- Motif Foodworks, Inc. v. Impossible Foods Inc.Institution deniedPTAB · Aug 7, 2023 · IPR2023-00322 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that any challenged claim was obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“sufficiently shown why a POSITA would have been motivated to produce a nucleic acid that encodes both (1) a heme-containing protein operably linked to a promoter element as well as (2) a Mxr1 transcriptional activator sequence as required by claim element 1[a] with a reasonable expectation of success.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion under 35 U.S.C. § 325(d) Patent Owner requests that the Board exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same or substantially the same prior art or arguments were previously presented to the Office. Prelim. Resp. 22. Because we deny institution on the merits, we do not reach Patent Owner’s § 325(d) argument.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,273,492 - Motif Foodworks, Inc. v. Impossible Foods Inc.Institution deniedPTAB · Aug 7, 2023 · IPR2023-00321 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution on all challenged claims because Petitioner failed to show a reasonable likelihood of prevailing on any asserted § 103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Moreover, Petitioner does not articulate a sufficient reasonable basis as to why a POSITA would have sought to create a single nucleic acid encoding both a transcriptional activator such as Mxr1 as well as a second exogenous nucleic acid. Rather, Petitioner’s arguments and evidence are directed to the general concept of providing a vector that encodes more than one gene of interest and do not address why one of the genes would encode a transcription factor, let alone a transcription factor such as Mxr1. Dr. Batt does identify some benefits from using a single vector to express “more than one heterologous gene sequence,” including (1) increased efficiency (i.e., only one transformation to introduce multiple heterologous gene sequences into a host cell) and (2) increased control (as use of such constructs affords a POSITA more control over the levels of the different gene’s respective expression levels, as double transfection events may lead to different levels of vector incorporation in a cell). See Ex. 1003 ¶ 128. Dr. Batt, however, does not provide any explanation as to how these benefits apply to a nucleic acid sequence encoding transcription factors such Mxr1. See e.g., id. ¶¶ 126–131 (discussing creation of a single expression vector comprising multiple gene sequences of interest, but providing no discussion of genes encoding transcription factors). Thus, Petitioner has not sufficiently shown 4 Sambrook was not provided as an Exhibit. Thus, it is unclear what particular “ample teachings” in Sambrook Petitioner relies upon.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion under 35 U.S.C. § 325(d) Patent Owner requests that the Board exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same or substantially the same prior art or arguments were previously presented to the Office. Prelim. Resp. 43–48. Because we deny institution on the merits, we do not reach Patent Owner’s § 325(d) argument.” slip op. at 26
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,689,656 - Berkeley Lights, Inc. v. The University Of British ColumbiaRehearing deniedPTAB · Jul 20, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Berkeley Lights’ rehearing request, finding no abuse of discretion in its prior decision that claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(d) (2022). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a 1 We further refer to Patent Owner’s Response (Paper 18, “PO Resp.”), Petitioner’s Reply to the Patent Owner Response (Paper 22, “Pet. Reply”), and Patent Owner’s Sur-reply (Paper 29, “PO Sur-reply”). decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“light of the background knowledge in the art. In particular, we found that Petitioner had not adequately shown that the background knowledge in the art would have been sufficient to inform a person of ordinary skill in the art how to apply the techniques such as “laser tweezers” that Dimov mentions briefly, in a way that would have allowed further analyses of cells outside Dimov’s device. See Dec. 29–31. We also found that Petitioner had not persuasively shown that modifying Dimov’s device to make its trenches accessible with a micropipette was within the background knowledge in the art at the time of the claimed invention. See Dec. 31–34.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner points to only one brief mention, in its Petition, of piercing the top layer of Dimov’s device to retrieve cells with a micropipette. Id. at 6 (citing Pet. 40). That argument was not backed by any evidence other than a conclusory statement by Dr. Meinhart repeating the argument in the Petition. Pet. 40; Ex. 1002 ¶ 120. We do not credit that testimony because it lacks factual support. Xerox Corp v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (the testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight). In particular, to the extent that Petitioner argues on rehearing that Dimov’s top layer could have been pierced successfully by a micropipette because it was only 40 microns thick, Petitioner did not properly make this argument during trial or provide adequate evidentiary support.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Although Dr. Meinhart briefly mentions this in his declaration (see Ex. 1039 ¶ 192), Petitioner has not shown that it made this argument during trial, except to the extent that Petitioner improperly incorporated it by reference from Dr. Meinhart’s declaration. See Reply 24 (citing Ex. 1039 ¶¶ 190–196); 37 CFR § 42.6(a)(3). In any event, we do not credit Dr. Meinhart’s testimony on this point because he provides no factual support. See Ex. 1039 ¶ 192; 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.”). As Patent Owner pointed out in its Sur-Reply, Dr. Meinhart acknowledged at deposition that increasing the spot size would have reduced the lateral gradient force of the levitation laser. PO Sur-reply 23 (citing Ex. 2013, 344:18–345:5). We agree with Patent Owner that “Dr. Meinhart . . . did not consider how this reduction in force would have affected the laser’s ability to levitate a cell in Park’s well successfully (especially with cultured cells through Park’s recirculation pattern).” Id.” slip op. at 12
§ 103 obviousnessPatents in suitUS 10,087,408 - PTAB · Jul 13, 2023 · IPR2023-00374 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 1, 2, and 7–10 on all asserted obviousness grounds based on Nixon, Nixon and Assadi, Badihi, and Badihi and Assadi.
RulingsInstitution decision- 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) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and integrity of the system are best served by denying or instituting review. Fintiv, Paper 11 at 6. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),5 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (emphasis omitted); see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes the stipulation provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for patent owner
“To define specific terms used to describe an invention, an inventor must do so “with reasonable clarity, deliberateness, and precision” and must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). As Patent Owner notes, the ’965 patent states that “[t]he term ‘effectively exposed’ is used herein to indicate that the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Ex. 1001, 6:48–51; Prelim. Resp. 9– 10. This language suggests that some electron flow in response to light is necessary for a region to be “effectively exposed.” But, as Petitioner notes, Pet. 31 n.5, the ’965 patent also says that” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Given the ambiguity in the present record, we do not agree with Patent Owner that the ’965 patent defines “effectively exposed” sufficiently clearly and precisely that we can conclude that it means “the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Instead, on the present record, we synthesize the different uses of the term within the Specification to arrive at a preliminary conclusion that the term means “having a semiconductor substrate that is thin enough to be transparent to visible light, thereby rendering the pixels of the light sensitive pixel regions capable of generating electron flow in response to light (photons) passing through the substrate.” For purposes of this decision, we adopt this construction of the term “effectively exposed,” but we encourage both parties to address the construction of this term during trial. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any additional terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,168,965 - PTAB · Jul 13, 2023 · IPR2023-00372 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review on all asserted § 103 grounds challenging claims 1–6, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“to deny institution where a petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure at 7. Here, Petitioner’s stipulation uses this language but is further limited “to the patent claim subject to the instituted IPR.” Pet. 87. We agree with Patent Owner that this stipulation is “narrower” than the stipulation “that was considered by the Board in Sotera,” because it adds further limiting language to the model Sotera stipulation. Prelim. Resp. 13. Accordingly, we do not find that this stipulation implicates the Interim Procedure’s prohibition against discretionary denial where a Sotera-type stipulation is presented. We do not agree with Patent Owner that the stipulation must be filed in district court. All the Interim Procedure requires is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Interim Procedure at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court. Thus, although Petitioner’s stipulation does not track the language of the model Sotera stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, in which all claims of the ’319 patent are challenged in the Petition. Accordingly, the fourth factor weighs against discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’319 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–1388 (Fed. Cir. 1992)). As Patent Owner notes, the ’319 patent states that the “term ‘effectively exposed’ is used herein to indicate that the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Ex. 1001, 6:52–55; Prelim. Resp. 10–11. This language suggests that some electron flow in response to light is necessary for a region to be “effectively exposed.” But, as Petitioner notes (Pet. 32 n.3), the ’319 patent also says that [t]he exposed backside surface of the semiconductor substrate is then subjected to the material erosion process . . . to thin the semiconductor substrate until the semiconductor substrate is transparent to visible light, thereby effectively exposing the light-sensitive pixel diffusion regions of the image sensor circuit through the backside surface. Ex. 1001, 4:63–5:4. This suggests that merely the transparency of the overlying structure to visible light is sufficient for the underlying structure to be “effectively exposed.” Given the ambiguity in the present record, we do not agree with Patent Owner that the ’319 patent defines “effectively exposed” sufficiently clearly and precisely that we can conclude that it means “the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Instead, on the present record, we synthesize the different uses of the term within the specification to arrive at a preliminary conclusion that the term means “having a semiconductor substrate that is thin enough to be transparent to visible light, thereby rendering the pixels of the light sensitive pixel regions capable of generating electron flow in response to light (photons) passing through the substrate.” For purposes of this decision, we adopt this construction of the term “effectively exposed,” but we encourage both parties to address the construction of this term during trial. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine we need not expressly construe any other claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,169,319 - PTAB · Jul 12, 2023 · IPR2023-00369 · APJ Kristina M Kalan · IPR · Institution
The Board instituted review on all asserted grounds, finding a reasonable likelihood that TSMC would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“to deny institution where a petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure at 7. Here, Petitioner’s stipulation uses this language but is further limited “to the patent claim subject to the instituted IPR.” Pet. 84. We agree with Patent Owner that this stipulation is “narrower” than the stipulation “that was considered by the Board in Sotera,” because it adds further limiting language to the model Sotera stipulation. Prelim. Resp. 10. Accordingly, we do not find that this stipulation implicates the Interim Procedure’s prohibition against discretionary denial where a Sotera-type stipulation is presented. We do not agree with Patent Owner that the stipulation must be filed in district court. All the Interim Procedure requires is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Interim Procedure at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court. Thus, although Petitioner’s stipulation does not track the language of the model Sotera stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, in which all claims of the ’169 patent are challenged in the Petition. Accordingly, the fourth factor weighs against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’169 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art “would have been a person having a Master’s degree in electrical engineering, material science, physics, or other related disciplines with at least three years of industry experience in integrated circuit design, layout, packaging or fabrication” and that a “greater level of experience may compensate for less education and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 66–68). Patent Owner “reserves the right to dispute Petitioner’s definition of a POSA if an IPR is instituted.” Prelim. Resp. 7. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner “does not believe the claim terms need to be construed to resolve the prior art issues presented in [the] Petition.” Pet. 10 (citing Ex. 1003 ¶ 70). Patent Owner “reserves the right to advance its own construction for any claim term should an IPR be instituted.” Prelim. Resp. 7. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,356,169 - PTAB · Jul 12, 2023 · IPR2023-00373 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, including claims 15–18 despite finding no reasonable likelihood of prevailing on those grounds.
RulingsInstitution decision- 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) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“argument. The Guidance Memo provides that “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 relevant grounds].” Guidance Memo 3. This is because, “[w]hen a petitioner stipulates not to pursue in a parallel district court proceeding [the relevant grounds], it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. All the Guidance Memo requires, therefore, is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Id. at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We are not persuaded that Petitioner sufficiently shows a reason to combine the teachings of Lee with those of Nagai. Petitioner directs us to the testimony of Dr. Giapis to support the argument that a person of ordinary skill in the art would have seen a benefit in constructing Lee’s image sensor using Nagai’s hydrogen diffusion control techniques. Pet. 69–70 (citing Ex. 1020 ¶ 151). Specifically, Dr. Giapis testifies that Lee’s image “sensors must store accumulated charge until it is read [and] hydrogen diffusion from the back-end processes will have an adverse effect on the front end, in particular on the sensor’s ability to retain charges.” Ex. 1020 ¶ 151. This testimony cites no sources or technical reasoning in support, and it replicates the Petition essentially word-for-word. Compare id. with Pet. 69–70. Thus, it is entitled to little or no weight. Xerox Corp. v. ByteMark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); 37 C.F.R. 42.65(a). Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the teachings of Lee with those of Nagai. Accordingly, Petitioner does not show a reasonable likelihood of prevailing on its argument that claim 15 would have been obvious in light of Nagai and Lee.” slip op. at 35
- Expert testimonyPetitioner expert discountedDecided for patent owner
“combine the teachings of Lee with those of Nagai. Petitioner directs us to the testimony of Dr. Giapis to support the argument that a person of ordinary skill in the art would have seen a benefit in constructing Lee’s image sensor using Nagai’s hydrogen diffusion control techniques. Pet. 69–70 (citing Ex. 1020 ¶ 151). Specifically, Dr. Giapis testifies that Lee’s image “sensors must store accumulated charge until it is read [and] hydrogen diffusion from the back-end processes will have an adverse effect on the front end, in particular on the sensor’s ability to retain charges.” Ex. 1020 ¶ 151. This testimony cites no sources or technical reasoning in support, and it replicates the Petition essentially word-for-word. Compare id. with Pet. 69–70. Thus, it is entitled to little or no weight. Xerox Corp. v. ByteMark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); 37 C.F.R. 42.65(a). Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the teachings of Lee with those of Nagai. Accordingly, Petitioner does not show a reasonable likelihood of prevailing on its argument that claim 15 would have been obvious in light of Nagai and Lee.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,431,455 - Motif Foodworks, Inc. v. Impossible Foods, Inc.Institution deniedPTAB · Jun 16, 2023 · IPR2023-00209 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “(i) a Bachelor of Science degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 5. Petitioner also asserts that a person of ordinary skill in the art could be “part of a team of food scientists, including flavor chemists.” Pet. 5 (citing Ex. 1003 ¶¶ 34–36; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶ 39). Patent Owner does not challenge Petitioner’s definition or offer its own. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’306 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the preamble of the challenged claims should not be found limiting, that the term “thereby imparting a beef-like aroma to the meat replica matrix” should not be limiting, and that the term “matrix” should be given its plain and ordinary meaning. Pet. 9–11. Petitioner also states that “[i]n parallel litigation, [Patent Owner] asserts that ‘no animal products’ covers bovine myoglobin, which is native to an animal (Bos taurus (cow)), even when produced in engineered yeast.” Pet. 11 (citing Ex. 1116 if the Board adopts Patent Owner’s infringement interpretation advanced in the parallel litigation. Pet. 11. Patent Owner disagrees that the preamble of the challenged claims and the term “thereby imparting a beef-like aroma to the meat replica matrix” are not limiting. PO Resp. 5–7. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“record, we are not persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have added Mottram’s precursors (e.g., cysteine/ribose) to Conrad’s grain/wheat meat in order to improve the “meaty flavor” and enhance the “meat-like” qualities of Conrad’s products. Conrad already addresses concerns regarding taste improvement of its grain/wheat meat by adding animal blood/hemoglobin to its product. Ex. 1013, 4:14–16. In addition, Conrad’s grain/wheat meat is intended to be mixed with actual meat, which, as Petitioner acknowledges, already contains cysteine and ribose. Ex. 1013, code (57), 1:32–40, 4:45–49, 5:23–41; Pet. 21. It is undisputed that these components present in actual meat enhance the meat-like aroma of products. Pet. 21; Prelim. Resp. 14. These facts undermine Petitioner’s assertion that a person of ordinary skill in the art would have looked to a different reference (i.e., Mottram) to add these same precursors to Conrad’s products. Furthermore, we agree with Patent Owner that Petitioner’s motivation to combine Mottram and Conrad is driven by hindsight. As Petitioner acknowledges, Conrad teaches that a suspended aqueous phase containing soluble proteins, salts, and sugars, is separated from its grain/wheat meat during manufacturing. Pet. 22–23; Ex. 1013, 2:1–46. Conrad explains that “[t]he suspended aqueous phase of starch granules can be used directly in the production of glue or in the production of sugars by hydrolysis in a way known per se.” Ex. 1013, 2:21–24. Conrad does not disclose adding the suspended aqueous phase, or any of its components, back into the grain/wheat meat. Nevertheless, Petitioner argues that a person of ordinary skill in the art would have added materials similar to those that were just removed from Conrad’s product back into it. This approach is the fact that the materials Petitioner suggests adding back into Conrad’s products correspond to the specific compounds recited in the claim further demonstrates that hindsight is driving Petitioner’s arguments. For all of these reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1, 14, and 27. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1, 14, and 27 are unpatentable as obvious in view of Conrad and Mottram, further in view of Crane or Proulx.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,039,306 - Motif Food Works, Inc. v. Impossible Foods, Inc.Institution deniedPTAB · Jun 16, 2023 · IPR2023-00208 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1 and 13. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1 and 13 are unpatentable as obvious in view of Conrad and Mottram, and further in view of Crane or Proulx. b) Dependent Claims 3–12 and 15–23 Claims 3–12 depend from independent claim 1, and claims 15–23 depend from independent claim 13. For its challenges of these claims, Petitioner relies on the arguments presented for independent claims 1 and 13. See, e.g., Pet. 30 (reciting “As explained above (claim 1)” in its analysis of claims 3 and 15), 44. Nothing in Petitioner’s analysis of the additional references relied upon for its challenges of the dependent claims cures the deficiencies discussed above regarding the proposed combination of Conrad and Mottram. Therefore, for the same reasons discussed above for independent claims 1 and 13, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 3–12 and 15–23 are unpatentable as obvious in view of Conrad and Mottram, further in view of Crane, Proulx, and Boye.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “(i) a Bachelor of Science degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 5. Petitioner also asserts that a person of ordinary skill in the could be “part of a team of food scientists, including flavor chemists.” Id. (citing Ex. 1003 ¶¶ 34–36; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶ 39). Patent Owner does not challenge Petitioner’s definition or offer its own. Prelim. Resp. 1–61. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’250 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’250 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“record, we are not persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have added Mottram’s precursors (e.g., cysteine/ribose) to Conrad’s grain/wheat meat in order to improve the “meaty flavor” and enhance the “meat-like” qualities of Conrad’s products. Conrad already addresses concerns regarding taste improvement of its grain/wheat meat by adding animal blood/hemoglobin to its product. Ex. 1013, 4:14–16. In addition, Conrad’s grain/wheat meat is intended to be mixed with actual meat, which, as Petitioner acknowledges, already contains cysteine and ribose. Ex. 1013, code (57), 1:32–40, 4:45–49, 5:23–41; Pet. 19. It is undisputed that these components present in actual meat enhance the meat-like aroma of products. Id.; Prelim. Resp. 14. These facts undermine Petitioner’s assertion that a person of ordinary skill in the art would have looked to a different reference (i.e., Mottram) to add these same precursors to Conrad’s products. Furthermore, we agree with Patent Owner that Petitioner’s motivation to combine Mottram and Conrad is driven by hindsight. As Petitioner acknowledges, Conrad teaches that a suspended aqueous phase containing soluble proteins, salts, and sugars, is separated from its grain/wheat meat during manufacturing. Pet. 20; Ex. 1013, 2:1–46. Conrad explains the “[t]he suspended aqueous phase of starch granules can be used directly in the production of glue or in the production of sugars by hydrolysis in a way known per se.” Ex. 1013, 2:21–24. Conrad does not disclose adding the suspended aqueous phase, or any of its components, back into the grain/wheat meat. Nevertheless, Petitioner argues that a person of ordinary skill in the art would have added the materials that were just removed from Conrad’s product back into it. This approach is counterintuitive and indicative of reasoning based on hindsight. Moreover, the fact that the materials Petitioner suggests adding back into Conrad’s products correspond to the specific compounds recited in the claim further demonstrates that hindsight is driving Petitioner’s arguments. For all of these reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1 and 13. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1 and 13 are unpatentable as obvious in view of Conrad and Mottram, and further in view of Crane or Proulx.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,013,250 - Motif Food Works, Inc. v. Impossible Foods, Inc.Institution deniedPTAB · Jun 16, 2023 · IPR2023-00207 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “(i) a B.S. degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 12. Petitioner also asserts that a person of ordinary skill in the could be “part of a team of food scientists, including flavor chemists.” Id. at 12–13 (citing Ex. 1003 ¶ 37; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s definition or offer its own. Prelim. Resp. 1–52. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’241 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’241 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“begin with, Petitioner’s argument that “Brown invites a [person of ordinary skill in the art] to modify its composition to add ‘amino acids’ which result in ‘[c]haracteristic flavor and fragrance components . . . similar[] to meat’” is incorrect. Id. at 30. Brown does teach that “[c]haracteristic flavor and fragrance components are mostly produced during the cooking process by chemical reactions [between] molecules including amino acids.” Ex. 1012 ¶ 295. But Brown does not teach adding amino acids to its composition. Instead, it teaches that amino acids and other molecules are present in its composition, allowing its composition to produce “flavor and fragrance components . . . during the cooking process” in a way that is “similar[] to meat.” Id.; see id. ¶ 362 (“in some embodiments, the characteristic flavor and fragrance components are produced during the cooking process by chemical reactions involving amino acids”).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,224,241
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.