- Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - PTAB · Mar 5, 2025 · IPR2024-01111 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that claims 1 and 9 would be obvious over Gallagher and Schofield.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Texas litigation, but significant work still remains to be done. See Ex. 2004. Moreover, we agree that Petitioner filed the Petition expeditiously. See 2nd Prelim. Reply 4. Accordingly, the facts underlying this factor weigh strongly against exercising our discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 9 would have been obvious in view of the combination of Gallaher and Schofield.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proposes a definition for any claim term. See Pet. 6; Prelim. Resp. 4–5. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial as permitted by our rules. slip op. at 19
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner has not advanced persuasive evidence to put into dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’328 patent in the Texas Litigation. Prelim. Sur-reply 4–5. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. at 5. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,671,328 - PTAB · Mar 5, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claim 15 based on Gallagher and Lumia, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Holistic Assessment of the Fintiv Factors On this record, after weighing all of the factors and taking a holistic view, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we determine that the circumstances presented weigh against exercising our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the Texas litigation.” slip op. at 16
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’255 patent in the Texas Litigation. Prelim. Sur-reply 4. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 15 would have been obvious in view of the combination of Gallagher and Lumia.” slip op. at 31
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 12–14 and 17–23. Prelim. Resp. 1; Ex. 2002. Based on our review of Exhibit 2002, we determine that a disclaimer of claims 12–14 and 17–23 of the ’255 patent under 35 U.S.C. § 253(a) has been filed with the Office as of December 9, 2024. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 12–14 and 17–23 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 12–14 and 17–23. As a result, the remaining challenged claim is claim 15 (“the challenged claim”).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,335,255 - Tommy John, Inc. v. Pakage Apparel, Inc.InstitutedPTAB · Jan 8, 2025 · IPR2024-01163 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR of claims 1–13, 15, and 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
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any authorized submissions) “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.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“demonstrate any motivation to combine Kitsch and Brocks, other than they are both underwear” (Prelim. Resp. 23), we note that Petitioner articulates various reasons for combining the teachings of Kitsch with Brocks’ technique for shirring and gathering fabric with an elastic material, supported by Ms. Wagner’s testimony. See Pet. 25–27 (citing, inter alia, Ex. 1005, ¶¶ 68–72). Patent Owner does not address any of Petitioner’s stated reasons for combining Kitsch and Brocks. Moreover, whether a person of ordinary skill in the art would have had a reason to combine/modify the identified references’ teachings is “a question of fact.” WBIP, 829 F.3d at 1327. Petitioner’s argument is supported by the unrebutted testimony of Ms. Wagner, whereas Patent Owner’s contrary position amounts to attorney argument, which does not persuade us, in this instance, that there is not at least a reasonable likelihood that Petitioner would prevail at trial, based on the record before us. At this stage of the proceeding, Patent Owner provides no sufficient evidence to rebut Ms. Wagner’s testimony as to what a POSITA would have understood, based upon Kitsch and Brocks, and as to the alleged motivations to combine Kitsch and Brocks, as provided in Ground 1.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_dis trict_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner “stipulates that if the Board institutes, it will not pursue in the related district court case ‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply. 5 (quoting Sotera 18–19). In view of Petitioner’s stipulation, which quotes Sotera and accords with the Interim Procedure, we decline to deny institution under Fintiv.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,834,974 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 12, 2024 · IPR2024-00635 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR of claims 1–14 on the asserted §103 ground, finding a reasonable likelihood that Fluidmaster would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any authorized submissions) “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.” For the reasons that follow, and solely for the purposes of this Decision, we determine that Petitioner’s asserted ground satisfies the standard for institution.” slip op. at 13
- BurdenDecided for petitioner
“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”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Although this Decision might appear to indicate that certain Patent Owner arguments would not be persuasive, we do not shift the ultimate burden away from Petitioner.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“A PHOSITA in the field to which the ’698 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. Prelim. Resp. 14. In view of the present record, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Dr. Cameron. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of a POSITA, as it appears to be consistent with the ’698 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,934,698 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 9, 2024 · IPR2024-00633 · APJ Meredith C Petravick · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Brown and Ho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’993 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’993 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“presented to the Office.” Prelim. Resp. 31– 36. In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 8
- BurdenDecided for petitioner
“At this stage of the proceeding, Patent Owner provides no sufficient evidence to rebut Dr. Cameron’s testimony as to what a POSITA would have known from Guoxin and Ho’s drawings and as to the alleged motivations to combine Guoxin and Ho. Based on Petitioner’s evidence and analysis, and taking into account the Preliminary Response, at this stage of the proceeding, we determine that the information in the Petition shows a reasonable likelihood that claim 1 is unpatentable over Guoxin and Ho.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“A [person of ordinary skill in the art (“POSITA”)] in the field to which the ’993 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. Prelim. Resp. 16. Petitioner’s declarant Dr. Cameron asserts that: A [POSITA] with respect to the subject matter of the ’993 patent at the time of the priority date, January 27, 2014, would have had an undergraduate degree in mechanical engineering, or other technical training in product design or equivalent work experience. This person would also possess at least one year of experience in developing and/or evaluating mechanical aspects of fluid systems. Ex. 1004 ¶ 29. For purposes of this Decision, we adopt Patent Owner’s proposed definition of a POSITA, as it is consistent with the ’993 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Dr. Cameron.” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,139,993 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 9, 2024 · IPR2024-00634 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1–24 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Brown and Ho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless 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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’105 patent. Accordingly, we institute an inter partes review of claims 1–24 of the ’105 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (“IDS”), in the prosecution history of the challenged patent. Id. at 7–8. Here, it is not disputed that Brown and Bjerke were listed on an IDS and, thus, were previously presented to the Office. Pet. 12, n.4; Prelim. Resp. 33. It is also not disputed that Guoxin, Ho, Calmettes, Hall, Kimber, and Schuster were not previously presented to the Office. See Prelim. Resp. 33. Patent Owner argues that Guoxin, Brown, and Ho are cumulative of a reference, DeMarco9, that was previously presented to the Office and relied upon to reject the claims. Prelim. Resp. 33 Patent Owner argues that Guoxin, Brown, and Ho are cumulative to DeMarco because all of the “references are completely silent as to whether the purported ‘extended portion’ is integrally molded with the purported body of the toiled fill valve.” Id. at 33–36. Patent Owner’s arguments are unpersuasive. As can be seen from our discussion of Ho in our analysis below, on this record, we are persuaded that Petitioner has sufficiently shown for purposes of institution how Ho allegedly teaches the claimed integrally molded extended portion. We, thus, are not persuaded that at least Ho is cumulative of DeMarco. Grounds 1–4 rely upon combinations of prior art that include Ho. Ground 5 is based upon Schuster, which was not previously presented to the 9 U.S. Patent No. 5,708,991 (Ex. 1024). Office. Accordingly, we determine that discretionary denial is not warranted. Because we determine that part one of the framework is not satisfied, we need not turn to part two to determine whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“On this record, we are persuaded by Patent Owner that the claim phrase “integrally molded with” should be construed to mean “molded together as a single structure” and to exclude items created as separate pieces and attached together later. Patent Owner’s construction is consistent with the plain language of the claims, which requires the extended portion be “integrally molded with” the body and not just the extended portion be integral with the body. Further, we determine that Patent Owner’s construction is consistent with the ’105 patent, which discloses that “the bowl fill valve 109 may be molded as a portion of the toilet fill valve 100 or it may be snapped or clamped into place, or it may be attached to the toilet fill valve 100 in some other manner, etc.” Id. at 2:23–26 (emphasis added). At this stage of the proceeding, we construe “integrally molded with” to mean molded together as a single structure.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner next disputes that a POSITA would have combined Guoxin and Ho and argues that Petitioner’s alleged rationale to combine Guoxin and Ho as conclusory and lacks sufficient support. Prelim. Resp. 40–42. We determine that Petitioner has sufficiently articulated a motivation to combine Guoxin and Ho to support institution. Petitioner asserted motivation to combine — improved strength and integrity of connection — is supported by the testimony of Dr. Cameron. Dr. Cameron testifies: “Integrally molding the extended portion of Guoxin with the inlet device as taught by Ho would be advantageous in improving the strength and integrity of the connection, and to make it easier to manufacture and assemble.” Ex. 1004 ¶ 125. Based on the record at this stage of the proceeding, we determine that Petitioner has sufficiently shown that the combination of Guoxin and Ho teaches element 1B.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,103,105 - PTAB · Aug 9, 2024 · IPR2024-00385 · APJ Michael L Woods · IPR · Institution
The Board instituted inter partes review of claims 1–4, 6, and 7 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board evaluates discretionary denial under § 325(d) using a two-part framework: first, the Board considers whether the same or substantially the same art or arguments were previously presented to the Office; and if so, second, the Board considers whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In determining whether the same or substantially the same art or arguments were previously presented to the Office, the Board considers the following nonexclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; and (3) the extent of the overlap between the arguments” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Reply, the PO Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’332 patent. Accordingly, we institute an inter partes review of claims 1–4, 6, and 7 of the ’332 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“A person of ordinary skill in the art (POSITA) would have had: (i) a B.S. degree in Chemical Engineering, Petroleum Engineering, or an equivalent field and (ii) two or three years of academic or industry experience in chemical processing systems, oil and gas production and/or refining; or comparable experience. Additional work experience can substitute for educational or research experience, and vice versa. Pet. 8 (citing Ex. 1002 ¶¶ 26–29); see also Prelim. Resp. 16 (agreeing with Petitioner’s proposed definition of a POSITA). For purposes of this Decision, we adopt the parties’ assessment of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding, we decline to adopt Patent Owner’s interpretation that cryogenic conditions occur only below 50°F. See Prelim. Resp. 19 (citing Ex. 2001 ¶ 55). For purposes of this Decision, we need not and do not formally determine the temperature at which cryogenic conditions occur, as our construction would not affect our decision to institute. 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 agree with Petitioner that “[e]xplicit construction of terms is unnecessary because it is not dispositive—the art teaches the claims under any reasonable construction.” Pet. 8 (citing Vivid Techs., 200 F.3d at 803). As explained below, for purposes of institution, Petitioner has shown a reasonable likelihood that Aycaguer does not disclose subjecting the recited streams to “cryogenic conditions” at any temperature, as recited in Limitation 1.6. See Pet. 34–36; see also infra § IV.D.2.g.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,505,332 - Jeisys Medical Inc. v. Serendia, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00386 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–29, finding a reasonable likelihood that claims 1–29 are unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“D. Analysis The Director’s recent Videndum decision provides that where no “significant relationship [exists] under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” See Videndum, Paper 12 at 6. Moreover, the Director’s decision in Ford clarified that “court-ordered” coordination alone between parties having different accused products does not establish a significant relationship absent “other relevant or extenuating facts or circumstances” that might evidence a significant relationship, such as “interactions or agreements regarding the implementation of the accused [technology] into their respective accused products.” Ford, Paper 28 at 10–11. We do not find a significant relationship exists between the prior and current petitioners so as to warrant discretionary denial under General Plastic. First, like the parties in Ford, the prior and current petitioners are competitors selling different products, and there is no evidence of agreements regarding the implementation of the claimed technology into their respective accused products. See Ford, Paper 28 at 10; cf. Valve, Paper 11 at 10 (“Valve represented that ‘HTC’s VIVE devices incorporate certain Valve technologies under a technology license from Valve,’ and that ‘Valve employees did provide HTC with technical assistance during the development of the accused VIVE devices.’”). Second, and also like in Ford, the “Ground Rules” for the ITC Investigation required that “[p]arties with similar interests should coordinate and consolidate motion practice to the extent practicable” (Ex. 1041 § 2) and “must coordinate and consolidate depositions and all other discovery” (id. § 3.1). Indeed, we understand that all fourteen co-respondents in the ITC Investigation submitted the joint expert report of Dr. Jean Woloszko. See Ex. 2004, 1; see also Ford, Paper 28 at 3. Third, we do not find the current Petitioner’s mere knowledge of litigation—either in the ITC or district court—against competitors in RF microneedling to establish a significant relationship with those competitors. Cf. Ford, Paper 17 at 3 (noting that where the patent at issue had been asserted against multiple competitors regarding their respective accused products, “merely engag[ing] in court-ordered pretrial coordination” is by itself insufficient to establish a “significant relationship” between the parties). Fourth, we do not find the current Petitioner to have engaged in improper gamesmanship through “tactical delay.” As Petitioner explains, the Prior Petition was filed in response to a district court action filed by Patent Owner against the prior petitioners, but not Petitioner, while the current Petition was filed in response to an ITC Investigation initiated after the denial of the Prior Petition. Patent Owner’s remaining arguments are directed to other factors in the General Plastic analysis and do not evidence a significant relationship between the prior and current Petitioners. Accordingly, we do not exercise our discretion to deny institution under General Plastic.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’836 patent. Accordingly, we institute an inter partes review of claims 1–29 of the ’836 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art The parties agree that a person of ordinary skill in the relevant art (“POSITA”) would have had (1) 7–10 years of experience with developing and/or using treatment systems for delivery of electromagnetic radiation energy to skin or other tissues, and (2) a related graduate engineering degree or M.D. and may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also would have taken advantage of certain specialized skills of others on the team when solving a technical problem. Ex. 1028, 14–15; see also Pet. 9 (citing Ex. 1028, 15; Ex. 1003 ¶¶ 50, 51); see also Prelim. Resp. 29. For purposes of this Decision, we adopt the parties’ assessment of the level of ordinary skill in the art, as it is consistent with the prior art of record and the ’836 patent.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner expressly construe any term. See Pet. 9; see also Prelim. Resp. 30. For purposes of this Decision, we need not and do not formally construe any claim term. 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)).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,480,836 - Oracle Corporation v. Parking World Wide LLCAll claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00385 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–7 are unpatentable as obvious under §103 over Ivey, Matsumoto, and Tillotson, with Slemmer added for claims 4 and 7; Ward, Haynes, and Tillotson provide an alternative ground.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“improved “efficiency” would have been a sufficient reason for one of ordinary skill in the art to combine Ivey, Matsumoto, and Tillotson, Patent Owner does not expressly dispute Dr. Paradiso’s testimony that the combination of Ivey and Matsumoto “would more efficiently streamline parking enforcement.” Pet. 48. Based on Dr. Paradiso’s undisputed testimony, we find that one of ordinary skill in the art would have been motivated to combine Ivey and Matsumoto in the proposed manner “to more efficiently streamline parking enforcement.” Id. Patent Owner also does not expressly dispute Dr. Paradiso’s testimony that incorporating Tillotson’s reservation and subscription systems into Ivey/Matsumoto would have simplified the payment process and saved motorists’ time. Based on Dr. Paradiso’s testimony, we find that one of ordinary skill in the art would have been motivated to combine Ivey and Matsumoto with Tillotson in the proposed manner to “make the parking management system more efficient and easier to use,” to simplify the process by which parking spaces are paid for, and to save motorists’ time. Id. Finally, Patent Owner does not dispute Petitioner’s contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Ivey, Matsumoto, and Tillotson, or Dr. Paradiso’s testimony in support of that contention. Therefore, based on Dr. Paradiso’s undisputed testimony, we find that one of ordinary skill in the art would have had a reasonable expectation of success in combining these teachings.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner concurs with Petitioner’s definition. See PO Resp. 6 (“Patent Owner concurs with the Board in adopting Petitioner’s definition of a POSITA” for the Decision on Institution). As we did in our Decision on Institution, we adopt Petitioner’s unopposed definition of a person of ordinary skill. See Dec. 9. 8 Patent Owner has not presented any evidence of secondary considerations. 9 We find (and Patent Owner does not dispute) that Dr. Paradiso is qualified to offer expert testimony from the perspective of a skilled artisan. See, e.g., Ex. 1003 ¶¶ 7, 13.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not expressly dispute the construction of any particular term, we determine that no express construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute). Several of Patent Owner’s arguments, however, imply that the claims are limited in particular ways. For example, Patent Owner suggests” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree that the claims are limited to parking spaces along a street. First, neither independent claim includes any such limitation; instead, the claims are directed to methods “for representing the parking status of a plurality of parking spaces,” without indicating where the plurality of parking spaces are located. Ex. 1001, claims 1, 5. Second, the Specification teaches that the parking spaces that may be represented can be in a lot or garage, not only on a street. See, e.g., id., Abstr. (“A parking status system overlays upon images of a street, a lot, or a garage with representations of parking vehicles the status of any parking space shown in the image.”); id. at 5:4–7 (“The present invention overlays the parking status of vehicles upon a visual image of a street or lot as it matches the GPS coordinates of the parking control officer, the vehicle, and the street scene.”). Patent Owner also suggests that the claims are limited to images obtained from a camera that is part of the user’s portable electronic device. Patent Owner asserts, for example, that Haynes obtains video images from “a camera upon a pole” that is “in a fixed position at a fixed elevation,” whereas “the ’421 patent receives imagery from a mobile device camera held by an officer at his height,” which is “movable.” PO Resp. 24. Again, we disagree that the claims are so limited. The independent claims recite a method for “representing the parking status of a plurality of parking spaces to a screen of a user’s portable electronic device upon a real time camera view.” Ex. 1001, claims 1, 5. “Represent[ing] . . . to a screen” means that the real time camera view of the parking spaces is displayed on the portable electronic device, but does not require the real time camera view to be obtained from the portable electronic device.” slip op. at 11
Patent outcomesUS 10,438,421 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,438,421
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.