• Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.Some claims unpatentable
  PTAB · Feb 24, 2026 · IPR2024-01203 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious; claim 12 was not shown unpatentable because the evidence did not establish that Froitzheim’s silver contact was formed over silicon dioxide.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have had (i) an advanced degree in electrical engineering, mechanical engineering, applied physics, chemistry, materials science, or a related discipline and (ii) at least one year of experience 7 Neither Petitioner nor Patent Owner raises issues of objective indicia of nonobviousness. designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Alternatively, a POSITA [i.e., a person of ordinary skill in the art] would have had (i) a bachelor’s degree in the aforementioned disciplines and (ii) at least two years of experience designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Less work experience may be compensated by a higher level of education, and vice versa.” slip op. at 8

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

    “C. Claim Construction We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc); 37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “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. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We are persuaded that Petitioner has shown a reasonable expectation of success in the combination of Froitzheim and Gan. Petitioner explains that the combination of Froitzheim and Gan simply replaces one emitter, i.e., Froitzheim’s diffused emitter, with the polysilicon emitter of Gan. Pet. 36. According to Petitioner, a person of ordinary skill in the art would have also readily understood how to replace a diffused emitter with a polysilicon emitter and oxide layer [and] would have understood that instead of diffusing boron into the substrate’s back side as taught by Froitzheim, a [person of ordinary skill in the art] would instead follow the manufacturing technique taught by Gan. Pet. 37 (citing Ex. 1005, 246). Petitioner explains that the Gan processes are well-known and routine, and Dr. Holman states that “modifying Froitzheim in view of Gan simply involves using Gan’s known technique of a polysilicon emitter and oxide layer with Froitzheim’s known solar cell to improve Froitzheim’s solar cell in a similar way.” Pet. 37 (citing Ex. 1003 ¶ 144). For example, Petitioner directs our attention to “multiple instances” in which oxide layers and polysilicon emitters have been implemented successfully in the art. Pet. 37 (citing Ex. 1005, 246; Ex. 1006 ¶ 22; Ex. 1046, Abstr., 1121; Ex. 1003 ¶ 145). Furthermore, Gan’s statement that “cell performance can be improved if the diffused-emitter is replaced with the polysilicon emitter” and “polysilicon emitters with low J0 and ρc can be obtained with a very small fraction of interfacial oxide breakup” indicate a reasonable expectation of success. Ex. 1005, 245, 249. Gan also states that “polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells.” Ex. 1005, 249. Thus, we are persuaded that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Froitzheim and Gan.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We are not persuaded the record evidence rises to the level of a teaching away. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). And “teaching away” requires more than the mere expression of a general preference.” Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Here, Li prefers a “heterogeneous PN junction” and states that “a PN junction is prepared by a low-temperature deposition method, which avoids a conventional diffusion process at 800–1000°C. Such high-temperature process will cause more defects or contamination in silicon material, which will affect the improvement of cell efficiency.” Ex. 1008, 4. But, Li’s preference for lower temperature diffusion processes does not amount to a teaching away from the broader disclosure. In fact, Li acknowledges that “[t]he silicon thin film can be prepared by any deposition method,” including conventional processes at higher temperatures. Ex. 1008, 4 (emphasis added). And, while Patent Owner asserts that “[d]eposition methods are not relevant to the parties’ dispute, which is over deposition temperature” (Sur-reply 17), the deposition method employed includes its deposition temperature. See Ex. 1008, 4 (Li describing “conventional” diffusion processes at temperatures of 800–1000° C). Thus, just because Li teaches one way of depositing its silicon thin film using a low-temperature deposition method does not mean that Li teaches away from high-temperature processes. Li’s teachings do not discredit or discourage high-temperature processes in a manner that may be said to teach away.” slip op. at 51

  Patent outcomesUS 8,222,516 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,222,516
• Canadian Solar Inc. v. Maxeon Solar Pte. Ltd.Some claims unpatentable
  PTAB · Jan 12, 2026 · IPR2024-01039 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 9–11 are unpatentable as obvious; claim 12 was not shown unpatentable because Froitzheim does not disclose silver contacts formed over silicon dioxide.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we adopted the assessment offered by Petitioner. Inst. Dec. 7–8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’516 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “C. Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on our review of the complete trial record and the arguments raised by the parties, we determine that it is not necessary to expressly construe any claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We are convinced Petitioner has shown that a person of ordinary skill in the art would have had a reason to combine the subject matter of Froitzheim and Gan for the reasons expressed by Petitioner (Pet. 42–48) and discussed above (see supra). Patent Owner’s arguments in response are not persuasive. Though Gan’s teachings are directed to silicon concentrator solar cells, the ordinarily skilled artisan would have understood Gan also refers to silicon solar cells in general. Compare Ex. 1007, 249 (stating “[t]he data in Fig. 6 are quite useful for silicon solar cells” and “cell efficiency is obtained for a backside contact solar cell”), with id. (explaining that “polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells”). Dr. Banerjee testifies that “the Skilled Artisan would interpret Gan as recommending the feature for solar cells in general” and “that its polysilicon emitter with interfacial oxide feature is beneficial for solar cell efficiency in general.” Ex. 1003 ¶ 146; Ex. 2023, 93:10–15. Furthermore, Dr. Ruby testified that when designing solar cells, he reviews published works in the field and would not necessarily limit his review to the type of solar cell being developed. Ex. 1066, 48:4–51:16. Q So you would agree that if you're developing a 1-Sun solar cell, it might be worthwhile to look at publications regarding concentrator solar cells? * * * THE WITNESS: Well, it would be advisable or suggest -- you know, it would certainly be worth -- worth looking at, although not all of the methods for creating solar cells -- concentrator cells are required for producing 1-Sun cells. So some things would be of use and many things would not. Ex. 1066, 51:7–16. That Dr. Banerjee and Dr. Ruby each testify that a person of ordinary skill in the art would have had reason to consult the teachings of both concentrator and non-concentrator solar cells—in fact describing such consideration as “advisable,” “suggest[ed],” and “worth looking at”—when designing a solar cell is dispositive of this issue. We acknowledge Dr. Ruby’s testimony that consideration of broader teachings may hinge on a specific application for the solar cells. Ex. 1066, 51:7–16. But the combination proposed here by Petitioner, which substitutes one known emitter for another, that is, a polysilicon emitter for a diffused emitter, to improve efficiency of solar cell performance, has been shown to have general applicability regardless of solar cell type. Ex. 1003 ¶¶ 142–148 (citing Ex. 1006, Abstr., ¶¶ 1, 9; Ex. 1007, 245, 248, 249; Ex. 1014; Ex. 1039); Ex. 1067 ¶¶ 21–28; Ex. 2023, 32:2–11. Accordingly, we are persuaded that Petitioner has shown that the” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “The standard for demonstrating teaching away is, as Petitioner notes, high. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the [inventor].” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Under that standard, Patent Owner’s “teaching away” argument is unavailing. The permitted temperatures in Froitzheim include a range of 900°C-1200°C, which expresses a permitted range, rather than a discouragement or divergence from that range, and the Froitzheim range clearly encompasses the temperatures used by Gan. A reference will also “teach away” if it suggests that the developments flowing from its disclosures are “unlikely to produce the objective of the applicant’s invention,” which is not the case here. See, e.g., Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). The record demonstrates that Gan’s teachings are consistent with Froitzheim’s and, in the proposed combination, likely to produce the desired objective. Pet. Reply 13. In sum, the evidence of record here does not support a conclusion that Froitzheim criticizes or discredits the use of the lower temperatures in its expressly stated range, or that an ordinarily skilled artisan would have been discouraged from considering the full range of Froitzheim’s identified temperatures. Nor does it support a conclusion that Gan’s temperature, which is within Froitzheim’s range of temperatures, amounts to a criticizing, discrediting, or discouraging that would constitute a teaching away.” slip op. at 28

  Patent outcomesUS 8,222,516 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,222,516
• Billerud Aktiebolag (Publ) v. Westrock MWV, LLCSome claims unpatentable
  PTAB · Mar 12, 2025 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 2, and 4–22 are unpatentable as obvious; claim 23 was not shown unpatentable. Substitute claims 25–26 are allowed, while 24 and 27 are denied for lack of written-description support.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Exhibits 1013 and 1014 are also not admissible as expert testimony because Mr. Wirén is not “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 703. “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Mr. Wirén does not meet our definition of a person of ordinary skill in the art. See Section II.B, supra. That definition is based on the undisputed testimony of Messrs. Zotterman and Klass. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. Although Mr. Wirén has a Master’s of Science in chemical engineering, he lacks any experience or specialization in paperboard manufacturing. Ex. 2011, 12:1–10, 19:6–25, 20:2–7. We therefore agree with Patent Owner that Exhibits 1013 and 1014 are the testimony of Mr. Wirén and should be excluded from evidence because Mr. Wirén is not a person of ordinary skill in the relevant art. PO MTE 5–6, 9; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008) (“Unless a patent lawyer is also a qualified technical” slip op. at 61

  • Skill levelSkill level board ownOther

    “Level of Ordinary Skill in the Art Based on the testimony of the parties’ witnesses, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in paper science and engineering, chemical engineering, process engineering, mechanical engineering, or a related degree, with three to five years of experience in paperboard manufacturing, or a master’s degree in paper science and engineering, chemical engineering, process engineering, or mechanical engineering, or a similar field with a specialization in paperboard manufacturing. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’142 Patent Specification and the asserted prior art references.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “A claim construction that excludes a particular element is viewed as a “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, we find no claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Petitioner shows persuasively that the temperature limitation is taught by the combination of Fugitt and Papermaking. Pet. 32–34. Fugitt discloses that “[t]he rolls of the calender may be steam heated.” Ex. 1004 ¶ 26. In a section titled “Heated Rolls,” Papermaking discloses that “Steam can be used up to 170°C [338°F] surface temperature.” Ex. 1010, 95, 98. Petitioner is thus correct that, “[w]hile Fugitt teaches that a hot calender may be steam heated, Papermaking clarifies that one of ordinary skill in the art would understand that steam heated thermo-rollers may reach up to 338°F.” Pet. 36. Based on these disclosures, we are persuaded by Mr. Zotterman’s testimony that it would have been “obvious to heat the thermo-roller of Fugitt to at least 250°F.” Ex. 1003 ¶ 159. combine Fugitt and Papermaking because of Papermaking’s status as a “trusted handbook[],” because both references disclose a method of manufacturing a paperboard structure with hot calendering,” and “because of the known advantages of heated rollers.” Pet. 36–37; Ex. 1003 ¶¶ 157, 159, 162. Petitioner’s contention is supported by Papermaking’s disclosures that, for cartonboard, “[p]recalendering is used before the coater to reduce roughness and porosity” and “[h]igh thermo roll temperatures (in some cases over 200°C) result in bulk savings because of the temperature gradient.” Ex. 1005, 80–82; see also Pet. 38; Ex. 1003 ¶ 164 (citing these disclosures). Papermaking’s disclosed range of “up to 170°C [338°F]” for steam- heated rolls (Ex. 1010, 98), overlaps the claimed range of “at least 250°F.” Patent Owner agrees. Tr. 27:11–13. “If the relevant comparison between a disputed claim limitation and the prior art pertains to a range of overlapping values, ‘. . . even a slight overlap in range establishes a prima facie case of obviousness.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). “[S]uch an overlap creates a presumption of obviousness, and . . . the burden of production falls upon the patentee to come forward with pertinent evidence that the overlapping range would not have been obvious in light of the prior art.” Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018)). slip op. at 21

  Patent outcomesUS 11,293,142 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,293,142
• Stahls’ Inc. v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Some claims unpatentable
  PTAB · Dec 14, 2021 · IPR2020-01122 · APJ Michelle N Ankenbrand · IPR · Final written decision

  Claims 1–15 and 18 are unpatentable as obvious; claims 16 and 19 were not shown unpatentable because the asserted combinations did not establish required limitations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’475 patent would have had “a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies.” DI 8 (adopting Dr. Ellison’s description of the level of ordinary skill in the art). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes that determination and that level of ordinary skill is consistent with the record. See Resp. 20–21; see generally Reply.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We decline to adopt Patent Owner’s proposed construction, which departs from the constructions in the Arkwright Lawsuit and the Delaware Lawsuit, which both require actual melting, not just softening, and construe “mix” to have its plain and ordinary meaning. Ex. 1038, 17; Ex. 1045, 8–11. Accordingly, we maintain our construction of the term “white layer” from the Institution Decision. Further, to the extent Patent Owner argues that our construction of “white layer” requires an actual transfer of an image onto a substrate (for example, after printing, using heat), we disagree. See, e.g., Reply 5; Tr. 32:15–33:19, 46:15–49:25. Although we construe the term “white layer” as comprising a polymer that melts and mixes “during application,” this merely reflects a property of the polymer that occurs, for example, once heat is applied to an image transfer sheet. It does not mean that transferring an image from a sheet to a substrate must occur to satisfy claims 1 and 13. We discuss this in more detail below with respect to our construction of the preamble of claims 1 and 13, and in our prior art analysis of these claims. We note, however, that Patent Owner states that “the parties’ disputes with respect to the construction of the ‘white layer’ make no difference to the Board’s resolution of this matter.” Resp. 23.” slip op. at 12

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

    “steps. Ex. 1012, 12:42–67. In its Response, Patent Owner argues that the order of the method steps, i.e., “providing an ink-jet transfer article,” “wherein the substrate member is peeled away,” “wherein the opaque first layer and the second layer are applied to the dark-colored or black receiving member,” and “wherein heat is applied” is sequential. Resp. 23–24. Patent Owner explains that “[t]his is because the Claim requires ‘that received indicia face upwards,’” and “[i]f one were to place the transfer so that received indicia faces upwards, but not remove the backing paper before applying heat, then the backing paper (sandwiched between the fabric and the transfer) would prevent the transfer from adhering to the fabric.” Id. In its Reply, “Petitioner does not dispute Patent Owner’s position that the step of ‘peeling’ the substrate is performed before the step of applying the opaque layer and second layer to the receiving member and the steps recited thereafter.” Reply 2. Both parties agree that the steps of method claim 19 must be performed in sequential order. Thus, we need not construe this aspect of the claim language because it is not in controversy. Nidec, 868 F.3d at 1017.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Owner waited until the Sur-reply to address this issue with any level of specificity, which calls into question the timeliness of its argument. See PTAB Consolidated Trial Practice Guide (“CTPG”) (Nov. 2019) 73–74, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Sur-replies should only respond to arguments made in reply briefs, comments on reply declarations testimony, or point to cross-examination testimony.”); Paper 10, 10 (“any arguments not raised in the response may be deemed waived”). Nevertheless, we disagree with Patent Owner that “ink-jet transfer” is essential to claims 1 and 13. Claims 1 and 13 are not method claims. Rather, as Petitioner argues, both claims are directed to an article of manufacture made of structurally complete components that does not require an ink-jet transfer, even though the article may be used for such a purpose. See Reply 2–4; see also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358–59 (Fed. Cir. 2010) (“A preamble is not regarded as limiting [] ‘when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.’”) (citation omitted). The body of claim 1 does not reference “an ink-jet transfer” at all. See Ex. 1012, 11:35–41. And although claim 13 also recites that the article is “for transferring an image to a fabric material” and comprises a layer that is “ink-receptive,” these recitations are not essential to understanding the claim; nor do they show that the claim requires an ink-jet transfer. See id. at 12:13–14, 12:20–22. Rather, the first phrase merely recites an intended use of the article, and the second phrase merely describes a layer’s ability to receive ink. Accordingly, we determine that the preambles of claims 1 and 13 are not limiting. As such, Patent Owner’s arguments that the combined teachings of Akada and Takao fail to disclose or suggest an “ink-jet transfer” article are unpersuasive. See, e.g., Resp. 38, 41; Sur-reply 20–22. Even if we were to find the preambles limiting, Petitioner establishes that an “ink-jet transfer article” would have been obvious given the prior art disclosures. See Pet. 30, 45 (asserting that an ordinarily skilled artisan would have recognized that Akada’s and Takao’s thermal transfer printing method was interchangeable with an ink jet printing method); (citing Ex. 1001 ¶¶ 120–121; Ex. 1030, 3:26–29); Reply 24 (“Akada’s dye sublimation transfer sheets are ‘ink-jet transfer articles’ because they can effectively be printed on with ink-jet technology”), 29 (citing Ex. 1039 ¶ 27; Ex. 1019, 7:63–8:4) (“Takao itself teaches that its thermal transfer image-receiving sheet may receive the image in the form of a ‘hot melt ink layer of colorant, such as a pigment’”).” slip op. at 23

  Patent outcomesUS 7,766,475 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,766,475
• Stahls’ Inc. v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Some claims unpatentable
  PTAB · Oct 1, 2021 · IPR2020-00633 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 6–7, 9–14, and 16 are unpatentable as obvious over Williams; claim 8 was not shown unpatentable over Asajima.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’581 patent would have at least a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies. DI 11 (adopting Patent Owner’s proposed definition). For purposes of this Final Written Decision, we maintain the determination from the Decision on Institution because neither party disputes that determination and because that level of skill is consistent with the record. PO Resp. 13; Pet. Reply 3.” slip op. at 12

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

    “1. “white layer”12 In the Decision on Institution, we construed the term “white layer” to mean “a layer comprising a concentration or configuration of pigment providing a white background for received indicia and which further comprises a polymer that melts and mixes with another layer or layers 12 Although the term “white layer” is not expressly recited in claim 6 of the ’623 patent, both parties agree that all claims of the ’623 patent require a white layer that melts and mixes. See, e.g., Pet. 12–13; PO Resp. 13–15, 28, 37, 42, 49. during application.” DI 13. Our construction was based on the parties’ agreement that the claims of the ’623 patent require a white layer that melts and mixes with another layer and the claim construction the district court in the Arkwright Lawsuit adopted. Ex. 1031, 17 (Arkwright Markman Order”). The district court in the Delaware Litigation also adopted a similar construction of “white layer.” Ex. 1045, 6 (Delaware Markman Order). In the Decision on Institution, we rejected Patent Owner’s attempt to broaden the interpretation adopted in the Arkwright Lawsuit to include “a polymer that softens or melts and mixes to some degree with another layer.” Id. (Patent Owner’s modifications indicated with underlining); Prelim. Resp. 14. Patent Owner reasserts that “[t]hese additions properly and importantly clarify ‘melt’ and ‘mix,’ consistent with the district court’s holding, the ‘623 Patent’s disclosure, and Schwendimann’s statements in the Interference.” PO Resp. 14. But, Patent Owner states that “the parties’ disputes with respect to the construction of the ‘white layer’ make no difference to the Board’s resolution of this matter” (PO Resp. 14–16) and Petitioner asks that we “adopt the same constructions” as in the Delaware Litigation (Pet. Reply 1–2 (citing Ex. 1045, 9)). Accordingly, we maintain our construction of the term “white layer.”” slip op. at 13

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

    “2. remaining terms Petitioner contends that we should construe the term “release layer” and Patent Owner asks that we construe “image transfer sheet.” Pet. 13; PO Resp. 15–17. Because resolution of the issues before us does not require construction of either “release layer” or “image transfer sheet,” we need not provide any express constructions for those terms. See Nidec, 868 F.3d at 1017.” slip op. at 14

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner

    “It is well established . . . that when a party seeks to prove conception through an inventor’s testimony the party must proffer evidence, ‘in addition to [the inventor’s] own statements and documents,’ corroborating the inventor’s testimony.” Apator, 887 F.3d at 1295 (quoting Mahurkar, 79 F.3d at 1577). Patent Owner attempts to establish an invention date “no later than December 16, 1997,” based on Ms. Schwendimann’s testimony, the Formula Books, and the Contact Report. Patent Owner first argues that Ms. Schwendimann’s testimony, as corroborated by the Formula Books, details each limitation of the challenged claims. PO Resp. 21–24 (claim charts); Sur-reply 3. It is undisputed, however, that the Formula Books are unwitnessed. Sur-reply 5 n.2; Tr. 59:12–60:6. According to the Federal Circuit, the unwitnessed Formula Books alone cannot corroborate Ms. Schwendimann’s testimony regarding a purported invention date between 1996 and 1998. Apator, 887 F.3d at 1297; Brown, 276 F.3d at 1335; Procter & Gamble, 566 F.3d at 998–99. slip op. at 22

  Patent outcomesUS RE41,623 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Stahls’ Inc. v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Some claims unpatentable
  PTAB · Oct 1, 2021 · IPR2020-00641 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–3 and 5 are unpatentable over Williams; claim 4 was not shown unpatentable because the other grounds failed.

  RulingsFinal written decision

  • BurdenMixed

    “To anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Although the elements must be arranged or combined in the same way as the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., the identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Further, to be anticipating, a prior art reference must be enabling and must describe the claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the art. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000); In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).” slip op. at 11

  • Skill levelSkill level patent owner adoptedOther

    “In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’623 patent would have at least a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies. DI 12 (adopting Patent Owner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because that level of skill is consistent with the record. See generally PO Resp. 13; Pet. Reply 2.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “white layer”11 In the Decision on Institution, we construed the term “white layer” to mean “a layer comprising a concentration or configuration of pigment providing a white background for received indicia and which further comprises a polymer that melts and mixes with another layer or layers during application.” DI 14. Our construction was based on the parties’ agreement that the claims of the ’623 patent require a white layer that melts and mixes with another layer and the claim construction the district court in the Arkwright Lawsuit adopted. Ex. 1022, 17 (Arkwright Markman Order); see also Ex. 1045, 6 (Delaware Markman Order). In the Decision on Institution, we rejected Patent Owner’s attempt to broaden the interpretation adopted in the Arkwright Lawsuit to include “a polymer that softens or melts and mixes to some degree with another layer.” Id. (Patent Owner’s modifications indicated with underlining); Prelim. Resp. 14.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “2. order of steps In the Decision on Institution we determined that it was not necessary to require that the “peeling,” “contacting,” and “applying” steps be performed in any particular order. DI 16. We based our decision on Petitioner’s argument that “Patent Owner clearly and unmistakably represented to the USPTO . . . that claims 1–5 cover methods where the ‘peeling step’ is performed before the ‘contacting’ and ‘applying heat’ steps, and methods where the ‘peeling step’ is performed after the ‘contacting’ and ‘applying heat’ steps” and Patent Owner’s agreement to adopt Petitioner’s construction, for purposes of its preliminary response. Id. (citing Pet. 17; Prelim. Resp. 14–15). Patent Owner, in its Patent Owner Response, does not advance any construction regarding the order of steps. See generally PO Resp. 14–16. Patent Owner, however, in its Sur-reply confirms its position that “[t]he method steps cover both a ‘peel first heat second’ and ‘heat first peel second’ method of application.” Sur-reply 4. Accordingly, we apply the parties’ undisputed claim construction position, that is, that the claims do not require any particular order of contacting, peeling, and applying. Nidec, 868 F.3d at 1017.” slip op. at 15

  Patent outcomesUS RE41,623 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Reg Synthetic Fuels, LLC v. Neste OyjSome claims unpatentable
  PTAB · Feb 19, 2020 · IPR2018-01374 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 6, 7, 10, 20, and 24 are unpatentable; claims 1–5, 8, 9, 11–19, and 21–23 were not shown unpatentable, because the cited art did not teach the claimed iron-content limitation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Neste argues that REG’s proposed level of skill in the art is “unreasonably high” and instead proffers that “a person of ordinary skill in the field of biofuel engineering and processing as of Feb. 15, 2011 would have had a degree in chemical engineering or chemistry and at least two to three years of experience with processes for manufacturing hydrocarbons from bio renewable feedstocks.” PO Resp. 6–7 (citing Ex. 2029 ¶ 31). Neither party indicates that the outcome of any arguments made in this case would change depending on the level of ordinary skill in the art. We agree with the parties that the ordinarily skilled artisan, in February 2011, would have had at least a degree in chemical engineering or chemistry and would have had several years of experience in processing and refining biofuels. We need not parse the particular amount of education or experience given that neither party asserts this determination would have had any effect on the arguments or analysis in this case. Further, we find that the prior art of record reflects 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).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “We have again reviewed the record and the parties’ arguments, and again decline to import into the claim a requirement that the bio oil must be pre-treated. As we discussed in our institution decision, nothing in the ’185 patent indicates that the definition of bio oil is so limited. And we note that certain dependent claims of the ’185 patent, for example claim 21, specifically recite a pre-treatment step, leading to the conclusion that the bio oils of the independent claims are not limited to only pretreated bio oils. Neste’s new evidence introduced during trial is extrinsic to the patent, based on the testimony of Dr. Klein regarding the criticality of the iron content range. See PO Resp. 3 (citing Ex. 2029 ¶¶ 35–36, 38). In any event, we fail to see how the criticality of the claimed range mandates that the bio oil be pretreated prior to undergoing the claimed process. While Dr. Klein testifies that it is “clear from the ‘185 patent [that] a bio oil feed must be pretreated to render it suitable for commercial hydrotreatment” (Ex. 2029 ¶ 35), the portion of the patent he cites for this proposition states only that “bio-based feedstock (glyceride oil) to be used as feed material for hydrotreatment reaction can be purified to iron content of less than 1 to 0.2 w-ppm.” Ex. 1001, 4:50–55 (emphasis added). But this statement does not address the use of a bio oil that already contains an iron content within the claimed range, which therefore would not need purification. Indeed, the ’185 patent discusses “experiments with palm oil having very low level of impurities.” Ex. 1001, 4:45–46. Based on the foregoing, we maintain our view that the claim term requires no construction beyond its express language. The bio oil to be used in the method of claim 1 may be pretreated to achieve the claimed iron content, but pretreatment is not required by the claim.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “The intrinsic record of the ’185 patent contains no indication that bio oil intermediate was a new term coined to signify a specific class of bio oils, as Neste contends. The written description contains a section devoted to providing specific definitions for terminology, including “bio oil,” “glyceride oil,” and “hydrotreatment.” Ex. 1001, 3:28–4:7. There is no mention of a bio oil intermediate, which would be expected if the inventors had intended to coin a new term. The only use of “intermediate” in the entire written description is as follows: “disclosed is a glyceride oil intermediate, which intermediate consists of glyceride oil from at least one renewable source and the iron content of said glyceride oil is less than 1 w-ppm.” Id. at 4:64–67. The sentence preceding that one states only that the “purification result can be obtained (depending on used feedstock) using pretreatment methods.” Id. at 4:61–62 (emphasis added). As can be seen, there is no mention in this passage that the “glyceride oil intermediate” must be pretreated, and no indication it is a novel term coined by the inventors. In any event, Neste has not given us reason to depart from the general presumption that a claim preamble is not limiting. The body of claim 6 recites a structurally complete invention, defining the bio oil intermediate according to its iron content. There is no reason to rely on the preamble of the claim for any structure, or for antecedent basis for any claim term. Therefore, we conclude that the preamble does not “breathe life and meaning” into the claim, but rather recites an intended use for the structurally complete invention recited in the body of the claim. As such, we decline to adopt Neste’s modified construction of the claim term, and maintain our prior construction of claim 6’s preamble.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed

    “Upon evaluation of the record as a whole, we believe Neste has the better argument, and conclude that the iron content of the bio oil in claim 1 should be determined when the feed is introduced to the catalyst bed. This interpretation is, most importantly, reflected in the structure of the claim. Claim 1 contains a single process step, of “subjecting a bio oil . . . to a hydrotreatment process.” Immediately following this process step is a wherein clause that requires the iron content of “said bio oil” to be within a certain range. The necessary implication of this claim structure is that “said bio oil” is referring to the substance that is being subjected to the hydrotreatment process, meaning the iron content that is relevant to the claim is the iron content at the time of hydrotreatment with a catalyst. The claim, as a comprising claim, does not exclude the presence of other treatment steps such as purification or dilution, but the structure of the claim does imply that these additional steps should be performed prior to determining whether the iron content of the feed is within the claimed range.” slip op. at 20

  Patent outcomesUS 8,742,185 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,742,185

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.