- Kohler Co. v. Delta Faucet Co.InstitutedPTAB · Oct 4, 2024 · IPR2024-00700 · APJ Jane E Inglese · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that Kohler would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner provides sufficient information for purposes of institution to show that Tseng discloses or would have suggested a translucent light pipe defining a closed loop to diffuse light from light emitters outwardly away from a housing. Tseng’s Figures 30 and 37 show that rib 371 and protrusion 383 of translucent light conductors 37, 38 (light pipes), respectively, are both shaped as unbroken circles. Ex. 1004, Figs. 37, 38; see also id. ¶ 24 (describing “circular” rib), ¶ 26 (indicating that the “light conductor is formed in a sleeve shape”). Tseng discloses that light from LED elements 40 enters input face 311 of Tseng’s light conductors 37, 38, travels through transmission portion 312, and is emitted through downward facing output face 313. Ex. 1004 ¶¶ 91, 94, 97, 98, Figs. 30, 31, 35, 36, 37. Light is also emitted from outwardly extending annular rib 371 and protrusion 383 of light conductors 37, 38, respectively, which “enhance[s] light transmission.” Id. Petitioner, therefore, provides sufficient information to show that Tseng’s translucent light conductors 37, 38 (light pipes) define a closed loop to diffuse light from LED elements 40 (light emitters) outwardly away from external sleeve 34 (housing).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had a degree in industrial design or an equivalent field, and two years of professional experience working with kitchen, bath, or other plumbing fixtures (or similar products), or an equivalent level of skill, knowledge, and experience. Pet. 14. Petitioner asserts that a POSITA also would have been aware of, and generally knowledgeable about, the standard features and functionality of kitchen, bath, or other plumbing fixtures (or similar products). Id. Patent Owner neither adopts nor disputes Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s definition of a POSITA, which is undisputed on this record, and is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action held under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it “has applied the plain and ordinary meaning of the claim terms.” Prelim. Resp. 10. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.7” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“its sprayhead by routing an electric wire connected to an external power supply through the shower head. Pet. 44 (citing Ex. 1004 ¶ 68, Figs. 1–5). Petitioner asserts that because Tseng’s shower head is designed to be pulled out, the wire is subject to stress and strain, which could lead to failure over time. Id. (citing Ex. 1003 ¶¶ 251–253). According to Petitioner, incorporating Mizuno’s hydroelectric generator into Tseng’s shower head would obviate the need for an external power supply or battery, which would reduce installation and operation costs, prevent a potential wiring failure, and eliminate periodic battery replacement. Id. at 45 (citing Ex. 1003 ¶¶ 257–260). Petitioner asserts that a person of ordinary skill in the art, therefore, would have been motivated to incorporate Mizuno’s hydroelectric generator into Tseng’s shower head, and would have had a reasonable expectation of success in doing so because Mizuno’s hydroelectric generator is designed and intended to be integrated into a faucet’s shower head to reliably power LEDs. Id. at 45–46 (citing Ex. 1008 ¶¶ 1, 2). Patent Owner counters that a person of ordinary skill in the art would not have had any reason to modify Tseng in view of Mizuno. Prelim. Resp. 32. Patent Owner contends that Tseng expressly set out to develop a design that includes electrical wiring, and did so successfully by improving the integration of electrical wiring into its shower head design. Id. at 33–34 (citing Ex. 1004 ¶¶ 9, 102–110). Patent Owner further contends that a person of ordinary skill in the art would not have been motivated to completely redesign Tseng’s shower head to change the power source entirely to eliminate wiring. Id. Patent Owner contends that a person of ordinary skill in the art also would not have had a reasonable expectation of success in incorporating Mizuno’s hydroelectric generator into Tseng’s shower head because Tseng explicitly discloses that the space in its shower head is narrow. Id. at 36 (citing Ex. 1004 ¶¶ 7, 108). According to Patent Owner, Mizuno’s hydroelectric generator requires room for additional components beyond the hydrogenator, including a voltage stabilizer, cooling components, and a relief valve, which Patent Owner contends would have discouraged the ordinarily skilled artisan from a major redesign of Tseng’s faucet necessary to incorporate these elements. Id. at 37. We have considered Petitioner and Patent Owner’s assertions for ground 2. Because Petitioner demonstrates a reasonable likelihood of prevailing in its challenge to the patentability of claim 1 for ground 1, resolution of the disputed factual issues raised by Petitioner and Patent Owner in ground 2 is best left for trial after full development of the record.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,393,363 - PTAB · Aug 30, 2023 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 19–61 and 63–81 on all petitioned grounds, finding a reasonable likelihood that Doud anticipates claims 19–61 and 63–75.
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) (2022). The standard for institution 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 that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one claim of the ’740 patent. Accordingly, we grant institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“the application describe the claim limitations exactly,” the application must demonstrate to persons of ordinary skill in the art that the applicants invented a composition including those limitations. Wertheim, 541 F.2d at 262. On its face, the range of “at least 0.01 wt. %” encompasses a range that is broader than 0.01–35 wt. %, and Patent Owner does not sufficiently explain why a person of ordinary skill in the art would understand from merely a disclosure of 35 wt.% that the inventors were in possession of the entire claimed range for copper, cobalt, or nickel in the magnesium composition.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“On this record, the term “at least 0.01 wt. %” in the ’740 patent encompasses values for nickel, copper, and cobalt that are higher than the 35 wt. % (nickel and copper) and 20 wt. % (cobalt) limits outlined in the parent and grandparent applications. Accordingly, we determine that there is a reasonable likelihood that claim 19 of the ’740 patent is not entitled to the benefit of the filing dates of its priority applications. Challenged claims 20–61 and 63–75 depend from claim 19 and there is no argument presented that these claims have independent written description support in Doud. For example, there is no evidence presented that any of these dependent claims narrow the ranges for each of copper, nickel, and cobalt recited in in the ’295 application for these claims.7 Accordingly, for purposes of this Decision, we apply Doud as prior art to challenged claims 19–61 and 63–75.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“as the ’740 patent. For example, Doud and the ’740 patent both disclose a method of forming a novel magnesium composite that includes melting an AZ91D magnesium alloy containing 90 wt. % magnesium, 9 wt. % aluminum, and 1 wt. % zinc. Ex. 1005 ¶¶ 45, 47; Ex. 1001, 21:43–51, 22:48–53, 33:32–43, 34:9–12. To this alloy is added either 7 wt. % nickel or 10 wt. % copper. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:48–51, 22:53–56, 33:35–36, 34:12–13. These additives are mixed in the magnesium alloy at a temperature that is less than the melting point of copper or nickel, and the casting is then cooled. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:51–54, 22:56–58, 33:35, 34:12-13. Doud reports that nickel and copper, when added to molten magnesium, will form Mg2Ni and CuMg2 intermetallic, galvanically-active, in situ precipitates. Ex. 1005 ¶¶ 12–13. Doud discloses that the dissolution rate of the resulting casting material is either 325 mg/cm2-hr (nickel) or 50 mg/cm2-hr (copper) in a 3% KCl solution at 90° C. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:60–62, 22:61–63, 33:41–43, 34:15–17. Doud also discloses that the average particle diameter of the additives used in the invention is generally “at least about 0.1 microns” and “typically no more than about 500 microns.” Ex. 1005 ¶ 6. Petitioner explains how the identified disclosures of Doud anticipate independent claim 19. Pet. 39–40. Petitioner also identifies where the limitations of dependent claims 20–61 and 63–75 are disclosed in Doud. Id. at 41–45. Patent Owner does not address Petitioner’s anticipation arguments with respect to claims 19–61 and 63–75, apart from arguing that Doud is not prior art to these claims. Prelim. Resp. 27–39. demonstrates a reasonable likelihood that claims 19–61 and 63–75 are anticipated by Doud.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,689,740 - PTAB · Jun 28, 2023 · IPR2023-00326 · APJ Jane E Inglese · IPR · Institution
The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the totality of the information presented in the record before us, we conclude that the Petitioner has shown a reasonable likelihood of prevailing in its challenge to the patentability of claim 12.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Considering the totality of the information on the record before us, we determine that Deane, Dubois, and Hill previously were presented to the Examiner during prosecution, and Berntson is cumulative to Cole, which previously was presented to the Examiner during prosecution. 2. Advanced Bionics Part 2: Becton, Dickinson factors (c), (e), and (f) Having determined that the same or substantially the same art previously was presented to the Office, we turn to the second part of the Advanced Bionics framework and consider Becton, Dickinson factors (c), (e), and (f) to determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10.” slip op. at 40
- Skill levelSkill level board ownOther
“The Petitioner proposes that a person of ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent degree, in mechanical engineering, chemical engineering, or a related field, and 2–3 years of experience in the research, design, or development of portable oxygen concentrators and related hardware, software, and firmware, or equivalent experience.” Pet. 21 (citing Ex. 1003 ¶¶ 226–229). The Petitioner further proposes that “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. At this stage of the proceeding, the Patent Owner does not dispute the Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 14. We find, at this stage, that the asserted prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply the Petitioner’s unopposed definition for purposes of determining whether to institute review, because it is consistent, on this record, with the disclosures of the asserted prior art references.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petitioner presents express constructions for three claim terms: “separation cartridge,” “receptacle,” and “selectively removable.” Pet. 21– 26. Although the Patent Owner contests the Petitioner’s proposed constructions of these terms, the Patent Owner proposes an alternative construction of only the term “separation cartridge.” Prelim. Resp. 14–23, particularly 20. Nonetheless, the Patent Owner further indicates that construction of “separation cartridge,” “receptacle,” and “selectively removable” is not needed at this stage because the Petitioner’s proposed constructions are “not related to any controversy in this IPR proceeding.” Prelim. Resp. 14–23, particularly 16. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents 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.