• Kohler Co. v. Delta Faucet Co.All claims unpatentable
  PTAB · Feb 18, 2026 · IPR2024-00700 · APJ Jane E Inglese · IPR · Remand

  On remand, the Board held claims 1–24 unpatentable as obvious over the asserted prior-art grounds, including Tseng’s disclosure of side-emitted light under the Director’s construction.

  RulingsRemand decision

  • RemandOther

    “We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand from Director Review is entered pursuant to 35 U.S.C. § 318(a). Having reviewed the complete trial record pursuant to the Director Review Order, we determine that Petitioner has shown, by a preponderance of the evidence, that the challenged claims are unpatentable.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s definition of a POSITA. Petitioner’s witness (Mr. Cook) qualifies as a POSITA under this definition, and, therefore, is qualified to opine from the perspective of a POSITA on technical matters included within the areas of expertise prescribed by the definition. As indicated above, Petitioner’s definition of a POSITA does not require education in the field of optics and professional experience designing or analyzing optical apparatus, unlike Patent Owner’s definition. We are aware, however, that Patent Owner’s witness (Dr. Klopp) has more extensive experience with optical systems and methods than Petitioner’s witness (Mr. Cook). Compare Ex 1003 ¶¶ 8–14, Ex. 2005, 39:21–59:17, with Ex. 2003 ¶¶ 3–20, Ex. 2004, 1–2, Ex. 1015, 10:22–13:25. Although Mr. Cook possesses excellent credentials in the field of mechanical engineering, his experience in the design and analysis of optical systems and methods is sparse and insubstantial compared to that of Dr. Klopp. Id. Due to this difference in experience levels, in instances where the witnesses express differing views on factual issues related to optical systems and methods, we accord more weight to Dr. Klopp’s testimony than to Mr. Cook’s.” slip op. at 9

  • Expert testimonyPatent owner expert creditedDecided for patent owner
  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The Director’s Order instructs us to adopt its interpretation of the recitation in claim 10 of “an outer illumination surface extending perpendicular to the longitudinal axis of the housing” (“the disputed limitation”) as being “satisfied by any amount of light emitted from the side surface.” Order 3. We, accordingly, construe the disputed limitation of claim 10 as a surface extending perpendicular to the longitudinal axis of the housing through which any amount of light is emitted from the side surface.” slip op. at 10

  Patent outcomesUS 10,393,363 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,393,363
• Kohler Co. v. Delta Faucet Co.Some claims unpatentable
  PTAB · Oct 1, 2025 · IPR2024-00700 · APJ Jane E Inglese · IPR · Final written decision

  Claims 1, 2, and 9 are unpatentable as obvious; claims 3–8 and 10–24 were not shown unpatentable because the asserted references failed to establish limitations including the claimed light pipe features.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s definition of a POSITA. Petitioner’s witness (Mr. Cook) qualifies as a POSITA under this definition, and, therefore, is qualified to opine from the perspective of a POSITA on technical matters included within the areas of expertise prescribed by the definition. As indicated above, Petitioner’s definition of a POSITA does not require education in the field of optics and professional experience designing or analyzing optical apparatus, unlike Patent Owner’s definition. We are aware, however, that Patent Owner’s witness (Dr. Klopp) has more extensive experience with optical systems and methods than Petitioner’s witness (Mr. Cook). Compare Ex 1003 ¶¶ 8–14, Ex. 2005, 39:21–59:17, with Ex. 2003 ¶¶ 3–20, Ex. 2004, 1–2, Ex. 1015, 10:22–13:25. Although Mr. Cook possesses excellent credentials in the field of mechanical engineering, his experience in the design and analysis of optical systems and methods is sparse and insubstantial compared to that of Dr. Klopp. Id. Due to this difference in experience levels, in instances where the witnesses express differing views on factual issues related to optical systems and methods, we will accord more weight to Dr. Klopp’s testimony than to Mr. Cook’s.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “through the light transmission portion and bottom output face 313 of light conductor 38, which teaches transmitting light in parallel with the longitudinal axis of the housing. Tseng does not disclose or teach that light is emitted through the side surface of annular protrusion 383 in a direction perpendicular to the longitudinal axis of the housing. Ex. 1004 ¶ 97. Petitioner’s assertions that this would be the case consist solely of conclusory statements, supported only by citations to Mr. Cook’s declaration. Mr. Cook, however, simply repeats Petitioner’s conclusory statements, without providing sound technical reasoning supported by objective evidence to explain and support his opinions. Ex. 2003 ¶¶ 101– 102, 105, 195–198, 202. We, therefore, accord little weight to Mr. Cook’s opinion on this particular matter because it “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” and “does not cite to any additional supporting evidence or provide any technical reasoning [in] support.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Furthermore, Mr. Cook’s opinion conflicts with that of Patent Owner’s witness, Dr. Klopp, who opines that a “POSITA would understand from Tseng’s third embodiment that light from the LED would bypass the annular protrusion 383 of outer cliff 381, while transmitting downwardly toward the output face 313.” Compare Ex. 1003 ¶¶ 174–175, 190–194, with Ex. 2003 ¶¶ 101–102, 105. As discussed above, Mr. Cook is qualified to opine from the perspective of a POSITA on technical matters included within the expertise of a person meeting Petitioner’s definition of a POSITA, which do not include optics and optical apparatus. We, therefore, credit Dr. Klopp’s opinion over that of Mr. Cook on this particular factual issue of how it is directly related to optical systems and methods about which Mr. Cook possesses limited relevant experience. See Ex. 1003 ¶¶ 6–15 (experience in communication systems and electronics); Ex. 2005, 55:16–58:19 (design experience with electronics that use indicator lights or fiber-optic communications; no professional experience with light pipes, diffusers, or plumbing fixtures). Dr. Klopp possesses substantial research and professional experience with optical methods, fiber optic light pipes, light guides, diffusers, prisms, and analysis of faucets, spray heads, and plumbing fixtures. See Ex. 2003 ¶¶ 6–10 Supra 8 (discussing weight accorded to conflicting witness testimony); see also Resp. 2–3 (arguing that “Petitioner’s expert, Mr. Cook, is a mechanical engineer with substantial professional experience in electronics for high-voltage power systems and communications, but he has limited experience with the claimed subject matter.”).” slip op. at 34

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

    “would be used to construe the claim[s] in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it applies the plain and ordinary meaning of the claim terms. Resp. 7. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of resolving the dispute before us.” slip op. at 9

  • BurdenMixed

    “perpendicular to the longitudinal axis of Tseng’s housing (internal 33 and external 34 sleeves). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)).” slip op. at 40

  Patent outcomesUS 10,393,363 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,393,363
• Posco Future M Co., Ltd. v. Camx Power LLCInstitution denied
  PTAB · Feb 5, 2025 · IPR2024-01229 · APJ Jane E Inglese · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was anticipated or obvious over the asserted references.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2

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

    “Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“First, we look to the words of the claims themselves . . . to define the scope of the patented invention.”). Claim 1 recites a particle that comprises (1) a plurality of crystallites comprising (a) a first composition (i) having a layered α- NaFeO2-type structure and (ii) comprising lithium, nickel, and oxygen; and (2) a grain boundary between adjacent crystallites of the plurality of crystallites and comprising (a) a second composition (i) having the layered α-NaFeO2-type structure, a cubic structure, or a combination thereof, and (ii) a concentration of cobalt in the grain boundary greater than a concentration of cobalt in the crystallites. The plain language of claim 1 thus indicates that the grain boundary has a composition (i.e., a “second composition”) distinct from that of the adjacent crystallites (i.e., a “first composition”), and that the grain boundary may have the same structure (i.e., a layered α-NaFeO2-type structure) or a different structure (i.e., a cubic structure, or a combination of a cubic structure and a layered α-NaFeO2-type structure) than the adjacent crystallites. The plain language of claim 1 thus structurally distinguishes the grain boundary from the adjacent crystallites by specifying that the grain boundary has a concentration of cobalt greater than that of the concentration of cobalt in the crystallites.” slip op. at 9

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

    “Petitioner, however, does not provide any evidence to establish that any such identity of empirical formulas means that Lampe-Onnerud’s cathode material necessarily has the same microstructure as the particle of claim 1. In particular, even if the empirical formula of Lampe-Onnerud’s core material is the same as that of the ’317 patent’s first composition, Petitioner does not provide evidence establishing that it necessarily follows that Lampe-Onnerud’s core is a polycrystalline material having a plurality of crystallites separated by grain boundaries between adjacent crystallites. Nor does Petitioner provide evidence establishing that it necessarily follows from any identity between the empirical formula of Lampe-Onnerud’s coating material and the ’317 patent’s second composition that Lampe-Onnerud’s coating material necessarily is present in grain boundaries at a higher concentration than in crystallites, assuming that Lampe-Onnerud’s material is comprised of a plurality of crystallites having grain boundaries between adjacent crystallites. Furthermore, although Petitioner’s declarant, Dr. Aurbach, indicates that Lampe-Onnerud’s process “begins with a conventional lithium nickel oxide-base material . . . known to be comprised of secondary articles having agglomerated primary particles and grain boundaries,” Dr. Aurbach does not provide any objective evidence to substantiate this asserted knowledge in the art. Ex. 1002 ¶ 110. We, therefore, accord little weight to Dr. Aurbach’s opinion on this issue. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 18

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Furthermore, although Petitioner’s declarant, Dr. Aurbach, indicates that Lampe-Onnerud’s process “begins with a conventional lithium nickel oxide-base material . . . known to be comprised of secondary articles having agglomerated primary particles and grain boundaries,” Dr. Aurbach does not provide any objective evidence to substantiate this asserted knowledge in the art. Ex. 1002 ¶ 110. We, therefore, accord little weight to Dr. Aurbach’s opinion on this issue. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,391,317
• Kohler Co. v. Delta Faucet Co.Instituted
  PTAB · Oct 4, 2024 · IPR2024-00700 · APJ Jane E Inglese · IPR · Institution

  The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that Kohler would prevail on at least one claim.

  RulingsInstitution decision

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

    “Petitioner provides sufficient information for purposes of institution to show that Tseng discloses or would have suggested a translucent light pipe defining a closed loop to diffuse light from light emitters outwardly away from a housing. Tseng’s Figures 30 and 37 show that rib 371 and protrusion 383 of translucent light conductors 37, 38 (light pipes), respectively, are both shaped as unbroken circles. Ex. 1004, Figs. 37, 38; see also id. ¶ 24 (describing “circular” rib), ¶ 26 (indicating that the “light conductor is formed in a sleeve shape”). Tseng discloses that light from LED elements 40 enters input face 311 of Tseng’s light conductors 37, 38, travels through transmission portion 312, and is emitted through downward facing output face 313. Ex. 1004 ¶¶ 91, 94, 97, 98, Figs. 30, 31, 35, 36, 37. Light is also emitted from outwardly extending annular rib 371 and protrusion 383 of light conductors 37, 38, respectively, which “enhance[s] light transmission.” Id. Petitioner, therefore, provides sufficient information to show that Tseng’s translucent light conductors 37, 38 (light pipes) define a closed loop to diffuse light from LED elements 40 (light emitters) outwardly away from external sleeve 34 (housing).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had a degree in industrial design or an equivalent field, and two years of professional experience working with kitchen, bath, or other plumbing fixtures (or similar products), or an equivalent level of skill, knowledge, and experience. Pet. 14. Petitioner asserts that a POSITA also would have been aware of, and generally knowledgeable about, the standard features and functionality of kitchen, bath, or other plumbing fixtures (or similar products). Id. Patent Owner neither adopts nor disputes Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s definition of a POSITA, which is undisputed on this record, and is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 7

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

    “C. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action held under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it “has applied the plain and ordinary meaning of the claim terms.” Prelim. Resp. 10. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.7” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “its sprayhead by routing an electric wire connected to an external power supply through the shower head. Pet. 44 (citing Ex. 1004 ¶ 68, Figs. 1–5). Petitioner asserts that because Tseng’s shower head is designed to be pulled out, the wire is subject to stress and strain, which could lead to failure over time. Id. (citing Ex. 1003 ¶¶ 251–253). According to Petitioner, incorporating Mizuno’s hydroelectric generator into Tseng’s shower head would obviate the need for an external power supply or battery, which would reduce installation and operation costs, prevent a potential wiring failure, and eliminate periodic battery replacement. Id. at 45 (citing Ex. 1003 ¶¶ 257–260). Petitioner asserts that a person of ordinary skill in the art, therefore, would have been motivated to incorporate Mizuno’s hydroelectric generator into Tseng’s shower head, and would have had a reasonable expectation of success in doing so because Mizuno’s hydroelectric generator is designed and intended to be integrated into a faucet’s shower head to reliably power LEDs. Id. at 45–46 (citing Ex. 1008 ¶¶ 1, 2). Patent Owner counters that a person of ordinary skill in the art would not have had any reason to modify Tseng in view of Mizuno. Prelim. Resp. 32. Patent Owner contends that Tseng expressly set out to develop a design that includes electrical wiring, and did so successfully by improving the integration of electrical wiring into its shower head design. Id. at 33–34 (citing Ex. 1004 ¶¶ 9, 102–110). Patent Owner further contends that a person of ordinary skill in the art would not have been motivated to completely redesign Tseng’s shower head to change the power source entirely to eliminate wiring. Id. Patent Owner contends that a person of ordinary skill in the art also would not have had a reasonable expectation of success in incorporating Mizuno’s hydroelectric generator into Tseng’s shower head because Tseng explicitly discloses that the space in its shower head is narrow. Id. at 36 (citing Ex. 1004 ¶¶ 7, 108). According to Patent Owner, Mizuno’s hydroelectric generator requires room for additional components beyond the hydrogenator, including a voltage stabilizer, cooling components, and a relief valve, which Patent Owner contends would have discouraged the ordinarily skilled artisan from a major redesign of Tseng’s faucet necessary to incorporate these elements. Id. at 37. We have considered Petitioner and Patent Owner’s assertions for ground 2. Because Petitioner demonstrates a reasonable likelihood of prevailing in its challenge to the patentability of claim 1 for ground 1, resolution of the disputed factual issues raised by Petitioner and Patent Owner in ground 2 is best left for trial after full development of the record.” slip op. at 22

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,393,363
• Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentable
  PTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. See 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

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed

    “Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed

    “The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22

  Patent outcomesUS 10,689,740 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 10,689,740
• Tesla, Inc. v. Relink US LLCInstitution denied
  PTAB · Jul 16, 2024 · IPR2024-00389 · APJ Jane E Inglese · IPR · Institution

  The Board denied institution on all grounds because neither Serban nor Somani sufficiently showed the claimed inverter and controller functionality.

  RulingsInstitution decision

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

    “that Petitioner does not provide a sufficient showing to establish that Serban discloses a current-source inverter and a controller, each configured as required by the challenged independent claims. Our reasoning is two-fold. First, Petitioner does not directly address the claim requirement that the current-source inverter is configured to adjust an output power as a function of a frequency of the alternating current voltage source. Second, Petitioner’s characterization of select disclosures from Serban is inconsistent with Serban’s disclosure as a whole. We address these shortcomings below.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “(“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revisions to 35 U.S.C. § 100 et seq., because its earliest effective filing date is July 28, 2015. Ex. 1001, code (22). “[U]nder the AIA, a reference patent document need only meet the ‘ministerial requirements’ of §§ 119 and 120, and the Provisional or other earlier application(s) to which the reference patent document claims a right of priority must ‘describe[] the subject matter’ relied upon in the reference patent document as prior art. 35 U.S.C. § 102(d)(2).” Penumbra, Inc. v. RapidPulse, Inc., IPR2022-00608, Paper 34 at 29–31 (PTAB Mar. 10, 2023) (designated precedential in relevant part (§ II.E.3)).” slip op. at 28

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “held at least a bachelor’s degree and a master’s degree in electrical engineering or a related degree, as well as possessing at least two years of experience with grid-tied power supplies having electric energy sources including photovoltaic and battery systems.” Pet. 15 (citing Ex. 1003 ¶ 23). Petitioner further asserts that a “POSA [person of ordinary skill in the art] would have been familiar with the admitted prior-art systems of Figures 1 and 2 [of the ’755 patent] and associated descriptions of those systems.” Id. (citing Ex. 1001, 1:28–36, 1:66–2:2, 5:42–47).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner states that it “applied plain and ordinary meanings to all claim terms and no express constructions are required here.” Pet. 15 (citing Ex. 1003 ¶ 101). Patent Owner does not address claim construction. See generally Prelim. Resp. Taking into consideration the arguments and information Petitioner and Patent Owner present, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,793,755
• Gce Gas Control Equipment Inc. v. Vbox, Inc.Some claims unpatentable
  PTAB · Jun 18, 2024 · IPR2023-00326 · APJ Jane E Inglese · IPR · Final written decision

  Claims 12–14 and 16 are unpatentable under § 103 over Deane alone and Deane, Dubois, and Berntson; claims 1–11 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art The level of ordinary skill in the art at the time of the invention is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Based on Petitioner’s contention, which Patent Owner does not dispute, we find that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, chemical engineering, or a related field, and two years of experience in the research, design, or development of POCs and related hardware, software, and firmware. Compare Pet. 21, with Resp. 11. Our finding is supported by Dr. Knaebel’s testimony. Ex. 1003 ¶¶ 226–228. The level of ordinary skill in the art, as defined above, appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’614 patent.” slip op. at 8

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Deane thus teaches that adsorbent housing 602 and adsorbent bed columns 508a, 508b—the asserted separation cartridge—are part of an apparatus that rests on a support surface such as a table or floor. Based on Deane’s disclosure, we find persuasive Patent Owner’s contention, and Patent Owner’s witness’s opinion, that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) cannot be removed from the receptacle by movement of the separation cartridge vertically downward. Resp. 37–38; Ex. 2001 ¶¶ 118–131. Neither Petitioner nor Petitioner’s witness, Dr. Knaebel, points to any evidence of record showing that one of ordinary skill in the art would have understood that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) could be removed from manifold 512 (receptacle) by moving housing 602/adsorbent bed columns 508a, 508b (separation cartridge) downward when the apparatus is resting on a table or floor, as taught by Deane. Pet. 42–43; Ex. 1078 ¶¶ 121–161. Petitioner fails to show that Deane’s housing 602/adsorbent bed columns 508a, 508b (separation cartridge) could be removed from the receptacle by movement of the separation cartridge in the downward (second) direction, as required by the removal direction limitation of claim 1. Petitioner, therefore, does not establish unpatentability under its axial movement theory.” slip op. at 26

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

    “Giving effect to “by movement relative to the receptacle,” when interpreting this phrase in combination with “a separation cartridge selectively removable from a receptacle,” requires that the separation cartridge is removable from the receptacle by movement of the separation cartridge itself. Interpreting the removal direction limitation to encompass a stationary separation cartridge, as Petitioner proposes, would render “by movement relative to the receptacle” superfluous. Specifically, Petitioner’s interpretation of “relative movement” does not accord weight to the recitation “movement relative to the receptacle,” which requires something other than the receptacle—the separation cartridge—to move in order for movement to occur with reference to or in comparison with the receptacle. Petitioner’s interpretation of “relative movement” as permitting removal of the separation cartridge from the receptacle when the separation cartridge remains stationary, is inconsistent with the plain language of removal direction limitation as a whole. The plain language of the removal direction limitation indicates that the separation cartridge must be removable from the receptacle by movement of the separation cartridge in a specified (first) direction. Claim 1 defines the first direction as a direction opposite the (second) direction in which the inlet and outlet are oriented. The plain language of the removal direction limitation, therefore, requires that the separation cartridge is removable from a receptacle by movement of the separation cartridge in comparison to the receptacle in a direction opposite the direction in which the separation cartridge’s inlet and outlet are oriented.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “(a) Untimely new theory of unpatentability We agree with Patent Owner (Sur-Reply 4) that Petitioner’s relative movement theory is an impermissible new theory of unpatentability improperly presented for the first time in the Reply. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008–09 (Fed. Cir. 2023) (A petitioner may not raise in a reply “‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.”) (quoting Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017); see also Henny Penny Corp. v. Frymaster LLC, 938 F. 3d 1324, 1330–31 (Fed. Cir. 2019) (“We conclude that the Board did not abuse its discretion in . . . disregarding its [petitioner’s] new theory first raised in reply.”). Petitioner does not present the relative movement theory in the Petition, and instead presents it for the first time in the Reply. Pet. 42–43. Far from fairly meeting any argument introduced by Patent Owner in the Response, this new theory unfairly changes the thrust of the challenge.” slip op. at 27

  Patent outcomesUS 11,389,614 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,389,614
• Wenzhou Xin Xin Sanitary Ware Co., Ltd. v. Delta Faucet CompanyInstitution denied
  PTAB · Feb 7, 2024 · IPR2023-01332 · APJ Jane E Inglese · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7, 10–17, 20, 21, 23, and 24 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “C. Principles of Law “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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). When an obviousness challenge asserts a combination of identified prior art, “it [is] important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The relevant inquiry is “whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (internal citations omitted) (emphasis added); Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.”).” slip op. at 12

  • BurdenDenied

    “We are unable to discern how the Petitioner proposes modifying Van Der Linden’s vessel rinsing apparatus “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” however. Neither the Petitioner nor Mr. Cook describes the proposed modifications with sufficient particularity to allow us to understand the specific nature of the proposed modifications. Pet. 9; Ex. 1005 ¶ 59. Furthermore, the Petitioner does not provide any objective evidence to support the Petitioner’s assertions that modifying Van Der Linden’s vessel rinsing apparatus as the Petitioner proposes would minimize the number of components in the apparatus “for cost and reliability,” and would provide “increased standalone stability.” Pet. 9. Although the Petitioner cites the Cook Declaration when making these assertions, the cited paragraph of the Declaration simply mirrors the Petitioner’s conclusory statements without providing any objective, supporting evidence. Ex. 1005 ¶ 59. In contrast, as discussed above, Van Der Linden explicitly describes advantages associated with the approach Van Der Linden uses to mount its washing device. Specifically, Van Der Linden discloses that mounting the washing device to the base of a kitchen faucet permits a common channel to be used for the tap of the kitchen faucet and for a supply line of the washing device, which advantageously reduces the number of bores in a kitchen worktop required to mount the washing device. Ex. 1006 ¶¶ 17, 39, Fig. 5. Van Der Linden further discloses that positioning the abutment surface defined by the abutment member of the device at “an angle of about 45 degrees with the vertical” directs the washing device “towards the user . . . which is advantageous for ergonomic reasons.” Id. ¶ 32. Due to the absence of any objective evidence to support the” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found

    “Due to the absence of any objective evidence to support the Petitioner’s asserted advantages of modifying Van Der Linden’s washing device “to incorporate the longitudinal mounting member (body 3) and mounting method of Shen Wei,” and Van Der Linden’s disclosure of advantages associated with its mounting approach, the Petitioner’s rationale for the proposed modifications appears to be based on impermissible hindsight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Simply because Van Der Linden’s washing device could be modified as the Petitioner proposes,7 in the absence of reasoning supported by objective evidence that explains why one of ordinary skill in the art actually would have so modified the device, the Petitioner does not establish that the proposed modification would have been obvious under section 103. This is because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).” slip op. at 24

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

    “B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action held under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 11,473,277
• Imiracle HK Limited v. VPR Brands, LPInstitution denied
  PTAB · Jan 25, 2024 · IPR2023-01255 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–15 were unpatentable over Tao, Yang and Tao, or Wang411.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “A. Patent Owner’s Disclaimer of Claims 12, 17, and 18 As indicated above, Patent Owner filed a statutory disclaimer of claims 12, 17, and 18 of the ’622 patent. See Ex. 2002. In view of Patent Owner’s statutory disclaimer, we treat claims 12, 17, and 18 as having never been part of the ’622 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because inter partes review cannot be instituted based on disclaimed claims, we do not consider claims 12, 17, and 18 to be within the scope of this proceeding. 37 C.F.R. § 42.107(e) (“No inter partes review will be Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 13–15, the challenged claims that have not been disclaimed.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “a Bachelor’s degree in electrical engineering, mechanical engineering, or biomedical engineering or related fields, along with at least five years of experience designing electromechanical devices, including those involving circuits, electroacoustics, fluid mechanics and heat transfer.” Pet. 7 (citing Ex. 1004 ¶¶ 45–47). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See generally, Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’622 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the ’622 patent has an effective filing date before March 16, 2013 (Ex. 1001, codes (22), (30)), we refer to the pre-AIA version of Sections 102 and 103. 2 Tao, CN 201051862Y, published April 30, 2008. (Ex. 1006 (English translation); Ex. 1007 (translation certificate); Ex. 1008 (original Chinese)). 3 Yang, CN 201029436Y, published March 5, 2008 (Ex. 1009 (English translation); Ex. 1010 (original Chinese); Ex. 1011 (translation certificate)). 4 Wang, WO 2008/139411 A2, published Nov. 20, 2008 (“Wang411,” Ex. 1012). required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 6

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

    “Petitioner contends that the claim terms “electric airflow sensor,” “time period and a magnitude of the electric current,” and “diaphragm microphone” should be construed in accordance with constructions stipulated to by Patent Owner in litigation in the District of Arizona (“stipulated constructions”). Pet. 8 (citing Ex. 1005; Ex. 1004 ¶¶ 49–51). Patent Owner does not challenge Petitioner’s proposed claim constructions, and further contends that the terms “Single Chip Micyoco” and “instructs” should also be construed consistent with the stipulated constructions. Prelim. Resp. 6. Based on the parties’ apparent agreement, and considering the record before us, we adopt the stipulated constructions provided below for purposes of this Decision. See Ex. 1005 (stipulated claim construction in the District of Arizona litigation). an electric sensor to detect air movement generated by a user’s inhaling or puffing act “time period and a magnitude of the the duration of time and the strength electric current” of the current that is provided to the heating element “diaphragm microphone” a device for converting pressure waves into electrical energy using a thin sheet of material that is capable of vibrating “Single Chip Micyoco” a microcontroller including a processor, software instructions to be executed by the processor, memory, and I/O processed by the processor “instructs” provides a signal that tells the power supply to provide or not provide electricity to the inhaler and atomizer Ex. 1005, 1–2.” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,205,622
• W.R. Grace & Co.-Conn v. Cochise Technology, LLCInstitution denied
  PTAB · Dec 11, 2023 · IPR2023-01063 · APJ Jane E Inglese · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The disclosures of the ’864 patent thus align with the Patent Owner’s position that the recitation of a “CO to CO2 combustion promoter” in claim 1 constitutes a claim limitation because the disclosures show that the phrase is “necessary to give meaning to the claim[s] and properly define the invention” as described in the patent. In re Fritch, 972 F.2d 1260, 1262 (Fed. Cir. 1992); see also Kropa v. Robie, 187 F.2d 150, 151–152 (CCPA 1951) (determining that a preamble reciting “an abrasive article” should be given patentable weight for a claim further reciting that the article comprised abrasive grains and a binder because “it is only by that phrase that it can be known that the subject matter defined by the claims is comprised as an abrasive article” in view of the fact that “[e]very union of substances capable inter alia of use as abrasive grains and a binder is not an ‘abrasive article.’”). The Patent Owner thus provides factual and legal bases for determining that a “CO to CO2 combustion promoter,” as recited in the preamble of claim 1, is a claim limitation. By not taking a position as to whether a “CO to CO2 combustion promoter” constitutes a claim limitation, the Petitioner does not establish that this recitation is not limiting. We determine that the intrinsic evidence of record is sufficient to establish that a “CO to CO2 combustion promoter” is a limitation of claim 1 because the evidence shows that this phrase is necessary to give meaning to the claim and to properly define the invention. This determination is consistent with the District Court’s corresponding determination in the Markman Memorandum and Order. Ex. 2024, 12–19.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find, at this stage, that the asserted prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply the Petitioner’s definition for purposes of determining whether to institute review, because it is consistent, on this record, with the disclosures of the asserted prior art references.” slip op. at 7

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

    “Under Rule 42.104(b)(3)–(4), a Petition must identify “[h]ow the challenged claim is to be construed,” and “[h]ow the construed claim is unpatentable,” by “specif[ing] where each element of the claim is found in the prior art.” 37 C.F.R. § 42.104(b)(3)–(b)(4). The Petitioner’s provision of an unsupported, implicit interpretation of a “CO to CO2 combustion promoter” does not meet these requirements. The Petitioner does not take a definitive position as to whether a “CO to CO2 combustion promoter” constitutes a limitation of claim 1. Nor does the Petitioner provide an express construction of this phrase. Instead, the Petitioner implicitly interprets a “CO to CO2 combustion promoter” in a particular manner, and bases assertions of the unpatentability of claim 1 on this implicit interpretation, without providing any support for the implicit interpretation. The Petitioner’s contentions, therefore, are not sufficient to support institution on Ground 1 because the Petitioner does not establish a reasonable likelihood of prevailing in its challenge to the patentability of at least one claim asserted in this ground. Nor are the Petitioner’s contentions sufficient to support institution on Grounds 1A and 1B, because the Petitioner does not rely on any disclosure in Vaughn ’290, Peters, or Vaughn ’516 for any information that remedies the deficiencies in the Petitioner’s showing for Ground 1.” slip op. at 23

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

    “In light of the state of the art as demonstrated by the Patent Owner’s evidence, the Petitioner does not persuasively explain why one of ordinary skill in the art seeking to produce a CO to CO2 promoter would have looked to Miura’s disclosure of a three-way exhaust gas purifying catalyst capable of oxidizing CO formed of platinum supported on the surface layer of microparticles. Nor does the Petitioner explain why this disclosure in Miura would have prompted one of ordinary skill in the art seeking to produce a CO to CO2 promoter to depart from the conventional approach in the art of producing such a catalyst by uniformly distributing platinum throughout a porous support, and instead distribute the platinum on the surface layer of a support. On the record before us, therefore, the Petitioner does not provide sufficient information and explanation to demonstrate that Miura in view of AAPA discloses or would have suggested a “CO to CO2 combustion promoter” as recited in claim 1.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 11,224,864

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.