- Florida Food Products, LLC v. Kerry Group Services Int’L Ltd.All claims unpatentablePTAB · Apr 26, 2023 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Voorde and Hara; the Board did not reach the remaining obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the invention would have had: a master’s or doctorate degree in food science, biology, chemistry, or a similar field; or a bachelor’s degree in food science, biology, chemistry, or a similar field along with at least 2-3 years of experience in food preservatives generally or more specifically 2-3 years of experience in the chemistry associated with food preservation and nitrates/nitrites [and] would have known that the USDA regulated nitrites for curing meat and would have been able to find these USDA regulations affecting meat products. Pet. 23–34 (citing Ex. 1002 ¶ 48). Kerry’s recitation of the level of ordinary skill in the art is nearly identical. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 43–44). To the extent the parties’ formulations of the level of skill differ, the differences do not appear to be material to any dispute between the parties or any issue of patentability that we must resolve. We determine that the level of ordinary skill the parties propose is consistent with the challenged patent and the asserted art, and adopt that level for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Petition, FFP addressed the construction of only one claim phrase, but also submitted that the construction of that phrase does not affect our decision in this case. Pet. 24. Specifically, FFP asked us to adopt a construction that “clarifies that the nitrite results from the added organism reducing the plant nitrate.” Id. at 25. Kerry does not address this construction, and we agree with FFP that construction of that claim phrase has no effect on our decision herein. Thus, we need not adopt it. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Upon review, we do not believe it is proper to adopt a blanket approach that would assign weight to the entirety of Dr. Baldwin’s 12 In its Sur-Reply, Kerry raises for the first time that, under its definition of the level of skill in the art, Dr. Baldwin is not himself a person of ordinary skill and therefore is not allowed to offer expert testimony from the perspective of a skilled artisan, citing Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). See Sur-Reply 15 n.1. To the extent that Kerry is seeking to disqualify Dr. Baldwin’s testimony in its entirety under Kyocera, we consider this to be a new argument that differs from Kerry’s initial argument that Dr. Baldwin’s testimony should be afforded little or no weight due to his lack of familiarity with the field of the ’304 patent. Because new arguments made for the first time in sur-reply are not permitted, we will only focus on Kerry’s initial challenge to the testimony of Dr. Baldwin. testimony, regardless of the subject of his particular opinions. It is clear that Dr. Baldwin has expertise in some areas of chemistry, while Dr. Milkowski’s experience is focused on other areas and emphasizes food chemistry. These differences in expertise may impact how we weigh the testimony of both witnesses, but that determination should be made in the context of a specific subject and based on the applicability of each witness’s background to the opinions. Therefore, we decline to adopt Kerry’s proposed approach of giving Dr. Baldwin’s testimony “little to no weight,” and instead will weigh the expertise of both witnesses in evaluating their testimony on specific areas of dispute, if necessary.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Upon review, we find that a person of ordinary skill in the art would have had reason to modify Voorde in the manner FFP suggests. Voorde explicitly discloses the advantages of heating the medium, and there is no disagreement that heating to 50–52°C would have resulted in at least some reduced microbial load, which is all that the claims require.13 Indeed, Voorde describes that as a result of heating to 50–52°C, its medium is “(partially) sterilized.” Ex. 1003, 7. Kerry’s argument that Voorde does not disclose starting with a “sterile medium” (PO Resp. 25) is unavailing; as discussed above, we do not interpret anything in claim 1 or the ’304 patent 13 At oral argument, Kerry raised for the first time a claim construction argument that “heat treating,” as recited in the claims, requires heating to a level in excess of what is required in Voorde, and a person of ordinary skill would have understood the term to refer to sterilization. Tr. 33:4–34:19, 55:3–9. We decline to address this late-arising argument fully, but note that we find that the ’304 patent does not support such a limited interpretation of the term “heat treating.” to require a sterile medium, and Kerry does not direct us to anything in the record that would persuade us otherwise.” slip op. at 18
Patent outcomesUS 11,071,304 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,071,304 - PTAB · Apr 13, 2023 · IPR2022-01577 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–10 on all petitioned grounds, finding a reasonable likelihood that claim 1 was anticipated by the HDI 3000 Manual.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’157 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, biomedical engineering, or a related discipline, along with relevant experience (at least 2–3 years for a Ph.D., 3–5 years for a Master’s, and 5+ years for a Bachelor’s) researching or developing ultrasound systems or other medical imaging devices. EX1008, ¶¶21–26. The POSA would have general knowledge of ultrasound systems and related technologies as of January 15, 2001. Id. Pet. 7–8. Patent Owner applies Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 5. We adopt the parties’ accepted definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In this case, Patent Owner’s assertion that its proposed construction is “consistent with the specification” fails to articulate or apply the proper standard. For example, any interpretation whose scope is equal to or narrower than a proper construction would logically be consistent with that proper construction. Thus, Patent Owner could only establish that its proposed interpretation is equal to or narrower in scope than the proper interpretation. Comparing the claims to prior art using a claim construction potentially narrower than what is claimed would not be a fruitful exercise because the claim could read on the prior art but not on the unduly narrow interpretation. Cf. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (holding that a broad claim is anticipated by any narrow disclosure falling within the broad claim). Patent Owner’s assertion that its proposed construction is consistent with examples in the specification is also not persuasive, and no more persuasive than its prior implication that its proposed construction is not inconsistent with the specification. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.” (internal quotation omitted)). Similar to the situation in i4i, Patent Owner here has failed to explain how the claim is clearly limited to the examples in the specification. Instead, we construe “information of object” to be an identification of the object to be studied in the ultrasound examination, based on its plain language in the context of the claimed ultrasound device. We are not apprised of any language, on this record, in the ’157 patent or prosecution history that otherwise constrains what types of “object” would be inspected by the claimed device. For example, there is no indication that the machine is less capable than other ultrasound machines in a way that limits its use to examinations of certain things in a body such as a liver or a heart, but not simpler things in a body such as blood vessels or more complex things such as a fetus. Accordingly, we see no reason to constrain “object” to something other than those things in a body that a person of ordinary skill in the art would investigate during an ultrasound examination.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It does not appear necessary at this time to specifically construe any other claim terms. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
Claim construction§ 102 anticipationcites Phillips · KSRPatents in suitUS 6,901,157 - PTAB · Apr 13, 2023 · IPR2022-01576 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–3 on all petitioned grounds, finding a reasonable likelihood that claim 1 is unpatentable over Petruzzelli.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’985 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, computer science, or a related discipline, along with relevant experience (at least 1– 2 years for a Ph.D., 2–3 years for a Master’s, and 3+ years for a Bachelor’s) researching or developing graphical user interfaces (GUIs) for ultrasound systems or other medical imaging devices. EX1007, ¶¶14–19. The person would have general knowledge of GUIs for ultrasound systems or other medical imaging devices as of April 18, 2014. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner asserts that no claim terms require construction at this stage. Pet. 15. Patent Owner does not offer any claim constructions, but does challenge Petitioner’s choice not to offer any claim constructions, and suggests that we should deny the Petition on that basis. Prelim. Resp. 75– 77. We find Patent Owner’s arguments unavailing. First, we note that the parties have not offered competing claim constructions, such that there is no specific claim construction issue between the parties at this time. Second, we note that we consider Petitioner’s interpretation of the claims sufficiently clear based on their application of the claims on the art. Thus, we are able to proceed without explicitly construing any claim terms, and we are not persuaded to deny on that basis. In view of the above, we do not construe any claim terms. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,538,985 - PTAB · Apr 13, 2023 · IPR2022-01575 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR on claims 1–6, 12, 13, and 15 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated and/or obvious over Halmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Considering the arguments presented in the parties’ briefs, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least 1 of the claims 1–6, 12, 13, and 15 of the ’168 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any terms require construction at this stage.” Pet. 10. At this stage of the proceeding, Patent Owner has not yet filed a response. For purposes of this decision, we do not expressly construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)), cert. denied, 138 S. Ct. 1695 (April 30, 2018) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We have reviewed Petitioner’s evidence and argument, and find that Petitioner has sufficiently shown that Halmann discloses this limitation of claim 1 for the purposes of institution.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,867,168 - PTAB · Apr 11, 2023 · IPR2022-01478 · APJ Christopher M Kaiser · IPR · Institution
Instituted review of claims 1–30 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’907 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–30 of the ’907 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson7 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“(“POSITA”) would have had “a Bachelor’s level college degree in Mechanical, Electrical, Materials or Chemical Engineering, or Science, including Chemistry or Physics or a related field and three to four years of training and experience in the design of electrochemical cells and batteries.” Pet. 5–6. Petitioner further contends that “[a]dditional work or research experience can substitute for a lesser or different education, and vice-versa.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner requests that all claim terms other than “disposed along” be afforded their plain and ordinary meaning, as understood by a POSITA at the time of the purported invention.” Pet. 9. Patent Owner asserts that its arguments “do not hinge on the outcome of an actual controversy about any claim construction.” Prelim. Resp. 12 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,907 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Apr 11, 2023 · IPR2022-01477 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would be unpatentable, including a sufficient motivation to remove Brown’s stacking mechanism.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 13. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, the “non-stacking variant” cited by Petitioner, Pet. 15, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Ex. 1005, 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 15 (citing Ex. 1002 ¶ 54); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,907 - PTAB · Apr 11, 2023 · IPR2022-01473 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one claim based on Higuchi and Kobayashi.
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 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’904 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–25 of the ’904 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In determining whether to exercise discretion to deny institution under 35 U.S.C. § 314(a), the Board considers the trial date in related litigation as part of an assessment of all relevant circumstances of the case, including the merits, in an effort to balance considerations such as system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in part, on § 314(a) because the parallel district court proceeding was scheduled to finish before the Board reached a final decision). In particular, the Board evaluates the following factors (“Fintiv factors”): 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv Order, 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson10 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; 10 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to whether the same or substantially the same art or arguments were previously presented to the Office, and factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id. 2. Examination of the ’904 Patent Although Patent Owner argues that the Petition asserts references previously in the Patent Office’s records, Patent Owner does not argue that the Examiner previously considered the combinations of art that the Petition raises, namely, the combination of Brown, Higuchi, and Fujita or the combination of Higuchi and Kobayashi. Resp. 33–34. And, to the extent that Patent Owner argues that substantially the same art was previously presented, the record does not persuasively establish how the art is substantially the same or how the art is now relied upon in the same manner. Resp. 33–34. As such, the record does not establish that the ’904 examination previously considered the art in a similar or cumulative way or to the same extent. As such, at least Becton, Dickinson factors (a), (b), (c), and (d) weigh against denial of institution. 3.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a singlecell battery. Id. at 3:1– 18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explain why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 19 (citing Ex. 1002 ¶ 57–59); see Ex. 1005, 1:11–18, 3:1–18. Mr. Juzkow’s testimony in this regard repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing significant reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Because Petitioner relies on its modified Brown with respect to Grounds 1A to 1E, we also conclude that that Petitioner does not, on this record, demonstrate a reasonable likelihood of prevailing in showing that any of claims 1–25 would have been obvious over the combined teachings of Brown, Higuchi, and Fujita. Pet. 18–31. Because of our determination regarding ground 2, however, this conclusion does not prevent institution. See SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). We invite the parties to develop the issue further at trial to the extent permitted under our rules and applicable law.14” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,904 - Amp Plus, Inc., Dba Elco Lighting v. DMF, Inc.Some claims unpatentablePTAB · Mar 27, 2023 · IPR2019-01094 · APJ Debra L Dennett · IPR · Remand
On remand, the Board held claim 22 not unpatentable over Imtra 2011 and Imtra 2007, alone or with Gifford, because Petitioner did not prove the obviousness grounds by a preponderance of the evidence.
RulingsRemand decision- BurdenNot shown unpatentable
“Petitioner bears the burden of proving unpatentability of the challenged claims, a burden that never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). In view of Petitioner’s failure to direct us to evidence sufficient to establish a person of ordinary skill in the art could have and would have installed the marine recessed lighting system disclosed in Imtra 2011 in a building, we find Petitioner fails to show obviousness of claim 22 over the combination of Imtra 2011 and Imtra 2007 by a preponderance of the evidence.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“D. Ground 3: Obviousness over Imtra 2011, Imtra 2007, and Gifford Petitioner fails to show that the Imtra references render claim 22 obvious. In the Final Decision we noted that Petitioner challenged several claims, including claim 22, as obvious over the combination of Imtra 2011, Imtra 2007, and Gifford, and determined that Petitioner failed to prove by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to modify the Imtra references in view of Gifford’s teaching. Id. at 48–49. The Federal Circuit affirmed our determination, which we maintain here. For these reasons, Petitioner fails to show obviousness of claim 22 over the combination of Imtra 2011, Imtra 2007, and Gifford by a preponderance of the evidence.” slip op. at 9
Patent outcomesUS 9,964,266 mixed§ 103 obviousnessPatents in suitUS 9,964,266 - PTAB · Mar 14, 2023 · IPR2022-01476 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–24, finding a reasonable likelihood that the asserted obviousness combinations would render at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“35 U.S.C. § 314(a), the Board considers the trial date in related litigation as part of an assessment of all relevant circumstances of the case, including the merits, in an effort to balance considerations such as system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in part, on § 314(a) because the parallel district court proceeding was scheduled to finish before the Board reached a final decision). In particular, the Board evaluates the following factors (“Fintiv factors”): 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (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 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a Bachelor’s level college degree in Mechanical, Electrical, Materials or Chemical Engineering, or Science, including Chemistry or Physics or a related field and three to four years of training and experience in the design of electrochemical cells and batteries.” Pet. 6. Petitioner further contends that “[a]dditional work or research experience can substitute for a lesser or different education, and vice-versa.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each 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. 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).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,905 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01474 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,905
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.