- PTAB · May 31, 2022 · IPR2022-00153 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petition grounds, finding a reasonable likelihood of prevailing on the Hunaidi Patent obviousness challenge to claims 1 and 8.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion On this record, and in the absence of argument to the contrary by Patent Owner, we find Petitioner’s contentions that the Hunaidi Patent renders claims 1 and 8 obvious well-supported. Petitioner has directed us to portions of the Hunaidi Patent that teach or suggest all of the limitations in claims 1 and 8, and has provided a sufficiently persuasive reason why a person of ordinary skill in the art would have had reason to modify the disclosed apparatus and method to arrive at the subject matter of both independent claims. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on this challenge with respect to both claim 1 and claim 8. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’596 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“in the art having a motivation to combine the teachings of the Hunaidi Patent and the Hunaidi Article. The clearest expression of a motivation to combine set forth in association with the ground, as applied to the independent claims, is that “a [person of ordinary skill in the art] would have been guided to look at leak detection systems, such as that disclosed in the Hunaidi Article,” because “[t]he Hunaidi Patent explains that ‘[t]he proposed method is easy to implement, for example, in conjunction with routine leak detection surveys.’” Pet. 38 (citing Ex. 1003, 3:35–36; Ex. 1004, Abstract, 7; Ex. 1002 ¶ 77). The difficulty with this is that the Hunaidi Patent itself already discloses what appears to be routine leak detection surveys, and it is thus not apparent what benefit would be obtained by this combination to motivate the skilled artisan to combine the teachings. Cf. Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). As to further reasons set forth for the combination, as applied to claims 1 and 8, these are grounded on shortcomings in “the Hunaidi Article . . . not disclos[ing] an equation for velocity” or go to the obviousness of modifications to the Hunaidi Patent itself independent of the Hunaidi Article’s teachings. Id. at 38–40 (citing Ex. 1001, 7:1–12; Ex. 1002 ¶¶ 63–71, 80–86; Ex. 1003, 2:57–3:11, 1:8–11, claims 1& 11).” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“1. Printed Publication Status of the Hunaidi Article In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings, including whether the reference was publicly accessible. Id.; see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility). Petitioner contends that the Hunaidi Article is prior art under 35 U.S.C. § 102(a) and (b). Pet. 35. Petitioner fails, however, to set forth any basis for the document to be a printed publication, that is, for its public accessibility. See Pet. Similarly, there is no testimony by Dr. Wilkens relevant to this issue. See Ex. 1002. Further, on this record, there is neither argument nor testimony as to the authenticity of what Petitioner has filed as the Hunaidi Article (Exhibit 1004).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “is a person with a degree in mechanical engineering, chemical engineering, or physics, and approximately three to five years of combined work experience and/or graduate work in fluid dynamics.” Pet. 10 (citing Ex. 1002 ¶¶ 24– 25). As Patent Owner has waived its preliminary response, Petitioner’s contended level of ordinary skill stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 8
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,475,596 - PTAB · Apr 8, 2022 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 because Petitioner showed a reasonable likelihood of prevailing on both asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. We have considered Patent Owner’s arguments in light of the Fintiv factors, together with Petitioner’s opposition, and we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . 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). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it will prevail with respect to at least one claim challenged in the Petition, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in chemistry, chemical engineering, or materials science, as well as five or more years of experience in the field of batteries and battery materials.” Pet. 8 (citing Ex. 1003 ¶ 11). Petitioner adds that “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education.” Id. Petitioner states that “[a]dditional education might substitute for some experience, and substantial experience might substitute for some educational background.” Id. at 8–9.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,350,019 - PTAB · Apr 8, 2022 · IPR2021-01441 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We find that Petitioner’s stipulation is the same as the stipulation in Sotera. Sotera at 18 (the petitioner stipulating that, “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.”). Petitioner’s stipulation invokes our Sotera precedent, “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions,” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera at 19. Accordingly, we find that this factor weighs strongly against exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Based on the evidence before us, we determine Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one claim of the ’035 patent is unpatentable. Accordingly, we institute an inter partes review on all the challenged claims and all of the grounds presented in the Petition. See 37 C.F.R.§ 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of the challenged claims. Our final decision will be based on the record as fully developed during trial. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–11 of the ’035 patent with respect to all grounds set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), notice is hereby given of the institution of a trial commencing on the entry date of this decision.” slip op. at 49
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and five or more years of experience in the field of batteries and battery materials.” Pet. 5 (citing Ex. 1003 ¶ 11). Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except to the extent that the phrases “at least” and “or more” might be taken to imply that one of with significantly greater education or experience than that explicitly set forth would be considered to be merely one of ordinary skill in the art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, for purposes of institution, we find Petitioner has sufficiently established the similarity of the cathodes in Choi and Noh to support the motivation to combine. Petitioner has reasonably established that both references are directed to similar secondary batteries that include lithium-cobalt oxide-based cathodes and nonaqueous electrolytes with a goal of providing improved thermal stability and discharge characteristics. Despite Patent Owner and Dr. Lucht contending that Choi and Noh are so dissimilar that a skilled artisan would not have combined them for the for this contention. Id.; Ex. 2008 ¶ 31. The purported silence of Noh as to the size of cathode active material particles is not, on its face, contrary to the combination. The materials used are otherwise similar, i.e., lithium-cobaltbased oxides, and Petitioner is relying on Noh to teach the electrolyte additives, not the specifics of the cathode active material. As to Patent Owner’s argument based on Choi’s materials including doping with other transition metals, this, likewise, is not on its face contrary to there being a motivation for the combination because these materials, despite the doping with small amounts of other transition metals, appear similar to the undoped materials with respect to structure and function, and there is no evidence to the contrary on this record. See Ex. 2008 ¶ 31. Patent Owner also contends that Petitioner provides no motivation to combine Choi and Noh for its disclosure of the claimed particle sizes. Prelim. Resp. 16–17. Patent Owner and Dr. Lucht focus on Choi teaching preferable ratios of large particle size to small particle size to increase fractional density that are higher than the particle size ratios that are preferred in the ’035 patent. Id. (citing Ex. 1005 ¶¶ 27, 31, code (57) (Abstract)); Ex. 1001 4:35–37, 4:41–63). Patent Owner calculates a maximum ratio of 12.5:1 based on the recited large and small particle sizes in claim 1, contends that this maximum ratio is much less than the ratio of 100:1 disclosed in Choi, and argues that, based on this lower preferred maximum ratio for the ’035 patent, there is no motivation set forth to combine Choi and Noh for the claimed largest and smallest average particle sizes. Id. at 17 (citing Ex. 2008 ¶ 33). Patent Owner’s arguments about particle size do not identify an insufficiency in Petitioner’s rationale for combining Choi and Noh, which size. Even assuming that there is a difference in the preferred maximum ratio set forth in Choi and in the ’035 patent, this has no apparent bearing on Petitioner’s proposed combination of Choi and Noh, which relies on Noh for its teaching of an electrolyte additive, not particle size, and Choi teaches including large and small particle sizes in the same type of cathodes as used in both Choi and Noh. Further, Patent Owner’s emphasis on the maximum ratio in Choi differing from that according to the ’035 patent appears to be misdirected because Choi teaches a range of ratios that encompass those claimed.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,077,035 - PTAB · Apr 8, 2022 · IPR2021-01440 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–5 on both asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“and (2) Koshiishi and Abe. Pet. 1. It is undisputed that neither Choi nor Koshiishi was presented to the Office during examination, and there is no suggestion that either reference is cumulative of the art presented to the Office during examination. See Prelim. Resp. Petitioner asserts that “the only difference between Choi and the ’446 Patent claims is the inclusion of a compound with two nitrile groups in the electrolyte.” Pet. 12. Petitioner makes the same assertion about Koshiishi. Pet. 42. Petitioner contends that Choi and Koshiishi each teach all limitations of the challenged claims, except for the limitations requiring that the electrolyte contain a dinitrile compound. Pet. 13–38, 42–62. In view of the importance of Choi and Koshiishi to Petitioner’s grounds of unpatentability, we determine that the art presented in the Petition is not the same or substantially the same as the art previously presented to the Office during examination.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response, we determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to at least one of claims 1–5 of the ’446 Patent based on Choi and Kim.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not dispute Petitioner’s definition of a POSITA. See Prelim. Resp. We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’446 Patent and the asserted prior art, and we apply Petitioner’s definition for purposes of this Decision, with the caveat that the phrases “at least” and “or more” should not be construed as requiring a significantly greater level of education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,691,446 - PTAB · Feb 16, 2022 · IPR2021-01397 · APJ Wesley B Derrick · IPR · Institution
The Board instituted inter partes review of claims 1–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).” Advanced Bionics, 7–8. Thus, citation of Mavretic and Mason on an IDS satisfies part one of the Advanced Bionics framework for at least the first ground. 2. Whether the Office Erred in a Manner Material to the Patentability of Challenged Claims Next, we proceed to the second part of the framework set forth in Advanced Bionics. As discussed above, neither Mavretic nor Mason were applied in a rejection during prosecution of the ’057 patent––the Examiner’s consideration of both references appears limited to initialing an IDS. See Ex. 1013, 160, 164. Patent Owner also relies, however, on Mavretic having been used “as the primary reference in rejecting the [’057 patent’s grandparent] application twice under section 103.” Prelim. Resp. 36; Ex. 1014, 445–455, 492–504. Regardless, there was no rejection grounded on Mavretic during prosecution of the ’057 patent, and the claims in the ’057 patent differ from those in the grandparent application. Thus, as to factor (c) of Becton Dickinson, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the circumstances do not weigh heavily in favor of discretionary denial.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, for the reasons discussed above, Petitioner establishes a reasonable likelihood of prevailing on this challenge with respect to claim 1. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’057 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst., 138 S. Ct. at 1359–60; USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018; 37 C.F.R. § 42.108(a).” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we find Petitioner’s definition of the level of ordinary skill reasonable as to including “a person with a graduate degree in electrical engineering with knowledge of RF matching networks and plasma chamber processes.” We also recognize that work experience with RF matching networks and plasma chamber processes can likely substitute to an extent for experience Petitioner contends are sufficient. However, given that the relevant testimony at this stage of the proceeding is from Dr. Voldman, who “has a Ph.D. in electrical engineering and extensive knowledge of both matching networks and plasma systems” (Pet. 24–25 (citing Ex. 1002 ¶¶ 8– 17)), we need not address how work experience can substitute for education for this Decision, and so determine that the level of ordinary skill as including “a person with a graduate degree in electrical engineering with knowledge of RF matching networks and plasma chamber processes” (id. at 24).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“On this record, we are not persuaded that Petitioner adequately establishes that Mason discloses an impedance matching circuit operating at a constant frequency. As highlighted by Patent Owner, Dr. Voldman does not sufficiently explain how he reached the conclusion that Mason’s apparatus operates at a constant frequency based on Mason’s disclosures. See Ex. 1002 ¶ 98. Accordingly, we give little weight to his testimony in this regard. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”); 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.”).” slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,707,057 - Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01287 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on claims 12–16 and all asserted 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
“We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon considering the Petition and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we institute inter partes review of all claims and all grounds asserted in the Petition.1 A.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems” or “could have also obtained similar knowledge and experience through other means.” Pet. 4. The level of ordinary skill in the art is further demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C.” slip op. at 6
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,256,770 - Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01286 · APJ Julia Heaney · IPR · Institution
Instituted IPR of claims 1, 5–7, 12, and 13 on all petitioned grounds; Moine anticipation of claims 1, 6, 7, 12, and 13 established the required likelihood of success.
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 . . . 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). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction Petitioner contends the claim term “the location controller,” as recited in claim 1 of the ’321 patent, should be construed to mean “the local controller,” because the term “location controller” has no apparent antecedent basis in the claim and does not appear anywhere in the 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed before March 16, 2013, we apply the pre-AIA versions of the statutory bases for unpatentability. 4 FR Patent Application Publication No. 2894401 A1 to Moine, published June 8, 2007 (Ex. 1005). 5 US Patent No. 5,054,023 to Kronberg, issued October 1, 1991 (Ex. 1006). 6 US Patent No. 8,531,055 B2 to Adest et al., issued September 10, 2013 (Ex. 1007). specification of the ’321 patent, and further in light of the fact that claim 1 first recites “a local controller.” Pet. 10–11. Other than the aforementioned claim term, Petitioner states no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims. Id. at 9 (citing Ex. 1002 ¶ 35). Having considered Petitioner’s argument, we can reach a determination of the reasonable likelihood of proving unpatentability of the challenged claims without explicitly construing any claim terms at this stage of the proceeding. See 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’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). For purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’321 patent and the asserted prior art, we determine that Petitioner’s definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’321 patent and prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having reviewed Petitioner’s undisputed evidence and argument regarding claim 1, we find that Petitioner has demonstrated sufficiently that Moine discloses all of the limitations of claim 1. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on its anticipation challenge with respect to claim 1.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,933,321 - PTAB · Jan 25, 2022 · IPR2021-01295 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that at least one challenged claim is unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We determine, on the current record, that Petitioner has standing to bring this proceeding. Here, as was the case in Cardiovascular Sys., the record does not include any evidence that, at the time the Petition was filed, Petitioner actually owned the ’276 patent. In fact, the parties do not dispute that Patent Owner is the current registered owner of the ’276 patent, and was the owner when Petitioner filed the Petition. See Prelim. Reply 1; Prelim. Resp. 1. Notably, although Petitioner did assert ownership in the district court, Patent Owner disputed that assertion, claiming to be “the sole owner, by assignment, of all right, title and interest in and to the ’276 [p]atent.” Prelim. Reply 1 (quoting Ex. 1032 ¶ 55); see also Ex. 3001 (showing the assignment record for the ’276 patent, indicating that Patent Owner is the recorded owner of the patent); 35 U.S.C. § 261 (“Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.”); 37 CFR § 3.73(a) (“The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.”). Patent Owner does not direct us Petitioner. To the contrary, Petitioner directs us to Patent Owner’s argument in the district court proceeding that Patent Owner did not assign its interest to Petitioner. Prelim. Reply 1 (citing Ex. 1033, 9–15). The record evidence therefore indicates that Patent Owner is the owner of the ’276 patent. Accordingly, because Petitioner is not the owner of the ’276 patent, Petitioner has standing to file the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denialDenied
“Patent Owner asks us, in the alternative, to exercise our discretion to deny the Petition. Prelim. Resp. 15. Patent Owner does not explain on what basis we would exercise this discretion, other than “based upon the undisputed factual circumstances detailed above.” Id. Because Patent Owner fails to adequately develop this argument, we do not exercise discretion to deny the Petition.” slip op. at 12
- Skill levelSkill level board ownDecided for petitioner
“For the purposes of this Decision, based on the limited record before us, we preliminarily agree with aspects of both parties’ characterizations, and disagree with other aspects. We focus on the experience aspect of Petitioner’s characterization. Although we agree with Patent Owner that, in the abstract, a trained mechanical engineer may not have the requisite knowledge to be a person of ordinary skill and a chemist may have the requisite knowledge, Petitioner’s characterization goes further, and requires three years of experience in blending polymer resins—the main technological aspect of not only the ’276 patent, but of Harris, Thomas, and Starita. See, e.g., Ex. 1001, 1:41–58 (disclosing that the composition is a blend of polymers); Ex. 1003, code (57) (stating that the disclosed composition is a melt blend of resins); Ex. 1005, 13 (indicating that Phase 2 is directed at blends of virgin and recycled resins); Ex. 1006, code (57) (indicating that it discloses melt blended HDPE). As we will discuss in greater detail below, in connection with our claim construction analysis, and analysis of Patent Owner’s arguments directed to the merits of Petitioner’s obviousness positions, we do not agree with Patent Owner that the ’276 patent requires extensive experience in working with granular resins. Also, Patent Owner and Mr. Thomas’s distinctions based on what constitutes a polyethylene supplier and Petitioner’s characterization of the required experience is deficient. See Prelim Resp. 17–19; Ex. 2002 ¶¶ 54–56. A person having ordinary skill in the art is a hypothetical person, not an actual person working at a specific type of facility. See, e.g., In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains.”). Accordingly, based on our review of the current record, including the ’276 patent and the prior art of record, we preliminarily determine that a person having ordinary skill in the art would have had a bachelor’s degree in chemical engineering or related engineering field, or chemistry, and three years of experience in blending polymer resins.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We determine that we need not expressly construe this claim term to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,570,276 - PTAB · Nov 19, 2021 · IPR2021-00857 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR on claims 1–35 and all petitioned grounds, including anticipation by Birnboim and obviousness over the listed combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Burden of Proof “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that one of the challenged claims is unpatentable. Additionally, the Supreme Court held that a decision to institute under 35 U.S.C. § 314(b) may not institute review on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with USPTO Guidance, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” See Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner contends that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Ex. 1002, ¶¶37–38. Pet. 9. At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 7. For the purposes of this Decision on Institution, we agree with Petitioner’s proposed level of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to comport with the teachings of the ’399 patent and asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner contends that we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use.” Pet. 7. Patent Owner does not dispute Petitioner’s definition of “stock solution” nor request that we construe any other claim at this time, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock solution” as Petitioner proposes. We note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). Furthermore, where “the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Patent Owner does not at this time directly dispute Petitioner’s contention that Birnboim discloses a stock solution of an aqueous composition, but does dispute that Birnboim discloses the aqueous composition as claimed. See Prelim. Resp. 8. Based on the current record, which shows that the Birnboim discloses a “stock solution of an aqueous composition,” we are satisfied Petitioner has shown that Birnboim meets the preamble to the extent it is limiting. slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,212,399 - PTAB · Nov 18, 2021 · IPR2021-00854 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–35 and all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that 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). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–35 of the ’240 patent on all grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A person of ordinary skill in the art . . . would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid 10 Koller, WO 91/02740, published Mar. 7, 1991. Ex. 1016. 11 Robert E. Farrell, Jr., Ph.D., “RNA Methodologies: A Laboratory Guide for Isolation and Characterization,” (3rd Ed., 2005). Ex. 1026. extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 7 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition at this stage. Prelim. Resp. 7. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’240 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner offer any position on the construction of any claim term. See Pet.; Prelim. Resp. 7. On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution. C. Principles of Law” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“and particularly claim 1. Petitioner provides a detailed analysis of where each element of claim 1 is found in Birnboim. Pet. 13–19. Specifically, Petitioner asserts that Birnboim’s Example 3 discloses an aqueous composition comprising the one or more chaotropes, one or more detergents, one or more reducing agents, one or more chelators, and one or more buffers, as recited in the claim. Id. at 13–18. Petitioner also asserts that “Birnboim’s reagents are present in an amount sufficient to perform the claimed functions.” Id. at 18–23 (heading capitalization normalized and underlining omitted).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,669,240
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.