s asserted grounds of unpatentability, we do not rely on any portion of Exhibits 1023, 1025, or 1027. Accordingly, we dismiss Patent Owner’s Motion to Exclude those exhibits as moot. With respect to Patent Owner’s Motion to Exclude all portions of the record relying on Exhibits 1023, 1025, and 1027, Patent Owner identifies six pages of Petitioner’s Reply that it believes we should exclude. None of the identified pages cites any portion of Exhibits 1023, 1025, or 1027. See Reply 12–15, 17–18. Thus, even if we were persuaded that Exhibits 1023, 1025, and 1027 should be excluded, we would not be persuaded that Patent Owner had identified any reason for us to exclude the identified pages of Petitioner’s Reply. Accordingly, we deny Patent Owner’s Motion to Exclude as it applies to Petitioner’s Reply. To the extent there are other portions of the record that do cite Exhibits 1023, 1025, or 1027, Patent Owner’s failure to identify those portions is fatal to its motion. 37 C.F.R. § 42.22(a)(1) (a motion “must include . . . [a] statement of the precise relief requested”). Accordingly, we deny the motion as it applies to any unidentified portion of the record.” slip op. at 27

  Patent outcomesUS 10,316,359 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,316,359
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00184 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–16 and 21–25 were not shown unpatentable because Banin’s gold clusters were not shown to be molecular cluster compounds, and the Zaban combinations lacked motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 18–19 (citing Ex. 1002 ¶ 70). Patent Owner neither addresses Petitioner’s description of the level of ordinary skill in the art nor provides its own description. See PO Response. Accordingly, we adopt Petitioner’s definition as we find it is unopposed and consistent with the level of skill in the art at the time of the invention as reflected by the prior art in this proceeding.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “suggested formula” assigned to them is “based on a calculation that relied on the average of a wide distribution of particle sizes reported in the literature by Hutchison.” Ex. 2030 ¶ 103(citing Ex. 2017, 12891). We assign persuasive weight to her testimony because it is based upon the disclosures in Hutchison, which Banin explicitly identifies as the published procedures by which it synthesized its clusters. In particular, Dr. Cossairt’s testimony is supported by the following discussion in Hutchison: To calculate an average molecular formula for 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, Hutchison explains that it calculated an average molecular formula for its synthesized nanoparticles by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt has recognized, Banin’s “suggested formula” is exactly the same molecular formula that Hutchison discloses as the “average molecular formula” for its nanoparticles. Thus, we determine that the record as a whole supports finding that a person of ordinary skill in the art would have understood that Banin’s “suggested formula” represents an average molecular formula for a disperse mixture of gold clusters that are not identical and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs. slip op. at 23

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Specification expressly defines the term “molecular cluster” in a manner that refers to the cluster compound. According to the Specification, “Molecular cluster” is a term which is widely understood in the relevant technical field but for the sake of clarity should be understood herein to relate to clusters of 3 or more metal or nonmetal atoms and their associated ligands of sufficiently well defined chemical structure such that all molecules of the cluster compound possess the same relative molecular mass. Ex. 1001, 5:3–9. We note that the District Court determined that “the term ‘molecular formula’ as opposed to ‘molecular mass’ is most appropriate. By necessity, a compound with the same molecular formula will necessarily have the same molecular mass.” Ex. 1091, 16. The District Court explained also, “it appears that the difference between a molecular formula and a molecular mass, at least for purposes of this claim construction, in inconsequential.” Id. We agree and do not find any dispute on the current record from the parties on this matter. Accordingly, for purposes of this Decision, we agree with the District Court that the term “molecular cluster compound” means “clusters of 3 or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Id. at 18.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “that Petitioner has not shown persuasively that a person of ordinary skill in the art would have considered Banin’s small Au clusters to be MCCs. According to Petitioner and Dr. Green, Banin’s gold clusters are MCCs because they are clusters of three or more metal atoms with their associated ligands and “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. To begin, we do not find that the record supports Petitioner’s contention or Dr. Green’s opinion that “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. Petitioner and Dr. Green do not identify any disclosure in Banin describing the clusters as being identical. Instead, they refer to Banin’s disclosure that the Au clusters have “the suggested formula Au101(PPh3)21Cl5” and are “1.4 nm in mean diameter.” In doing so, Petitioner and Dr. Green do not meaningfully address or adequately explain how Banin derived its “suggested” molecular formula for the gold clusters or why Banin reported a “mean” diameter for those clusters. To that end, Petitioner and Dr. Green have failed to provide any reason why a skilled artisan would have understood Banin’s disclosures of a “suggested formula” and a “mean diameter” to convey that the Au clusters are identical.” slip op. at 22

  Patent outcomesUS 7,803,423 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,803,423
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00183 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1, 3–6, and 8–14 were not shown unpatentable because the asserted combinations failed to establish the claimed molecular cluster compounds or a reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 20 (citing Ex. 1002 ¶¶ 72–75). Patent Owner neither addresses Petitioner’s description of the level of ordinary skill in the art, nor provides its own description. See PO Resp. Accordingly, we adopt Petitioner’s definition as we find it is unopposed and consistent with the level of skill in the art at the time of the invention as reflected by the prior art in this proceeding.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “on the average of a wide distribution of particle sizes reported in the literature by Hutchison.” Ex. 2030 ¶ 102 (citing Ex. 2017, 12891). We assign persuasive weight to her testimony because it is based upon the disclosures in Hutchison, which Banin explicitly identifies as the published procedures by which it synthesized its clusters. In particular, Dr. Cossairt’s testimony is supported by the following discussion in Hutchison: To calculate an average molecular formula for 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, Hutchison explains that it calculated an average molecular formula for its synthesized nanoparticles by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt has recognized, Banin’s “suggested formula” is exactly the same molecular formula that Hutchison discloses as the “average molecular formula” for its nanoparticles. Thus, we determine that the record as a whole supports finding that a person of ordinary skill in the art would have understood that Banin’s “suggested formula” represents an average molecular formula for a disperse mixture of gold clusters that are not identical and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Based on our consideration of the record as a whole, we find that the Specification expressly defines the term “molecular cluster” in a manner that refers to the cluster compound. According to the Specification, “Molecular cluster” is a term which is widely understood in the relevant technical field, but for the sake of clarity should be understood herein to relate to clusters of three or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess approximately the same relative molecular formula. Ex. 1001, 3:28–34 (emphasis added). As there is no dispute that the term “molecular cluster compound” refers to “clusters of three or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess approximately the same relative molecular formula,” we agree with the parties that no further construction of the claim is necessary for purposes of rendering this Decision. Additionally, we find that express construction of any remaining claim terms is unnecessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Moreover, we agree with Patent Owner that Petitioner has not demonstrated persuasively that a skilled artisan would have been motivated to replace Banin’s metal catalyst with Herron’s cluster compound. PO Resp. 44–49. Petitioner’s expert, Dr. Green, does not dispute that Banin’s SLS process requires the use of a metal catalyst. Ex. 1002 ¶ 79; Ex. 1005, 4:3–9, 6:9–16. Nor does Dr. Green dispute that Herron’s Cd32S14(SC6H5)36 cluster is not a metal, but rather a cadmium sulfide semiconductor. Ex. 1002 ¶ 80; Ex. 1016, 1426. According to Patent Owner and Dr. Cossairt, there is no indication on the record that anyone has ever tried or succeeded in using a semiconductor as a catalyst in SLS nanorod synthesis. PO Resp. 53; Ex. 2030 ¶ 137. We agree and determine that Petitioner has not shown otherwise by referring to the use of a semiconductor in a different type of nanoparticle synthesis, i.e., a vapor-liquid-solid nanoparticle synthesis. See Pet. Reply 12. In any event, we find that the Petition fails to support a motivation to combine Herron’s cadmium sulfide semiconductor with Banin’s process because the Petition fails to address sufficiently (or at all) the differences between metal catalysts and Herron’s semiconductor material and to explain why a person of ordinary skill in the art would have used such a semiconductor material in place of the metal as the catalyst in Banin’s process, despite Banin’s teachings that the catalyst must be a metal. Accordingly, for the foregoing reasons, we determine that Petitioner has failed to establish persuasively that a person of skill in the art would have been motivated to modify Banin’s nanoparticle synthesis by replacing its gold metal catalyst with Herron’s cadmium-based semiconductor.” slip op. at 30

  Patent outcomesUS 7,588,828 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,588,828
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentable
  PTAB · May 16, 2022 · IPR2021-00185 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–6, 16, and 17 were not proven unpatentable: Banin’s gold clusters were not shown to be MCCs, the Zaban combinations lacked adequate support, and the Lucey ground was withdrawn.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In Petitioner’s view, an ordinarily skilled artisan would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 22 (citing Ex. 1002 ¶ 76). Patent Owner does not address Petitioner’s view or propose a counter definition. We determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). To the extent a more specific definition is required, we adopt Petitioner’s definition for purposes of this Decision, because that definition is unopposed and consistent with the disclosures of the asserted prior art references.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Based on our consideration of the record as a whole, we agree with the District Court that the molecular cluster compound of the claimed invention must have “sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Ex. 1091, 18. To the extent that this or any other claim term requires further discussion, we provide it in our analysis of the challenges. No further express claim construction is necessary for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “opinion, with supporting citations to evidence, that Banin describes gold clusters that range in size and, further, why the reference indicates that the suggested formula assigned to those clusters is based on a calculation that relies on the average of a wide distribution of particle sizes reported in the literature by Hutchison. Ex. 2030 ¶¶ 102–125; Ex. 2017, 12891. We assign persuasive weight to her testimony because it is supported by clear disclosures in Hutchison, which Banin explicitly identifies as the source of the procedures by which Banin synthesizes its gold clusters. In particular, Dr. Cossairt’s testimony comports with this discussion in Hutchison: To calculate an average molecular formula for [gold nanoparticle] 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, as this disclosure makes plain, Hutchison calculates an average molecular formula for its gold clusters by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt recognizes, Banin’s suggested molecular formula is exactly the same formula that Hutchison calculates based on the average molecular formula for the variably-sized gold clusters produced according to its process. Ex. 2030 ¶¶ 102–105. Dr. Cossairt provides persuasive reasons why a person of ordinary skill in the art would have understood that Banin’s suggested formula represents an average molecular formula for a disperse mixture of gold clusters that are not identical in size and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs. Id. ¶¶ 102–125.” slip op. at 26

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our rules require a petitioner to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). “Unlike district court litigation — where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material — the expedited nature of” inter partes review proceedings “bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, Petitioner carries a burden to “identify with particularity” at the outset, in the Petition, “the grounds on which the challenged to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Although “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings,” Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016), the shifting of arguments is not, Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).” slip op. at 30

  Patent outcomesUS 7,867,557 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,867,557

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.