- Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentablePTAB · Jul 6, 2022 · IPR2021-00413 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–4 and 9–16 are unpatentable as obvious over Finegan and Safyan; claims 17 and 18 are unpatentable as obvious over Finegan, Safyan, and Tipton.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“have had “a mechanical engineering or equivalent degree and/or approximately four years of experience designing food service equipment,” as well as “an understanding of heat transfer concepts.” PO Resp. 10 (citing Ex. 2027 ¶ 71) Patent Owner also contends: “Additional education may substitute for experience and significant experience in the food service equipment industry may substitute for formal education.” Id. 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. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill both Petitioner and Patent Owner set forth are based on an engineering degree and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’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 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The parties did not provide us with an express claim construction of “adjacent” from the district court (see Ex. 2019, 10 (district court expressly construing only the term “insulative air gap”)), but the Federal Circuit’s opinion characterized the district court’s understanding of “adjacent” as follows: “the district court appeared to understand the claims as requiring Finegan, for anticipation purposes, to teach ‘two immediately adjacent pans within a single module that can be maintained at different temperatures.’” Ex. 2050, 10. As such, the Federal Circuit explained, “both parties state that the district court adopted [Patent Owner’s] argument that the adjacency limitation requires the wells to touch.” Id. The Federal Circuit determined that the district court “clearly erred” in finding no substantial merit as to whether Finegan discloses the adjacent wells limitation because, in part, the district court relied on an “overly narrow understanding of ‘adjacent.’” Id.; see also id. at 2 (“the district court relied on an erroneous claim construction and misread the Finegan reference”). The Federal Circuit also did not explicitly construe the term “adjacent,” but stated that the district court’s “constricted understanding of ‘adjacent’ is at odds with the patents’ disclosure, which describes a ‘distance D1’ ‘between adjacent wells,’ ‘with D1 preferably being approximately three inches.’” Id. at 10 (citing Ex. 1001, 3:46–52). “Given the specification explicitly states that adjacent wells preferably have a distance between them,” the Federal Circuit held that the district court’s “finding that Finegan’s pans 18A and 18B are not adjacent, or next to, each other” “cannot be sustained.” Id. (citing Ex. 1001, 3:46–52). Having considered the parties’ arguments and evidence, the district court’s approach, and the Federal Circuit opinion, we adopt Petitioner’s construction of “adjacent” as “next to.” Patent Owner’s position is grounded in part on a calculation that “only works if the space between adjacent wells is measured from the interior walls of adjacent wells, and the exterior walls of the adjacent wells are abutting.” PO Resp. 20–21. As discussed above, the meaning of “wells” in the context of the ’761 patent includes both interior walls 22 and, if present, exterior walls 30. Patent Owner does not direct us to anything in the record that requires the wells to be “immediately next to or abutting” as Patent Owner urges. Sur-Reply 3. Rather, we find persuasive the specification’s disclosure of a distance D1 between adjacent wells as supporting a construction of “adjacent” as “next to.” Ex. 1001, 3:46–52; see Ex. 2050, 10.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“On this record, we determine that the recited “temperature-control system” or “temperature-controlling system” sufficiently connotes structure and is not subject to means-plus-function construction. See Williamson, 792 F.3d at 1349 (stating the determination of whether a limitation is a means-plus-function term “subject to the strictures of § 112, para. 6” is not based merely on the presence or absence of the word “means” but on whether “the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure”). Further, the disclosure of exemplary apparatus in the specification, including disclosure incorporated by reference (Ex. 1001, 1:51–54), supports that temperature control systems are known structures/apparatuses, and Petitioner fails to establish that they are not (see generally Pet.; Reply). In sum, we determine the terms “temperature-control system” or “temperature-controlling system” are terms that persons of ordinary skill in the art would have understood to have a sufficiently definite meaning as the name for structures of a broad category of systems known to those of skill in the art. The breadth and diversity of the structures/apparatuses ordinarily skilled artisans would have understood to be included within the meaning of the terms do not subject the terms to means-plus-function construction. Further construction of the terms is not necessary.” slip op. at 21
Patent outcomesUS 8,307,761 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,307,761 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Scramoge Technology Ltd.InstitutedPTAB · Jun 13, 2022 · IPR2022-00241 · APJ Wesley B Derrick · IPR · Institution
The Board instituted review of claims 1–21 on all petition grounds, finding a reasonable likelihood of prevailing on the Kim–Mizutani obviousness challenge to claims 1 and 11.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“parallel district court litigation’s trial date and the Board’s projected statutory deadline for issuing the final written decision. This inquiry addresses the likelihood that the district court will reach a decision on validity issues before the Board reaches a final decision. In this circumstance, on this record, where the trial date is currently scheduled more than three months prior to the expected final written decision due date, this factor weighs slightly in favor of exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”1 Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Further, we are unpersuaded that we should exercise our discretion to deny institution. Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and at least one year of experience in the research, design, development, and/or testing of wireless charging systems, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 9 (citing Ex. 1002 ¶¶ 46–49). Patent Owner declined to address the level of ordinary skill in its Preliminary Response. See Prelim. Resp. Petitioner’s contended level of ordinary skill, thus, stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 15
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,825,482 - PTAB · May 31, 2022 · IPR2022-00153 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petition grounds, finding a reasonable likelihood of prevailing on the Hunaidi Patent obviousness challenge to claims 1 and 8.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion On this record, and in the absence of argument to the contrary by Patent Owner, we find Petitioner’s contentions that the Hunaidi Patent renders claims 1 and 8 obvious well-supported. Petitioner has directed us to portions of the Hunaidi Patent that teach or suggest all of the limitations in claims 1 and 8, and has provided a sufficiently persuasive reason why a person of ordinary skill in the art would have had reason to modify the disclosed apparatus and method to arrive at the subject matter of both independent claims. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on this challenge with respect to both claim 1 and claim 8. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’596 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“in the art having a motivation to combine the teachings of the Hunaidi Patent and the Hunaidi Article. The clearest expression of a motivation to combine set forth in association with the ground, as applied to the independent claims, is that “a [person of ordinary skill in the art] would have been guided to look at leak detection systems, such as that disclosed in the Hunaidi Article,” because “[t]he Hunaidi Patent explains that ‘[t]he proposed method is easy to implement, for example, in conjunction with routine leak detection surveys.’” Pet. 38 (citing Ex. 1003, 3:35–36; Ex. 1004, Abstract, 7; Ex. 1002 ¶ 77). The difficulty with this is that the Hunaidi Patent itself already discloses what appears to be routine leak detection surveys, and it is thus not apparent what benefit would be obtained by this combination to motivate the skilled artisan to combine the teachings. Cf. Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). As to further reasons set forth for the combination, as applied to claims 1 and 8, these are grounded on shortcomings in “the Hunaidi Article . . . not disclos[ing] an equation for velocity” or go to the obviousness of modifications to the Hunaidi Patent itself independent of the Hunaidi Article’s teachings. Id. at 38–40 (citing Ex. 1001, 7:1–12; Ex. 1002 ¶¶ 63–71, 80–86; Ex. 1003, 2:57–3:11, 1:8–11, claims 1& 11).” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“1. Printed Publication Status of the Hunaidi Article In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings, including whether the reference was publicly accessible. Id.; see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility). Petitioner contends that the Hunaidi Article is prior art under 35 U.S.C. § 102(a) and (b). Pet. 35. Petitioner fails, however, to set forth any basis for the document to be a printed publication, that is, for its public accessibility. See Pet. Similarly, there is no testimony by Dr. Wilkens relevant to this issue. See Ex. 1002. Further, on this record, there is neither argument nor testimony as to the authenticity of what Petitioner has filed as the Hunaidi Article (Exhibit 1004).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “is a person with a degree in mechanical engineering, chemical engineering, or physics, and approximately three to five years of combined work experience and/or graduate work in fluid dynamics.” Pet. 10 (citing Ex. 1002 ¶¶ 24– 25). As Patent Owner has waived its preliminary response, Petitioner’s contended level of ordinary skill stands uncontested. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 8
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,475,596 - Trienda Holdings, L.L.C. v. Desgagné, Brown Et Associés Inc.Adverse judgmentPTAB · May 20, 2022 · IPR2021-01295 · APJ James J Mayberry · IPR · Adverse judgment
Adverse judgment was entered against the Patent Owner on claims 1–15 after it abandoned the contest; the Board did not decide the merits.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our rules provide that “[a] party may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b) (2021). Moreover, pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” Id. § 42.73(b)(4). We consider Patent Owner’s statement that it will not further participate in this proceeding to constitute an abandonment of the contest, and, therefore, a request for judgment against it, which we grant. Also, “[a] patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.” 37 C.F.R. § 42.73(d)(3). Although we instituted a trial, we have not yet decided the merits of this proceeding. Accordingly, we enter adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b), and terminate the trial pursuant to 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 10,570,276 - Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentablePTAB · Apr 18, 2022 · IPR2021-01052 · APJ Scott B Howard · IPR · Final written decision
Claims 1–20 are unpatentable as obvious under § 103(a) over Geadelmann and Ehlers.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded that Petitioner’s formulation, supported by the testimony of Mr. Shah, except for the qualifier “at least,” is correct.9 On the one hand, Dr. Palmer’s formulation is conclusory and does not provide any reasoning or underlying supporting facts. See Ex. 2013 ¶ 27; 37 C.F.R. § 42.65(a) (2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On the other hand, Mr. Shah bases his opinion on the field of the invention of the challenged ’382 patent and its claims. Ex. 1002 ¶ 27. Because Mr. Shah’s testimony is anchored by an identified factual predicate, we give it some weight.10” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“evidence does not contradict the meaning otherwise apparent from the intrinsic record.’” Collabo Innovations, Inv. v. Sony Corp., 778 F. App’x 954, 958 (Fed. Cir. 2019) (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)); see also Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, 415 F.3d at 1322, do not preclude the use of general dictionary definitions as an aid to claim construction.”). We therefore turn to the Dictionary of Information Technology, which defines “remote” as: “Not in the immediate vicinity, as a computer or other device located in another place (room, building, or city) and accessible through some type of cable or communications link.” Ex. 1029, 441. Under this definition, devices located in different rooms, but within the same building, can be considered remote. See id. That definition is neither inconsistent with nor contradicted by the specification and the words of the claims. Although Patent Owner argues we should ignore a portion of that definition, it offers no evidence in support of that argument. See PO Sur-reply 7. Therefore, we decline to do so. Accordingly, “remotely located” as used in the ’382 patent does not require the first processor and the memory to be located in different buildings. Based on the arguments of the parties, no further construction is necessary.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“f) Reason to Combine Geadelmann and Ehlers Petitioner argues that a person having ordinary skill in the art would have combined the relevant teachings of Ehlers and Geadelmann. See Pet. 18–21. For example, Petitioner argues that although Geadelmann teaches using an occupancy sensor, it does not expressly link the occupancy sensor to determining if a space is occupied. Id. at 18–20. According to Petitioner, it would have been obvious to a person having ordinary skill in the art to combine Ehlers’ teaching of using an occupancy sensor to determine occupancy so that Geadelmann’s system would know when to switch modes. Id. at 19. Petitioner also argues that a person having ordinary skill in the art would have had a reasonable expectation of success when combining the relevant teachings. Id. at 21. Based on the undisputed evidence before us and the reasons set forth in the Petition, including the Shah Declaration, which are not addressed by Patent Owner (see PO Resp.), we find that Petitioner has shown that a person having ordinary skill in the art would have had reason to combine the relevant teachings from Geadelmann and Ehlers and would have had a reasonable expectation of success in doing so.” slip op. at 43
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“in the Petition, including the Shah Declaration, which are not addressed by Patent Owner (see PO Resp.), we find that Petitioner has shown that a person having ordinary skill in the art would have had reason to combine the relevant teachings from Geadelmann and Ehlers and would have had a reasonable expectation of success in doing so. g) Conclusion on Obviousness We have considered the entirety of the evidence submitted by the parties and determine that Petitioner has shown by a preponderance of the evidence that claim 1 of the ’382 patent would have been obvious over Geadelmann and Ehlers.” slip op. at 43
Patent outcomesUS 10,534,382 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,534,382 - Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentablePTAB · Apr 18, 2022 · IPR2021-00054 · APJ Scott B Howard · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Geadelmann and Ehlers under § 103(a).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded that Petitioner’s formulation, supported by the testimony of Mr. Shah, except for the qualifier “at least,” is correct.9 On the one hand, Dr. Palmer’s formulation is conclusory and does not provide any reasoning or underlying supporting facts. See Ex. 2013 ¶ 27; 37 C.F.R. § 42.65(a) (2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On the other hand, Mr. Shah bases his opinion on the field of the invention of the challenged ’382 patent and its claims. Ex. 1002 ¶ 27. Because Mr. Shah’s testimony is anchored by an identified factual predicate, we give it some weight.10” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“evidence does not contradict the meaning otherwise apparent from the intrinsic record.’” Collabo Innovations, Inv. v. Sony Corp., 778 F. App’x 954, 958 (Fed. Cir. 2019) (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)); see also Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, 415 F.3d at 1322, do not preclude the use of general dictionary definitions as an aid to claim construction.”). We therefore turn to the Dictionary of Information Technology, which defines “remote” as: “Not in the immediate vicinity, as a computer or other device located in another place (room, building, or city) and accessible through some type of cable or communications link.” Ex. 1029, 441. Under this definition, devices located in different rooms, but within the same building, can be considered remote. See id. That definition is neither inconsistent with nor contradicted by the specification and the words of the claims.” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“On the one hand, Dr. Palmer’s formulation is conclusory and does not provide any reasoning or underlying supporting facts. See Ex. 2013 ¶ 27; 37 C.F.R. § 42.65(a) (2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On the other hand, Mr. Shah bases his opinion on the field of the invention of the challenged ’382 patent and its claims. Ex. 1002 ¶ 27. Because Mr. Shah’s testimony is anchored by an identified factual predicate, we give it some weight.10” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“f) Reason to Combine Geadelmann and Ehlers Petitioner argues that a person having ordinary skill in the art would have combined the relevant teachings of Ehlers and Geadelmann. See Pet. 18–21. For example, Petitioner argues that although Geadelmann teaches using an occupancy sensor, it does not expressly link the occupancy sensor to determining if a space is occupied. Id. at 18–20. According to Petitioner, it would have been obvious to a person having ordinary skill in the art to combine Ehlers’ teaching of using an occupancy sensor to determine occupancy so that Geadelmann’s system would know when to switch modes. Id. at 19. Petitioner also argues that a person having ordinary skill in the art would have had a reasonable expectation of success when combining the relevant teachings. Id. at 21. Based on the undisputed evidence before us and the reasons set forth in the Petition, including the Shah Declaration, which are not addressed by Patent Owner (see PO Resp.), we find that Petitioner has shown that a person having ordinary skill in the art would have had reason to combine the relevant teachings from Geadelmann and Ehlers and would have had a reasonable expectation of success in doing so.” slip op. at 43
Patent outcomesUS 10,534,382 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,534,382 - PTAB · Apr 8, 2022 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 because Petitioner showed a reasonable likelihood of prevailing on both asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. We have considered Patent Owner’s arguments in light of the Fintiv factors, together with Petitioner’s opposition, and we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(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 11
- 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) (2021). An inter partes review may not be instituted “unless . . . 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(a). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it will prevail with respect to at least one claim challenged in the Petition, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in chemistry, chemical engineering, or materials science, as well as five or more years of experience in the field of batteries and battery materials.” Pet. 8 (citing Ex. 1003 ¶ 11). Petitioner adds that “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education.” Id. Petitioner states that “[a]dditional education might substitute for some experience, and substantial experience might substitute for some educational background.” Id. at 8–9.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,350,019 - PTAB · Apr 8, 2022 · IPR2021-01441 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–11 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We find that Petitioner’s stipulation is the same as the stipulation in Sotera. Sotera at 18 (the petitioner stipulating that, “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.”). Petitioner’s stipulation invokes our Sotera precedent, “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions,” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera at 19. Accordingly, we find that this factor weighs strongly against exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Based on the evidence before us, we determine Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one claim of the ’035 patent is unpatentable. Accordingly, we institute an inter partes review on all the challenged claims and all of the grounds presented in the Petition. See 37 C.F.R.§ 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of the challenged claims. Our final decision will be based on the record as fully developed during trial. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–11 of the ’035 patent with respect to all grounds set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), notice is hereby given of the institution of a trial commencing on the entry date of this decision.” slip op. at 49
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and five or more years of experience in the field of batteries and battery materials.” Pet. 5 (citing Ex. 1003 ¶ 11). Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except to the extent that the phrases “at least” and “or more” might be taken to imply that one of with significantly greater education or experience than that explicitly set forth would be considered to be merely one of ordinary skill in the art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, for purposes of institution, we find Petitioner has sufficiently established the similarity of the cathodes in Choi and Noh to support the motivation to combine. Petitioner has reasonably established that both references are directed to similar secondary batteries that include lithium-cobalt oxide-based cathodes and nonaqueous electrolytes with a goal of providing improved thermal stability and discharge characteristics. Despite Patent Owner and Dr. Lucht contending that Choi and Noh are so dissimilar that a skilled artisan would not have combined them for the for this contention. Id.; Ex. 2008 ¶ 31. The purported silence of Noh as to the size of cathode active material particles is not, on its face, contrary to the combination. The materials used are otherwise similar, i.e., lithium-cobaltbased oxides, and Petitioner is relying on Noh to teach the electrolyte additives, not the specifics of the cathode active material. As to Patent Owner’s argument based on Choi’s materials including doping with other transition metals, this, likewise, is not on its face contrary to there being a motivation for the combination because these materials, despite the doping with small amounts of other transition metals, appear similar to the undoped materials with respect to structure and function, and there is no evidence to the contrary on this record. See Ex. 2008 ¶ 31. Patent Owner also contends that Petitioner provides no motivation to combine Choi and Noh for its disclosure of the claimed particle sizes. Prelim. Resp. 16–17. Patent Owner and Dr. Lucht focus on Choi teaching preferable ratios of large particle size to small particle size to increase fractional density that are higher than the particle size ratios that are preferred in the ’035 patent. Id. (citing Ex. 1005 ¶¶ 27, 31, code (57) (Abstract)); Ex. 1001 4:35–37, 4:41–63). Patent Owner calculates a maximum ratio of 12.5:1 based on the recited large and small particle sizes in claim 1, contends that this maximum ratio is much less than the ratio of 100:1 disclosed in Choi, and argues that, based on this lower preferred maximum ratio for the ’035 patent, there is no motivation set forth to combine Choi and Noh for the claimed largest and smallest average particle sizes. Id. at 17 (citing Ex. 2008 ¶ 33). Patent Owner’s arguments about particle size do not identify an insufficiency in Petitioner’s rationale for combining Choi and Noh, which size. Even assuming that there is a difference in the preferred maximum ratio set forth in Choi and in the ’035 patent, this has no apparent bearing on Petitioner’s proposed combination of Choi and Noh, which relies on Noh for its teaching of an electrolyte additive, not particle size, and Choi teaches including large and small particle sizes in the same type of cathodes as used in both Choi and Noh. Further, Patent Owner’s emphasis on the maximum ratio in Choi differing from that according to the ’035 patent appears to be misdirected because Choi teaches a range of ratios that encompass those claimed.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,077,035 - PTAB · Apr 8, 2022 · IPR2021-01440 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–5 on both asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“and (2) Koshiishi and Abe. Pet. 1. It is undisputed that neither Choi nor Koshiishi was presented to the Office during examination, and there is no suggestion that either reference is cumulative of the art presented to the Office during examination. See Prelim. Resp. Petitioner asserts that “the only difference between Choi and the ’446 Patent claims is the inclusion of a compound with two nitrile groups in the electrolyte.” Pet. 12. Petitioner makes the same assertion about Koshiishi. Pet. 42. Petitioner contends that Choi and Koshiishi each teach all limitations of the challenged claims, except for the limitations requiring that the electrolyte contain a dinitrile compound. Pet. 13–38, 42–62. In view of the importance of Choi and Koshiishi to Petitioner’s grounds of unpatentability, we determine that the art presented in the Petition is not the same or substantially the same as the art previously presented to the Office during examination.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response, we determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to at least one of claims 1–5 of the ’446 Patent based on Choi and Kim.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not dispute Petitioner’s definition of a POSITA. See Prelim. Resp. We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’446 Patent and the asserted prior art, and we apply Petitioner’s definition for purposes of this Decision, with the caveat that the phrases “at least” and “or more” should not be construed as requiring a significantly greater level of education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,691,446 - Google LLC v. Ecofactor, Inc.Institution deniedPTAB · Mar 18, 2022 · IPR2021-01578 · APJ Scott B Howard · IPR · Institution
The Board denied institution of inter partes review of claims 1–15 based on its holistic Fintiv analysis of the parallel ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“requested a stay of the ITC investigation, and we agree with Patent Owner that a stay of the ITC investigation is unlikely given that post-trial briefing is completed. Accordingly, this factor weighs in favor of not instituting this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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.” Section 314(a) does not require the Director to institute an inter partes review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). Rather, a decision whether to institute is within the Director’s discretion, and that discretion has been delegated to the Board. See 37 C.F.R. § 42.4(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”).” slip op. at 2
Discretionary denialPatents in suitUS 8,886,488
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.