- PTAB · Nov 14, 2016 · IPR2015-01243 · APJ Grace Karaffa Obermann · IPR · Final written decision
Petitioner failed to prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Riley’s testimony that Fohr effectively teaches that both lithium-based battery cells and capacitors can achieve the 20 Amp Limitation, on a theory that “it’s actually the tool that draws the power” and “the right lithium cell” would be “a drop in replacement for this application.” Ex. 2169, 121:12–16 (Dr. Riley’s deposition testimony); Resp. 17. Dr. Riley readily admitted an unfamiliarity with capacitors, and identified no suitable “drop in” ready lithium cells available at the time of the invention. Ex. 2169, 121:11–122:4 (“[I]f I had a cell that could do similar things, I’d certainly swap it in there.”). On that point, we find more credible Dr. Blomgren’s testimony that “there is no guarantee that a given pack of battery cells can provide the current that a tool tries to draw.” Resp. 17 (citing Ex. 2147 ¶ 60).” slip op. at 13
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,944,173 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00582 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the three proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,149,124 - PTAB · Aug 25, 2014 · IPR2014-00588 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,466,795 - PTAB · Jun 26, 2014 · IPR2014-00560 · APJ Hyun J Jung · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00560 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties stated in their joint motion that they have settled their dispute and have reached agreement to terminate this inter partes review. Paper 10, 2. Patent Owner has not yet filed a preliminary response or a waiver under 37 C.F.R. § 42.107. We are persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and” slip op. at 2
NonePatents in suitUS 5,592,555 - PTAB · May 2, 2014 · IPR2014-00229 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In the motions to terminate, the parties state that they have settled their dispute with respect to the patents involved in the proceedings, and have reached agreement to terminate these proceedings. Paper 9, 1. Furthermore, the joint motion indicates that the parties have agreed to dismiss Petitioner and other real parties-in-interest identified by 2 IPR2014-00229, Paper 9; IPR2014-00230, Paper 10, IPR2014-00231, Paper 9. 3 IPR2014-00229, Ex. 1047; IPR2014-00230, Ex. 1047, IPR2014-00231, Ex. 1047. 4 IPR2014-00229, Paper 10; IPR2014-00230, Paper 11, IPR2014-00231, Paper 10. 5 IPR2014-00229, Paper 7; IPR2014-00230, Paper 8; IPR2014-00231, Paper 7.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,131,121 - PTAB · May 2, 2014 · IPR2014-00230 · APJ Stacey G White · IPR · Order
The Board granted the joint motions to terminate the proceedings as to all parties and granted the requests to keep the settlement agreement confidential.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner;” slip op. at 3
NonePatents in suitUS 6,108,704 - PTAB · May 2, 2014 · IPR2014-00231 · APJ Stacey G White · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“The instant proceedings are in the preliminary stage. Patent Owner has filed preliminary responses in each of the instant proceedings.5 The Board, however, has not determined whether trial will be instituted for any of the requests for inter partes review.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the parties’ arguments and the early stage of these proceedings, we agree with the parties that terminating the instant proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. The Board is persuaded that, under these circumstances, it is appropriate to enter judgment6 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are granted, and that these proceedings are hereby terminated as to all parties, including Petitioner and Patent Owner; FURTHER ORDERED that the parties’ joint requests that the settlement agreement (Ex. 1047) be treated as business confidential information, kept separate from the file of the involved patents, and made available only to Federal 6 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Government agencies on written request, or to any person on a showing of good cause under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted.” slip op. at 3
NonePatents in suitUS 6,009,469 - PTAB · Apr 16, 2014 · IPR2013-00435 · APJ Bryan F Moore · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00435 without a final written decision after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“proceeding, along with a true copy of their written settlement agreement, made in connection with the termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 18; Ex. 1010. The parties also filed a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 19. The joint motion to terminate indicates that the settlement agreement requires the parties to terminate this inter partes review and the related district court actions involving U.S. Patent No. 8,449,289. Paper 18 at 2.” slip op. at 2
NonePatents in suitUS 8,449,289 - PTAB · Mar 25, 2014 · IPR2013-00497 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion to terminate IPR2013-00497 and terminated the proceeding without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the facts of this case, it is appropriate to enter judgment1 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. It is ORDERED that the joint motion to terminate IPR2013-00497 is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 2
NonePatents in suitUS 8,305,840
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.