- PTAB · Apr 8, 2022 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 because Petitioner showed a reasonable likelihood of prevailing on both asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. We have considered Patent Owner’s arguments in light of the Fintiv factors, together with Petitioner’s opposition, and we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it will prevail with respect to at least one claim challenged in the Petition, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in chemistry, chemical engineering, or materials science, as well as five or more years of experience in the field of batteries and battery materials.” Pet. 8 (citing Ex. 1003 ¶ 11). Petitioner adds that “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education.” Id. Petitioner states that “[a]dditional education might substitute for some experience, and substantial experience might substitute for some educational background.” Id. at 8–9.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,350,019 - PTAB · Apr 8, 2022 · IPR2021-01440 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–5 on both asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“and (2) Koshiishi and Abe. Pet. 1. It is undisputed that neither Choi nor Koshiishi was presented to the Office during examination, and there is no suggestion that either reference is cumulative of the art presented to the Office during examination. See Prelim. Resp. Petitioner asserts that “the only difference between Choi and the ’446 Patent claims is the inclusion of a compound with two nitrile groups in the electrolyte.” Pet. 12. Petitioner makes the same assertion about Koshiishi. Pet. 42. Petitioner contends that Choi and Koshiishi each teach all limitations of the challenged claims, except for the limitations requiring that the electrolyte contain a dinitrile compound. Pet. 13–38, 42–62. In view of the importance of Choi and Koshiishi to Petitioner’s grounds of unpatentability, we determine that the art presented in the Petition is not the same or substantially the same as the art previously presented to the Office during examination.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response, we determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to at least one of claims 1–5 of the ’446 Patent based on Choi and Kim.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not dispute Petitioner’s definition of a POSITA. See Prelim. Resp. We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’446 Patent and the asserted prior art, and we apply Petitioner’s definition for purposes of this Decision, with the caveat that the phrases “at least” and “or more” should not be construed as requiring a significantly greater level of education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,691,446 - Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01287 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on claims 12–16 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon considering the Petition and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we institute inter partes review of all claims and all grounds asserted in the Petition.1 A.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems” or “could have also obtained similar knowledge and experience through other means.” Pet. 4. The level of ordinary skill in the art is further demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C.” slip op. at 6
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,256,770 - Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01286 · APJ Julia Heaney · IPR · Institution
Instituted IPR of claims 1, 5–7, 12, and 13 on all petitioned grounds; Moine anticipation of claims 1, 6, 7, 12, and 13 established the required likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction Petitioner contends the claim term “the location controller,” as recited in claim 1 of the ’321 patent, should be construed to mean “the local controller,” because the term “location controller” has no apparent antecedent basis in the claim and does not appear anywhere in the 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed before March 16, 2013, we apply the pre-AIA versions of the statutory bases for unpatentability. 4 FR Patent Application Publication No. 2894401 A1 to Moine, published June 8, 2007 (Ex. 1005). 5 US Patent No. 5,054,023 to Kronberg, issued October 1, 1991 (Ex. 1006). 6 US Patent No. 8,531,055 B2 to Adest et al., issued September 10, 2013 (Ex. 1007). specification of the ’321 patent, and further in light of the fact that claim 1 first recites “a local controller.” Pet. 10–11. Other than the aforementioned claim term, Petitioner states no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims. Id. at 9 (citing Ex. 1002 ¶ 35). Having considered Petitioner’s argument, we can reach a determination of the reasonable likelihood of proving unpatentability of the challenged claims without explicitly construing any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). For purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’321 patent and the asserted prior art, we determine that Petitioner’s definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’321 patent and prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having reviewed Petitioner’s undisputed evidence and argument regarding claim 1, we find that Petitioner has demonstrated sufficiently that Moine discloses all of the limitations of claim 1. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on its anticipation challenge with respect to claim 1.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,933,321 - PTAB · Jan 25, 2022 · IPR2021-01295 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that at least one challenged claim is unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We determine, on the current record, that Petitioner has standing to bring this proceeding. Here, as was the case in Cardiovascular Sys., the record does not include any evidence that, at the time the Petition was filed, Petitioner actually owned the ’276 patent. In fact, the parties do not dispute that Patent Owner is the current registered owner of the ’276 patent, and was the owner when Petitioner filed the Petition. See Prelim. Reply 1; Prelim. Resp. 1. Notably, although Petitioner did assert ownership in the district court, Patent Owner disputed that assertion, claiming to be “the sole owner, by assignment, of all right, title and interest in and to the ’276 [p]atent.” Prelim. Reply 1 (quoting Ex. 1032 ¶ 55); see also Ex. 3001 (showing the assignment record for the ’276 patent, indicating that Patent Owner is the recorded owner of the patent); 35 U.S.C. § 261 (“Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.”); 37 CFR § 3.73(a) (“The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.”). Patent Owner does not direct us Petitioner. To the contrary, Petitioner directs us to Patent Owner’s argument in the district court proceeding that Patent Owner did not assign its interest to Petitioner. Prelim. Reply 1 (citing Ex. 1033, 9–15). The record evidence therefore indicates that Patent Owner is the owner of the ’276 patent. Accordingly, because Petitioner is not the owner of the ’276 patent, Petitioner has standing to file the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denialDenied
“Patent Owner asks us, in the alternative, to exercise our discretion to deny the Petition. Prelim. Resp. 15. Patent Owner does not explain on what basis we would exercise this discretion, other than “based upon the undisputed factual circumstances detailed above.” Id. Because Patent Owner fails to adequately develop this argument, we do not exercise discretion to deny the Petition.” slip op. at 12
- Skill levelSkill level board ownDecided for petitioner
“For the purposes of this Decision, based on the limited record before us, we preliminarily agree with aspects of both parties’ characterizations, and disagree with other aspects. We focus on the experience aspect of Petitioner’s characterization. Although we agree with Patent Owner that, in the abstract, a trained mechanical engineer may not have the requisite knowledge to be a person of ordinary skill and a chemist may have the requisite knowledge, Petitioner’s characterization goes further, and requires three years of experience in blending polymer resins—the main technological aspect of not only the ’276 patent, but of Harris, Thomas, and Starita. See, e.g., Ex. 1001, 1:41–58 (disclosing that the composition is a blend of polymers); Ex. 1003, code (57) (stating that the disclosed composition is a melt blend of resins); Ex. 1005, 13 (indicating that Phase 2 is directed at blends of virgin and recycled resins); Ex. 1006, code (57) (indicating that it discloses melt blended HDPE). As we will discuss in greater detail below, in connection with our claim construction analysis, and analysis of Patent Owner’s arguments directed to the merits of Petitioner’s obviousness positions, we do not agree with Patent Owner that the ’276 patent requires extensive experience in working with granular resins. Also, Patent Owner and Mr. Thomas’s distinctions based on what constitutes a polyethylene supplier and Petitioner’s characterization of the required experience is deficient. See Prelim Resp. 17–19; Ex. 2002 ¶¶ 54–56. A person having ordinary skill in the art is a hypothetical person, not an actual person working at a specific type of facility. See, e.g., In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains.”). Accordingly, based on our review of the current record, including the ’276 patent and the prior art of record, we preliminarily determine that a person having ordinary skill in the art would have had a bachelor’s degree in chemical engineering or related engineering field, or chemistry, and three years of experience in blending polymer resins.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We determine that we need not expressly construe this claim term to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,570,276 - PTAB · Nov 19, 2021 · IPR2021-00857 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR on claims 1–35 and all petitioned grounds, including anticipation by Birnboim and obviousness over the listed combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Burden of Proof “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that one of the challenged claims is unpatentable. Additionally, the Supreme Court held that a decision to institute under 35 U.S.C. § 314(b) may not institute review on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with USPTO Guidance, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” See Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner contends that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Ex. 1002, ¶¶37–38. Pet. 9. At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 7. For the purposes of this Decision on Institution, we agree with Petitioner’s proposed level of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to comport with the teachings of the ’399 patent and asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner contends that we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use.” Pet. 7. Patent Owner does not dispute Petitioner’s definition of “stock solution” nor request that we construe any other claim at this time, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock solution” as Petitioner proposes. We note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). Furthermore, where “the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Patent Owner does not at this time directly dispute Petitioner’s contention that Birnboim discloses a stock solution of an aqueous composition, but does dispute that Birnboim discloses the aqueous composition as claimed. See Prelim. Resp. 8. Based on the current record, which shows that the Birnboim discloses a “stock solution of an aqueous composition,” we are satisfied Petitioner has shown that Birnboim meets the preamble to the extent it is limiting. slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,212,399 - PTAB · Nov 18, 2021 · IPR2021-00854 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–35 and all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows that there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–35 of the ’240 patent on all grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A person of ordinary skill in the art . . . would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid 10 Koller, WO 91/02740, published Mar. 7, 1991. Ex. 1016. 11 Robert E. Farrell, Jr., Ph.D., “RNA Methodologies: A Laboratory Guide for Isolation and Characterization,” (3rd Ed., 2005). Ex. 1026. extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 7 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition at this stage. Prelim. Resp. 7. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’240 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner offer any position on the construction of any claim term. See Pet.; Prelim. Resp. 7. On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution. C. Principles of Law” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“and particularly claim 1. Petitioner provides a detailed analysis of where each element of claim 1 is found in Birnboim. Pet. 13–19. Specifically, Petitioner asserts that Birnboim’s Example 3 discloses an aqueous composition comprising the one or more chaotropes, one or more detergents, one or more reducing agents, one or more chelators, and one or more buffers, as recited in the claim. Id. at 13–18. Petitioner also asserts that “Birnboim’s reagents are present in an amount sufficient to perform the claimed functions.” Id. at 18–23 (heading capitalization normalized and underlining omitted).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,669,240 - PTAB · Nov 12, 2021 · IPR2021-00860 · APJ Robert A Pollock · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all petitioned grounds because Petitioner showed 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
“Birnboim, Mori, and Farrell, Petitioner provides a detailed analysis of where each claim element is found in the cited references and discusses why one of ordinary skill in the art would have been motivated to combine those elements with a reasonable expectation of success. See e.g., Pet. 34–42 (discussing motivation to combine and reasonable expectation of success with respect to claim 1). For the purpose of institution, we focus on independent claim 1.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner asserts that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 10 citing Ex. 1002, ¶¶34–35. Patent Owner presently does not dispute Petitioner’s proposed definition. Prelim. Resp. 6. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’256 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C. Claim Construction” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionPlain and ordinary meaningDecided for petitioner
“According to Petitioner, we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use,” which, in the context of the instant claims, refers to “the aqueous composition before it is mixed with a sample.” Pet. 8 (citing Ex. 1029; Ex. 1002 ¶ 38). Patent Owner neither contests Petitioner’s definition of “stock solution” nor requests that we construe any other claim term, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock” solution as Petitioner proposes. In section II.D.4, below, we note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning. D. Ground 1: Obviousness in View of Birnboim, Mori, and Farrell” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner provides reasoned bases for why one of ordinary skill in the art would have combined the cited references to arrive at the claimed invention. See Pet. 34–42 (citations omitted). Summarizing its arguments, Petitioner concludes that one of ordinary skill in the art would have been motivated to prepare solutions comprising a chaotrope, a detergent, a reducing agent, a chelator, a shortchain alkanol, and a buffer (with the associated acid and base) at a pH of 5–7 with a reasonable expectation that, when combined with a biological sample, the solution would denature proteins, inactivate nucleases, and kill pathogens, all without degrading nucleic acids of the sample. Ex. 1002, ¶151. The POSA would have been motivated to use Mori’s surfactants or defoaming agents along with Farrell’s nuclease-free water in Birnboim’s stock solution and would have had a reasonable expectation of success in doing so. Ex. 1002, ¶¶137–152.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,683,256 - PTAB · Nov 12, 2021 · IPR2021-00850 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–42 and all asserted grounds after finding a reasonable likelihood that Birnboim anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–42 of the ’467 patent on all grounds.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties do not propose any claim construction. See Prelim. Resp. 5. On this record and for purposes of this Decision, we see no need to construe any term expressly.7 See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, and at this stage of the proceeding, Petitioner has shown sufficiently Birnboim discloses each limitation of claim 1. See Pet. 14–15 (showing Birnboim discloses the preamble); 18–19 (table showing “Birnboim Example 3 discloses using each of claim 1’s recited ingredients together in an aqueous composition”), 19–20, 23, 24 (relying on Birnboim’s Examples 4–6 for confirming the amounts of the compounds used in the composition in Example 3 perform the claimed functions, and disclosing the “contacting” and “detecting” steps). We address below Patent Owner’s counterarguments, which do not undermine the adequacy of Petitioner’s showing for purposes of trial institution.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“2. Analysis “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (internal quotation marks omitted). But “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. In an obviousness inquiry, “it 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.” Id. On this record, we find Petitioner has not shown sufficiently “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,293,467 - Intel Corporation v. Tela Innovations, Inc.All claims unpatentablePTAB · Mar 10, 2021 · IPR2019-01637 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–11, 15, 18, 20, and 22–24 are unpatentable as obvious over Becker and Greenway; the claims are not entitled to the earlier priority dates.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted an inter partes review of claims 1–11, 15, 18, 20, and 22–24 of the ’335 patent on the ground of unpatentability alleged in the Petition. Paper 16 (“Dec.”). After institution of trial, Patent Owner filed a Patent Owner Response. Paper 28 (“PO Resp.”). Petitioner filed a Reply. Paper 35 (“Reply”). Patent Owner filed a Sur-Reply. Paper 38 (“Sur- Reply”). An oral hearing was held on December 9, 2020, and a transcript of the hearing is included in the record. Paper 45 (“Tr.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill set forth by both Petitioner and Patent Owner are based on a Bachelor’s degree in Electrical Engineering and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’s definition, which overlaps that set forth by Petitioner, particularly regarding a Bachelor’s degree in Electrical Engineering, with five years of experience in semiconductor layout technology and integrated circuit design, and because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner notes that there are disputed claim terms in the NDCA Action—namely, the terms “gate electrode,” “gate structure(s),” and “contact structure(s)”—but asserts that Becker and Greenway render the challenged claims obvious under any of the proposed constructions. Pet. 31–32. In light of this, Petitioner states that the Board does not need to construe any claim term in order to evaluate the asserted prior art. Id. Patent Owner provides the district court’s construction of the claim terms “gate electrode,” “gate structure(s),” and “contact structure(s)” in the NDCA Action, stating that Patent Owner “applies the District Court constructions” of these claim terms. PO Resp. 21–22. Patent Owner, however, does not expressly argue for those constructions, and states that “Petitioner’s obviousness arguments fail regardless of whether any of the above claims constructions are adopted by the Board.” Id. at 22. On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in an inter partes review).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Application and 2007 Original Application, Patent Owner does not disagree that the smallest gate pitch mentioned therein is 360nm (0.36 μm). Ex. 1005, 8, 9 11; Ex. 1007, 30–31; Pet. 20; PO Resp. passim. Petitioner has reasonably established that the claimed range of less than or equal to about 193nm would extend, at its lower bound, to the single-digit nanometer range. Reply 4–5 (citing Ex. 1061, 329:10–21). The disclosures relied on by Patent Owner in the 2006 Provisional Application and the 2007 Original Application do not support the entire range of gate pitches from 193nm down to the lower bound of the single-digit nanometer range. Pet. 15, 19; compare Ex. 1005, 8, 11 (teaching a gate pitch of 360nm), Ex. 1007, 30–31 (teaching a gate pitch of 360nm) with Ex. 1008, 21–24 (requiring a gate pitch of less than or equal to about 193nm). This does not show possession of the entire range down to the single-digit nanometer range. See Lukach, 442 F.2d at 969. Regarding feature size, the smallest actual feature size mentioned in the 2006 Provisional Application and 2007 Original Application is 65nm. Ex. 1005, 5 (“65nm sized features”); Ex. 1007, 10 (“65 nm sized features”). Figure 1 of the 2006 Provisional Application, titled “Lithography Trends,” emphasizes that Patent Owner did not have possession of smaller gate pitches or feature sizes at the time of that application, but rather, that a 45nm feature size would be expected to be achieved in about 2012. Ex. 1005, Fig. 1; see Lukach, 442 F.2d at 969. We find that the disclosures of the 2006 Provisional Application and the 2007 Original Application do not show possession of the 45nm feature size. Looking next at Patent Owner’s “scalability” theory, we do not agree that the 2006 Provisional Application or 2007 Original Application would inform one of ordinary skill in the art that Patent Owner had possession of the claimed 193nm gate pitch ranges or 45nm feature sizes, or anything smaller, at the time of the 2006 Provisional Application or the 2007 Original Application. In order for Patent Owner to prevail on its argument that the 2006 Provisional Application and the 2007 Original Application support the disclosure of a sub-193nm gate pitch range or 45nm features, the disclosures of those applications must convey with reasonable clarity to one skilled in the art that the inventors possessed the invention claimed in the 2015 Application. See Ariad Pharms., 598 F.3d at 1351. We do not agree that the aspirational language in the 2006 Provisional Application demonstrates that the inventors had possession of the claimed range of gate pitches from 193nm down to the single-digit nanometer range, or possession of 45nm-sized features. Rather, the language of the 2006 Provisional Application describes a layout methodology, but fails to expressly teach scaling down to the gate pitches specified in the 2015 Application or explain to one of ordinary skill in the art how to do so. Even though “scaling” is a mathematical possibility, as argued by Patent Owner, that possibility does not equate to possession of the scaled-down structure itself. At the time of the 2006 Provisional Application and the 2007 Original Application, feature sizes were only “approaching” 45nm (Ex. 1005, 4; Ex. 1007, 3) or “expected to soon approach sizes as small as 45 nm” (Ex. 1007, 10). This language is, in effect, an acknowledgment that 45nm feature sizes were not yet a reality. Further, nothing in the 2006 Provisional Application shows how to make a 45nm feature, or how one of ordinary skill in the art could have made this happen in the 2006/2007 time frame. Similarly, Dr. Khatri’s scaling formula based on “simple geometry” that Patent Owner proposes to apply to the gate pitches and feature sizes identified in the 2006 Provisional Application is not found in that application. See generally Ex. 1005. The application’s use of “Moore’s Law as a crystal ball to predict future reductions in chip dimensions is not the same as inventing a chip with reduced chip dimensions, including reduced gate pitches down to unfathomable single-digit nanometer pitches.” Reply 6. The evidence demonstrates that scaling down feature sizes and gate pitches is not a simple function of time or a mere application of Moore’s Law, but the result of technological innovation that was not in the possession of the inventors at the time of the 2006 Provisional Application or 2007 Original Application. See Ex. 1061, 341:2–9; Ex. 1077, 1283:21–1284:3 (ITC hearing transcript). Thus, we do not agree that, by virtue of Patent Owner’s proposed “scalability” theory, the inventors conveyed with reasonable clarity to one skilled in the art that the inventors possessed the invention claimed in the 2015 Application at the time of the 2006 Provisional Application or 2007 Original Application.” slip op. at 26
Patent outcomesUS 10,141,335 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,141,335
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.