- PTAB · Jan 24, 2025 · IPR2024-00275 · APJ Michael J Fitzpatrick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged, disclaimed claims and terminated the inter partes review.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“C.F.R. § 1.321(a), of claims 9, 14, 16, 18, 20, 22–24, 44, and 46 of the ’597 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001. In view of the disclaimer, “Patent Owner requests entry of adverse judgment as to [the challenged and now disclaimed] claims.” Mot. 1. We grant the Motion. Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner as to claims 9, 14, 16, 18, 20, 22–24, 44, and 46 of U.S. Patent No. 9,072,597 B2; and FURTHER ORDERED that the inter partes review is terminated.” slip op. at 2
NonePatents in suitUS 9,072,597 - Colgate-Palmolive Company v. Noble Innovations NC L.L.C.All claims unpatentablePTAB · Jan 23, 2025 · IPR2023-01254 · APJ Ryan H Flax · IPR · Final written decision
Claims 1, 2, and 5–18 are unpatentable under § 103 over Grounds 1–4; each ground relies on the Board’s combinations of Wolcott or Young with Davidson, with or without Fitz-Gibbon.
RulingsFinal written decision- BurdenUnpatentable
“Patent Owner’s arguments. Petitioner has sufficiently, and we find accurately, mapped the limitations of the challenged claims to the disclosures of Wolcott, Davidson, and Fitz-Gibbon, identified reasons with rational underpinnings why the ordinarily skilled artisan would have combined the teachings of the references, and shown that there would have been a reasonable expectation of success in such a predictable endeavor. Regarding the reasons to combine Wolcott, Davidson, and Fitz- Gibbon, they are each analogous art as each is directed to solving the problem of retaining dentifrice, a pellet or any dentifrice, on a toothbrush, within a dedicated space between its bristles. Donner Technology, LLC v. Pro Stage Gear LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (the prior art is from the same field of endeavor as the invention and also addresses the particular problem with which the invention/inventor is involved); see generally Ex. 1009; 1010; 1011; see also Ex. 1008 ¶¶ 115–122, 199–207 (Mr. Fletcher testifying to the same). We agree that the prior art combination and asserted modifications would be predictable and well within the level of ordinary skill to accomplish, making success entirely expected. Ex. 1008 ¶¶ 115–122, 199–207; Ex. 1009; 1010; 1011. Furthermore, we agree with Petitioner that the advantages disclosed by Davidson regarding its bristles 13 and well 12 retaining any type of dentifrice would similarly advantage Wolcott’s toothbrush, which is designed to similarly retain a dentifrice pellet in a recess using bristles. See Ex. 1009, 1:1–41, 2:39–3:1, 3:55–4:9, Figs. 4, 5; Ex. 1010, 2:11–14, 2:24– 27, 3:20–24, Figs. 1–3; see also Ex. 1008 ¶¶ 121–122. Similarly, Fitz-Gibbon discloses its toothbrush’s bristles or, more accurately, tufts of bristles 13, are disposed at an angle toward, and to hold, dentifrice in a chamber/pocket; we find this feature, which Fitz-Gibbon describes as “exceedingly valuable,” would also have been reasonably incorporated into the toothbrush achieved by the combination of Wolcott and Davidson, with an expectation of success. Ex. 1008 ¶¶ 204–207; Ex. 1011, 2:58–87. Thus, we agree with Petitioner that a skilled artisan would have had ample reason to combine Wolcott and Davidson, or Wolcott, Davidson, and Fitz-Gibbon, and the result of doing so would have been obvious.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art or POSITA, but Patent Owner neither proposes a definition of the ordinarily skilled artisan nor opposes Petitioner’s proposed definition. See generally Resp. Patent Owner’s witness, Mr. Kodama, testifies that an ordinarily skilled artisan as of the invention date would be defined identically as proposed by Petitioner. Ex. 2001 ¶ 46. We accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ’332 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as 10 Petitioner uses the acronym POSITA to reference the person of ordinary skill in the art. evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the bristles must be angled and disagree with Patent Owner. As explained above, it remains generally uncontested that the claim language “angled capsule retaining elements” includes within its scope angled bristles. This is well supported by the intrinsic record: only one type of angled structure is disclosed in the ’332 patent as functioning to retain an oral care capsule on a toothbrush, and that structure is “a plurality of angled bristles adapted to retain an oral care capsule in the capsule receiving zone.”12 Ex. 1001, 2:57–67, 4:62–5:13. The ’332 patent explains 11 Patent Owner actually cites “‘627 patent app” at paragraph 36,” without ever mentioning any exhibit of record in the proceeding. We understand Patent Owner to refer to Petitioner’s Exhibit 1003, as this is the only occurrence of the ’627 application of record. 12 The ’332 patent also describes “a movable retaining element,” which is a separate structure from the angled bristles that comprise the angled capsule retaining elements, that is described as some sort of openable access to the that bristles are angled toward the center of a capsule receiving zone such that an oral care capsule can be loaded there-into by spreading apart the angled bristles, inserting the oral care capsule past the angled bristles, and depositing the oral care capsule in the capsule receiving zone; thereafter the angled bristles relax to their angled state and retain the oral care capsule. Id.; see also id.at 7:19–42, 9:54–10:11 (describing how a dispensing device can accomplish this loading).” slip op. at 16
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner’s arguments. Petitioner has sufficiently, and we find accurately, mapped the limitations of the challenged claims to the disclosures of Wolcott, Davidson, and Fitz-Gibbon, identified reasons with rational underpinnings why the ordinarily skilled artisan would have combined the teachings of the references, and shown that there would have been a reasonable expectation of success in such a predictable endeavor. Regarding the reasons to combine Wolcott, Davidson, and Fitz- Gibbon, they are each analogous art as each is directed to solving the problem of retaining dentifrice, a pellet or any dentifrice, on a toothbrush, within a dedicated space between its bristles. Donner Technology, LLC v. Pro Stage Gear LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (the prior art is from the same field of endeavor as the invention and also addresses the particular problem with which the invention/inventor is involved); see generally Ex. 1009; 1010; 1011; see also Ex. 1008 ¶¶ 115–122, 199–207 (Mr. Fletcher testifying to the same). We agree that the prior art combination and asserted modifications would be predictable and well within the level of ordinary skill to accomplish, making success entirely expected. Ex. 1008 ¶¶ 115–122, 199–207; Ex. 1009; 1010; 1011. Furthermore, we agree with Petitioner that the advantages disclosed by Davidson regarding its bristles 13 and well 12 retaining any type of dentifrice would similarly advantage Wolcott’s toothbrush, which is designed to similarly retain a dentifrice pellet in a recess using bristles. See Ex. 1009, 1:1–41, 2:39–3:1, 3:55–4:9, Figs. 4, 5; Ex. 1010, 2:11–14, 2:24– 27, 3:20–24, Figs. 1–3; see also Ex. 1008 ¶¶ 121–122. Similarly, Fitz-Gibbon discloses its toothbrush’s bristles or, more accurately, tufts of bristles 13, are disposed at an angle toward, and to hold, dentifrice in a chamber/pocket; we find this feature, which Fitz-Gibbon describes as “exceedingly valuable,” would also have been reasonably incorporated into the toothbrush achieved by the combination of Wolcott and Davidson, with an expectation of success. Ex. 1008 ¶¶ 204–207; Ex. 1011, 2:58–87. Thus, we agree with Petitioner that a skilled artisan would have had ample reason to combine Wolcott and Davidson, or Wolcott, Davidson, and Fitz-Gibbon, and the result of doing so would have been obvious.” slip op. at 38
Patent outcomesUS 8,881,332 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,881,332 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.Institution deniedPTAB · Jan 7, 2025 · IPR2024-01079 · APJ Neil T Powell · IPR · Institution
The Board denied institution because the patent owner disclaimed all challenged claims; it declined to enter adverse judgment.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway (USA), Inc. v. Intex Mktg., Ltd., PGR2024-00036, Paper 9, 6 (Oct. 28, 2024) (“Bestway”). Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.107(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc., v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022); Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 3
NonePatents in suitUS 10,281,953 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.Institution deniedPTAB · Jan 3, 2025 · PGR2024-00038 · APJ Michael A Valek · PGR · Institution
The Board denied institution of post-grant review because the Patent Owner disclaimed all challenged claims; it declined to enter adverse judgment.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’701 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See Bestway (USA), Inc. v. Intex Mktg., Ltd., PGR2024-00036, Paper 9, 6 (Oct. 28, 2024) (“Bestway”). Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.207(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc. v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022) Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 2
NonePatents in suitUS 11,874,701 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Oura Health OYInstitution deniedPTAB · Jan 3, 2025 · IPR2024-01080 · APJ Michael A Valek · IPR · Institution
The Board denied institution because the patent owner disclaimed all challenged claims, and declined to enter adverse judgment.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See Bestway (USA), Inc. v. Intex Mktg., Ltd., PGR2024-00036, Paper 9, 6 (Oct. 28, 2024) (“Bestway”). Based on the facts of this case, we believe that efficient administration” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’429 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
NonePatents in suitUS 10,842,429 - PTAB · Dec 12, 2024 · PGR2024-00039 · APJ Elizabeth M Roesel · PGR · Institution
The Board instituted PGR on claims 1–17, finding the Schröder obviousness challenge to claim 1 met the institution threshold; it did not reach the remaining challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing for the printed circuit board of claim element 1[c], as summarized above, is sufficient for purposes of granting institution of a post-grant review. For purposes of institution, Petitioner’s contentions are adequately supported by Schröder, which describes inlay 12 as a “flexible carrier material, e.g. PET, Kapton, etc.” and a “carrier” for the antenna, chip module, and “at least one further electronic component,” as well as Schröder’s Figures 7 and 8, which depict inlay 12 between ring halves 16 and 18. Ex. 1007, 12:28–42, 12:48–52, 12:61–65, 13:23–25. We have considered Patent Owner’s argument that Schröder’s inlay 12 “is merely a substance for holding the coil in place, not a printed circuit board,” as well as Patent Owner’s argument contrasting Schröder’s description of inlay 12 with the express disclosure of “a circuit on a circuit board” elsewhere in the reference. Prelim. Resp. 29–30 (emphasis omitted; citing Ex. 1007, 8:57–59, 22:48–50; Ex. 20119). These arguments raise a serious issue about whether a POSITA would have understood Schröder’s inlay 12 as teaching a printed circuit board. This issue would benefit from further development at trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“E. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’702 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “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) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 7; Prelim. Resp. 21.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,874,702 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring Inc.Institution deniedPTAB · Dec 10, 2024 · PGR2024-00031 · APJ Elizabeth M Roesel · PGR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims, and declined to enter adverse judgment.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’179 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway at 6. Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.207(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc., v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022); Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 2
NonePatents in suitUS 11,868,179 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring Inc.Institution deniedPTAB · Dec 9, 2024 · IPR2024-00930 · APJ Michael A Valek · IPR · Institution
The Board denied institution because the patent owner disclaimed all challenged claims, and declined to enter adverse judgment.
RulingsInstitution decision- Adverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway at 6. Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.107(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc. v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022) Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’147 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
NonePatents in suitUS 11,599,147 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Oura Health OYInstitution deniedPTAB · Dec 9, 2024 · IPR2024-00929 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 1–12, and declined to enter adverse judgment.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDecided for patent owner
“We also decline to enter adverse judgment. The Federal Circuit has interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex or Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway (USA), Inc. v. Intex Mktg., Ltd., PGR2024-00036, Paper 9, 6 (Oct. 28, 2024) (“Bestway”). Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.107(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Takeda Vaccines, Inc., v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (Apr. 5, 2022); Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (Mar. 14, 2021) (determining on similar facts that denial of institution without entry of adverse judgment was appropriate).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS Patent Owner has disclaimed all of the claims of the ’833 patent challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
NonePatents in suitUS 10,893,833 - PTAB · Dec 6, 2024 · IPR2024-00928 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–5, 11–13, and 16–18 on all grounds, finding a reasonable likelihood that the LeBoeuf challenge to claim 1 would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–5, 11–13, and 16–18 based on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusNot reached
“For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1210 (Fed. Cir. 2023). “A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.” Id. slip op. at 16
§ 103 obviousnesscites PhillipsPatents in suitUS 9,582,034
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.