• Voltage, LLC v. Shoals Technologies Group, LLCInstitution denied
  PTAB · Sep 30, 2024 · PGR2024-00022 · APJ Michael G Mcmanus · PGR · Institution

  The Board denied institution on claims 1–24 because Voltage did not show that any challenged claim was more likely than not unpatentable under the asserted grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute a post-grant review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). A post-grant review may not be instituted “unless. . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that Petitioner has not demonstrated that the ’153 patent is eligible for post-grant review. Accordingly, we decline to institute a post-grant review of claims 1–24 based on the grounds articulated in the Petition.” slip op. at 2

  • Skill levelOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, for purposes of this institution decision, and on the present record, we determine that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions. C. Claim Construction” slip op. at 12

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

    “The parties put forward several terms for construction. Pet. 14–17; Prelim. Resp. 9–12. With respect to Grounds I through VII, we have determined that no claim constructions are required in order to address the points at issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy” (internal citation omitted)). Claim construction is required to resolve certain issues arising in connection with Ground VIII. Accordingly, we construe certain terms in our discussion of that ground, infra.” slip op. at 13

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

    “through the undermold.” The term “aperture only partially extending through said undermold” was added to the claims of the ’254 parent application by amendment. Ex. 1021, 103–105; Ex. 1020, 6:60–8:47. With this amendment, the claims of the ’254 patent align with Figure 7, reproduced below. Figure 7 of the ’254 Patent (Figure 7 of the ’153 patent is identical to Figure 7 of the ’254 patent except for minor stylistic changes). As can be seen, the aperture occupied by drop line 12 extends partially through the undermold to compression lug 20 while the aperture occupied by feeder cable 14 extends completely through the undermold. This suggests a construction of “aperture extending partially through the undermold” where such aperture does not extend completely through the undermold. Such a construction of “aperture extending partially through the undermold” is consistent with the plain meaning of “extending partially.”” slip op. at 62

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · Nautilus
  Patents in suitUS 11,689,153
• Iqe PLC v. Cornell Research Foundation Inc.Instituted
  PTAB · Sep 13, 2024 · IPR2024-00609 · APJ Kimberly Mcgraw · IPR · Institution

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

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”). We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner proposes a slightly different formulation of the level of skill in the art, namely, that a POSITA “would have a bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, and such a person would have at least 3 years of academic or industry experience in nucleation and epitaxial growth processes, or other comparable industry experience,” where “[t]his level of skill is approximate and more experience would compensate for less formal education, and vice versa.” Prelim. Resp. 7. Nevertheless, Patent Owner asserts that “the result here does not depend on which of the two articulations that the Board chooses.” Id. at 8. For the purposes of this Decision, we adopt Patent Owner’s proposal because we find Patent Owner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We also note that the outcome of this Decision would be the same under Petitioner’s proposed definition.” slip op. at 14

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

    “We disagree with Patent Owner’s arguments. The plain language of claim 1 does not recite any limitation regarding whether or not a group III/II reactant must continue to flow or must stop after the pretreatment step. Claim step [1b] simply recites “pre-treating a surface of the substrate with at least one group III reactant or at least one group II reactant at an elevated growth temperature prior to introducing a group V reactant or a group VI reactant.” Claim steps [1c] and [1d] simply recite “introducing a group V reactant or a group VI reactant to grow a nucleation layer on the surface of the substrate” ([1c]) and “growing a buffer layer on said nucleation layer, said buffer layer providing a surface upon which said epitaxial layer is grown” ([1d]). None of these steps contain any language either requiring or prohibiting the flow of the at least one group III/II reactant recited in step [1b]. Similarly, none of the cited portions of the Specification requires that at least one of the group III/II reactant must continue to flow after the pretreatment steps.” slip op. at 17

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’360 patent. Thus, we institute an inter partes review of all challenged claims of the ’360 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,250,360
• Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentable
  PTAB · Sep 10, 2024 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, and Rapparini.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “To obtain the benefit of the filing date of an earlier application, Patent Owner bears the burden of producing evidence to establish where each limitation of the challenged claims is disclosed in a single priority application. Studiengesellschaft Kohle, 112 F.3d at 1564; NTP, 654 F.3d at 1276. Petitioner identifies limitations of the challenged claims that are missing from each individual German priority application. Pet. 39–42. Patent Owner responds with no evidence or arguments suggesting that the identified limitations are disclosed in a single application. Resp. 10–12. On this record, no challenged claim is entitled to the benefit of the filing date of any of the three German priority applications; therefore, Jarisch qualifies as prior art under at least 35 U.S.C. § 102(e).” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In other words, even if we accept that Dr. Howle has some experience designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to “at least five years” or involved “experience with sensors for recognizing identifiers.” Dec. 8 (adopting Patent Owner’s own proposed definition of ordinary skill in the art); see Sur-reply 3 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3–12, 102:30– 104:9; Ex. 2017 ¶¶ 3, 4) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.12 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). The Federal Circuit has made plain that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” 12 To be clear, we are not saying that a witness supplying expert opinions must have satisfied the requirements of the level of ordinary skill in the art on or before the priority date of the challenged patent, which Patent Owner seems to understand. See Sur-reply 4–5. Instead, we evaluate whether Dr. Howle had at least the requisite qualifications of a person having ordinary skill in the art by the time he rendered his opinions. Osseo Imaging, LLC v. Planmeca USA, Inc., Appeal No. 2023-1627, slip op. at 7 (Fed. Cir. Sept. 4, 2024) (“[A]n expert can acquire the necessary skill later and develop an understanding of what a person of ordinary skill knew at the time of the invention,” however, where “the expert was not a person of ordinary skill at the time of the invention may well be used during cross-examination to undermine the credibility of the expert.”); see id., slip op. at 5–6 (affirmatively quoting Kyocera). Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. “‘Admitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’” That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). Alternatively, even if we accept that Dr. Howle possesses “at least five years” of relevant design experience, on this record, we agree with Petitioner that his opinions are entitled to less weight than those of Petitioner’s witness, Mr. Jobin. Reply 27. Unlike Dr. Howle, Mr. Jobin is a designer by profession, with more than 30 years of industry experience. Reply 27 (citing Ex. 1003 ¶¶ 5–30). For example, Mr. Jobin designed a home-based beer dispensing system utilizing cartridge identification technologies. Id. (citing Ex. 1003 ¶ 24). Mr. Jobin also “has substantial experience with sensors for recognizing identifiers.” Id. (citing Ex. 1003 ¶ 19; Ex. 1072, 3712–19, 67:22–70:19). Dr. Howle, by contrast, “has never designed a beverage machine.” Reply 22; see generally Sur-reply (declining to contest that assertion).13” slip op. at 14

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

    “In Petitioner’s contrary view, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 45–46; Reply 21–22 (Ex. 1003 ¶¶ 194–195; Ex. 1005 ¶¶ 82–84, Fig. 5). Although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as depicted in Figure 5 of Jarisch. We credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing. Ex. 1003 ¶ 184. For reasons explained above, we assign little or no weight to Dr. Howle’s conflicting testimony because he has little or no experience designing a mechanical beverage system or similar product. See supra 10– 16. Petitioner lays out persuasive reasons why Dr. Howle’s testimony, on this particular point, is “conclusory” and rests on “bodily incorporation” of the references. Reply 24; see id. at 22–24 (pointing out with particularity fundamental flaws in Dr. Howle’s opinions); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In addition, Patent Owner contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that there is a “snug fit” to avoid “unbalances.” Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of multiple volume capsules or permit a “snug fit” in the modified device of Yoakim. Id. at 8–9. Patent Owner’s view that Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch and, in any event, other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Furthermore, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange. Ex. 1003 ¶¶ 187–195. With respect to the argument that the use of Jarisch’s design would not allow a snug fit, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or less effective. Resp. 39–40; see Reply 22 (citing Ex. 2019, 36:18–37:6). Indeed, as Petitioner points out, Jarisch indicates that its device, including its capsule holding means, allows the capsule to be successfully driven in rotation. Reply 22 (citing Ex. 1005 ¶ 23).” slip op. at 49

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “That argument is not persuasive. A reference need not identify or discuss another prior art patent or application in order for that reference to be deemed relevant or analogous art. Nor do we endeavor to determine why, or why not, a particular reference is discussed in a prior art reference. The analogous art inquiry focuses on reasonable pertinence and involves assessing the similarities between the claimed invention and the prior art, including the problems addressed and the closeness of the subject matter, as viewed by an ordinarily skilled artisan. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020); see Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380-81 (Fed. Cir. 2019) (relevant analysis focuses on comparing the disclosed embodiments, function, and structure of the claimed invention to the disclosures of the prior art). Against that backdrop, we reject Patent Owner’s suggestion that the inquiry involves whether the inventors of Jarisch saw a need to discuss Yoakim’s disclosure in Jarisch’s priority document.” slip op. at 45

  Patent outcomesUS 10,994,923 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,994,923
• Air Products And Chemicals, Inc. v. Evonik Operations GmbH And Evonik CorporationInstituted
  PTAB · Aug 19, 2024 · IPR2024-00611 · APJ Michael G Mcmanus · IPR · Institution

  The Board instituted review of claims 1–23 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Ungerank and Scholz.

  RulingsInstitution decision

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

    “3. Whether Petitioner has Demonstrated a Reasonable Likelihood of Prevailing “In an IPR, 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”)). Further, Petitioner bears the “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we are persuaded that Petitioner demonstrates sufficiently that Ungerank and Scholz teach or suggest each limitation in claim 1. Petitioner also sets forth sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ungerank and Scholz in the manner recited in claim 1, with a reasonable expectation of success, so as to show a reasonable likelihood of prevailing.” slip op. at 19

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

    “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”)). Further, Petitioner bears the “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citation and internal quotation omitted). Having reviewed the parties’ arguments and evidence of record, we are persuaded that Petitioner demonstrates sufficiently that Ungerank and Scholz teach or suggest each limitation in claim 1. Petitioner also sets forth sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ungerank and Scholz in the manner recited in claim 1, with a reasonable expectation of success, so as to show a reasonable likelihood of prevailing.” slip op. at 19

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

    “A reference does not teach away if it “does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (cleaned up). The Federal Circuit has explained that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “The fact that the motivating benefit comes at the expense of another benefit ... should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be” slip op. at 21

  • PTAB / AIA Trials › Discretionary denialInstituted

    “Petitioner argues that the Board should not exercise its discretion to deny institution under 35 U.S.C §§ 314(a) or 325(d). Pet. 62–69. Patent Owner does not address discretionary denial. In view of the absence of argument from Patent Owner and minimal evidence bearing upon discretionary denial, we determine that there is no basis for discretionary denial.” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,471,380
• Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.All claims unpatentable
  PTAB · Jul 31, 2024 · PGR2020-00071 · APJ Jeffrey W Abraham · PGR · Remand

  On remand, the Board held claims 10 and 27 unpatentable as obvious over Robinson, Greim, and Adams because skilled artisans would have optimized heater length through routine experimentation.

  RulingsRemand decision

  • RemandOther

    “Standard Operating Procedure 3 communicating the parties’ positions on submitting additional briefing on remand. Ex. 3001.2 We responded on April 15, 2024, authorizing the parties to file additional briefs limited to the question of “whether the Federal Circuit’s determinations on written description are applicable to an obviousness analysis, and if so, how they should be applied.” Ex. 3001. Petitioner filed its Supplemental Brief on Remand on April 29, 2024 (Paper 41, “Pet. Supp. Br.”), and Patent Owner filed its Supplemental Reply Brief on Remand on May 13, 2024 (Paper 42, “PO Supp. Reply”). B. The Issue on Remand As part of our Final Written Decision, we determined that Petitioner established, by a preponderance of the evidence, that claims 10 and 27 lack adequate written description support. FWD 38–41. In view of this, we declined to address Petitioner’s arguments that claims 10 and 27 are unpatentable as obvious in view of Robinson,3 Greim,4 and Adams.5” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and one to two years of industry experience. Such a [person of ordinary skill in the art] would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein. Pet. 14 (citing Ex. 1004 ¶¶ 26–30). Patent Owner states that “[f]or purposes of the trial in this proceeding, [Patent Owner] accepts Petitioner’s proposed education and experience level of the [person of ordinary skill in the art].” PO Resp. 13. In view of the foregoing, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art. The prior art of record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 16

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

    “Petitioner contends that “[t]he challenged claims are unpatentable under any reasonable construction,” and, “for purposes of this proceeding . . . adopts the plain meaning of the claims and submits that no claim term requires construction.” Pet. 14. Patent Owner contends it was improper for Petitioner to adopt the plain meaning of the claims without explaining what it considers the plain meaning of each claim term to be. PO Resp. 13. Patent Owner does not offer a construction for any claim term. PO Resp. 13. After considering the full record developed during trial, we determine that no claim limitations need an express construction for purposes of resolving the controversy.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Although Patent Owner is correct that Petitioner does not direct us to any disclosure of a heating member having a length that “falls within the claimed range,” such a disclosure in the art is not required for a showing of obviousness. See, e.g., In re Huang, 100 F.3d 135, 136 (Fed. Cir. 1996). In Huang, the claim required a racquet grip comprising a textile layer and a polyurethane layer, and that the ratio of their thicknesses be “larger than approximately 0.18.” Id. at 137. The prior art disclosed a textile layer and polyurethane layer in thickness ratios ranging from 0.111–0.142. Id. at 136. Although the prior art did not disclose a ratio in the claimed range, the Federal Circuit affirmed the Board’s obviousness rejection because the evidence showed that “one of ordinary skill in the art would have experimented with various thicknesses to obtain an optimum range.” Id. at 139; see In re Aller, 220 F.2d 454 (CCPA 1955) (affirming an obviousness rejection of a claim to a chemical process reciting use of 25– 70% sulfuric acid at 40–80 degrees when the prior art disclosed the same reaction with 10% sulfuric acid at 100 degrees); In re Hill, 284 F.2d 955 (CCPA 1960) (affirming an obviousness rejection of a claim to a chemical process conducted at 150–250 degrees when the prior art disclosed the same reaction at 300 degrees). The Federal Circuit also noted that “Huang does not contend that he has achieved unexpected results by increasing the thickness of the polyurethane layer.” Huang, 100 F.3d at 139–140. Those principles apply with equal force to the facts in this case. Here, the evidence of record demonstrates that heaters having a length that spans some percentage of the length of the disposable aerosol forming substance were known in the art. For example, Robinson discloses one embodiment wherein heating element 72 has an elongated portion that extends into tobacco segment 89. Ex. 1006, 27:35–39, Fig. 3. Greim likewise discloses a heating element having some length, which may be inserted into a plug of an aerosol-forming substrate. Ex. 1007, 13, Fig. 4. Adams discloses similar information. Ex. 1008 ¶ 45 (“The axial length of the projection 72 is selected so that it does not extend all the way through the tobacco plug.”), Fig. 7. Following the reasoning in Huang, these disclosures of a heater having some length, albeit not necessarily a length in the claimed range, are sufficient to demonstrate obviousness if there is evidence demonstrating “one of ordinary skill in the art would have experimented with various [lengths] to obtain an optimum range” and there is no evidence that the claimed range provides unexpected results. Huang, 100 F.3d at 139.” slip op. at 22

  Patent outcomesUS 10,492,542 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,492,542
• Nespresso USA, Inc. v. K-Fee System GmbHInstituted
  PTAB · Jun 25, 2024 · IPR2024-00304 · APJ James J Mayberry · IPR · Institution

  The Board instituted IPR of claims 1–12 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch, and Rossi.

  RulingsInstitution decision

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

    “institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16–17 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’830 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’830 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1005 ¶ 1 (“The invention relates to the preparation of a beverage by use of a capsule containing beverage ingredient in a beverage production device. The present invention in particular focuses on the detection of the capsule.”); Ex. 1041, code (57) (“The process for controlling the operation of an edibleproduct making machine [includes] . . . recogni[zing] an identifying element . . . .”). Cf. Nespresso USA, Inc. v. K-Fee Sys. GmbH, IPR2022- 01574, Paper 29, 19–20 (PTAB April 10, 2024) (finding, for a related patent claiming similar subject matter, that the level of ordinary skill in the art is “is a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier”).” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “apparent interpretations that [Patent Owner] offered in its infringement contentions.” Pet. 17 (referencing Ex. 1049). Petitioner then provides certain examples. Id. at 17–23. Petitioner concludes “that for this proceeding, no claim terms require formal construction.” Id. at 23 (referencing Ex. 1003 ¶¶ 150–153). Patent Owner does not address claim construction. We agree with Petitioner that, for the purposes of this Decision, we need not expressly construe any claim terms to resolve the parties’ disputes. 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)). We apply the plain and ordinary meaning in this Decision. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges.” slip op. at 17

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

    “In any event, Patent Owner’s reasonable expectation of success focuses on the wrong inquiry. “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). The claimed invention is not directed to reading the code. Instead, the claim is directed to a portion capsule with an individualized identifier on the bottom of the capsule’s flange, with the identifier having certain qualities. Petitioner sufficiently demonstrates, on the current record, that a person having ordinary skill in the art would have had a reasonable expectation of success in including an identifier on the bottom of the flange of a portion capsule as taught by Jarisch. See Pet. 42 (“Jarisch explicitly teaches positioning an optical code ‘on the bottom of the rim of the capsule which is opposed to the lid of the capsule.’” (quoting Ex. 1005 ¶ 22)). iii. Combining Yoakim and Jarisch with Rossi Next, Patent Owner argues that Petitioner’s reasons for combining Rossi’s teaching of a capsule identification system is deficient because Yoakim already achieves a safety function by using a capsule and capsule holder with complementary shapes. Prelim. Resp. 39 (referencing Ex. 1004 ¶ 205); see also Ex. 1004 ¶ 205 (describing gripping structure 840 on the bottom of an exemplary capsule that serves as a “lock” into which a “key” structure in the capsule holder fits). We have considered Patent Owner’s argument and determine, on the current record, that it does not demonstrate a deficiency in Petitioner’s position for purposes of instituting trial. This argument is directed to a single embodiment with gripping structure 840, a feature not relied upon in the Petition for satisfying any claim limitations. Even if Yoakim discloses one way to ensure compatible capsules are used, such a disclosure does not mean that a person having ordinary skill in the art would not have found it obvious to use a different method known in the art that could be employed with predictable results for capsules that do not employ a gripping structure. Cf. KSR Int’l Co., 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Also, Petitioner’s rationale for employing Rossi’s teachings is broader than safety considerations. The Petition identifies “greater specificity and accuracy of brewing conditions” as well as increased safety. See Pet. 44.” slip op. at 28

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,465,830
• Nespresso USA, Inc. v. K-Fee System GmbHInstituted
  PTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution

  The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.

  RulingsInstitution decision

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

    “institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17

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

    “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). Under this standard, claim terms are generally 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 and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18

  • Obviousness (§103) › Analogous artAnalogous artOther

    “a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,554,910
• Nespresso USA, Inc. v. K-Fee System GmbHInstituted
  PTAB · Jun 25, 2024 · IPR2024-00257 · APJ James J Mayberry · IPR · Institution

  The Board instituted review of claims 1–24, finding a reasonable likelihood that claim 1 would have been obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.

  RulingsInstitution decision

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

    “institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’722 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:38–44 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edibleproduct making machine [includes] . . . recogni[zing] an identifying element . . . .”). Cf. Nespresso USA, Inc. v. K-Fee Sys. GmbH, IPR2022-01574, Paper 29, 19–20 (PTAB April 10, 2024) (finding, for a related patent claiming similar subject matter, that the level of ordinary skill in the art is “is a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier”).” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “Patent Owner does not address claim construction. We agree with Petitioner that, for the purposes of this Decision, we need not expressly construe any claim terms to resolve the parties’ disputes. 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)). We apply the plain and ordinary meaning in this Decision. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges.” slip op. at 18

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

    “current record, that they do not demonstrate a deficiency in Petitioner’s position for purposes of instituting trial. Petitioner provides a reason to position a code on the bottom side of the rim of a capsule, taken directly from Jarisch ’929. See Pet. 37 (referencing Ex. 1006 ¶¶ 17, 63); see also Ex. 1006 ¶¶ 17 (“These locations are particularly advantageous since they . . . [are] less prone to damages caused by the processing module and in particular by the pyramidal plate, and to ingredients projections. As a consequence, the amount of coded information and the reliability of the readings are both improved.”), 63 (same); cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). On the current record, Patent Owner’s attorney argument does not identify sufficiently a deficiency in Petitioner’s reasoning.” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,548,722
• Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.Instituted
  PTAB · Jun 24, 2024 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Institution

  The Board instituted IPR on claims 1–5, 7, and 9–14 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner

    “because they are premised on a misapplication of our precedent. Providing a document to the Office in an Information Disclosure Statement is sufficient to satisfy AB prong one as long as that “previously presented” art is “the same or substantially the same” as that presented in the Petition. See Advanced Bionics, 7–8 (holding that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). As we have already found, there are no material differences between the asserted art and the prior art involved during examination under BD factor (a). Petitioner provides no authority that requires us to interpret “involved during examination” under BD factor (a) as “used in a rejection” or “mentioned by the examiner” (Pet. 60), and we are aware of none. Patent Owner’s position, in that regard, appears to conflate the first AB prong (whether the art previously was presented to the Office) with an aspect of the second AB prong (the extent to which the Examiner considered that art).” slip op. at 11

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

    “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 findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has met that standard on this record. slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29). Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See Prelim. Resp., generally. 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 Petitioner’s proposed unchallenged definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 7

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

    “Petitioner asserts that the claimed term “aryl” should be construed to mean “an aromatic ring system.” See Pet. 20–23. Patent Owner does not propose a different claim construction at this stage of the proceeding. See Prelim. Resp., generally. After review of the preliminary record, we determine that no claim terms need to be construed 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

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 11,041,087
• Gce Gas Control Equipment Inc. v. Vbox, Inc.Some claims unpatentable
  PTAB · Jun 18, 2024 · IPR2023-00326 · APJ Jane E Inglese · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

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

  • Expert testimonyPatent owner expert creditedDecided for patent owner

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

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

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

  • Strike new argumentNew argument disregardedDecided for patent owner

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

  Patent outcomesUS 11,389,614 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,389,614

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.