- PTAB · Sep 29, 2022 · IPR2022-00986 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1–5 based on the same grounds as IPR2021-01443 and granted Zhuhai CosMX Battery Co., Ltd.’s motion to join that proceeding.
RulingsInstitution decision- Other 314aDecided for petitioner
“deny institution based on Petitioner’s refusal to enter a Sotera-style stipulation in the related CosMX litigation. Prelim. Resp. 1, 3–4; see Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”). A June 2022 Memorandum from the Director states, “Consistent 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” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“six non-exclusive Fintiv factors. Fintiv I at 6. Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.; see also Interim Procedure at 3 (providing “binding agency guidance” regarding how the Board’s discretion under 35 U.S.C. § 314(a) and the Fintiv factors apply to “sample fact patterns”). After considering the parties’ arguments and evidence in light of the Fintiv factors and the Interim Procedure, we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the record as a whole and for the same reasons as stated in the institution decision in the 1443 IPR, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 1443 IPR, Paper 16 at 14‒35 (PTAB Apr. 8, 2022).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion for Joinder requests no more than the statute allows. Petitioner represents that “the Petition asserts the same grounds and relies on the same evidence for unpatentability” as presented in the 1443 IPR. Mot. 7. Furthermore, Petitioner agrees that, if joined to the 1443 IPR, Petitioner will take a secondary “understudy” role and will not request any changes to the trial schedule. Mot. 4, 7–8. Petitioner states that it will assume a primary role only if the petitioner in the 1443 IPR ceases its participation. Mot. 8.” slip op. at 10
Discretionary denialPatents in suitUS 9,350,019 - PTAB · Sep 29, 2022 · IPR2022-00985 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–11 on the grounds instituted in IPR2021-01441 and joined Zhuhai CosMX Battery Co., Ltd. to that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In assessing whether to exercise such discretion, the Board weighs the six non-exclusive Fintiv factors. Fintiv I at 6. Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.; see also Interim Procedure at 3 (providing “binding agency guidance” regarding how the Board’s discretion under 35 U.S.C. § 314(a) and the Fintiv factors apply to “sample fact patterns”). After considering the parties’ arguments and evidence in light of the Fintiv factors and the Interim Procedure, we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the record as a whole and for the same reasons as stated in the institution decision in the 1441 IPR, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 1441 IPR, Paper 16 at 11‒49 (PTAB Apr. 8, 2022).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion for Joinder requests no more than the statute allows. Petitioner represents that “the Petition asserts the same grounds and relies on the same evidence for unpatentability” as presented in the 1441 IPR. Mot. 7. Furthermore, Petitioner agrees that, if joined to the 1441 IPR, Petitioner will take a secondary “understudy” role and will not request any changes to the trial schedule. Mot. 4, 7–8. Petitioner states that it will assume a primary role only if the petitioner in the 1441 IPR ceases its participation. Mot. 8. Patent Owner states that, if the Board grants institution, then “Patent Owner does not oppose Petitioner’s Joinder Motion.” Prelim. Resp. 1. The petitioner in the 1441 IPR has not opposed Petitioner’s Motion for Joinder. See Mot. 8 (stating that the petitioner in the 1441 IPR has not provided its position about whether it would oppose the motion). We find that Petitioner’s Motion for Joinder is timely under 37 C.F.R. § 42.122(b). After considering the unopposed motion, we are persuaded that joinder is appropriate and will have little to no impact on the timing, cost, or presentation of the trial on the instituted grounds. In consideration of the foregoing, and in the manner set forth in the following Order, the Motion for Joinder is granted.” slip op. at 10
Discretionary denialPatents in suitUS 9,077,035 - PTAB · Sep 29, 2022 · IPR2022-00984 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 on the same §103 grounds as IPR2021-01440 and granted Zhuhai CosMX Battery Co., Ltd.’s motion to join that proceeding.
RulingsInstitution decision- Other 314aDecided for petitioner
“reasonably been raised before the PTAB.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Interim Procedure”),6 3 (footnote omitted; citing Sotera). In other words, under the Interim Procedure, a petitioner may avoid discretionary denial of the petition based on a parallel district court litigation by providing a Sotera-style stipulation. The Interim Procedure does not, however, make a Sotera-style stipulation a prerequisite for institution. Under our informative precedent, an inter partes review may be instituted despite the absence of a Sotera-style stipulation. Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper 24 at 12 n.5 (PTAB June 16, 2020) (informative) (“Sand Revolution”) (instituting inter partes review notwithstanding the absence of a stipulation not pursue any ground that could have been reasonably raised in an inter partes review). Thus, exercising our discretion to deny institution under 35 U.S.C. § 314(a) merely because Petitioner has not entered a Sotera-style stipulation would be inappropriate in this case.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“related CosMX litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Sand Revolution at 7 (declining to predict whether or not the district court would grant a stay, if requested); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the record as a whole and for the same reasons as stated in the institution decision in the 1440 IPR, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 1440 IPR, Paper 17 at 14‒34 (PTAB Apr. 8, 2022).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion for Joinder requests no more than the statute allows. Petitioner represents that “the Petition asserts the same grounds and relies on the same evidence for unpatentability” as presented in the 1440 IPR. Mot. 7. Furthermore, Petitioner agrees that, if joined to the 1440 IPR, Petitioner will take a secondary “understudy” role and will not request any changes to the trial schedule. Mot. 4, 7–8. Petitioner states that it will assume a primary role only if the petitioner in the 1440 IPR ceases its participation. Mot. 8.” slip op. at 10
Discretionary denialPatents in suitUS 8,691,446 - PTAB · Jul 6, 2022 · IPR2022-00686 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–20 based on the same grounds as the Google IPR and granted Ecobee’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. 42.108(a) (2021).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the Google IPR. See Mot. 1, 4–5. Petitioner presents “the same arguments and the same grounds raised in the existing Google IPR (i.e., challenges the same claims of the same patent, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the granted Google Petition).” Id. at 4. Indeed, the Petition is nearly a “carbon copy” of the petition filed by the petitioner in the Google IPR. See id. Thus, this inter partes review does not present any ground or matter not already at issue in the Google IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the Google IPR petitioner as a party. Mot. 1–2; see also id. at 6–8. Petitioner states that it Google ceases to participate in the instituted IPR.” Id. at 1. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “the proposed joinder will not unduly complicate the Google IPR nor adversely impact its schedule. As such, the requested joinder will promote judicial efficiency in determining the patentability of the ‘567 patent without prejudice to Patent Owner.” Id. at 1–2. Petitioner further indicates that Google does not oppose the request joinder. Id. at 2. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the Google IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 5
NonePatents in suitUS 8,019,567 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Scramoge Technology Ltd.InstitutedPTAB · Jun 13, 2022 · IPR2022-00241 · APJ Wesley B Derrick · IPR · Institution
The Board instituted review of claims 1–21 on all petition grounds, finding a reasonable likelihood of prevailing on the Kim–Mizutani obviousness challenge to claims 1 and 11.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“parallel district court litigation’s trial date and the Board’s projected statutory deadline for issuing the final written decision. This inquiry addresses the likelihood that the district court will reach a decision on validity issues before the Board reaches a final decision. In this circumstance, on this record, where the trial date is currently scheduled more than three months prior to the expected final written decision due date, this factor weighs slightly in favor of exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”1 Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Further, we are unpersuaded that we should exercise our discretion to deny institution. Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and at least one year of experience in the research, design, development, and/or testing of wireless charging systems, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 9 (citing Ex. 1002 ¶¶ 46–49). Patent Owner declined to address the level of ordinary skill in its Preliminary Response. See Prelim. Resp. Petitioner’s contended level of ordinary skill, thus, stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 15
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,825,482 - PTAB · May 31, 2022 · IPR2022-00153 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petition grounds, finding a reasonable likelihood of prevailing on the Hunaidi Patent obviousness challenge to claims 1 and 8.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion On this record, and in the absence of argument to the contrary by Patent Owner, we find Petitioner’s contentions that the Hunaidi Patent renders claims 1 and 8 obvious well-supported. Petitioner has directed us to portions of the Hunaidi Patent that teach or suggest all of the limitations in claims 1 and 8, and has provided a sufficiently persuasive reason why a person of ordinary skill in the art would have had reason to modify the disclosed apparatus and method to arrive at the subject matter of both independent claims. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on this challenge with respect to both claim 1 and claim 8. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’596 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“in the art having a motivation to combine the teachings of the Hunaidi Patent and the Hunaidi Article. The clearest expression of a motivation to combine set forth in association with the ground, as applied to the independent claims, is that “a [person of ordinary skill in the art] would have been guided to look at leak detection systems, such as that disclosed in the Hunaidi Article,” because “[t]he Hunaidi Patent explains that ‘[t]he proposed method is easy to implement, for example, in conjunction with routine leak detection surveys.’” Pet. 38 (citing Ex. 1003, 3:35–36; Ex. 1004, Abstract, 7; Ex. 1002 ¶ 77). The difficulty with this is that the Hunaidi Patent itself already discloses what appears to be routine leak detection surveys, and it is thus not apparent what benefit would be obtained by this combination to motivate the skilled artisan to combine the teachings. Cf. Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). As to further reasons set forth for the combination, as applied to claims 1 and 8, these are grounded on shortcomings in “the Hunaidi Article . . . not disclos[ing] an equation for velocity” or go to the obviousness of modifications to the Hunaidi Patent itself independent of the Hunaidi Article’s teachings. Id. at 38–40 (citing Ex. 1001, 7:1–12; Ex. 1002 ¶¶ 63–71, 80–86; Ex. 1003, 2:57–3:11, 1:8–11, claims 1& 11).” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“1. Printed Publication Status of the Hunaidi Article In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings, including whether the reference was publicly accessible. Id.; see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility). Petitioner contends that the Hunaidi Article is prior art under 35 U.S.C. § 102(a) and (b). Pet. 35. Petitioner fails, however, to set forth any basis for the document to be a printed publication, that is, for its public accessibility. See Pet. Similarly, there is no testimony by Dr. Wilkens relevant to this issue. See Ex. 1002. Further, on this record, there is neither argument nor testimony as to the authenticity of what Petitioner has filed as the Hunaidi Article (Exhibit 1004).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “is a person with a degree in mechanical engineering, chemical engineering, or physics, and approximately three to five years of combined work experience and/or graduate work in fluid dynamics.” Pet. 10 (citing Ex. 1002 ¶¶ 24– 25). As Patent Owner has waived its preliminary response, Petitioner’s contended level of ordinary skill stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 8
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,475,596 - PTAB · Apr 8, 2022 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 because Petitioner showed a reasonable likelihood of prevailing on both asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. We have considered Patent Owner’s arguments in light of the Fintiv factors, together with Petitioner’s opposition, and we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(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 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 11
- 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). An inter partes review may not be instituted “unless . . . 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 information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it will prevail with respect to at least one claim challenged in the Petition, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in chemistry, chemical engineering, or materials science, as well as five or more years of experience in the field of batteries and battery materials.” Pet. 8 (citing Ex. 1003 ¶ 11). Petitioner adds that “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education.” Id. Petitioner states that “[a]dditional education might substitute for some experience, and substantial experience might substitute for some educational background.” Id. at 8–9.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,350,019 - PTAB · Apr 8, 2022 · IPR2021-01441 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We find that Petitioner’s stipulation is the same as the stipulation in Sotera. Sotera at 18 (the petitioner stipulating that, “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.”). Petitioner’s stipulation invokes our Sotera precedent, “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions,” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera at 19. Accordingly, we find that this factor weighs strongly against exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Based on the evidence before us, we determine Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one claim of the ’035 patent is unpatentable. Accordingly, we institute an inter partes review on all the challenged claims and all of the grounds presented in the Petition. See 37 C.F.R.§ 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of the challenged claims. Our final decision will be based on the record as fully developed during trial. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–11 of the ’035 patent with respect to all grounds set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), notice is hereby given of the institution of a trial commencing on the entry date of this decision.” slip op. at 49
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and five or more years of experience in the field of batteries and battery materials.” Pet. 5 (citing Ex. 1003 ¶ 11). Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except to the extent that the phrases “at least” and “or more” might be taken to imply that one of with significantly greater education or experience than that explicitly set forth would be considered to be merely one of ordinary skill in the art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, for purposes of institution, we find Petitioner has sufficiently established the similarity of the cathodes in Choi and Noh to support the motivation to combine. Petitioner has reasonably established that both references are directed to similar secondary batteries that include lithium-cobalt oxide-based cathodes and nonaqueous electrolytes with a goal of providing improved thermal stability and discharge characteristics. Despite Patent Owner and Dr. Lucht contending that Choi and Noh are so dissimilar that a skilled artisan would not have combined them for the for this contention. Id.; Ex. 2008 ¶ 31. The purported silence of Noh as to the size of cathode active material particles is not, on its face, contrary to the combination. The materials used are otherwise similar, i.e., lithium-cobaltbased oxides, and Petitioner is relying on Noh to teach the electrolyte additives, not the specifics of the cathode active material. As to Patent Owner’s argument based on Choi’s materials including doping with other transition metals, this, likewise, is not on its face contrary to there being a motivation for the combination because these materials, despite the doping with small amounts of other transition metals, appear similar to the undoped materials with respect to structure and function, and there is no evidence to the contrary on this record. See Ex. 2008 ¶ 31. Patent Owner also contends that Petitioner provides no motivation to combine Choi and Noh for its disclosure of the claimed particle sizes. Prelim. Resp. 16–17. Patent Owner and Dr. Lucht focus on Choi teaching preferable ratios of large particle size to small particle size to increase fractional density that are higher than the particle size ratios that are preferred in the ’035 patent. Id. (citing Ex. 1005 ¶¶ 27, 31, code (57) (Abstract)); Ex. 1001 4:35–37, 4:41–63). Patent Owner calculates a maximum ratio of 12.5:1 based on the recited large and small particle sizes in claim 1, contends that this maximum ratio is much less than the ratio of 100:1 disclosed in Choi, and argues that, based on this lower preferred maximum ratio for the ’035 patent, there is no motivation set forth to combine Choi and Noh for the claimed largest and smallest average particle sizes. Id. at 17 (citing Ex. 2008 ¶ 33). Patent Owner’s arguments about particle size do not identify an insufficiency in Petitioner’s rationale for combining Choi and Noh, which size. Even assuming that there is a difference in the preferred maximum ratio set forth in Choi and in the ’035 patent, this has no apparent bearing on Petitioner’s proposed combination of Choi and Noh, which relies on Noh for its teaching of an electrolyte additive, not particle size, and Choi teaches including large and small particle sizes in the same type of cathodes as used in both Choi and Noh. Further, Patent Owner’s emphasis on the maximum ratio in Choi differing from that according to the ’035 patent appears to be misdirected because Choi teaches a range of ratios that encompass those claimed.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,077,035 - PTAB · Apr 8, 2022 · IPR2021-01440 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–5 on both asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“and (2) Koshiishi and Abe. Pet. 1. It is undisputed that neither Choi nor Koshiishi was presented to the Office during examination, and there is no suggestion that either reference is cumulative of the art presented to the Office during examination. See Prelim. Resp. Petitioner asserts that “the only difference between Choi and the ’446 Patent claims is the inclusion of a compound with two nitrile groups in the electrolyte.” Pet. 12. Petitioner makes the same assertion about Koshiishi. Pet. 42. Petitioner contends that Choi and Koshiishi each teach all limitations of the challenged claims, except for the limitations requiring that the electrolyte contain a dinitrile compound. Pet. 13–38, 42–62. In view of the importance of Choi and Koshiishi to Petitioner’s grounds of unpatentability, we determine that the art presented in the Petition is not the same or substantially the same as the art previously presented to the Office during examination.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response, we determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to at least one of claims 1–5 of the ’446 Patent based on Choi and Kim.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not dispute Petitioner’s definition of a POSITA. See Prelim. Resp. We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’446 Patent and the asserted prior art, and we apply Petitioner’s definition for purposes of this Decision, with the caveat that the phrases “at least” and “or more” should not be construed as requiring a significantly greater level of education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,691,446 - PTAB · Feb 16, 2022 · IPR2021-01397 · APJ Wesley B Derrick · IPR · Institution
The Board instituted inter partes review of claims 1–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).” Advanced Bionics, 7–8. Thus, citation of Mavretic and Mason on an IDS satisfies part one of the Advanced Bionics framework for at least the first ground. 2. Whether the Office Erred in a Manner Material to the Patentability of Challenged Claims Next, we proceed to the second part of the framework set forth in Advanced Bionics. As discussed above, neither Mavretic nor Mason were applied in a rejection during prosecution of the ’057 patent––the Examiner’s consideration of both references appears limited to initialing an IDS. See Ex. 1013, 160, 164. Patent Owner also relies, however, on Mavretic having been used “as the primary reference in rejecting the [’057 patent’s grandparent] application twice under section 103.” Prelim. Resp. 36; Ex. 1014, 445–455, 492–504. Regardless, there was no rejection grounded on Mavretic during prosecution of the ’057 patent, and the claims in the ’057 patent differ from those in the grandparent application. Thus, as to factor (c) of Becton Dickinson, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the circumstances do not weigh heavily in favor of discretionary denial.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, for the reasons discussed above, Petitioner establishes a reasonable likelihood of prevailing on this challenge with respect to claim 1. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’057 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst., 138 S. Ct. at 1359–60; USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018; 37 C.F.R. § 42.108(a).” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we find Petitioner’s definition of the level of ordinary skill reasonable as to including “a person with a graduate degree in electrical engineering with knowledge of RF matching networks and plasma chamber processes.” We also recognize that work experience with RF matching networks and plasma chamber processes can likely substitute to an extent for experience Petitioner contends are sufficient. However, given that the relevant testimony at this stage of the proceeding is from Dr. Voldman, who “has a Ph.D. in electrical engineering and extensive knowledge of both matching networks and plasma systems” (Pet. 24–25 (citing Ex. 1002 ¶¶ 8– 17)), we need not address how work experience can substitute for education for this Decision, and so determine that the level of ordinary skill as including “a person with a graduate degree in electrical engineering with knowledge of RF matching networks and plasma chamber processes” (id. at 24).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“On this record, we are not persuaded that Petitioner adequately establishes that Mason discloses an impedance matching circuit operating at a constant frequency. As highlighted by Patent Owner, Dr. Voldman does not sufficiently explain how he reached the conclusion that Mason’s apparatus operates at a constant frequency based on Mason’s disclosures. See Ex. 1002 ¶ 98. Accordingly, we give little weight to his testimony in this regard. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,707,057
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.