- Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Oct 7, 2024 · IPR2024-00494 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the Petition’s contingent claim construction was unmet and unsupported, and the cited art was not shown to teach all limitations of claims 1, 2, 4, and 6–10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With regard to claim construction, Patent Owner’s Preliminary Response states: For purposes of this Petition, Petitioner adopts [Patent Owner]’s proposed construction in parallel district court argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. 6 Claim elements 1[d], [e], and [f] are defined in the bolded headings on pages 62, 64, and 68, respectively, of the Petition. litigation.[7] (Pet., 29-30) At this time, Patent Owner sees no need for the Board to further construe any claim language because the Board need only construe terms that are in controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019). Prelim. Resp. 21 (footnote omitted). As noted previously, Patent Owner did not propose a construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 in the parallel district litigation, but, instead, argued against Petitioner’s contention that it was indefinite. See Ex. 1080, 13–16. Thus, Patent Owner contends that we need not engage in any claim construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. Accordingly, Patent Owner does not provide any argument or evidence relating to construction of this phrase. See id. We do not adopt the claim construction upon which the Petition relies because it is not persuasively argued or adequately supported by either party.8 7 It is clear that Patent Owner is referring to the agreed-upon construction of “embedded Universal Serial Bus (USB) Host” in the preamble of claim 1. See Ex. 1080, 3; see also Pet. 30. There is no agreed-upon construction of the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. As noted, Petitioner argues this phrase renders claim 1 indefinite. See Pet. 26 (“Petitioner argues in district court that claim 1 is indefinite.”), 28– 30. 8 In a proceeding involving a related patent, IPR2024-00496, Petitioner contends that the parties had an agreed-upon construction relating to the phrase “a USB Hub having a plurality of USB ports.” IPR2024-00496 Paper 11, 11–13. This is inaccurate. Petitioner does not direct our attention to any such agreement and we find none in the record of that or this proceeding.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner maps the cited art to claim 1 as incorporating the interpretation of claim 1 proposed by Patent Owner in the district court litigation. See Pet. 56–59. Specifically, in the Petition, the phrase “a USB Hub having a plurality of USB ports” is rewritten by Petitioner to read “a USB Hub [interconnected to] a plurality of USB ports” or as rewritten with “possessing” in place of “interconnected to.” Id.9 The Petition alleges unpatentability under this construction. Id.; see also id. at 27 (“Petitioner demonstrates unpatentability of the Challenged Claims under this construction.” (footnote omitted)). As discussed above, Petitioner contended, in the district court litigation, that “having” as recited in claim 1 rendered the claim “nonsensical” and, thus, indefinite. Ex. 1080, 13–14. And, the District Court considered whether “having” had the same meaning in the context of claim 1 of the ’037 patent as “interconnected to” or “possessing” and 9 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 30 n.11. determined that these terms were not equivalent. Id. at 14. We agree with the District Court. Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’037 patent.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,460,037 - PTAB · Sep 27, 2024 · IPR2024-00674 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claim 44 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01244 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims, and those claims appear on the present record to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—the use of Kawagoe in both petitions—is used in different prior-art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 16– 37. However, 35 U.S.C. § 315(b) also provides that the one year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Since the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01244), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, regardless of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - PTAB · Sep 27, 2024 · IPR2024-00673 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claims 1–9, 13–28, and 32–42 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01242 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims and, on the present record, those claims 8 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“CTPG”). appear to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—reliance on Kawagoe in both petitions—is applied in different prior art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“III. WHETHER THE PETITION IS TIME-BARRED Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 19– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01242), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“under the pre-AIA version of 35 U.S.C. § 112, first paragraph and found that “movement of minority carriers is affected by multiple forces and fields” and that “it does not appear that simply the presence of ‘a unidirectional drift field’ in itself can achieve ‘drawing all minority carriers from said surface layer to said substrate.’” Ex. 1016, 289 (emphasis added). Patent Owner responded with the following argument: [A] unidirectional drift (electric) field necessarily affects all the present minority carriers in the same way - moving all minority carriers in the same direction because of the unidirectional drift due to the existence of the electric field. See “Physics and Technology of Semiconductor Devices,” A.S. Grove, pp. 224– 225, John Wiley and Sons, Inc., New York, 1st Edition 1967 (“This same electric field will then be of such direction as to aid the motion of injected holes. Thus the injected minority carriers will now move not only by diffusion but also by drift due to the existence of this electric field.”). Depending on the particular slope of the graded concentration of dopant, all minority carriers are either swept “down” (from the surface layer to the substrate) or “up” (from the substrate to the surface layer). See Applicant’s Figs. 5(b) and 5(c). Id. Patent Owner further argued that the Examiner’s finding appears to not consider that the graded dopant concentration itself creates a “built-in” electrical field that forces the movement of carriers into a particular direction, whereby the “direction” of the electrical field and the resulting direction of the carrier movement depends solely on the slope of the graded concentration of dopant. With regard to the existence of a “built-in” electric field created by a graded dopant density, . . . this inherent “built-in” unidirectional electric field is the additional parameter for ensuring that all minority carriers are being moved in one direction and which parameter the Office Action deemed to be missing from the disclosure. Id. at 289–90 (emphases added). Also, “without conceding its position on this issue,” Patent Owner amended claims to eliminate reference to “all carriers” and instead, refer to “carriers.” 13 Id. at 290. 4. Analysis of Claim 1 At this stage of the proceeding, we determine that Patent Owner’s statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 13 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). See generally Prelim. Resp. At this stage of the proceeding, Petitioner has the better position.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222 - PTAB · Sep 27, 2024 · IPR2024-00672 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01243 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1. We decline to further discuss the parties’ arguments or resolve any disputed issues as to challenges based on Kawagoe on this preliminary record, because the trial in the 1243 IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the 1243 IPR affords the parties better opportunity to brief, argue, and develop evidence in support of their positions. Thus, for the same reasons stated in our Decision on Institution in the 1243 IPR, we determine the Petition here warrants institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“deficient because Kawagoe’s disclosure of graded dopant concentration teaches impeding carrier movement rather than aiding it, as required by claim element 1.5. Prelim. Resp. 13–14. Patent Owner relies on Kawagoe’s disclosure that the concentration gradient prevents electrons from entering the p-well. Id. at 14 (citing Ex. 1007, 16:7–11). Patent Owner further argues Kawagoe’s carriers are not in the active regions, as required by claim element 1.5. Id. at 14–16 (citing Ex. 1003 ¶ 91, n.5). At this stage of the proceeding, we determine that the arguments and evidence of record favor Petitioner. Both parties agree that a downward-sloping gradient, as disclosed in Kawagoe, will create an electrical field with a force in a direction toward the substrate. See generally Prelim. Resp.; Ex. 1007, 16:7–9. Patent Owner does not meaningfully dispute that Kawagoe has a graded dopant concentration in an active region. See generally Prelim. Resp. Further, Patent Owner contradictorily stated during prosecution of the ’195 patent that a graded dopant concentration itself creates “a built-in electrical field that forces the movement of carriers in a particular direction” (Ex. 1016, 289–290) and is “the additional parameter for ensuring that all minority carriers are being moved in one direction” (id. at 290). In light of this evidentiary record, which at most presents a material issue of fact for resolution at trial, we determine Petitioner establishes a reasonable likelihood of prevailing in its challenge of claim 1.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), included revisions to 35 U.S.C. §§ 102 and 103 that became effective in 2013, after the effective filing date of the challenged claims. See Ex. 1001, codes (22), (60). Therefore, we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103(a). 2 US 6,043,114, issued March 28, 2000 (Ex. 1007, “Kawagoe”). Petitioner asserts that Kawagoe is prior art under 35 U.S.C. § 102(b). Pet. 4. 3 US 6,163,877, issued December 19, 2000 (Ex. 1014, “Gupta”). Petitioner asserts that Gupta is prior art under 35 U.S.C. § 102(b). Pet. 5. 4 US 2003/0183856 A1, published October 2, 2003 (Ex. 1006, “Wieczorek”). Petitioner asserts that Wieczorek is prior art under 35 U.S.C. §§ 102(a),(e). Pet. 4. 5 Stanley Wolf and Richard N. Tauber, Silicon Processing for the VLSI Era, Vols. 1–4, Lattice Press (2000) (Ex. 1008, “Wolf”). Petitioner asserts that Wolf was published and publicly available no later than 2002, and is prior art under 35 U.S.C. § 102(b). Pet. 5 (citing Exs. 1012, 1013, 1036). Exhibit 1008 was submitted in four parts (A–D) and includes selected portions of Wolf. We cite to Wolf using its original page numbers and omit the exhibit part designations. Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 18– 39. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01243), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner’s first argument is not persuasive because it is based on speculation that Petitioner “is trying to block settlement with any of these defendants unless [Patent Owner] also settles with” Petitioner. Opp. Mot. Join. 5. As discussed below, we determine that Patent Owner will not be prejudiced unduly by the joinder. Moreover, we note that even in a situation where the petitioner and patent owner in the proceeding to be joined had settled (Code200 v. Bright Data Ltd., IPR2022-00861, Paper 17 at 5 (PTAB July 25, 2022) (vacated)), the Director nevertheless vacated a decision to deny a motion for joinder. Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 at 7 (Office of the Director of the USPTO Aug. 23, 2022) (precedential); see also eBay, Inc. v. Lexos Media IP, LLC, IPR2024-00336, Paper 11 at 13–15 (PTAB Feb. 23, 2024). Patent Owner’s second argument is moot because Patent Owner’s Request for Director Review has been denied. 1243 IPR, Paper 43 (PTAB Apr. 24, 2024). Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the 1243 IPR. Specifically, we find that joining Petitioner to the 1243 IPR is unlikely to require any delay or modification to the scheduling order already in place for the 1243 IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 1243 IPR.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,510,842 - PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593 - Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentablePTAB · Sep 10, 2024 · IPR2023-00485 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, Rossi, and Castellani.
RulingsFinal written decision- Skill levelSkill level board ownPetitioner expert creditedDecided for petitioner
“have a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products.” Pet. 31 (citing Ex. 1003 ¶ 40). In the Institution Decision, we preliminarily determined that a person of ordinary skill in the art “would have a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier.” Inst. Dec. 8 (emphasis added). Neither party disputes this conclusion. PO Resp. 9; see generally Pet. Reply. As such, we adopt our preliminary definition of the ordinarily skilled artisan for purposes of this Final Written Decision.” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to at least “five years” or involved “experience with sensors for recognizing an identifier.” Inst. Dec. 8 (adopting Patent Owner’s own proposed definition of one of ordinary skill in the art); see Sur-reply 3–4 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3– 12, 102:20–104:9; Ex. 2017 ¶¶ 3–4, 8–10) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.10 See Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). The Federal Circuit has explained that “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Second, Patent Owner and Dr. Howell assert that a person of ordinary skill in the art “would have understood upon reading the second German application that the capsule features described would be intended to be combinable with each of the described embodiments.” PO Resp. 40; Ex. 2017 ¶ 61. But Patent Owner and Dr. Howell do not explain how a barcode could be used in the devices depicted in Figures 16–18, which place the detection means 2.4.2 on the outer circumference of the flange (not its underside) and rely on toothed-rings physically interacting with either the chamber, retaining arms, or a pinion. Ex. 1047, 12:22–31, 13:8–18. Indeed, the second German priority application explains that means 2.4.2 physically interacts with retaining arms 30 (embodiments of Figures 16 and 17) or a pinon (embodiment of Figure 18), and if means 2.4.2 were not present in these embodiments the capsule would either “drop through into a waste container” or could not be inserted through the insertion shaft. Id. at 12:22– 27, 13:9–12, 13:16–35 (noting that in the embodiment disclosed in Figure 18 a pinon interacts with means 2.4.2 and only when means 2.4.2 “is formed complementary to the teeth of the means” can the capsule be inserted). At no point does the second German application identify means 2.4.2 as a barcode or suggest a barcode could be used as the detection means. The second German application also states that A person skilled in the art is also aware that for example the insertion shaft may also contain a sensor, for example a camera, clear, however, that element 27 is part of the brewing chamber, and not the capsule. Ex. 1047, 12:27–31, 13:5–8, 13:21–26, 15:36. Thus, we are not persuaded that the toothed ring is in fact on the bottom side of the flange. which senses the shape of the means 2.4.2. For example, it would be possible, in the present case, for the shape of the teeth and/or the spacing between the same to be sensed. This signal, in turn, is passed to a control means, which frees, for example, the brewing chamber if the capsule is the correct one. Ex. 1047, 14:11–19. Again, despite using a camera to determine if a capsule is “the correct one,” the second German application does not suggest using a barcode in place of the toothed-ring structure, or suggest moving the location of the detection means 2.4.2 from the outer surface to the underside of the flange. This reinforces that the inventors did not contemplate using a barcode in the embodiments depicted in Figures 16–18.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As asserted by Petitioner, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 48–49; Pet. Reply 23–24 (Ex. 1003 ¶¶ 184–185; Ex. 1005 ¶¶ 82–84, Fig. 5). And, although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as generally depicted in Figure 5 of Jarisch. Pet. Reply 24 (noting that Dr. Howle’s testimony on this subject is “conclusory” and depends on “bodily incorporation”). As such, we credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing.17 Ex. 1003 ¶ 184. Patent Owner further contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that 17 As discussed above, Mr. Jobin has extensive experience in the design of brewing devices. Conversely, Dr. Howle has limited experience in this field and is not one of ordinary skill in the art. Although Mr. Jobin’s testimony is more persuasive regardless of the discrepancy in experience between the two declarants, when this difference in design experience is considered, it only serves to increase the weight we give to Mr. Jobin’s testimony. there is a “snug fit” to avoid “unbalances.” PO Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of the multiple volume capsules or permit a “snug fit.” Id.; PO Resp. 28. Patent Owner’s assertion that Yoakim discloses the use of certain capsules that might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. As noted by Patent Owner, Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure. But Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch, and other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Moreover, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or even less effective. Id. (citing Ex. 2019, 36:18–37:6; Ex. 1005 ¶ 23 (Jarisch explaining that its device includes a capsule holding means and that the capsule may be successfully driven in rotation). As such, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange and that this design would allow for successfully receiving single-serve capsules and driving them in rotation. Ex. 1003 ¶¶ 182–184; Ex. 1005 ¶ 23.” slip op. at 39
Patent outcomesUS 11,230,430 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,230,430 - Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentablePTAB · Sep 10, 2024 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–16 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, and Rapparini.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“To obtain the benefit of the filing date of an earlier application, Patent Owner bears the burden of producing evidence to establish where each limitation of the challenged claims is disclosed in a single priority application. Studiengesellschaft Kohle, 112 F.3d at 1564; NTP, 654 F.3d at 1276. Petitioner identifies limitations of the challenged claims that are missing from each individual German priority application. Pet. 39–42. Patent Owner responds with no evidence or arguments suggesting that the identified limitations are disclosed in a single application. Resp. 10–12. On this record, no challenged claim is entitled to the benefit of the filing date of any of the three German priority applications; therefore, Jarisch qualifies as prior art under at least 35 U.S.C. § 102(e).” slip op. at 19
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In other words, even if we accept that Dr. Howle has some experience designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to “at least five years” or involved “experience with sensors for recognizing identifiers.” Dec. 8 (adopting Patent Owner’s own proposed definition of ordinary skill in the art); see Sur-reply 3 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3–12, 102:30– 104:9; Ex. 2017 ¶¶ 3, 4) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.12 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). The Federal Circuit has made plain that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” 12 To be clear, we are not saying that a witness supplying expert opinions must have satisfied the requirements of the level of ordinary skill in the art on or before the priority date of the challenged patent, which Patent Owner seems to understand. See Sur-reply 4–5. Instead, we evaluate whether Dr. Howle had at least the requisite qualifications of a person having ordinary skill in the art by the time he rendered his opinions. Osseo Imaging, LLC v. Planmeca USA, Inc., Appeal No. 2023-1627, slip op. at 7 (Fed. Cir. Sept. 4, 2024) (“[A]n expert can acquire the necessary skill later and develop an understanding of what a person of ordinary skill knew at the time of the invention,” however, where “the expert was not a person of ordinary skill at the time of the invention may well be used during cross-examination to undermine the credibility of the expert.”); see id., slip op. at 5–6 (affirmatively quoting Kyocera). Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. “‘Admitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’” That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). Alternatively, even if we accept that Dr. Howle possesses “at least five years” of relevant design experience, on this record, we agree with Petitioner that his opinions are entitled to less weight than those of Petitioner’s witness, Mr. Jobin. Reply 27. Unlike Dr. Howle, Mr. Jobin is a designer by profession, with more than 30 years of industry experience. Reply 27 (citing Ex. 1003 ¶¶ 5–30). For example, Mr. Jobin designed a home-based beer dispensing system utilizing cartridge identification technologies. Id. (citing Ex. 1003 ¶ 24). Mr. Jobin also “has substantial experience with sensors for recognizing identifiers.” Id. (citing Ex. 1003 ¶ 19; Ex. 1072, 3712–19, 67:22–70:19). Dr. Howle, by contrast, “has never designed a beverage machine.” Reply 22; see generally Sur-reply (declining to contest that assertion).13” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In Petitioner’s contrary view, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 45–46; Reply 21–22 (Ex. 1003 ¶¶ 194–195; Ex. 1005 ¶¶ 82–84, Fig. 5). Although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as depicted in Figure 5 of Jarisch. We credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing. Ex. 1003 ¶ 184. For reasons explained above, we assign little or no weight to Dr. Howle’s conflicting testimony because he has little or no experience designing a mechanical beverage system or similar product. See supra 10– 16. Petitioner lays out persuasive reasons why Dr. Howle’s testimony, on this particular point, is “conclusory” and rests on “bodily incorporation” of the references. Reply 24; see id. at 22–24 (pointing out with particularity fundamental flaws in Dr. Howle’s opinions); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In addition, Patent Owner contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that there is a “snug fit” to avoid “unbalances.” Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of multiple volume capsules or permit a “snug fit” in the modified device of Yoakim. Id. at 8–9. Patent Owner’s view that Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch and, in any event, other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Furthermore, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange. Ex. 1003 ¶¶ 187–195. With respect to the argument that the use of Jarisch’s design would not allow a snug fit, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or less effective. Resp. 39–40; see Reply 22 (citing Ex. 2019, 36:18–37:6). Indeed, as Petitioner points out, Jarisch indicates that its device, including its capsule holding means, allows the capsule to be successfully driven in rotation. Reply 22 (citing Ex. 1005 ¶ 23).” slip op. at 49
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“That argument is not persuasive. A reference need not identify or discuss another prior art patent or application in order for that reference to be deemed relevant or analogous art. Nor do we endeavor to determine why, or why not, a particular reference is discussed in a prior art reference. The analogous art inquiry focuses on reasonable pertinence and involves assessing the similarities between the claimed invention and the prior art, including the problems addressed and the closeness of the subject matter, as viewed by an ordinarily skilled artisan. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020); see Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380-81 (Fed. Cir. 2019) (relevant analysis focuses on comparing the disclosed embodiments, function, and structure of the claimed invention to the disclosures of the prior art). Against that backdrop, we reject Patent Owner’s suggestion that the inquiry involves whether the inventors of Jarisch saw a need to discuss Yoakim’s disclosure in Jarisch’s priority document.” slip op. at 45
Patent outcomesUS 10,994,923 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,994,923 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Aug 29, 2024 · IPR2024-00496 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the Petition relied on an unmet and inadequately supported claim construction and did not show that Chang and Chang II teach or suggest all limitations of claims 1–6.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 12
- BurdenNot shown unpatentable
“Petitioner does not contend that the plain and ordinary meaning of “having” as recited in claim 1 is either “interconnected to” or “possessing.” See generally Pet. As discussed above, Petitioner contended, in the district court litigation, that “having” as recited in claim 1 rendered the claim “nonsensical” and, thus, indefinite. Ex. 1080, 13–14. And, the District Court considered whether “having” had the same meaning in the context of claim 1 of the ’899 patent as “interconnected to” or “possessing” and determined that these terms were not equivalent. Id. at 14. We agree with the District Court. Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’899 patent. C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“3 Moreover, our review of the docket from the district court litigation indicates that there has been considerable additional briefing and oral argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. “the claim is definite and, despite Petitioner’s assertion, Patent Owner has never sought to revise the claim. (Pet., 25.) Rather, Patent Owner has always maintained that a POSITA [(person of ordinary skill in the art)] would understand the term with reasonable certainty in view of the claims, specification, and prosecution history.” Prelim. Resp. 21 (footnote omitted); see also id. at 19 (“Specifically, a POSITA would understand that the plurality of USB ports the hub ‘has’ must include downstream ports.”). We do not adopt the claim construction upon which the Petition relies because it is not adequately supported. We apply the plain and ordinary meaning to the phrase “a USB port having a plurality of USB ports” as recited in claim 1.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’899 patent. C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,545,899 - Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentablePTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision
Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. 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 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed
“Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22
Patent outcomesUS 10,689,740 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,689,740 - PTAB · Aug 27, 2024 · IPR2024-00495 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR on claims 13, 14, and 18–20 for the asserted §103 ground based on Chang and Chang II; the Board found a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“the need for this second . . . Petition, the Board should decline to expend its finite resources considering it.” Prelim. Resp. 1. Patent Owner argues that “[n]either the substance nor the timing of [Patent Owner]’s claim interpretations justifies this second Petition.” Id. at 6. We disagree and determine that two petitions challenging claims of the ’420 patent are justified under the circumstances presented here. With regard to substance of the claim interpretations and merits of the challenge, the claim interpretations offered in the instant proceeding have no relation to the claims or the merits of the challenges that are the subject of the first Petition. As stated by Petitioner, “[t]he petition in IPR2024-00228 challenges claims 1-12 and 15-17” and “[t]here are no overlapping claims in these petitions.” PET’s Expl. 1. Petitioner argues, “[t]herefore, the petitions present materially different challenges, each to a unique subset of ’420 patent claims.” Id. We agree that, because of the uniqueness of the claim interpretations asserted in this proceeding that are not at all related to any of the claims challenged in the prior Petition or to any of the challenges asserted in the prior Petition, the instant, second Petition is justified.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“89–92. With regard to discretionary denial pursuant to Section 314(a), Petitioner states that it “hereby stipulates that, if the PTAB institutes this inter partes review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition.” Id. at 90. Our analysis under Section 314(a) is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).5 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Although Patent Owner cites the Director’s Memo and argues for discretionary denial under Section 314(a), Patent Owner fails to provide any reasoning or explanation as to why we should not follow the guidance of the Director. See Prelim. Resp. 4. Because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Section 314(a).” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“Our rule relating to claim construction provides that “[a]ny prior claim construction determination concerning a term of the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.” 37 C.F.R. 42.100(b). We have considered the District Court’s claim construction Order and Memorandum (Ex. 1080) that was 6 These alterations in original. timely made of record by Petitioner in this proceeding (Paper 11). Based on our independent review of the ’420 claims and specification, we agree with and adopt the reasoning and conclusion of the District Court that claim 13 should be corrected and rewritten as proposed by the Patent Owner and ordered by the District Court. Therefore, we construe claim 13 by twice replacing “hub” with –host— as shown in claim 13 as reproduced above. See Section I.D. (Challenged Claims) supra.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no additional claim terms require express construction. See, e.g., 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 7 Claim 20 depends indirectly from claim 18 and directly from claim 19. Ex. 1003, 12:42. 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 9,619,420
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.