- Sunspec Alliance v. Tigo Energy, Inc.No claims unpatentablePTAB · Jan 26, 2023 · IPR2021-01286 · APJ Julia Heaney · IPR · Final written decision
The Board held that claims 1, 5–7, 12, and 13 were not shown unpatentable because the cited art did not disclose the required predetermined number of allowed skips.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). Patent Owner does not challenge Petitioner’s proposed level of skill for a person of ordinary skill in the art. Ex. 2003 ¶ 25. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’321 patent and the prior art of record.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“Having considered the parties’ positions as to construction of the term “skips” and applicability of the definition of “skips” set forth in the ’321 specification (Ex. 1001, 9:36–37), we construe the term “skips” to mean “the event of missing a communication or pulse.” We adopt the definition set forth in the ’321 specification because patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We determine that, for purposes of this Decision, no other claim term requires express construction. See, e.g., Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered the record as a whole, we find that Moine does not disclose the “predetermined number of allowed skips” limitation. We do not agree with Petitioner that Moine’s disclosure of determining whether a “skip” (i.e., the event of missing a communication or pulse, as we have construed that term supra) has occurred, meets the challenged claims’ requirement of determining communication has been interrupted “for a time period longer than the predetermined number of allowed skips.” See Pet. Reply 14–15. As explained below, we determine that the “predetermined number of allowed skips” limitation does not encompass zero skips, or a mere interruption in communication from the controller, as described in Moine.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“2. Analysis Petitioner argues that to the extent the Board finds Moine’s receiver 5 is not a “watchdog unit,” Kronberg discloses a watchdog unit, as embodied in Figure 1. Pet. 25 (citing Ex. 1006, 2:30–32, Fig. 1). Petitioner contends a person of ordinary skill in the art would have been motivated to use Kronberg’s watchdog to implement Moine’s receiver to achieve a predictable outcome, because watchdog timers were a well-known technique for detecting malfunctions, and the output of Kronberg’s watchdog could be provided to the switch 4 of Moine, to open and power down Moine’s circuit. Id. at 26–28 (citing Ex. 1002 ¶¶ 79–85; Ex. 1006, 1:53–55, 3:38–42, 4:9–12; Ex. 1013, 1269). Petitioner “does not rely on Kronberg to remedy any failure of Moine to disclose the ‘skips’ limitations.” Pet. Reply 19. As discussed above, we find that Petitioner fails to adequately demonstrate that Moine discloses the “predetermined number of allowed skips” limitation of claims 1 and 12. See supra § II.D.2. Accordingly, because Petitioner does not rely on Kronberg to remedy this deficiency in Moine, Petitioner has not demonstrated by a preponderance of the evidence that claims 1 and 12 would have been unpatentable over the combination of Moine and Kronberg.” slip op. at 23
Patent outcomesUS 8,933,321 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,933,321 - Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentablePTAB · Aug 17, 2022 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Final written decision
The Board found that Tennant did not prove claims 13, 14, and 17–27 unpatentable because the asserted references did not establish the claimed microbubbles and nanobubbles, and the obviousness combinations were inadequately supported.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states, for “purposes of this proceeding, PO does not challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Because patentee has acted as its own lexicographer, and because Petitioner agrees that the definition provided in the specification is the preferred construction, we adopt the construction of “nanobubble” provided in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). Namely, we construe “nanobubble” as “a bubble with a diameter less than that necessary to break the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any additional language to our construction, as proposed by Petitioner, because the additional quoted sentence in the specification appears to describe an effect of nanobubbles on the appearance of water when nanobubbles are present, rather than define the nanobubbles themselves. On this record, we determine that no other claim terms require express construction.” slip op. at 14
- BurdenDecided for patent owner
“We disagree that our Institution Decision established a prima facie case that Petitioner met its burden at the Final Written Decision stage. An affirmative decision on institution is a determination that Petitioner has shown, on the record at that stage in the proceeding, that Petitioner has a reasonable likelihood of prevailing on its arguments as to at least one challenged claim. Dec. 40; 35 U.S.C. § 314(a). To prevail in an instituted inter partes review, however, 35 U.S.C. § 316(e) requires Petitioner to meet “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial . . . . The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.”). To state that our Institution Decision established a prima facie case that Petitioner was correct would be erroneous, as such a position conflates different burdens required of Petitioner and, in doing so, would have us improperly give Petitioner an advantage in the actual trial culminating in a final written decision. Fan Duel, 966 F.3d at 1341–42.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“On this complete record, we find that Petitioner’s testing does not sufficiently demonstrate that Wikey inherently discloses nanobubbles. Pet. 22–29. Petitioner apparently had the ability to test for the express disclosure of nanobubbles in its Wikey-based apparatus, but did not do so. Sur-Reply 2–3. Patent Owner points out that nanobubbles, which Petitioner’s expert indicated were on the order of 0.1 microns, are detectable using available technology that Petitioner knew of and had used in the past. Id. However, Petitioner’s expert acknowledged that he did not do any testing that would determine whether nanobubbles were formed. Id. at 7 (citing Ex. 2172, 70:1–4). Petitioner’s reliance on milkiness and supersaturation to demonstrate the presence of nanobubbles is also unsupported. Petitioner argues that milky appearance equals supersaturation (Reply 9 (citing Ex. 1101, 9:38– 50)), and also that milky appearance equals nanobubbles (id. (citing Ex. 1101, 4:14–15)); the inference Petitioner apparently wants us to draw is that supersaturation equals nanobubbles. Patent Owner, however, persuasively argues that dissolved oxygen content over 100% does not prove the water is milky. PO Resp. 25–26; Sur-Reply 6–7; see also Tr. 13:24–26 (Petitioner’s counsel agreeing that “you can have supersaturation without milkiness”). Patent Owner also demonstrates that supersaturation does not necessarily mean that nanobubbles are present. PO Resp. 26; Sur-Reply 7; Ex. 2172, 76:9–14, 77:23–78:21. Thus, Petitioner’s argument based on supersaturation equaling nanobubbles because milkiness equals both breaks down because milkiness does not necessarily equal either. Accordingly, we determine that Petitioner’s arguments and testing fail to show that Wikey inherently discloses nanobubbles.” slip op. at 28
Patent outcomesUS RE45,415 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Live Power Intelligence Company Na, LLC v. Genscape Intangible Holding, Inc.No claims unpatentablePTAB · May 27, 2020 · IPR2019-00189 · APJ Wesley B Derrick · IPR · Final written decision
Claims 1, 9, and 11 were not shown unpatentable under either § 103 ground because the petitioner did not establish that the combinations taught or suggested transmission to an end user.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Absent opposition from Patent Owner, we adopt Petitioner’s description of the level of ordinary skill in the art because it is consistent with the level of skill reflected in the Specification and the asserted prior art references. In that regard, and supporting our determination of the level of ordinary skill in the art, we determine that the prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The cited portions of the Specification are generally consistent with Petitioner’s position. See Phillips, 415 F.3d at 1315 (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term.’”). For example, the ’000 patent states that “[t]he central computing facility receives communications from all of the remote apparatuses monitoring a facility, facilities, line, or lines under measurement,” which is consistent with a “central computing site” or “central facility” being a single location. Ex. 1002, 3:35–36. The prosecution history includes limited discussion of the concept of a central station. Ex. 1010, 120–121, 134, 146, 163, 169–170. For example, the Examiner determines that a “ground station [disclosed in cited prior art] includes provisions for conversion of data to the form and parameters required by the central station” (id. at 120–121, 146, 163) and applicant contests the Examiner’s position (id. at 134, 169–170), but the limited discussion is not particularly directed to the meaning of “central station” as being a single location. For purposes of this Decision, we maintain our construction from the Institution Decision—construing the terms “central computing site” and “central facility” to mean a “single physical location distinct from monitors”—as this construction is consistent with the ordinary meaning of these terms, the portions of the written description of the ’000 patent cited by Petitioner, and the prosecution history of the ’000 patent.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“In sum, the deficiencies outlined above undercut Petitioner’s position that the combined prior art teaches or suggests the inventions of the challenged claims. The conclusory statements by Petitioner and Dr. Olsen as to the recited end user, as discussed above, fail to address how the relied upon element in Fernandes, i.e., the SCADA receiver, meets the recited limitation of transmitting to an “end user,” and are thus insufficient to satisfy Petitioner’s burden of proving obviousness.7 Magnum Oil Tools, 829 F.3d at 1380–81. Accordingly, we determine that Petitioner has not carried its burden to present sufficient evidence and support that the combination of Libove, Blatt, and Fernandes teaches or suggest limitations 1[G], 9[G], and 11[G].” slip op. at 23
Patent outcomesUS 6,714,000 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,714,000
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.