- PTAB · Apr 11, 2023 · IPR2022-01478 · APJ Christopher M Kaiser · IPR · Institution
Instituted review of claims 1–30 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’907 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–30 of the ’907 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson7 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“(“POSITA”) would have had “a Bachelor’s level college degree in Mechanical, Electrical, Materials or Chemical Engineering, or Science, including Chemistry or Physics or a related field and three to four years of training and experience in the design of electrochemical cells and batteries.” Pet. 5–6. Petitioner further contends that “[a]dditional work or research experience can substitute for a lesser or different education, and vice-versa.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner requests that all claim terms other than “disposed along” be afforded their plain and ordinary meaning, as understood by a POSITA at the time of the purported invention.” Pet. 9. Patent Owner asserts that its arguments “do not hinge on the outcome of an actual controversy about any claim construction.” Prelim. Resp. 12 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,907 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Apr 11, 2023 · IPR2022-01477 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would be unpatentable, including a sufficient motivation to remove Brown’s stacking mechanism.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 13. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, the “non-stacking variant” cited by Petitioner, Pet. 15, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Ex. 1005, 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 15 (citing Ex. 1002 ¶ 54); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,907 - PTAB · Apr 11, 2023 · IPR2022-01473 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one claim based on Higuchi and Kobayashi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’904 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–25 of the ’904 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In determining whether to exercise discretion to deny institution under 35 U.S.C. § 314(a), the Board considers the trial date in related litigation as part of an assessment of all relevant circumstances of the case, including the merits, in an effort to balance considerations such as system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in part, on § 314(a) because the parallel district court proceeding was scheduled to finish before the Board reached a final decision). In particular, the Board evaluates the following factors (“Fintiv factors”): 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv Order, 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson10 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; 10 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to whether the same or substantially the same art or arguments were previously presented to the Office, and factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id. 2. Examination of the ’904 Patent Although Patent Owner argues that the Petition asserts references previously in the Patent Office’s records, Patent Owner does not argue that the Examiner previously considered the combinations of art that the Petition raises, namely, the combination of Brown, Higuchi, and Fujita or the combination of Higuchi and Kobayashi. Resp. 33–34. And, to the extent that Patent Owner argues that substantially the same art was previously presented, the record does not persuasively establish how the art is substantially the same or how the art is now relied upon in the same manner. Resp. 33–34. As such, the record does not establish that the ’904 examination previously considered the art in a similar or cumulative way or to the same extent. As such, at least Becton, Dickinson factors (a), (b), (c), and (d) weigh against denial of institution. 3.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a singlecell battery. Id. at 3:1– 18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explain why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 19 (citing Ex. 1002 ¶ 57–59); see Ex. 1005, 1:11–18, 3:1–18. Mr. Juzkow’s testimony in this regard repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing significant reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Because Petitioner relies on its modified Brown with respect to Grounds 1A to 1E, we also conclude that that Petitioner does not, on this record, demonstrate a reasonable likelihood of prevailing in showing that any of claims 1–25 would have been obvious over the combined teachings of Brown, Higuchi, and Fujita. Pet. 18–31. Because of our determination regarding ground 2, however, this conclusion does not prevent institution. See SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). We invite the parties to develop the issue further at trial to the extent permitted under our rules and applicable law.14” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,904 - PTAB · Mar 14, 2023 · IPR2022-01476 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–24, finding a reasonable likelihood that the asserted obviousness combinations would render at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“35 U.S.C. § 314(a), the Board considers the trial date in related litigation as part of an assessment of all relevant circumstances of the case, including the merits, in an effort to balance considerations such as system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in part, on § 314(a) because the parallel district court proceeding was scheduled to finish before the Board reached a final decision). In particular, the Board evaluates the following factors (“Fintiv factors”): 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a Bachelor’s level college degree in Mechanical, Electrical, Materials or Chemical Engineering, or Science, including Chemistry or Physics or a related field and three to four years of training and experience in the design of electrochemical cells and batteries.” Pet. 6. Petitioner further contends that “[a]dditional work or research experience can substitute for a lesser or different education, and vice-versa.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,905 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01474 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–24 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1002 ¶ 50); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Accordingly, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that independent claim 1, and claims 2, 4–6, 9–11, 13–15, 18, 23, and 24 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Brown, Higuchi, and Fujita.” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,905 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01486 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution for claims 14–25 because Petitioner did not show a reasonable likelihood that either asserted obviousness combination taught the force-fitting connection limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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.”” slip op. at 2
- BurdenDenied
“top casing in an overlapping area, the top casing is disposed radially inward of the cup casing in the overlapping area, and the housing cup and the housing top are held together by a force-fitting connection.” Ex. 3001, 1:37–41. Independent claim 23 recites an identical limitation. Id. at 2:55– 59. The remaining challenged claims each depend, directly or indirectly, from one of these two claims. Id. at 1:47–2:29, 4:1–16. Accordingly, all of the challenged claims include a limitation requiring that “the housing cup and the housing top [be] held together by a force-fitting connection.” See 37 C.F.R. § 1.75(c). To show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests a “housing cup” and a “housing top” that “are held together by a force-fitting connection.” As discussed above, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS A. Claim Construction Petitioner does not propose an express construction of any claim term, and contends that the claims “should be given their ordinary and customary meaning.” Pet. 20. Patent Owner agrees that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without expressly construing any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe 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 9
- Expert testimonyPetitioner expert discountedOther
“cites to four paragraphs of Mr. Juzkow’s declaration, without discussing the testimony or providing any statement of its relevance. Pet. 31 (citing Ex. 1002 ¶¶ 402–405). It is unclear whether the cited testimony is intended to support the Kobayashi argument, the Brenner argument, or both. Id. In any case, the first cited paragraph does not contain any testimony supporting either of Petitioner’s arguments, instead merely directing the reader to “§X.A.1.f” of Mr. Juzkow’s declaration, without specifying the page numbers or paragraph numbers where that section can be found. Ex. 1002 ¶ 402. Section IX.A.1.f appears to include eleven additional paragraphs covering six pages and mostly to discuss a reference, Kaun, that is not at issue in this proceeding. Id. ¶¶ 125–135. The other three paragraphs cited in the Petition generally just parrot the conclusory language in the Petition and are of limited persuasive value. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Mr. Juzkow’s testimony addresses only whether there is a force-fitting connection, not whether the button cell is held together by the forces. Ex. 1002 ¶¶ 403–405.” slip op. at 15
Claim constructionPatents in suitUS 9,496,581 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Mar 14, 2023 · IPR2022-01487 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 9–16 were obvious over either asserted ground.
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) (2020). 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.”” slip op. at 2
- BurdenNot shown unpatentable
“crimping or beading-over process of closing a battery casing, Petitioner offers only attorney argument for the proposition that such a process creates a battery casing that is “held together by a force-fitting connection.” Id. But “[a]ttorney argument is not evidence.” Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“27–28. Patent Owner responds that no term requires construction at this stage of the proceeding. Prelim. Resp. 20. For the reasons discussed below, we are able to determine whether to institute trial without construing “insulating means,” so we do not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe 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 9
Claim constructionPatents in suitUS 9,799,913 - PTAB · Feb 14, 2023 · PGR2021-00030 · APJ Christopher M Kaiser · PGR · Rehearing
The Board granted Petitioner’s third rehearing request and instituted PGR of claims 1–5, 9, and 10, finding the petition presented compelling evidence of unpatentability.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“The Guidance Memo defines “[c]ompelling, meritorious challenges” as “those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. The phrase “plainly lead to a conclusion that one or more claims are unpatentable” was further clarified in the Director’s precedential decision in OpenSky Industries, LLC v. VLSI Technology, LLC, as only satisfied when “it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” IPR2021-01064, Paper 102 at 49–50 (PTAB Oct. 3, 2022) (Decision by the Director) (precedential). Thus, a compelling challenge is one “in which the 8 evidence, if unrebutted in trial, would” render it “highly likely that the petitioner would” show “that one or more claims are unpatentable by a preponderance of the evidence.” Id.; Guidance Memo 4.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitutedInstituted
“one claim is unpatentable and that one of Petitioner’s challenges presents strong merits—are sufficient to show that the likelihood of Petitioner’s success at trial falls within the uncertain bounds of “highly likely.”5 Accordingly, we determine that the Petition “presents compelling evidence of unpatentability” as that phrase is defined in the Guidance Memo and the OpenSky decision. For this reason, we erred by “discretionarily deny[ing] institution in view of [the] parallel district court [proceeding].” Guidance Memo 2. We grant Petitioner’s request for rehearing and do not exercise discretion to deny institution. We acknowledge that instituting review in this proceeding when the district court already has reached its result requires the parties to duplicate the efforts they have put into the district court proceeding and requires us to duplicate the efforts of the district court and its jury. We are not insensitive to the fact that such a situation “can increase, rather than limit, litigation costs,” contrary to what “Congress designed the America Invents Act (AIA) 5 Our determination that Petitioner is “highly likely” to succeed in proving at least one claim unpatentable on at least one ground should not be understood to mean that we have prejudged the outcome of the trial. In particular, under OpenSky and the Guidance Memo, a compelling challenge is one “in which the evidence, if unrebutted in trial, would” render it “highly likely that the petitioner would” show “that one or more claims are unpatentable by a preponderance of the evidence.” OpenSky, IPR2021-01064, Paper 102 at 49–50; Guidance Memo 4. Thus, in making our compelling-challenge determination, we are not permitted to consider any rebuttal evidence that has been entered, let alone any rebuttal evidence that may be entered during the trial. Our final determination will not be so limited and will be made based upon the full arguments and evidence developed during the trial. 11 post-grant proceedings” to accomplish. Guidance Memo 1. But the Guidance Memo is unequivocal: “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Id. at 2. In the absence of such discretionary denial, we institute trial for the reasons discussed in the Institution Decision. Inst. Dec. 16–41.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likely” one, are not entirely clear, and this case likely falls somewhere near that boundary. We note first that the standard for instituting trial in a post-grant review requires a showing that “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). We previously held that this standard had been met in the present case. Inst. Dec. 3. In particular, we determined that Petitioner had made the necessary “threshold showing” as to its arguments that (1) “the claimed subject matter [was] not enabled for the full scope as claimed,” and (2) “Ogitani anticipates at least one of the challenged claims.” Id. at 26, 40. Moreover, “[w]e previously described ‘Petitioner’s argument that the claims lack enablement’ as presenting ‘strong merits.’” Second Denial Dec. 6 (quoting Inst. Dec. 3). slip op. at 9
Discretionary denialPatents in suitUS 10,808,039 - PTAB · Feb 10, 2023 · IPR2022-01347 · APJ Donna M Praiss · IPR · Institution
The Board instituted inter partes review of claims 1, 3–8, 11, and 12 on the asserted grounds, finding a reasonable likelihood of obviousness over Plante with Cho and over Plante with Patterson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any argument not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1, 3– 8, 11, and 12 of the ’646 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree that it is not necessary for us to construe this claim term at this stage of the proceeding because neither party asserts that it is material to the asserted grounds in the Petition. See Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 10
- Skill levelOther
“Patent Owner agrees that a POSITA would have a combination of mechanical and chemical/biological skill sets, but disagrees that a POSITA would necessarily collaborate as team members because a POSITA could have both the relevant mechanical and chemical skills. Prelim. Resp. 12–13 (citing Ex. 2001 ¶ 31). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar and primarily differ in the attribution of the level of skill being to a person or to a team of people. In addition, neither party asserts that the obviousness analyses in this case would turn on which definition is adopted. See Pet. 17 (Petitioner stating that the “Petition does not turn on this specific definition of the level of ordinary skill.”).” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In accord with Clay, a reference is reasonably pertinent if it logically would have commended itself to an inventor’s attention. The ’646 patent fairly describes the user of its sample container system as unskilled and it fairly describes the concerns to be addressed as the safe storage of a material in a receptacle in the cap when it describes the “home-base sample collection . . . allow[ing] for a much wider range of research options available” and existing sample collection devices having pierceable membranes as “a safety hazard to the sample donor as any wrong manipulation can lead to piercing the membrane and exposing the [potentially toxic] solution.” Ex. 1001, 2:53–58, 4:16–35. Moreover, the ’646 patent explicitly states that “there is a need for safer and easier to use sample collection devices.” Id. at 4:35–36. Similarly, Cho describes its device as “contain[ing] two kinds of materials in two separate spaces” that “communicate with each other as necessary” and the two materials mix together “using only a simple action.” Ex. 1004, 1:3–6, 1:25–27. Since sample collection containers and consumer beverage bottles are both containers for home-based use by the general public for combining an ingredient in a cap reservoir with the contents of the container, with similar concerns of ease of use, safety, and sealed reservoirs, one of skill in the art would have logically looked to other containers, such as the beverage bottle art, to solve problems related to ease of use, safety, and sealed reservoirs for sample collection containers. Compare Ex. 1004, 1:26–27 (describing the need to “mix two materials together . . . using only a simple action”), 1:29– 2:3 (describing the need to “maintain[] a good seal . . . so that the additive is not oxygenated or spoiled and the additive storage container can be easily applied”) with Ex. 1001, 4:1–8 (describing as an object that the “sample collection device may allow easy and safe collection of a donor specimen . . . with no risk of exposure of the donor to the toxic solution [and] allow the donor to safely mix the toxic solution and the specimen . . . with no risk of exposure of the donor to . . . the toxic solution nor any other hazard”), 4:29–31 (describing existing pierceable membrane devices that “can represent a safety hazard to the sample donor as any wrong manipulation can lead to piercing the membrane and exposing the solution”).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,002,646 - Liquidia Technologies, Inc. v. United Therapeutics CorporationRehearing deniedPTAB · Feb 2, 2023 · IPR2021-00406 · APJ Christopher M Kaiser · IPR · Rehearing
Rehearing was denied; claims 1–8 remain unpatentable because conference distribution established Voswinckel JESC and Voswinckel JAHA as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the abuse of discretion standard. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, reply, or a sur-reply.” Id. An abuse of discretion may be found where a decision “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)). D. We Overlooked Patent Owner’s Argument Patent Owner is correct that its argument that the Ghofrani and Sulica research aids were dated after May 15, 2005, appeared in the Sur-Reply. Sur-Reply 9–11. Patent Owner also is correct that we overlooked this argument in relying on these research aids as supporting that Petitioner had established that Voswinckel JESC and Voswinckel JAHA were prior art to the ’793 patent. Final Dec. 11–12; Paper 81, 2 (“the Board’s analysis did not consider whether the research aids themselves were available prior to the critical date”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Under at least some circumstances, a reference may be a printed publication under § 102(b) if it was “displayed to the public,” even if it “was not later indexed in any database, catalog, or library.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). There are several factors relating to whether such a display is sufficient to constitute a printed publication, including “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. In addition, distribution of a reference at a professional conference may, under at least some circumstances, constitute sufficient dissemination to show public accessibility. Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1375–80 (Fed. Cir. 2018); Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380–83 (Fed. Cir. 2018).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether the Voswinckel JESC and Voswinckel JAHA references qualify as prior art” and in particular “whether the Voswinckel JESC and Voswinckel JAHA references were publicly accessible by way of their presentation and/or inclusion in distributed materials, such as at a conference.” Paper 81, 3. As discussed above, we find that both references were distributed sufficiently at professional conferences to be publicly accessible at the time of those conferences. By virtue of this public accessibility, both Voswinckel JESC and Voswinckel JAHA were printed publications early enough to qualify as prior art under 35 U.S.C. § 102(b). G. Asserted Obviousness over ’212 Patent, Voswinckel JESC, and Voswinckel JAHA Petitioner argues that claims 1–8 would have been obvious over the combination of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA. Pet. 30–46. As discussed above, Petitioner has shown by a preponderance of the evidence that both Voswinckel JESC or Voswinckel JAHA qualify as prior art. Accordingly, we do not disturb the obviousness analysis in the Final Written Decision, which relies on the prior-art status of Voswinckel JESC and Voswinckel JAHA. Final Dec. 12–35. slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,716,793
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.