- PTAB · Oct 24, 2023 · IPR2023-00836 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–12, 14, 15, 18, and 25 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
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 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of challenged claims 1–12, 14, 15, 18, and 25 of the ’580 patent. We institute an inter partes review of all challenged claims of the ’580 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 2–4 weigh against denial of institution and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 1–4. Factor 1 is neutral. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary reaching the compelling merits analysis.”). In addition, Petitioner asserts: (1) the Board is best suited to address the technical issues raised here; (2) a decision on the merits at institution may aid the parties in resolving their dispute; and (3) determining patentability will benefit the public, providing a complete record and rationale absent from a jury verdict form. Pet. 103–104. Patent Owner responds that Petitioner’s argument does nothing more than “proclaim[] in conclusory fashion that institution will result in some vague benefit to the [District Court] Litigation and the public.” Prelim. Resp. 50. We agree with Patent Owner. Petitioner’s assertion is conclusory and does not adequately specify the particular benefits to the proceeding here or to the District Court Litigation. We determine that the sixth Fintiv factor is neutral. 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“upon a combination of two embodiments of Chickering, as supported by the testimony of Dr. Giachetti. There is no evidence that the Examiner extensively evaluated Chickering and Chickering was not included in a rejection. As can be seen from our discussion of Chickering’s teachings in our analysis of ground 1 below, we determine that Petitioner has sufficiently shown that the Examiner materially erred when allowing the claims of the ’580 patent based on the bearing rail limitations. Accordingly, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 3. Summary For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering and at least one year of machine design experience related to power transmission equipment and a demonstrated understanding of exercise biomechanics, including anthropometry (i.e., the study of human proportion). Pet. 5 (citing Ex. 1003 ¶¶ 48, 44–49 (supporting testimony of Dr. Giachetti)) (emphasis omitted). Petitioner additionally states that “[t]his description is approximate and additional development experience could make up for less education and vice versa.” Id. At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art and does not propose an alternative level. Prelim. Resp. 2. On this record, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’580 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,039,580 - PTAB · May 12, 2023 · IPR2023-00094 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–22 and 24–40 over all asserted grounds, finding a reasonable likelihood that petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). An 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(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’266 patent on the grounds raised in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of claims for which inter partes review is instituted. Any final decision will be based on the record, as fully developed during trial.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states in the Petition that it “appl[ies] the ordinary and customary meaning of the claim terms as understood by a [person of ordinary skill in the art].” Pet. 6. Petitioner contends that the Challenged Claims include sequences of terms separated by the disjunctive “or,” which designates that the sequences describe alternatives. Id. (citing SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199–1200 (Fed. Cir. 2013); Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002)). Petitioner also contends that it “need only show the prior art discloses one of the recited alternatives for each disjunctive sequence.” Id. at 7 (citing Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009)). Patent Owner, as noted above, did not file a Preliminary Response in this proceeding and, therefore, has not proposed constructions for any claim term. For purposes of this Decision, given that no claim terms are in controversy on the current record, we find that no express claim construction is necessary. See Vivid Techs., Inc., 200 F.3d at 803.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner alleges that a person of ordinary skill in the art would have had certain motivations to implement McNutt’s disclosure of sending position information in a betting message with Garahi’s system. Id. at 25–26 (citing Ex. 1003 ¶¶ 156–160). For example, Petitioner contends that a person of ordinary skill in the art “would have understood that if the user[] is attempting to create a new wager using a mobile device, such as a cell phone, the user’s location may have changed to a location that prohibits wagering,” and “[v]erifying the user’s location when the user attempts to create a new wager was a well-known and predictable way to ensure that the wagering system is complying with local gaming regulations.” Id. (citing Ex. 1003 ¶ 160). Petitioner also contends that a person of ordinary skill in the art would have had a reasonable expectation of success in sending position information with the wagering data transmitted in Garahi’s system. Id. at 26 (citing Ex. 1003 ¶ 161). At this stage of the proceeding, we find Petitioner’s arguments and evidence regarding limitation 1(d) sufficient.” slip op. at 25
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,147,266 - PTAB · May 12, 2023 · IPR2023-00093 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
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 the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒20 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4. Mr. Kitchen’s testimony supports Petitioner’s position regarding the level of skill in the art. Ex. 1003 ¶ 45. At this stage of the proceeding, Petitioner’s position regarding the level of skill is undisputed. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’341 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the 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) (2020). According to the applicable standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations omitted). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,043,341 - PTAB · May 11, 2023 · IPR2023-00092 · APJ James A Tartal · IPR · Institution
The Board instituted inter partes review of claims 1–14 and 16–20 on all petitioned obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). An 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(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’920 patent on the grounds” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review of the evidence and arguments cited by Petitioner, we find, on this record, Petitioner sufficiently shows how it contends the asserted combination of Garahi, Stadelmann, and McNutt teaches every limitation of claim 1, and why one of ordinary skill in the art would have had sufficient reason to combine Garahi, Stadelmann, and McNutt, with a reasonable expectation of success in doing so, to support institution.” slip op. at 34
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,965,920 - PTAB · May 11, 2023 · IPR2023-00095 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1–13 and 16–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a) (2022). Considering the Petition and the evidence of record, for the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would be a person having a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶¶ 45–46). At this stage, Patent Owner, having declined to file a preliminary response, has not disputed Petitioner’s proposed level of ordinary skill. Thus, for purposes of this Decision, we find that the ’755 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’755 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, neither party has identified any indication that the ’755 patent uses the term differently than it would ordinarily be used or any indication in the prosecution history that “compel[s] a limitation of the claim language different from its plain meaning” as alternatives. Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311, 1314 (Fed. Cir. 2002). Given that no claim terms are in controversy, for purposes of this Decision, we need not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review and consideration of Petitioner’s arguments and evidence, we find that at this stage and based on the record, Petitioner has shown sufficiently how it contends the asserted combination of Garahi and McNutt teaches every limitation of claim 1 and why one of ordinary skill in the art would have had sufficient reason to combine Garahi and McNutt, with a reasonable expectation of success in doing so, to support institution.” slip op. at 40
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,255,755 - SNF S.A. v. Chevron U.S.A., Inc.InstitutedPTAB · Apr 19, 2023 · IPR2022-01534 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–25 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
“Accordingly, based on the evidence before us, we determine that Petitioner has established that there is a reasonable likelihood that the Petitioner will prevail with respect to at least independent claims 1, 24, and 25. “The ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, 53 (Nov. 2019).” slip op. at 25
- Skill levelSkill level board ownDecided for patent owner
“a POSITA, and thus the Board need not resolve the precise required level of skill in order to deny” the Petition. Prelim. Resp. 6. According to Patent Owner, the emphasized terms in the chart above for Petitioner’s proposed level of skill make Petitioner’s proposal “grammatically erroneous and confusing.” Id. We agree. The word “either” in Petitioner’s proposed level of skill is confusing. Patent Owner also criticizes Dr. Barati’s proposed level of skill because it “makes no mention of ‘synthesis’.” Id. at 7. Patent Owner does not provide argument or evidence as to why “synthesis” is critical or necessary in the level of skill. Patent Owner does not propose a level of skill. Id.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision on whether to institute an inter partes review of the challenged claims.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“Owner asserts that “none of the grounds of unpatentability properly address the claim requirement that the ‘inverted polymer solution has a filter ratio of 1.5 or less at 15 psi using a 1.2 µm filter’ (the ‘filter ratio limitation’).” Prelim. Resp. 9. Patent Owner also asserts that the “[t]he Petition does not point to any disclosure in Li that expressly meets this requirement. Id. (emphasis added). Patent Owner and Petitioner agree on this point. See, e.g., Pet. 32 (“Li expressly describes IPSs having FRs that were calculated using a different formula than the ’320 patent”). Additionally, Patent Owner asserts correctly that “Petitioner relies on Dr. Barati’s experiment” to establish that Li Products I, III, and VII, if prepared and tested using the standard procedure for determining the filter ratio described in the ’320 patent, provide “an alleged inherent disclosure” of the claimed filter ratio. Prelim. Resp. 10. Patent Owner, and the Declaration testimony (Ex. 2001) of its proffered expert, Dr. Gary Pope,18 take issue with the procedures and results of Dr. Barati’s testing. They question whether he performed his experiments once or multiple times, and, if the latter, they question whether the repeated tests produced consistent results. Prelim. Resp. 12 (citing Ex. 2001 ¶ 26 (Dr. Pope’s testimony stating that Dr. Barati “does not indicate whether his results reflect all of the results he obtained”)).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,626,320 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution denied for claims 1–8 because the petitioner did not show the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our decision on institution (Paper 9, “Dec.” or “Decision”), we determined that Petitioner failed to show a reasonable likelihood of prevailing with respect to any of the Challenged Claims and denied institution of inter partes review. Petitioner filed a timely Request for Rehearing in which it asks that we institute inter partes review of the Challenged Claims. Paper 10, 1 (“Reh’g Req.” or “Request”). For the reasons that follow, we deny Petitioner’s Request.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“to “then place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Pet. 19; Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 71, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to and observed or expected position. b) “The Board’s analysis ignores common sense.” Reh’g Req. 4. Petitioner contends that the Board ignored common sense, as “at some point a POSA necessarily would have observed some species of bird flying near some perimeter walls within some building.” Reh’g Req. 4; see also id. at 6 (“It was common sense that a POSA would eventually observe a bird near a perimeter wall and place Brugh’s capture device accordingly.”), 7 (“[T]he Board . . . substitutes a rigid review of the prior art’s disclosure for common sense. . . .”)). This argument is unavailing. “[W]hile ‘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.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016). As explained above, Petitioner’s argument discounts the inventor’s discovery, in which he spent “countless hours” before discovering that birds fly along the perimeter wall of a building’s interior. Ex. 2001 ¶ 16. Further, as discussed above, Brugh does not instruct nor teach a POSA to observe flight patterns and determine or adjust the locations of the nets accordingly. We are not persuaded that the inventor’s discovery was merely “common sense,” and if it was, Petitioner should have submitted sufficient evidence to support such a finding. See Arendi, 832 F.3d at 1363. As explained in our Decision, Petitioner did not. See, e.g., Dec. 32 (“Petitioner provides insufficient evidence that bats or other flying animals are likely to fly ‘at or proximate to a perimeter wall and at or near the ceiling’ such that a POSA would find it obvious to place a net at or proximate to the perimeter of a wall within a building”). A request for rehearing under 37 C.F.R. § 42.71(d) is not an opportunity for Petitioner to simply reargue issues we previously addressed.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Owner’s expert, Mr. Tolley, is the inventor of the ’683 patent. We considered this fact but, nevertheless, found Mr. Tolley’s testimony more persuasive than Dr. Chamberlain’s testimony. We considered the provided evidence of Mr. Chamberlain’s declaration and the support thereof and found insufficient evidentiary support for why a POSA would place at least one net at or proximate to the perimeters and at or near the ceiling of the structure. Dec. 32 (citing Ex. 1004 ¶¶ 71, 72). Id. at 33. As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). Dr. Chamberlain’s testimony that at least one net would reduce the flying area was not supported by any evidence. Dec. 34. As such, Dr. Chamberlain’s testimony was afforded little weight. 37 C.F.R. § 42.65(a).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,064,683 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- BurdenInstitution denied meritsInstitution denied
“Petitioner’s argument does not give enough credit to the inventor’s discovery. Mr. Tolley, the inventor, testified that he “spent countless hours monitoring bird flights and patterns within Walmart’s facilities and other indoor structures, focusing not only on where birds typically roosted in the facilities, but also where and how they flew within the enclosures . . . and experimenting with various placements of nets based on [his] observations.” Ex. 2001 ¶ 16. We do not find Petitioner’s citation to the inventor’s testimony, in which the inventor testifies to having “spent countless hours” working on his discovery, to support Petitioner’s argument that the inventor’s discovery would have been obvious based on Brugh’s “instruct[ions to] a POSA to observe the ‘flight patterns’ of these birds” and to “place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 32, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to an observed or expected position.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“been obvious to place at least one net ‘along a perimeter wall . . . in response to observing flight patterns in those locations’ is premised on the alleged fact” that bats and other animals tend to roost in protected locations. Dec. 36 (citing Pet. 18). We then addressed Mr. Chamberlain’s declaration and the support thereof and found insufficient support for his testimony that birds would fly or roost “in or along the perimeter of a wall within a building or structure.” Id. at 36–37 (citing Ex. 1004 ¶¶ 32, 33; Ex. 1018, 81, 85.) As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The first reason was not written as observing flight patterns or, alternatively, expecting flight patterns, but as one reason resulting from “observing flight patterns,” premised on the tendency of birds to roost in a protected, expected location, such as, ostensibly, along the inside perimeter wall of a building. The second reason was that the placement of the nets along a perimeter wall and in another location would shrink the bird’s flying area and thus improve capture. The third reason was, ostensibly, that having more nets, i.e., increased net density, would increase the capture rate. The Decision addressed the first argument regarding observing flight patterns at pages 36–37, the second argument at pages 37–38, and the third argument at pages 38–39.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,729,108 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Rehearing
The Board denied Meridian’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s fourth sub-argument is not persuasive. As explained in our Decision, Dr. Chamberlain’s testimony that birds would fly along the inner perimeter of a building is not supported by evidence. Dec. 18–19. As such, his testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
§ 103 obviousnessPatents in suitUS 10,251,374 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCInstitution deniedPTAB · Jan 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institute an inter partes review if “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(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims. We thus deny institution of inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d). B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “POSA,” or “skilled artisan” ) “would have had (i) at least a bachelor’s degree in the study of wildlife management or 5 At the time this Decision was in the final stages of panel review, the parties e-mailed the Board informing the Board that Patent Owner withdrew its argument under Fintiv. See Ex. 3001. We need not and do not address, however, whether this e-mail effectuated withdrawal of Patent Owner’s Fintiv argument.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’374 patent. See Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 8
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. We are not persuaded by Petitioner’s definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a POSITA if that artisan had several years of experience trapping flying animals. See Pet. 6. Further, we are not persuaded by Patent Owner’s definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 6–7. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definition of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’374 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,251,374
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.