- PTAB · Mar 12, 2025 · IPR2024-01458 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR of claims 1, 7, 8, and 11 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Upon consideration of the Petition in view of the record at this stage, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s construction of the claims as informed by its allegations of infringement in co-pending litigation, as best Petitioner is able to understand such allegations.” Pet. 18 (citing Exs. 1016–1017). Petitioner does not propose construction of any claim term at this stage of the proceeding. Upon review of the record, we determine that no claim terms require express construction for purposes of this 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would possess at least a Bachelor’s degree in mechanical engineering, electrical engineering, industrial design or product design or product design engineering, chemistry, or physics, or a related field, and at least three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, industrial design or product design or product design engineering, chemistry, or physics, or a related field, and at least one to two years of industry experience. Pet. 15 (citing Ex. 1003 ¶ 18). Petitioner further argues a “POSA would have been familiar with electrically powered cigarettes and their components and underlying technologies or similar components and technologies.” Id. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’788 patent and the asserted prior art.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“second chamber. Pet 55 (citing Ex. 1005 ¶ 20, Fig. 1a). Petitioner concedes Lee does not disclose a bulb containing a heating wire, but contends this would have been obvious at least in view of Gilbert. Id. at 56 (referring to Pet. 41–42, citing Ex. 1004, 2:45–46, 2:50, 2:71–3:2, Fig. 2). Petitioner contends a person of ordinary skill in the art would have been motivated to explore other types of heating elements than the nichrome wire described in Lee due to issues with e-cigarettes at the time, such as metallic taste or inhalation risks associated with the use of a metal wire heating element. Id. at 57 (citing Ex. 1003 ¶ 117). Petitioner contends it was known to use bulb heaters for vaporizing fluids for almost 100 years (id. ¶¶ 117–118), and therefore a person of ordinary skill would have been motivated to implement a heating element within a glass bulb in Lee’s device to address the metal taste and inhalation risk issues. Pet. 57. Petitioner further contends a person of ordinary skill in the art would have been motivated to implement a heating element within a glass bulb to increase the life of the heating element and prevent failure of the device, because Levin teaches that directly contacting the heating element was known to reduce the life of the heating element, and discloses a heater bulb for vaporizing an active ingredient for inhalation by the user. Id. at 58–59 (citing Ex. 1009 ¶¶ 4, 49, 56). In view of the foregoing, we determine Petitioner has demonstrated sufficiently for purposes of institution that the combination of Lee, Gilbert, and Levin teaches or suggests limitation [1d], and that a person of ordinary skill in the art would have had reason to use Gilbert’s or Levin’s bulb heater in Lee’s electronic cigarette, with a reasonable expectation of success.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,538,788 - Posco Future M Co., Ltd. v. Camx Power LLCInstitution deniedPTAB · 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 · GrahamPatents in suitUS 9,391,317 - Formfactor, Inc. v. Technoprobe S.P.A.InstitutedPTAB · Jan 24, 2025 · IPR2024-00933 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR on all challenged claims, 1–23, and all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of claims 1–23 of the ’885 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, and materials engineering or another field applicable to wafer probing technology with three to five years of professional experience in designing and/or using probe technologies, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of a POSITA, which is consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and 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). After reviewing the record, at this stage, we determine that only claim 14 requires express construction for purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Further, we interpret claim 14, for purposes of this Decision, as contemplated by Petitioner such that the first and second types of signals may be the same type of signal. Pet. 26. In other words, the first and second type of signal may both be ground or power. This construction appears to have support within the ’885 patent. For example, the ’885 patent describes an embodiment where “at least two conductive portions . . . of the guide 40 are electrically connected to each other by means of a conductive track 39 in the guide, so as to be able to electrically connect to each other groups of contact elements apt to carry a same type of signal.” Ex. 1001, 16:49–59. This construction also appears consistent with parent claim 1, which recites “the first and second types of signals chosen between ground signals and power signals.” The parties are invited to address any claim construction issues during the course of trial.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,035,885 - PTAB · Dec 16, 2024 · IPR2024-01012 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood of unpatentability and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition in view of the record at this stage, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“parties on the present record, we are persuaded Petitioner sufficiently shows the combination of Bosnyak-392 and Son teaches or suggests all of the limitations of claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Bosnyak-392’s teaching of using exfoliated, open-ended carbon nanotube fibers having two different aspect ratios in a composition with improved electrical and mechanical properties, with Son’s implementation of a specific bimodal distribution of aspect ratios, to arrive at the composition of claim 1 with a reasonable expectation of success. We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Having considered both sides’ arguments as to Fintiv factors 2 and 3, we determine that the considerations of these factors weigh against exercising discretionary denial. Neither party directs us to any substantive order issued by the district court in the parallel litigation, which indicates the court has not yet considered claim construction or potential invalidity of the ’282 patent. The Markman hearing will not occur until June 2025, and the expert discovery cutoff is not until August 2025. Ex. 2002. Thus, although the parties have begun discovery as to invalidity issues, much further work remains in the parallel district court litigation. We also take into account Petitioner’s prompt filing of the Petition, as weighing against exercising discretionary denial. See Fintiv 11 (“If the evidence shows that the petitioner filed the petition expeditiously, such as promptly after becoming aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution . . . .”).” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,608,282 - PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). If either party intends to argue a claim construction at trial, however, including what is the ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“CTPG”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least [a] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’649 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,636,649 - PTAB · Dec 16, 2024 · IPR2024-01013 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–18 on all three asserted obviousness grounds, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’483 patent. We also determine that the arguments and evidence of record do not support discretionary denial under either 35 U.S.C. § 314(a) or § 325(d). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’483 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that, “given the breadth of remaining grounds of invalidity in parallel litigation,” Petitioner’s stipulation “would only resolve a small portion of the issues before the court.” Prelim. Sur-reply 3. Nevertheless, the stipulation offered by Petitioner does mitigate, at least to some extent, concerns of “potentially conflicting decisions.” Sand Revolution at 12. Accordingly, we determine that Fintiv factor 4 weighs, at least to some extent, against exercising our authority to deny institution.” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“During prosecution, the examiner stated that the carbon nanotubes of the applied prior art reference “are considered discrete and exfoliated . . . because they are dispersed in the composite cathode slurry mixture.” Ex. 1002, 5–6. The Board determined, however, that “without more,” the examiner’s bare statement was insufficient to address the prior art reference’s “express teaching that suggests bundling or agglomeration of carbon nanotubes.” Id. at 6 (noting that Figure 2 of the prior art reference suggested that the carbon nanotubes were in fact bundled and agglomerated). In contrast to the art and analysis provided by the examiner during prosecution, Petitioner identifies a specific disclosure in Ohata demonstrating that the carbon nanotubes are “discrete, non-agglomerated, and exfoliated.” Pet. 32–33 (citing Ex. 1004, Fig. 1(b)). In further contrast to the arguments presented during prosecution, Patent Owner identifies no disclosure in Ohata, or any other prior art reference, that would suggest that the carbon nanotubes of Ohata, Kavan, and Gong or Liu are agglomerated or non-discrete. Prelim. Resp. 22–23. As such, we determine that the prior art and arguments set forth in the Petition are not substantially the same as those previously analyzed by the Office. Thus, we decline to exercise discretion to dismiss the Petition under 35 U.S.C. § 325(d).” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would have had “at least a Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 7. Petitioner further contends that “[a]dditional work experience can compensate for less formal education and vice versa.” Id. For purposes of its Preliminary Response, Patent Owner “does not dispute the Petition’s definition of [the] level of ordinary skill in the art.” Prelim. Resp. 3. On this record, we preliminarily adopt Petitioner’s definition of the person of ordinary skill in the art as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,153,483 - PTAB · Dec 16, 2024 · IPR2024-01011 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–5 under all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim and no basis for discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the arguments and evidence set forth by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’924 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review as to all of the challenged claims of the ’924 patent on all of the grounds of unpatentability set forth therein.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Although the parties appear to agree that this factor is neutral, we note that a district court denial of a motion to stay without prejudice, accompanied by an indication that the district court would consider a renewed motion, “suggests the district court may be willing to avoid duplicative efforts and await the PTAB’s final resolution of the patentability issues raised in the petition before proceeding with the parallel litigation.” Fintiv at 6–7. “This fact has usually weighed against exercising authority to deny institution.” Id. (also noting that factors 2 and 3 are relevant to how much weight to give to the court’s willingness to reconsider a stay); see also T-Mobile, Paper 16 at 12 (noting that a stay was unlikely in that case given the proximity of the trial date to the entry of the institution decision). In view of the forgoing, we determine that Fintiv factor 1 weighs against exercising our authority to deny institution.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities” and that “[a]dditional work experience can compensate for less formal education, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 11). For purposes of its Preliminary Response, Patent Owner “does not dispute the Petition’s definition of [the] level of ordinary skill in the art.” Prelim. Resp. 2. On this record, we preliminarily adopt Petitioner’s definition of the person of ordinary skill in the art because it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no formal claim constructions are necessary.” Pet. 9. Patent Owner contends that all claim terms should be interpreted “in accordance with their ordinary and customary meaning.” Prelim. Resp. 2. Upon review of the record, we determine that no claim terms require express construction for purposes of this 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
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,968,924 - Sma Solar Technology America, LLC v. Tigo Energy, Inc.No claims unpatentablePTAB · Oct 28, 2024 · IPR2023-00879 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Mieth does not disclose the claimed micro-controller, and the Petition did not present the reply’s new obviousness theory.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 22. Patent Owner does not dispute Petitioner’s contention, except to add that “a person may qualify as a POSITA with more education and less experience or vice versa.” PO Resp. 5. We apply Petitioner’s articulation of the level of ordinary skill in the art, as modified by Patent Owner, and further modified to omit “at least,” which expands the range of experience with no upper bound, thus encompassing a person of extraordinary skill in the art. We determine that the foregoing is consistent with the level of skill in the art at the time of the” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review, we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We determine that no claim terms require express construction for purposes of resolving the controversy.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The “at once envisage” standard does not permit us to fill in a missing claim limitation for purposes of anticipation. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 851 F.3d 1270, 1274 (Fed. Cir. 2017). Petitioner invites the same error the Federal Circuit identified in Nidec, where the Board erred by holding that “anticipation can be found even when a prior art reference fails to disclose a claim element so long as a skilled artisan reading the reference would ‘at once envisage’ the claimed arrangement.” Id. (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)). As our reviewing court explained, “Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation.” Id.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Petitioner’s obviousness challenge relies on the same argument and evidence that it presents for anticipation of claim 1. Pet. 26 (section VII.A.1.iv addressing anticipation and the micro-controller limitation of claim 1); Pet. 50, 60, 71 (cross-referencing section VII.A.1.iv for obviousness challenge to independent claims 1, 10, and 18). The Petition presents reasons to combine Mieth and Balogh. Pet. 51–55. But Petitioner’s obviousness rationale does not modify Mieth’s load 20, which remains Pet. 52 (relying on “load 20 of Mieth” as part of the combination with Balogh). The Petition presents no rationale for modifying or replacing Mieth’s load 20 and presents no argument or evidence that it would have been obvious to modify Mieth’s circuit by adding or substituting a micro-controller. In short, the Petition and Holberg Declaration assert that the micro- controller limitation is expressly disclosed in Mieth and do not present or support any obviousness rationale for that limitation. Pet. 26, 50–55; Ex. 1007 ¶ 105. Petitioner presents a new theory of unpatentability in the Reply, arguing that “the differences between Mieth’s ‘load 20’ and the claimed micro-controller are such that the subject matter as a whole would have been obvious to a [POSITA].” Pet. Reply 11–19 (reformatted). More particularly, Petitioner argues that “a [POSITA] understands that a micro-controller is a typical type of load that could be substituted into and replace whatever type of load is being employed by Mieth.” Id. at 17 (citing Exs. 1012, 1014, 1022). The Petition does not present that argument.” slip op. at 23
Patent outcomesUS 9,584,021 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,584,021 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not 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, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Sep 17, 2024 · IPR2023-00695 · APJ Julia Heaney · IPR · Final written decision
Claims 1–5 and 7–18 are unpatentable as obvious over Eckhardt and Sosnin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in an engineering discipline such as biological, chemical, environmental, electrical, mechanical, and/or systems engineering, or an equivalent degree such as one in physics or similar subject matter.” Pet. 16 (citing Ex. 1003 ¶ 21). Petitioner further argues that “[s]uch a person would also have two to three years of work or research experience with UV disinfection technology and/or systems and would be familiar with the fundamentals of UV excimer lamps” but, “less education could be compensated by more experience and vice versa.” Id. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’951 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’951 patent and the” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“art references advanced in this Petition” but “[b]eyond these arguments, the challenged claims require no express construction to evaluate their patentability.” Pet. 16–17. After considering the arguments and information Petitioner presents, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have had reasons to combine Eckhardt’s teaching of narrow spectrum UV light in the range of 220 to 310 nm to disinfect skin (Ex. 1004 ¶¶ 31, 69–70), with Sosnin’s teaching of a KrCl excimer lamp having a narrow band UV emission at 222 nm to kill bacteria (Ex. 1005, 320). In particular, Petitioner shows that a person of ordinary skill in the art would have wanted to obtain the benefits of Eckhardt’s teaching of disinfecting skin using any light source capable of sterilization or disinfection and would therefore have considered Eckhardt’s suggestion of using narrow spectrum UV light in combination with Sosnin’s disclosure of using germicidal excimer lamps within the range of wavelengths taught by Eckhardt. See KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Eckhardt and Sosnin support Petitioner’s combination. In particular, both references teach using UV lamps with narrow bands or monochromatic emissions to sterilize surfaces. Eckhardt teaches “light source 7 may be any light source that emits light capable of sterilization or disinfection” and may be a UV light source such as a lamp that “may emit narrow spectrum light (e.g., a line spectrum) or broad spectrum light” including UVA, UVB, and UVC light. Ex. 1004 ¶ 31. Eckhardt also teaches flash light source 7a generates a flash sufficient for sterilization or disinfection and may be a xenon flash lamp having a wavelength in the range of 220 to 310 nm. Id. ¶¶ 43, 70. Additionally, Eckhardt teaches “[t]he sterilization/disinfection units previously described are designed to have a beneficial effect when used on bare skin.” Id. ¶ 69. Sosnin teaches using excimer lamps for sterilization and specifically discloses a KrCl lamp which generates photons having wavelengths of 222 nm. Ex. 1005, 320. We find that Eckhardt would have led a person of ordinary skill to consider using a 222 nm excimer lamp because that wavelength falls within the range of UV light (220–310 nm) suggested by Eckhardt, and the range known to provide disinfection. Ex. 1004 ¶ 70; Ex. 1005, 320 (describing “the high rate of bactericidal effect of excilamps”). We find that Eckhardt also supports Petitioner’s contention that it was within the knowledge of a person of ordinary skill in the art to use UV light in the range of 254 nm for disinfection, even though that wavelength presented safety concerns. Ex. 1004 ¶¶ 54, 56; see Pet. 25.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1A]. We find that Eckhardt’s disclosure of a lamp emitting sterilizing light in the range of 220 to 310 nm (Ex. 1004 ¶¶ 31, 43, 70), combined with Sosnin’s disclosure of irradiation of E. coli with a KrCl excimer lamp generating a 222 nm wavelength (Ex. 1005, 320, Fig. 3), which correspond to peak absorption wavelengths of DNA or RNA (Ex. 1003 ¶¶ 116–118), discloses limitation [1A]. [1B] Petitioner contends that the Eckhardt-Sosnin combination teaches “directing the photons to a substance or surface to be disinfected, whereby the photons are generated to destroy a plurality of chemical bonds within the proteins, DNA, or RNA of the microorganism,” as recited in limitation [1B]. Pet. 30. According to Petitioner, Eckhardt discloses directing light towards wound 1 and surrounding skin 3. Id. (citing Ex. 1003 ¶ 120; Ex. 1004 ¶¶ 31–32). Petitioner contends Sosnin teaches the photons destroy a plurality of chemical bonds within the DNA or RNA of the microorganism because it discloses using 222 nm radiation, “which intrinsically destroys proteins and the chemical bonds in the proteins associated with the DNA or RNA of the microorganism.” Id. (citing Ex. 1003 ¶ 121; Ex. 1005, 319– 321). Based on the evidence before us, we determine that Petitioner has shown by a preponderance of evidence that the combination of Eckhardt and Sosnin discloses claim limitation [1B]. We find that Eckhardt’s disclosure of directing sterilizing light in the range of 220 to 310 nm toward a surface to be disinfected (Ex. 1004 ¶¶ 31–33, 43, 70), combined with Sosnin’s disclosure of bacterial survival curves resulting from irradiation of E. coli with KrCl excimer lamps (Ex. 1005, 320, Fig. 3), discloses claim limitation [1B]. [1C] Petitioner contends that the combination of Eckhardt and Sosnin” slip op. at 16
Patent outcomesUS 11,246,951 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,246,951
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.