- The Noco Company, Inc. v. Pilot, Inc.InstitutedPTAB · Jan 14, 2022 · IPR2021-01235 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–7 and 9–15 are unpatentable as obvious over Richardson and Krieger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine the Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that in the ’806 patent claims “most of the terms can be given their ordinary meaning, or in any event the ordinary meaning they would have to a person of ordinary skill in the art ... of automobile chargers and jump starters.” Id. at 15 (citing Ex. 1008 ¶ 31). Petitioner further argues that the term “recharging level” which appears in dependent claims 7 and 8 should be interpreted to mean “the level of the first battery after it is connected to the load.” Id. (citing Ex. 1008 ¶ 33). We determine that we do not need to explicitly construe any claim term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Nevertheless, the panel invites the parties to further address the construction of the aforementioned claim language during the trial.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had an undergraduate degree in electrical engineering (or equivalent subject) together with two or three years of experience in automotive electrical systems industry.” Pet. 12 (citing Ex. 1008 ¶ 13). Patent Owner does not dispute the level of ordinary skill in the art. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Having reviewed Petitioner’s undisputed evidence and argument regarding claim 1, we find that Petitioner has demonstrated sufficiently that Richardson and Krieger teach or suggest all of the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the teachings and would have had a reasonable expectation of success in doing so. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on its obviousness challenge with respect to claim 1.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,328,806 - PTAB · Jan 14, 2022 · IPR2021-01232 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted inter partes review of claims 1 and 3–20 on all asserted grounds after finding a reasonable likelihood that claims 7–12 and 14–20 were obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering or its equivalent and two years of experience in electrical engineering with some experience in design of battery charging systems.” Pet. 8. Patent Owner does not challenge Petitioner’s definition or offer its own. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’653 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’653 patent and the prior art. See Okajima v. Bourdeau, 261” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for the terms “battery level detector,” “load detector,” and “switching circuit”/”switching circuitry.” Pet. 9–12. Petitioner contends that “[a]ll other claim terms are to be understood according to their plain and ordinary meaning.” Pet. 9. We determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, Patent Owner does not dispute that Yu and Thomason disclose the limitations in claim 7, or that a person of ordinary skill in the art would have had reason to combine the teachings of Yu and Thomason and would have known how to do so. After reviewing the evidence and arguments Petitioner presents in the Petition regarding claim 7, we agree that Yu discloses a charging device comprising a battery level detector (internal battery voltage detection circuit 43), load detector (external battery reverse polarity detection circuit 44 and/or external battery voltage detection circuit 45), microcontroller (microprocessor 42), and switching circuitry (relay 2), as claim 7 requires. Ex. 1005 ¶¶ 21–27; Pet. 53–60. Yu also discloses microprocessor 42 receives sensor input signals from internal battery voltage detection circuit 43, external battery reverse polarity detection circuit 44, and external battery voltage detection circuit 45, and can use various signals to control relay 2. Ex. 1005 ¶¶ 26–27. We also agree that Thomason discloses considering the level of the internal battery when determining when to turn its switch on/off and that doing so avoids damaging the battery. Ex. 1008 ¶ 36; Pet. 53–60. Accordingly, Petitioner has demonstrated sufficiently that Yu and Thomason teach or suggest all the limitations of claim 7, and that a person of ordinary skill in the art would have had reason to combine the teachings and would have had a reasonable expectation of success in doing so. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on its obviousness challenge with respect to claim 7.” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,046,653 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Solas Oled Ltd.Institution deniedPTAB · Jan 13, 2022 · IPR2021-01254 · APJ Sally C Medley · IPR · Institution
The Board denied institution for claims 1–14 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner fails to explain, with supporting evidence, how Baltierra’s monitoring state machine 122 is operable to “recognize, based on at least the first and second outputs, at least one multi-touch gesture.” Baltierra describes that in some embodiments, each tactile contact has its own instance of a contact state machine, for example, a first finger may have a first contact state machine and a second finger a second contact state machine. Ex. 1005 ¶ 31. Monitoring state machine 122 “monitors the change in the number of tactile contacts by monitoring the state of the contact state machines 120.” Id. ¶ 32. Petitioner has not shown that monitoring the change of state or monitoring the change in the number of tactile contacts meets the claim limitation of a multi-touch state-machine module operable to “recognize, based on at least the first and second outputs, at least one multi-touch gesture.” As Patent Owner points out, Baltierra’s identifier module 104 is described as recognizing multi-touch gestures, not monitoring state machine 122. Id. ¶¶ 16, 22–25.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Benjamin B. Bederson, Petitioner offers an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’767 patent. Pet. 8 Katou (Ex. 1006, 21–46). Any reference to Katou hereinafter will be to the English-language translation. 5 U.S. Pat. Appl. Pub. No. US 2007/0176906 A1, published Aug. 2, 2007 (Ex. 1007, “Warren”). 6 U.S. Pat. Appl. Pub. No. US 2008/0036743 A1, published Feb. 14, 2008 (Ex. 1008, “Westerman”). (citing Ex. 1002 ¶¶ 24, 30–32). For example, Dr. Bederson states that a person having ordinary skill in the art “would have been someone with at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, plus at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Ex. 1002 ¶ 30. Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid including ambiguity in the definition of the level of skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1 and 9–14 over Baltierra alone or over” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“sufficiently why a person having ordinary skill in the art would have been motivated to make the combination as proposed by Petitioner. The Petition does not make clear whether Petitioner proposes to integrate Baltierra’s identifier module 104 into monitoring state machine 122, or else to maintain Baltierra’s identifier module 104, but also to include the function of identifier module 104 in monitoring state machine 122. If the former, then Petitioner fails to explain how identifier module 104 can still be the claimed “gesture-processing logic” also recited in the claim. In other words, if the identifier module 104 is eliminated and integrated into monitoring state machine 122, then the Petition is inconsistent insofar as it maps the “gestureprocessing logic” to identifier logic module 104 separate from the claimed “plurality of state-machine modules.” See Pet. 23–24, 31–32. If, on the other hand, Petitioner proposes to maintain Baltierra’s identifier logic module 104 in the proposed combination, but also to add the functionality of recognizing multi-touch gestures to monitoring state machine 122, then we agree with Patent Owner that Petitioner and Dr. Bederson fail to explain why a person having ordinary skill in the art would have wanted to include the function of recognizing gestures into the monitoring state machine when the identification module already provides that function. Pet. 31; Ex. 1002 ¶ 105. Moreover, to the extent that Petitioner proposes to integrate whatever is in Baltierra’s identifier module 104 into monitoring state machine 122, we determine that Petitioner fails to explain why a person having ordinary skill in the art would have done so. In particular, Petitioner argues that “[b]ecause Baltierra’s monitoring state machine has access to the gesture information provided by the separate contact state machines, it can be programmed similar to the identification module to provide the function of recognizing gestures (e.g., a pinch) and mapping it to a corresponding function (e.g., Zoom Out).” Pet. 31. Dr. Bederson testifies the same. Ex. 1002 ¶ 105. Petitioner then explains that Katou teaches “integrat[ing] these functions” and that it would have been obvious to make the combination “because of the ‘separation of concerns’ software engineering principle.” Pet. 31–32 (citing Ex. 1002 ¶¶ 48–49, 105; Ex. 1036; Ex. 1006 ¶¶ 11–12, 40–43, Fig. 1). Petitioner fails to explain how the quoted passage from Katou teaches “integrating these functions.” Id. at 31. And, even if Katou somehow teaches “integrating these functions,” such a teaching would be undermined by Petitioner’s suggestion that integration would have been desirable based on the “separation of concerns” principle. See id. at 32. According to Dr. Bederson, the “separation of concerns” principle “refers to the idea that by separating the components of a technical system and minimizing the coordination between them, each can be developed, tested, and updated separately from each other.” Ex. 1002 ¶ 48 (emphasis added). As Dr. Bederson further testifies, a common application of the “separation of concerns” principle is in the design of software systems, where designers “design software modules to operate independently of each with well-defined Application Programming Interfaces (APIs). This approach makes it possible to change the implementation of one module (without changing its API) without the other modules being aware of those changes.” Id. ¶ 49. Thus, the “separation of concerns” principle, which advocates separating software modules, is in direct conflict with Petitioner’s proposal to “integrate these functions” into one module.” slip op. at 18
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,526,767 - PTAB · Oct 6, 2021 · IPR2021-00591 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–40 and all asserted grounds, finding a reasonable likelihood that Miyazawa anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS A. Claim Construction Petitioner does not propose construction of any claim term. Pet. 11– 12. We determine we need not explicitly construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent experience in circuit design or related fields. Alternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to the design of electroluminescent devices, drive circuits, or other circuit design or an advanced degree in electrical engineering (or equivalent), with at least one year of industry experience in a related field. Pet. 11 (citing Ex. 1003 ¶¶ 35–37). For purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’880 patent and the asserted prior art, we determine that Petitioner’s definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’880 patent and prior art.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“After reviewing the evidence and arguments in the Petition regarding claim 25, which are unrebutted on this record, including the relevant portions of the supporting Hatalis Declaration, we are persuaded that Petitioner’s discussion of the particular structures in Miyazawa, and the explanations in the Petition and the Hatalis Declaration, are sufficient to establish a reasonable likelihood that Miyazawa anticipates claim 25. Accordingly, we determine Petitioner has established a reasonable likelihood of prevailing on its anticipation challenge with respect to claim 25.” slip op. at 22
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 7,868,880 - Samsung Display Co., Ltd. v. Solas Oled Ltd.All claims unpatentablePTAB · Mar 31, 2021 · IPR2020-00140 · APJ Julia Heaney · IPR · Final written decision
Claims 1–9, 11–13, and 15–18 are unpatentable under § 103 over Utsugi alone, Utsugi and Manabe, or Utsugi and Eida.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“No. 6,072,450 (Ex. 1001, “the ’450 patent”). Paper 1 (“Petition” or “Pet.”). Solas OLED Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–9, 11–13, and 15–18 of the ’450 patent, and we instituted this inter partes review as to all challenged claims. Paper 9 (“Dec. on Inst.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s formulation of the level of ordinary skill in the art and determined that a person of ordinary skill in the art at the time of the invention “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Dec. on Inst. 9 (quoting Pet. 13) (adopting Petitioner’s formulation, which is supported by Dr. Fontecchio’s testimony, because it is consistent with the ’450 patent and the asserted prior art). In its Patent Owner Response, Patent Owner argues that a person of ordinary skill would need approximately two years of experience working in design and development related to active matrix organic light emitting diodes (“OLED”) displays, in addition to a Bachelor’s degree in Electrical Engineering, Physics, and/or Materials Science and Engineering or equivalent training. PO Resp. 7–8 (citing Ex. 2001 ¶¶ 30–31). Patent Owner also states, however, that its arguments in opposition to the Petition apply under Petitioner’s definition of the level of ordinary skill as well. Id. at 8. Accordingly, having considered the parties’ arguments and evidence, we maintain our determination from the Institution Decision adopting Petitioner’s proposed level of ordinary skill in the art, as it is consistent with the problems and solutions in the ’450 patent and prior art of record. We also determine our decision would be the same under either side’s formulation of the level of ordinary skill.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22
Patent outcomesUS 6,072,450 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,072,450 - Longi Green Energy Technology Co., Ltd. / Longi Solar Technology Co., Ltd. et al. v. Hanwha Q Cells & Advanced Materials CorporationAll claims unpatentablePTAB · Dec 3, 2020 · IPR2019-01072 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 12–14 are unpatentable as obvious over Hagino and over Hagino with Duerinckx and Hoex 2006; the Bhattacharyya grounds did not prove them unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Upon review, Petitioner’s Motion to Exclude fails to establish that Petitioner is entitled to the remedy it seeks. To the extent the Motion seeks exclusion of evidence under FRE 403 as overly prejudicial, Petitioner does not adequately explain what prejudice it would suffer if we were to simply disregard or give little weight to the uncited paragraphs of Dr. Lebby’s testimony, rather than excluding them from the record. Indeed, as the Board is not a jury, it would appear that the risk of unfair prejudice against which Rule 403 guards is diminished, if not eliminated entirely. See, e.g., Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“in the context of a bench trial, evidence should not be excluded under 403 on the ground that it is unfairly prejudicial”); see also Gulf States Utils. Co. v. Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981). The Board is capable of hearing relevant evidence and weighing its probative value, including determining the weight to be given Dr. Lebby’s testimony or disregarding it entirely.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under the Phillips standard, the “words of a claim ‘are generally given their ordinary and customary meaning,’” which is “the meaning that the term would have to a person of effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Only those terms in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In our Institution Decision, we determined that no term of the challenged claims required an express construction. Dec. on Inst. 8. During trial, neither party proposed that we adopt any specific construction of a claim term. Upon review of the record and the parties’ positions, we agree that no term appearing in the challenged claims requires express construction. slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Petitioner relies on the Declaration of Sanjay Banerjee, Ph. D. (Ex. 1003). Dr. Banerjee testifies that a person having ordinary skill in the art would have “an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field,” or alternatively, “a bachelor’s degree in electrical engineering, applied physics, chemistry, or materials science, and at least three years designing, developing, or researching in the field.” Ex. 1003 ¶ 46. We adopted this definition for purposes of deciding whether to institute trial. Dec. on Inst. 9. For purposes of this inter partes review, Patent Owner “does not contest this level of skill.” PO Resp. 2. In view of this agreement, we adopt Dr. Banerjee’s definition of the level of ordinary skill in the art.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Banerjee’s testimony supports the conclusion that a person of ordinary skill in the art would have interpreted Hagino’s disclosure in this manner. Dr. Banerjee states that paragraph 29 of Hagino is “certainly . . . the only described method for forming ‘silicon nitride’ layers” in the reference. Ex. 1003 ¶ 211. We noted in our Institution Decision that this appeared to not be the case, because silicon nitride could also be applied through spin coating Solution A. Dec. on Inst. 30 n.10. But on the full record now before us, we credit Dr. Banerjee’s testimony, because upon further evaluation the Solution A spin-coating method does not pertain to the deposition of a silicon nitride layer. We have also reviewed Dr. Lebby’s testimony on this issue in evaluating how a person of ordinary skill would have interpreted Hagino. disclose using a CVD deposition method (Ex. 2008 ¶ 87), he does not address how a person of ordinary skill in the art would have understood Hagino to deposit a silicon nitride layer in the First Embodiment without using CVD. In particular, Dr. Lebby did not indicate, in Hagino or elsewhere, any disclosure that spin coating was a recognized method for depositing a silicon nitride layer. The only method for depositing silicon nitride recognized by Dr. Lebby was CVD as disclosed by the ’215 patent, and he testified that CVD deposition of a silicon nitride layer in the presence of silane leads to the “cracking” of silane and “typically you would . . . see hydrogen as part of a deposited layer.” Ex. 1053, 55:6–57:20. Based on the foregoing, we find that Hagino discloses deposition of a surface layer of silicon nitride using CVD that corresponds to the second layer of claim 12. We also credit Dr. Banerjee’s uncontradicted testimony that performing CVD deposition of silicon nitride in the presence of silane, as Hagino discloses (Ex. 1006 ¶ 29), would necessarily result in hydrogen being embedded in the layer. Ex. 1003 ¶¶ 206–213.” slip op. at 20
Patent outcomesUS 9,893,215 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,893,215 - Qiagen North American Holdings, Inc. v. Handylab, Inc.No claims unpatentablePTAB · Jul 14, 2020 · IPR2019-01493 · APJ Jo-Anne M Kokoski · IPR · Final written decision
The Board held claims 1–33 not shown unpatentable under the asserted §103 grounds because the petitioner did not establish the claimed separate sample inlets or a reasonable expectation of success in combining the references.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We agree with the parties that a POSA would have had an engineering background and experience with microfluidic devices, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding 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 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the differences between Petitioner’s and Patent under either assessment.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We also agree with Patent Owner that the specification defines the structure of the sample lane. PO Resp. 12. The specification states: A sample lane is an independently controllable set of elements by which a sample can be analyzed, according to methods described herein as well as others known in the art. A sample lane comprises at least a sample inlet, and a microfluidic network having one or more microfluidic components as further described herein. Ex. 1002, 12:66–13:4. The embodiments described in the specification include sample inlets associated with each of the sample lanes. See, e.g., id.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner has failed to sufficiently demonstrate that the combination of Zou I and McNeely or Pease teaches multi-lane microfluidic cartridges, because Petitioner has failed to establish by a preponderance of the evidence that a POSA would reasonably have expected to be successful in combining Zou I’s microfluidic chip with a cartridge as taught by McNeely or Pease. In order to demonstrate that the challenged claims are obvious, a petitioner must demonstrate “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). A petitioner must combination(s) of elements in specific references would yield a predictable result, or [3] how any specific combination would operate or read on the asserted claims.” Id. at 1327–28. Focusing on the parties’ arguments pertaining to how Zou I and McNeely or Pease could be combined, which combination of elements in the references would yield a predictable result, and how the combination would operate or read on the challenged claims, we determine that the evidence on this record is not sufficient to show that a POSA could have had a reasonable expectation of success in attempting to combine the teachings of Zou I with McNeely or Pease. Although the Petition sets forth various rationales for why a person of ordinary skill would have had reason to combine the teachings of Zou I and McNeely or Pease, the rationales are general in nature and do not address any specific modification to either of the references. Pet. 28–33. The Petition includes a single reference to reasonable expectation of success, in a conclusory statement that “a POSA would have been motivated to combine the multiplexing PCR unit of Zou I with a conventional integrated machine such as in McNeely or Pease, with a high expectation of success.” Id. at 28–29. The First Gale Declaration is similarly conclusory as to how Zou I and McNeely or Pease could be combined and does not elaborate on reasonable expectation of success. See Ex. 1001 ¶¶ 116–127. Such conclusory assertions, lacking factual substantiation, are insufficient for evaluating reasonable expectation of success as part of an obviousness determination. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).” slip op. at 35
- Strike new argumentNew argument disregardedGranted in part
“Patent Owner also filed a Motion to Strike certain portions of Petitioner’s Reply. Paper 38. Petitioner filed an Opposition. Paper 39. We granted Patent Owner’s Motion to Strike in part, striking the arguments in Section II.B.ii from Petitioner’s Reply. Paper 42, 6–8, 13. We did not consider those arguments in the course of preparing this Final Written Decision.” slip op. at 2
Patent outcomesUS 7,998,708 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,998,708 - Qiagen North American Holdings, Inc. v. Handylab, Inc.No claims unpatentablePTAB · Jul 14, 2020 · IPR2019-00488 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–33 were not shown unpatentable because the asserted combinations did not establish the claimed multi-lane cartridge or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“We agree with the parties that a POSA would have had an engineering background and experience with microfluidic devices, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding 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 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the differences between Petitioner’s and Patent under either assessment.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We also agree with Patent Owner that the specification defines the structure of the sample lane. PO Resp. 12. The specification states: A sample lane is an independently controllable set of elements by which a sample can be analyzed, according to methods described herein as well as others known in the art. A sample lane comprises at least a sample inlet, and a microfluidic network having one or more microfluidic components as further described herein.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“In an obviousness analysis, a sufficient reason must be shown as to why a POSA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that drilling access holes into the glass cover of Zou I’s microfluidic chip was a “common technique,” but this does not provide a reason why a POSA would have been motivated to modify Zou I’s microfluidic chip. Pet. Reply 7. Petitioner’s argument and Dr. Gale’s that does not apprise us of why a POSA would have modified Zou I with access holes that would operate as separate sample inlets for each sample lane as required by the claims of the ’708 patent. Here, Petitioner attempts to imbue a POSA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSA would have modified Zou I in this way appears to be premised on Petitioner’s knowledge of the ’708 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain what would have led a POSA at the time of the invention to consider modifying Zou I to include a separate sample inlet with each sample lane. Petitioner failed to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”).” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner has failed to sufficiently demonstrate that the combination of Zou I and McNeely or Pease teaches multi-lane microfluidic cartridges, because Petitioner has failed to establish by a preponderance of the evidence that a POSA would reasonably have expected to be successful in combining Zou I’s microfluidic chip with a cartridge as taught by McNeely or Pease. In order to demonstrate that the challenged claims are obvious, a petitioner must demonstrate “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). A petitioner must combination(s) of elements in specific references would yield a predictable result, or [3] how any specific combination would operate or read on the asserted claims.” Id. at 1327–28. Focusing on the parties’ arguments pertaining to how Zou I and McNeely or Pease could be combined, which combination of elements in the references would yield a predictable result, and how the combination would operate or read on the challenged claims, we determine that the evidence on this record is not sufficient to show that a POSA could have had a reasonable expectation of success in attempting to combine the teachings of Zou I with McNeely or Pease. Although the Petition sets forth various rationales for why a person of ordinary skill would have had reason to combine the teachings of Zou I and McNeely or Pease, the rationales are general in nature and do not address any specific modification to either of the references. Pet. 28–33. The Petition includes a single reference to reasonable expectation of success, in a conclusory statement that “a POSA would have been motivated to combine the multiplexing PCR unit of Zou I with a conventional integrated machine such as in McNeely or Pease, with a high expectation of success.” Id. at 28–29. The First Gale Declaration is similarly conclusory as to how Zou I and McNeely or Pease could be combined and does not elaborate on reasonable expectation of success. See Ex. 1001 ¶¶ 116–127. Such conclusory assertions, lacking factual substantiation, are insufficient for evaluating reasonable expectation of success as part of an obviousness determination. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017).” slip op. at 35
Patent outcomesUS 7,998,708 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,998,708 - Qiagen North American Holdings, Inc. v. Handylab, Inc.No claims unpatentablePTAB · Jul 14, 2020 · IPR2019-00490 · APJ Julia Heaney · IPR · Final written decision
Claims 1–22 were not shown unpatentable because the asserted combinations failed to establish the required multi-lane cartridges and a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“year of related experience.” Pet. 7. Patent Owner argues that Petitioner’s proposed definition “is not narrowly drawn to experience in ‘microfluidic systems that carry out PCR,’” and contends that a POSA “would have had a degree in Mechanical Engineering, Bioengineering, or a similar field, and three years of experience with microfluidic devices that carry out PCR, or would have an advanced degree in a similar field with at least one year of related experience.” PO Resp. 8 (citing Ex. 2036 ¶¶ 25–26). Patent Owner’s declarant Dr. Northrup states that, although he disagrees with Petitioner’s proposed definition of a POSA, his “opinions would not change under” that definition. Ex. 2036 ¶ 28. We agree with the parties that a POSA would have had an engineering background and experience with microfluidic devices, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding 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 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and we note that our conclusions would be the same under either assessment.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the specification defines the structure of the sample lane. PO Resp. 12. The specification states: A sample lane is an independently controllable set of elements by which a sample can be analyzed, according to methods described herein as well as others known in the art. A sample lane comprises at least a sample inlet, and a microfluidic network having one or more microfluidic components as further described herein. Ex. 1003, 13:4–9. The embodiments described in the specification include sample inlets associated with each of the sample lanes. See, e.g., id. at 14:41–52, Figs. 10A, 10B (describing an exemplary microfluidic cartridge depicted in Figures 10A and 10B as showing “[m]ore than one inlet 202 . . . wherein one inlet operates in conjunction with a single sample lane”), 17:60–64, Fig. 13 (describing and depicting a 48-sample cartridge with separate inlets 602 for each sample lane). In contrast, when describing other elements (such as inlet ports and valves) that may be included in a sample lane, the specification clearly conveys that these other elements are optional. Id. at 13:10–13 (“In various embodiments, a sample lane can include a sample inlet port or valve, and a microfluidic network that comprises, in fluidic communication one or more components selected from the group consisting of” specified valves, vents, pumps, and chambers. (emphasis added)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“In an obviousness analysis, a sufficient reason must be shown as to why a person of ordinary skill in the art would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that drilling access holes into the glass cover of Zou I’s microfluidic chip would have been a common technique Pet. Reply 7. Petitioner’s argument and Dr. Gale’s testimony with respect to the modification of Zou I leaves an analytical gap that does not apprise us of why a person of ordinary skill would have modified Zou I with access holes that would operate as separate sample inlets for each sample lane as required by the claims of the ’900 patent. Here, Petitioner attempts to imbue a person of ordinary skill with the knowledge of the claimed invention, when no prior art reference of record or other evidence conveys or suggests that knowledge. Without such evidence, Petitioner’s argument that a person of ordinary skill would have modified Zou I in this way appears to be premised on Petitioner’s knowledge of the ’900 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain what would have led a person of ordinary skill at the time of the invention to consider modifying Zou I to include a separate sample inlet with each sample lane. Petitioner failed to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”).” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundNot shown unpatentable
“Petitioner has failed to sufficiently demonstrate that the combination of Zou I and McNeely or Pourahmadi teaches multi-lane microfluidic cartridges, because Petitioner has failed to establish by a preponderance of the evidence that a person of ordinary skill in the art would reasonably have expected to be successful in combining Zou I’s microfluidic chip with a cartridge as taught by McNeely or Pourahmadi. In order to demonstrate that the challenged claims are obvious, a petitioner must demonstrate “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). A petitioner must articulate “[1] how specific references could be combined, [2] which combination(s) of elements in specific references would yield a predictable result, or [3] how any specific combination would operate or read on the asserted claims.” Id. Focusing on the parties’ arguments pertaining to how Zou I and McNeely or Pourahmadi could be combined, which combination of elements in the references would yield a predictable result, and how the combination would operate or read on the challenged claims, we determine that the evidence on this record is not sufficient to show that a person having ordinary skill in the art would have had a reasonable expectation of success in attempting to combine the teachings of Zou I with McNeely or Pourahmadi. Although the Petition sets forth various rationales for why a Zou I and McNeely or Pourahmadi (Pet. 27–32), the rationales are general in nature and do not address any specific modification to either of the references. Further, the Petition includes a single reference to reasonable expectation of success, in a conclusory statement that “a POSA would have been motivated to combine the PCR unit of Zou I with a multi-cartridge integrated machine such as in McNeely or Pourahmadi, with a high expectation of success.” Pet. 27. The Gale Declaration is similarly conclusory as to how Zou I and McNeely or Pourahmadi could have been combined by the ordinary artisan, and does not elaborate on the artisan’s reasonable expectation of success. Such conclusory assertions, lacking factual substantiation, are insufficient for evaluating reasonable expectation of success as part of an obviousness determination. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). Thus, Petitioner did not make out its obviousness case based on combining Zou I and McNeely or Pourahmadi, in the Petition. 35 U.S.C. § 312(a)(3).” slip op. at 36
Patent outcomesUS 8,323,900 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,323,900 - Chemco Systems, L.P. v. RDP Technologies, Inc.Rehearing deniedPTAB · Jun 4, 2020 · IPR2019-01562 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Chemco’s rehearing request, leaving institution denied for claims 1, 2, 10, and 15 over Muzik because the petition did not construe claim 1(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A petition must set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). This is particularly important when a claim term is ambiguous. Petitioner did not provide an express construction of claim 1(b) in the petition, or specifically address the interplay between this claim limitation and the other limitations of the claim. Thus, we could not have overlooked or misapprehended the claim construction arguments made in the request for rehearing. Accordingly, we deny Petitioner’s request for rehearing on this ground.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“slurry tank via a delivery line and extracting a portion of the slurry delivered from the slurry tank via the delivery line and discharging said extracted portion of the slurry from said delivery line.” Ex. 1002, 5:29–32. Neither party proposed an express construction for this claim term. Dec. 5. In the Decision, we analyzed the language of claim 1(b), as well as “the interplay between claims 1(b) and 1(c),” and construed claim 1 to require that the “extracted portion” be discharged from “the delivery line” separate from “the rest of the slurry.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 8,133,401
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.