- Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaSome claims unpatentablePTAB · Dec 19, 2023 · IPR2022-01138 · APJ Richard H Marschall · IPR · Final written decision
Claims 1, 3–8, 10–16, and 18 are unpatentable over Goss; claims 2, 9, 17, and 19 were not shown unpatentable. The revised motion to amend is denied for lack of written-description support.
RulingsFinal written decision- BurdenFwd mixedMixed
“To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d). “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 burdens of proof in an inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 34 (citing Ex. 1004 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp. 23. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We generally agree with Petitioner that the assumptions and approximations made in the calculations described in the ’397 patent to determine the external surface area of the components of the litter render the computations only a general approximation of the respective surface areas. See Pet. Reply 9–12. We need not, however, reach the issue of whether the 47% surface area limitation requires the use of the multi-step method disclosed in the ’397 patent because Petitioner followed that methodology in its arguments and evidence in its Reply. See Pet. Reply 13. Importantly, Patent Owner agrees that Petitioner followed the approach set forth in the ’397 patent, and argues that we need not construe “external surface area” to resolve any dispute between the parties. See PO Sur-reply 23–24 (arguing that we need not “determine whether ‘total external surface area’ must be determined using the same multi-step approach” in the ’397 patent to resolve the controversy because “the only calculation of external surface area relied on by Petitioner was presented in the Reply and it followed the methodology of the [’]397 Patent”); PO Supp. Sur-reply 2 (same). Based on our review of the current record, we need not and do not formally construe any claim terms to resolve the patentability issues in this inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent some implicit claim construction disputes remain, we address those issues in the context of the challenges below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“review of the record, we find that Petitioner fails to articulate an adequate rationale for the combination of Goss and House. The Petition contains only a single sentence addressing the issue, without any citation to record evidence or declaration support. See Pet. 46. In addition, the assertion merely states the conclusion that a “PHOSITA would understand that there is a rational underpinning to combine the teachings of Goss and House as required under patent law because both are related to cat litter having similar characteristics.” Id. This assertion, at most, addresses the fact that Goss and House are in the same field or that they are analogous art, but does not explain why a PHOSITA would have been motivated to combine Goss and House. See id. In addition, the Petition lacks sufficient explanation of how Petitioner proposes to combine Goss and House. See Pet. 46–53. Instead, when Petitioner relies on House in this challenge, it appears to be a back-up argument in the event that we find Goss fails to disclose the limitation. Merely stating that Goss and House both disclose a limitation does not explain which aspects of House Petitioner proposes adding to Goss or what the resulting litter composition would look like. See id. The details of the resulting litter based on the combination of Goss and House matter here because it could impact whether all limitations of a given claim are satisfied by the combination. For example, Petitioner relies exclusively on specific examples from Goss for the 47% surface area limitation, but adding some aspects of House’s litter components to meet other limitations could undermine Petitioner’s reliance on Goss’s specific examples. The failure of the Petition to set forth a specific combination elides these issues. See Pet. 46–51. Petitioner’s Reply arguably addresses some of these concerns by providing a more fulsome motivation section, backed by new expert testimony, and specific litter examples based on Goss and various cellulose filler materials allegedly disclosed by House. See Pet. Reply 24–25 (citing Ex. 1013 ¶ 7); see also PO Sur-reply 18–22 (arguing that Petitioner’s Reply still fails to articulate an adequate motivation to combine). This analysis goes far beyond the limited analysis in the Petition, and Petitioner provides no reason why it could not have been included in the Petition. See Pet. Reply 24–25. As noted below, in some situations petitioners should be afforded the opportunity to go beyond the arguments in a petition when addressing a new claim construction or other new argument raised by a patent owner or an” slip op. at 17
Patent outcomesUS 11,026,397 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,026,397 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 18, 2023 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would be obvious, including a reasonable expectation of success in adding a distinguishing second tag.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16
§ 103 obviousnesscites GrahamPatents in suitUS 10,240,197 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 13, 2023 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16
§ 103 obviousnesscites GrahamPatents in suitUS 10,697,013 - PTAB · Nov 29, 2023 · IPR2023-00918 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claims 1–29 and all asserted grounds, finding at least Grounds 7–13 met the reasonable-likelihood threshold.
RulingsInstitution decision- Other 314aDenied
“The present Petition identifies thirteen Grounds, which employ a total of seven prior art references. See Pet. 1–2. Patent Owner contends that the Petition’s use of alternative combinations, within particular Grounds, results in “over twenty (20)” distinct bases for the invalidity of one or more claims. Prelim. Resp. 6. As Patent Owner concedes (id.), this is a far cry from the situation in Adaptics, where the Board confronted “hundreds of possible combinations.” Adaptics, 2019 Pat. App. LEXIS 4775, *25–*26. In addition, although the use of alternative prior art bases and string citations, in a petition, may present various challenges, we do not regard the present Petition as exceeding reasonable limits of particularity and specificity. Further, the alleged discrepancies in how the Petition “pars[es] the elements” of claim 28 (Prelim Resp. 7) do not appear to have impaired Patent Owner’s analysis thereof. See id. at 19–26, 39–43.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons provided below, we determine that Petitioner demonstrates a reasonable likelihood that it would prevail with respect to at least one claim of the ’620 patent challenged in the Petition. Specifically, at least Grounds 7–13 of the Petition satisfy this standard for instituting inter partes review.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“However, Petitioner, with reference to the Goldberg Declaration (Ex. 1002), argues that a sufficient reason exists, for combining Felt (Verizon) with Kerr, because “Kerr’s interfacing allows registration of the assets, and provides ease and control in human-machine interfacing,” which would have supported the distribution of targeted content. Pet. 14–15 (citing Ex. 1005 ¶ 96, Ex. 1002 ¶¶ 107–109). At the present stage of the proceeding, it appears that Petitioner has identified a sufficient reason to combine Felt (Verizon) with Kerr.” slip op. at 26
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“As to the issue of whether Muhire constitutes non-analogous art, Patent Owner identifies the proper inquiries, either of which would establish a reference as analogous art: (1) whether the reference is from the same field of endeavor as the claimed invention; and (2) whether the reference is reasonably pertinent to the problem faced by the inventor. Prelim. Resp. 33–34 (citing Bigio, 381 F.3d at 1325). However, Patent Owner does not analyze either inquiry, but merely states: “The Petition provides no evidence why a POSITA would look to making such a combination with the location tracking of Verizon; rather only a discussion of using separate layers is provided.” Id. at 34 (citing Pet. 35, Ex. 1002 ¶ 163). By contrast, Dr. Goldberg regards Muhire as being “focused in [sic] similar sector of technology” as the ’620 patent. Ex. 1002 ¶ 163. Further, Muhire addresses the delivery of customized advertising media content to online electronic devices (see Muhire ¶¶ 32–46) — a subject that could be regarded as the field of endeavor of the ’620 patent, which “relates to an online platform . . . for managing and/or delivering location and time based advertisements” (Ex. 1001, 1:20–24). Therefore, at this stage of the proceeding, we are not persuaded on the current record that Muhire constitutes non-analogous art.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,621,620 - Amcol International Corp. v. Oil-Dri Corporation Of AmericaSome claims unpatentablePTAB · Nov 29, 2023 · IPR2022-01107 · APJ Richard H Marschall · IPR · Final written decision
Claims 1, 3–8, 10–16, 18, and 19 are unpatentable over Goss; claims 2, 9, and 17 were not shown unpatentable, and the revised motion to amend was denied for lack of written description.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 14. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner makes a number of arguments, but we do not find them persuasive enough to undermine Petitioner’s showing based on Ms. Borgese’s analysis. Patent Owner’s primary argument stems from its assertion that the bulk densities vary depending on a number of variables and that Ms. Borgese bases her ranges on documents, the technical data sheets for FS-40 and the ’397 patent for BL(2), that have bulk densities that are not the “same” as the bulk densities for FS-40 and BL(2) in Goss due to the passage of time, differences in where the clay was mined, how the clay was processed, and how the bulk density was measured. See PO Resp. 18– 19, 21–33; PO Sur-reply 2, 5–9. We do not view Petitioner’s challenge as based on the premise that the FS-40 clay referenced in the technical data sheets and Blue Mountain clay in the ’397 patent are the exact same as the FS-40 and BL(2) clays in Goss, but instead the clays and their bulk densities are similar enough that they will fall within the bulk density ranges Petitioner uses in its calculations. See Pet. 21–23, 68; Pet. Reply 6–7, 10. As a result, Patent Owner’s repeated assertions that the clays or their properties are not the “same” or processed “exactly the same” fail to engage 5 Patent Owner suggests that Petitioner fails to meet the inherency standard because Ms. Borgese uses the term “potential” when describing the bulk density range of BL(2). See PO Resp. 32 (citing Ex. 1003 ¶ 117). We do not read Ms. Borgese’s opinion in the same manner. Instead, we read the reference to “the potential bulk density range of BL(2), 35–47 lbs/ft3” as referring to any bulk density within that range, not that there is only the mere potential that the bulk density may fall within that range. See Ex. 1003 ¶ 117. Petitioner’s argument that the bulk densities were at least similar, such that that they fall within the ranges Petitioner uses. See, e.g., PO Resp. 4, 21–24, 30–31; Ex. 2009 ¶¶ 97–98 (Dr. Johnston limiting opinion to whether the clays are the “same”). As an example, when asked about the potential differences in bulk density between Goss’s filing date in 1997 and the 1999 technical data sheet, Ms. Borgese states that “[b]entonite clays have not changed significantly in a period of two years.” Ex. 2008, 24:7–15; see also Ex. 1003 ¶¶ 202–203 (opining that “modest difference in particle-size distribution between FS-40 disclosed in Goss [and] . . . the FS-40 Information Sheet ’99 only minimally impacts the bulk density”). Given Ms. Borgese’s personal experience making animal litters and using bentonites, we view her testimony as credible absent some evidence that any differences in bulk density would fall outside the ranges she uses. Patent Owner provides no such evidence. Nearly all of Patent Owner’s evidence goes to whether the clays and bulk densities would be the exactly the “same” in Goss as in the sources that Ms. Borgese relies on, and do not address how similar the bulk densities would be and do not attempt to establish that there are bulk densities for Goss’s FS- 40 and BL(2) clays that would fall outside the ranges Ms. Borgese uses. In the rare instances where Patent Owner does argue that the bulk densities would not be similar, or would not fall within Dr. Borgese’s ranges, Patent Owner fails to cite any evidence to support the assertion. See PO Resp. 23, 32–33. Even if we found Dr. Johnston’s testimony generally credible on the point that bulk densities may differ across time even when mined and” slip op. at 28
- Expert testimonyPetitioner expert creditedDecided for petitioner
“persuasiveness of Petitioner’s arguments and evidence. Petitioner relies heavily on Ms. Borgese’s testimony, a chemical engineer with “firsthand experience in animal litter Process Development and Product Development creating animal litter from raw materials.” Ex. 1003 ¶¶ 3–4. Ms. Borgese has experience working with bentonite and fillers, and has validated test methods related to “particle size distribution, bulk density, moisture, [and] clump strength.” Id. ¶ 4. She also “used a variety of processing methods to produce animal litter” and is a named inventor on three animal litter patents. Id. Patent Owner does not dispute Ms. Borgese’s qualifications, does not 4 As to the whether Goss inherently discloses the 47% surface area limitation, Patent Owner does not dispute that Goss inherently discloses the limitation if Petitioner’s bulk density ranges are correct. See PO Resp. 15– 33. argue that she lacks firsthand experience that would enable her to testify as to the properties of the bentonite clays and litters at issue in this case, or otherwise dispute that she meets the parties’ agreed-upon definition of a person of ordinary skill in the art. Pet. 4–5; PO Resp. 14. That definition presumes “experience in animal litter process development” and “familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite).” Pet. 4–5. We find Ms. Borgese’s education and first-hand experience in animal litter process development, including experience with bentonite, sufficient to testify credibly as to the known bulk densities of the bentonite clays at issue in the case. As to Goss’s FS-40 sodium bentonite clay made by Wyo-Ben, Ms. Borgese opines that the range of bulk density for the material in Goss is between 58–64 lb/ft3 based on Wyo-Ben’s own technical data sheets from 1999 and 2002, which “describe the same (or similar) FS-40 (‘sodium bentonite’) composition.” Ex. 1003 ¶¶ 82–83, 106, 117; Pet. 21–22, 35. Then, in an effort “to be conservative in [her] analysis,” Ms. Borgese uses a broader range of 55–65 lb/ft3 for Goss’s FS-40 in her calculations. Ex. 1003 ¶ 117. Even when pushing her assumptions in directions that would result in the lowest possible external surface area percent for sodium bentonite, all of the calculations across the full range of potential bulk densities still meet the 47% surface area limitation. Id. ¶¶ 117–122; Pet. 43–46. Based on our review of the arguments and evidence, we find Ms. Borgese’s testimony as to the range of Goss’s FS-40 bulk density credible and persuasive.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“Borgese relies on (Exhibits 1018 and 1024), but the effort lacks procedural and substantive merit. Patent Owner’s argument in its Patent Owner Response describes the documents as “[i]nadmissible” without seeking any specific relief, but Patent Owner’s Sur-reply makes clear that Patent Owner seeks exclusion. See PO Resp. 20; PO Sur-reply 13. While Patent Owner seeks to exclude these documents, it fails to follow our rules applicable to such efforts. Our rules require objections to evidence to be filed within specific timeframes, and a “motion to exclude evidence must be filed to preserve any objection.” 37 C.F.R. § 42.64(c). In addition, the “motion must identify the objections in the record in order and must explain the objections.” Id. Patent Owner failed to file a separate “motion” or even refer to its hearsay arguments as a “motion” despite the fact that it seeks to exclude evidence. PO Resp. 20. Nor did Patent Owner “identify the objections in the record” in support of its “motion.” Id. In addition, Patent Owner fails to cite any authority that permits what amounts to a motion to exclude within the confines of the merits briefing, which forced Petitioner to devote space in its merits brief to opposing the motion to exclude. See id.; Pet. Reply 19–23. Under these circumstances, we deny the motion as procedurally improper. In addition, even if we reached the merits, we would not exclude the documents or Ms. Borgese’s opinions based on them given that she reasonably relied on the technical data sheets as reliable sources of bulk density data provided by Wyo-Ben, the manufacturer of the clays in question. See Pet. Reply 22–23; Ex. 1003 ¶¶ 82–83.” slip op. at 32
Patent outcomesUS 11,026,397 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,026,397 - Life Vac, LLC v. Dcstar Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00032 · APJ Michael L Woods · PGR · Institution
The Board denied institution because the petition did not show that claims 1–17 were more likely than not unpatentable over Lih, Tarrats, and da Costa or anticipated by Lih.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institute an post-grant review if “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition fails to demonstrate that it is more likely than not that at least 1 of the Challenged Claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposed definitions are similar, with a primary difference being that Petitioner’s definition more broadly includes people having experience with “medical devices in general.” Compare Pet. 18–19, with Prelim. Resp. 6–7. Patent Owner contends that Petitioner’s standard is “unreasonably broad,” arguing that Patent Owner’s definition for a skilled artisan “more reasonably focuses on the nature of the subject invention.” Prelim. Resp. 7. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We are not persuaded that a skilled artisan would have necessarily required experience with respiratory devices, as Patent Owner proposes. See Prelim. Resp. 6–7. We find Petitioner’s definition, which would include “a mechanical or biomedical engineer with at least 5 years of experience in designing or developing medical devices in general,” is consistent with the ’575 patent and the asserted prior art. Pet. 18–19; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expressly construes “bottom plate” and “check valve.” See Pet. 20–21. Patent Owner proposes a construction for “bottom plate,” “check valve,” and “connector.” Prelim Resp. 8–11. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Each of the Challenged Claims requires a connector with a “bottom plate,” yet Petitioner fails to explain how the combined references would yield a connector with such a plate. See Prelim. Resp. 30–33 (arguing the same); see also Ex. 1001, 10:14–17 (independent claim 1), 10:46 (independent claim 3), 11:63 (independent claim 9); 12:35–36 (independent claim 13). Neither of Lih’s connector (element 118, Fig. 3) nor Tarrats’s “connector” (element 15, Fig. 1) has a “plate,” and Petitioner fails to explain how the lower surface of da Costa’s piston is being used to modify Lih’s or Tarrats’s connector to satisfy the claimed structure. See 35 U.S.C. § 322(a)(3); see also 37 C.F.R. § 42.204(b)(5); see also Pet. 28–29. Further, Petitioner relies on da Costa’s heart resuscitating device, rather than its dechoking device, in modifying Lih. See Pet. 29 (citing da Costa’s Figure 6 and relief valves 55, 56). da Costa’s heart resuscitation device, however, is used for pumping air into a patient’s lungs for the purpose of initiating blood circulation in the event the patient’s heart stopped working. See, e.g., Ex. 1005, 6:43–52. The pressure relief valves cited by Petitioner are presumably used to prevent over-pressurizing and under-pressurizing the patient’s lungs, which we understand would be dangerous for the patient. We do not see a skilled artisan as incorporating da Costa’s pressure relief valves into Lih’s choking intervention device, which is structured to prevent pumping air into a patient. See, e.g., Ex. 1004, 4:3–5 (“bellows assembly 102 may include a relief valve 108 configured to allow air to escape . . . when the bellows 104 is being compressed”). Petitioner explains that the combination would “avoid pushing the obstruction farther into the user’s airway while in use and to initiate blood circulation” (see Pet. 29), yet Lih’s valve 108 already “avoid[s] pushing the obstruction farther into the user’s airway” and “initiat[ing] blood circulation” benefits a heart-resuscitation device, not Lih’s dechoking device. Accordingly, we agree with Patent Owner that the proposed combination lacks sufficient reasoning. See Prelim. Resp. 33–37. We further agree with Patent Owner that modifying Lih’s device so that it pumps air into a patient’s lungs for the purpose of “initiating blood circulation,” as reasoned by Petitioner (see Pet. 29), would render Lih’s device unsuitable as a dechoking device, which is its intended purpose. See Prelim. Resp. 37–38 (arguing the same). To reiterate, Lih’s dechoking device avoids introducing air into the patient’s lungs, which would further lodge an obstruction in the patient’s trachea. See Ex. 1004, 4:3–5.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,478,575 - PTAB · Nov 29, 2023 · IPR2023-00919 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR of claims 1–23 on all asserted grounds, finding a reasonable likelihood of success for claims 1–12 over Felt, Creemer, and Scofield and claims 1–23 over Adharapurapu and Felt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition and Preliminary Response, we determine that the information presented at least shows a reasonable likelihood that Petitioner would prevail in establishing that (1) claims 1–12 would have been obvious over the combined disclosures of Felt, Creemer, and Scofield (Ground 4) and (2) claims 1–23 would have been obvious over the combined disclosures of Adharapurapu and Felt (Ground 6). Accordingly, we institute inter partes review of the Challenged Claims under all grounds asserted in the Petition. CTPG 5 (“In instituting a trial, the Board will either (1) institute as to all claims challenged in the petition and on all grounds in the petition, or (2) institute on no claims and deny institution.”).” slip op. at 53
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposed definitions are similar, as both allow for additional education to compensate for less working experience. Compare Pet. 3, with Prelim. Resp. 6. The definitions are distinguished, however, as Patent Owner proposes that a skilled artisan have “three years of experience working with digital advertising and geofencing” (Prelim. Resp. 6), whereas Petitioner’s definition more generally requires “two to three years of practical experience” (Pet. 3). For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We disagree that a skilled artisan would have specific working experience with digital advertising and geofencing, as Patent Owner proposes. See Prelim. Resp. 6. We find Petitioner’s definition, which more generally requires practical working experience, is consistent with the ’108 patent and the asserted prior art. Pet. 3; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Whether we adopt Petitioner’s or Patent Owner’s proposed level of skill, however, would not change the outcome of this Decision, based on the similarity in qualifications proposed by each party.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“At this stage of the proceeding, we disagree that “consumer” should be construed so narrowly as limited to a “user or person to whom an advertisement is sent to elicit engagement.” Prelim. Resp. 7. The description cited by the Patent Owner, which is expressly “not limited to” the examples provided, does not use the term with the requisite clarity, deliberateness, or precision to support Patent Owner’s proposed definition. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘. . . set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). Although the Specification of the ’108 patent describes targeting consumers through an advertising platform, the Specification does not suggest that the word “consumer” is limited to a “user or person to whom an advertisement is sent to elicit engagement,” as advanced by Patent Owner (see Prelim. Resp. 7), presumably excluding people who are not sent the targeted advertising. See, e.g., Ex. 1001, 8:35–57. At this stage of the proceeding, we decline to import limitations from the Specification into the claim where we do not see a clear definition or disavowal of claim scope to limit the meaning of the claim. See, e.g., SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As to the Notice of Allowance, and at this stage of the proceeding, we further disagree with Patent Owner that the Examiner defined the term as Patent Owner proposes. See Prelim. Resp. 8 (quoting Ex. 2001, 41). Rather, we find that the Examiner was simply using the term “consumer” in the context of an “advertising distribution campaign,” as broadly recited in the claims. See, e.g., Ex. 1001, 38:44–39:3. Nothing in the Notice of Allowance supports Patent Owner’s construction that the term “consumer” should be limited to a “user or person to whom an advertisement is sent to elicit engagement,” while excluding those people who are not sent an advertisement “to elicit engagement.” See Prelim. Resp. 7–8. Accordingly, at this stage of the proceeding, we decline to adopt Patent Owner’s narrow construction of the term “consumer,” and rather give it its plain and ordinary meaning.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“2. “course of travel” Both parties propose that the term “course of travel” should be given its plain and ordinary meaning. Prelim. Resp. 8; see also Pet. 3. We agree. Indeed, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See Phillips, 415 F.3d at 1312–14. If either party desires to propose an express construction for the term, or otherwise disagrees that the plain and ordinary meaning applies, that party shall propose its construction in its respective Patent Owner Response or Petitioner Reply.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,692,108 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Nov 14, 2023 · IPR2023-01030 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–29 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
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim. See 35 U.S.C. § 314(a). Accordingly, we deny the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15–16. Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. See generally, Prelim. Resp. For this Decision, we adopt and apply Petitioner’s proposal for the level of skill in the art, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes constructions of four limitations: “insertional enzyme complex,” “nucleic acid insert element,” “adapter sequence,” “barcode sequence,” and “tagged fragments.” Pet. 20–23. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 15. We determine that none of the four limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’207 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:58–64. This is the meaning that we apply in this Decision.” slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,619,207 - Popsockets LLC v. Flygrip, Inc.All claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00938 · APJ Hyun J Jung · IPR · Final written decision
Claims 2 and 8 are unpatentable as obvious over Nakai and Grinfas; the Board did not reach the Zoller–Grinfas or Damon–Grinfas grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Turning to extrinsic evidence, definitions for “cone” include “a solid bounded by a circular or other closed plane base and the surface formed by line segments joining every point of the boundary of the base to a common vertex” (Ex. 1039) and “[i]n a right circular cone, the directrix is a circle” but “need not be a circle” (Ex. 1042). See also Ex. 1043; Ex. 1044. The extrinsic evidence indicates that “cone,” and thus the related word “conical,” would not exclude pyramidal shapes. While we would agree with Patent Owner that “conical” means “that it pertains to the shape of a cone” (PO Resp. 6; Ex. 2014 ¶ 76), that interpretation does not help us resolve the parties’ dispute regarding whether Grinfas teaches or suggests a “conical” structure. We agree with Petitioner that we “do[] not need to explicitly define ‘conical’” and “only need[] to determine whether ‘conical’ is limited to structures with a circular base/cross-section, or whether it includes bases of other shapes” to resolve the parties’ dispute. Pet. Reply 2 In view of the above, based on the full record, we determine that one of ordinary skill in the art would understand that the term “conical” does not exclude cones with a pyramidal shape. 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 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to interpret expressly “telescoping” to resolve the parties’ dispute because, as discussed below, Petitioner shows that its proposed combinations teach or suggest “telescoping,” even under Patent Owner’s view that “telescopic systems . . . have sections of material that “material to flex and fold over itself.” Realtime Data, 912 F.3d at 1375.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Because Petitioner contends that one of ordinary skill in the art would have had “a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design” (Pet. 8 citing Ex. 1032 would have had a “bachelor’s degree in a technical field and at least 1 year of experience with product development” (PO Resp. 11–12 (citing Ex. 2014 ¶ 17)), the parties substantially agree with respect to these aspects of their proposals for the level of ordinary skill. Petitioner contends, in the alternative, that the ordinarily skilled artisan would have had “five years or more of experience in mechanical product design,” but Patent Owner alternatively contends that the ordinarily skilled artisan would have had “a college degree in a non-technical field and at least 3 years of experience in product development.” Pet. 8; PO Resp. 12 (emphases added). Petitioner’s alternate person of ordinary skill in the art requires more years of experience than Patent Owner’s alternate person of ordinary skill in the art. See Pet. 8; PO Resp. 12. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art would have had “would have had either five years or more of experience in mechanical product design, or a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design.” Pet. 8 (citing Ex. 1032 ¶¶ 26–27). Based on the full record and for the reasons below, even if we adopted Patent Owner’s proposed level of ordinary skill, our determination would be the same.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“Patent Owner does not identify sufficiently why Exhibits 1005, 1006, 1013–1023 and 1025–1031 are not authentic. Paper 23, 1–2. Patent Owner also does not argue sufficiently why these exhibits must be shown to be accessible to the interested public. Id. at 2–4. None of these exhibits are asserted to be a prior art publication or part of Petitioner’s grounds for challenging the claims. See Pet. 9–11. Moreover, Petitioner’s declarant considered Exhibits 1005, 1006, 1013–1023 and 1025–1031, along with others, for the declaration filed with the Petition. Ex. 1025 ¶ 5. These exhibits show the basis for the testimony in the declaration, and an expert may rely on hearsay in forming an opinion under Federal Rules of Evidence 703. To the extent they are hearsay, we would limit their purpose to showing the basis for testimony. Also, dictionary definitions are routinely considered extrinsic evidence that may shed light on the plain and ordinary meaning of a claim term. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (“Within the class of extrinsic evidence, the court has observed that dictionaries . . . can be useful in claim construction.”) (citation omitted). For the reasons explained by Petitioner (Paper 24, 6), the definitions were not offered for the truth of the matter asserted, and, thus, we do not consider these exhibits hearsay. proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We also do not rely on any of Exhibits 1005, 1006, 1013–1023 and 1025–1031 to reach our determination. In view of the above, Patent Owner’s Motion to Exclude Exhibits 1005, 1006, 1013–1023 and 1025– 1031 is denied.” slip op. at 10
Patent outcomesUS 10,800,024 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,800,024 - Popsockets LLC v. Flygrip, Inc.All claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00937 · APJ Hyun J Jung · IPR · Final written decision
Claims 2 and 8 are unpatentable under § 103 over the ’476 Publication and Hobbs because that combination teaches all limitations and has a supported motivation to combine.
RulingsFinal written decision- Strike new argumentDenied
“evidence with its Sur-reply, “other than deposition transcripts of the cross-examination of any reply witness,” but Petitioner does not explain adequately why these exhibits constitute “new evidence” to Petitioner, when they are, or should have been, the bases of its analysis regarding the asserted priority date of the challenged claims. See Pet. 17–41 (analyzing the asserted priority documents, the chain of priority to the Provisional Application, and the prosecution history of the ’024 patent). Some of the exhibits, such as Exhibits 2027 and 2028 (the as-filed grandparent and parent applications), should have already been included in the record. Patent Owner also violates our Rule 42.6(d), which states that “[a] document already in the record of the proceeding must not be filed again, not even as an exhibit or an appendix, without express Board authorization.” If we granted Petitioner’s motion, then Patent Owner’s citations to some documents already of record, and filed by Petitioner, would become meaningless and would deprive us of the ability to analyze documents already properly filed in view of the parties’ arguments. For the reasons above and on the facts of this proceeding, Petitioner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We, therefore, deny Petitioner’s Motion to Strike.” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“1012–1019, along with others, for the declaration filed with the Petition. Ex. 1025 ¶ 5. These exhibits show the basis for the testimony in the declaration, and an expert may rely on hearsay in forming an opinion under Federal Rules of Evidence 703. To the extent they are hearsay, we would limit their purpose to showing the basis for testimony. Also, dictionary definitions are routinely considered extrinsic evidence that may shed light on the plain and ordinary meaning of a claim term. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (“Within the class of extrinsic evidence, the court has observed that dictionaries . . . can be useful in claim construction.”) (citation omitted). For the reasons explained by Petitioner (Paper 24, 6), the definitions were not offered for the truth of the matter asserted, and, thus, we do not consider these exhibits hearsay. For the reasons above, Patent Owner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We also do not rely on any of Exhibits 1004–1008 and 1012– 1019 to reach our determination. In view of the above, Patent Owner’s Motion to Exclude Exhibits 1004–1008 and 1012–1019 is denied.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design” (Pet. 11) and Patent Owner contends that one of ordinary skill in the art would have had a “bachelor’s degree in a technical field and at least 1 year of experience with product development” (PO Resp. 14), the parties substantially agree with respect to these aspects of their proposals for the level of ordinary skill. Petitioner contends, in the alternative, that the ordinarily skilled artisan would have had “five years or more of experience in mechanical product design,” but Patent Owner alternatively contends that the ordinarily skilled artisan has “a college degree in a non-technical field and at least 3 years of experience in product development.” Pet. 11; PO Resp. 14 requires more years of experience than Patent Owner’s alternate person of ordinary skill in the art. See Pet. 11; PO Resp. 14. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art “would have had either (1) five years or more of experience in mechanical product design, or (2) a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design.” Pet. 11 (citing Ex. 1025 ¶¶ 25– 27). Based on the full record and for the reasons below, even if we adopted Patent Owner’s proposed level of ordinary skill, our determination would be the same.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that, in this proceeding, “conical” does not require an express interpretation to resolve the parties’ disputes. 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)). In the related proceeding, we determined that one of ordinary skill in the art would understand that the term “conical” does not exclude cones with a pyramidal shape. PopSockets LLC v. Flygrip, Inc., IPR2022-00938, Paper 29 at 19 (PTAB Oct. 30, 2023). To the extent any issue in this proceeding would implicate the interpretation of “conical,” we apply the same determination.” slip op. at 15
Patent outcomesUS 10,800,024 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,800,024
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.