• Amperex Technology Limited v. Maxell, Ltd.All claims unpatentable
  PTAB · Mar 28, 2023 · IPR2021-01442 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–37 are unpatentable under § 103; the Board found the Yoshida-based combinations established obviousness and did not reach the Kasamatsu-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In our Institution Decision, we adopted Petitioner’s undisputed contention that a person of ordinary skill in the art “would 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. 7 (citing Ex. 1003 ¶ 11)), 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. Dec. 7–8. Patent Owner argues that one of ordinary skill in the art “in the field of the ’251 Patent would have a bachelor’s degree in chemistry, chemical engineering, or materials science or equivalent skill from professional experience, and about three years of experience in the field of batteries and battery materials.” PO Resp. 10 (citing Ex. 2015 ¶ 24). During the hearing, Patent Owner stated that “we’re fine with what the Board has expressed in its Institution Decision” as the definition of a person of ordinary skill in the art. Tr. 17:11–12. In its Reply, Petitioner argues that “Patent Owner readily admits that its definition is substantially similar to the definition proposed by Petitioner and the one adopted in the Institution,” and even “Patent Owner’s expert agrees that his analysis would be the same under either construction.” Reply 2 (citing Ex. 2008 ¶ 16). 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. We retain the definition set forth in the Institution Decision, 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. Cf. 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 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “C. Claim Construction We apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “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). Petitioner states that “each of the challenged claims includes terms that POSITA would understand according to their plain and ordinary meaning.” Pet. 5. Patent Owner does not appear to propose any express claim constructions. See generally PO Resp.; Sur-Reply. On this record, we determine that no claim terms require express construction.” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “The Federal Circuit has set forth “two separate tests” to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved. Id.; Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). In order for a reference to be “reasonably pertinent” to the problem, it must “logically . . . have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007); see also KSR, 550 U.S. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.”). The “reasonable-pertinence analysis must be carried out through the lens of a [person having ordinary skill in the art].” Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020). The scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). We focus here on the “reasonably pertinent” test for analogous art.11 Based on our review of the disclosures of the ’251 patent, we determine that the ’251 patent is broadly concerned with a battery separator with improved heat resistance. Ex. 1001, 2:14–19 (“it is an object of the present invention to provide a battery separator that can constitute a nonaqueous electrolyte battery having excellent safety in a high-temperature environment”); see also Reply 17 (citing Ex. 1001, 1:36–38). The ’251 patent uses resins and heat resistant particles. Ex. 1001, 5:31–44; see also Reply 17. Amagi teaches an epoxy resin with excellent heat resistance. Ex. 1022 ¶ 10. We agree with Petitioner that Amagi “is reasonably pertinent to the particular problem with which the inventor is involved,” because it addresses one of the same problems, namely, how to make a resin with sufficient heat resistance. In re Bigio, 381 F.3d at 1325; Donner, 979 F.3d at 1360 (“[I]f the two references have ‘pertinent similarities’ such that Mullen is reasonably pertinent to one or more of the problems to which the ’023 patent pertains, then Mullen is analogous art.”); see also In re Clay, 966 F.2d 656, 659–60 (Fed. Cir. 1992) (noting that similarities in structure and function between the claimed invention and the reference “carry far greater weight [in determining analogy]” (quoting In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973))). We also agree with Petitioner that Amagi is “reasonably pertinent to the particular problem with which the inventor is involved” because it addresses another issue pertinent to the heat resistant resin layer in a lithiumion battery, namely, the particular particle size of the filler in the heat 11 Because we find that Amagi meets the “reasonably pertinent” test for analogous art, we do not address the question of whether Amagi is in the same field of endeavor as the ’251 patent.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We have reviewed Petitioner’s rationale to combine and arguments regarding reasonable expectations of success, and are persuaded that Petitioner has met its burden by a preponderance of the evidence, without reliance on hindsight. See, e.g., In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning,” but “so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”). Petitioner clearly articulates its motivations to combine with a reasonable expectation of success (Pet. 39–44), supporting these arguments with testimony from its expert (Ex. 1003 ¶¶ 336–357). We credit Petitioner’s argument that “each of the references are directed to non-aqueous secondary batteries and/or heat-resistant materials for use in non-aqueous secondary batteries.” Pet. 39. Dr. van Schalkwijk explains why Yoshida, Nagayama, and Takezawa “are all directed to non-aqueous secondary batteries and/or heat-resistant materials for use in non-aqueous secondary batteries,” and that one of ordinary skill in the art “would have understood that the properties of the inorganic filler used to solve heat-related issues in a rotating machine [as in Amagi] are the same when used to solve the similar heat-related issues in non-aqueous electrolyte batteries,” providing citations to each reference to support his assertions. Ex. 1003 ¶ 337 (citing Ex. 1008 ¶¶ 1, 6; Ex. 1009 ¶ 1; Ex. 1010 ¶ 2), ¶ 337 n.30.” slip op. at 25

  Patent outcomesUS 9,166,251 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,166,251
• Amperex Technology Limited v. Maxell, Ltd.All claims unpatentable
  PTAB · Mar 28, 2023 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Choi and Kim; the Board found motivation to combine and that the references teach or suggest the claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a 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). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We find that Petitioner’s articulation of the level of ordinary skill in the art is consistent with the scope and content of the ’019 Patent and the asserted prior art. We apply Petitioner’s definition of a POSITA, with the caveat that the phrases “at least” and “or more” do not require significantly more education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Petitioner contends that the proper construction of “different compositions of elements” in claim 3 and “composition of elements . . . is different” in claim 4 is “the plain and ordinary meaning of the terms, i.e. different elements or different amounts of the same elements between the at least two lithium-containing transition metal oxides.” Pet. 6 (citing Ex. 1003 ¶ 128). Patent Owner neither opposes this construction, nor proposes any express construction of its own. See PO Resp. We apply Petitioner’s unopposed claim construction, which is supported by the specification of the ’019 Patent. Ex. 1001, 11:29–33 (In formula (2), “M1, M2 and M3 are selected from the same elements as in the formula (1), but the elements selected or the constituting element ratios selected in the individual positive electrode active materials having different average particle sizes may differ from each other.”). The specification provides several examples in which the cathode active material is a mixture of two lithium-containing transition metal oxides having different average particle sizes and different amounts of the same elements. Ex. 1001, ¶¶ 128, 129 (discussing Examples 1, 6, and 9–11).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “We determine that no other claim term requires express construction for purposes of resolving the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 creditedPatent owner expert discountedDecided for petitioner

    “lithium-containing transition metal oxides including “dopants.” PO Resp. 5–6; PO Sur-reply 2–3; Ex. 2008 ¶¶ 33–36. Kim’s silence on particle size and dopants does not, however, mean that Kim’s cathode active material is “wholly different” from Choi’s cathode active material, as asserted by Patent Owner and Dr. Lucht. PO Resp. 6; Ex. 2008 ¶ 35. Patent Owner does not dispute that Choi and Kim both disclose lithium-containing transition metal oxides as cathode active materials. PO Resp. 5 (discussing Kim and citing Ex. 1006 ¶ 69); see also Ex. 2008 ¶ 36 (same). Moreover, Dr. Lucht does not explain how Kim’s silence on particle size and dopants would have affected a POSITA’s motivations and expectations regarding the electrolyte—the modification of Choi proposed by Petitioner. For this reason and as further explained below, Dr. Lucht’s testimony that “Kim . . . discloses a wholly different cathode active material technology than Choi” (Ex. 2008 ¶ 35) is not sufficient to rebut Dr. van Schalkwijk’s testimony that a POSITA would have been motivated to include the aliphatic nitrile compound of Kim as an electrolyte additive in the battery of Choi “to increase thermal stability and improve discharge characteristics in the resultant batteries” and would have expected the addition of the aliphatic nitrile compound to be effective. Ex. 1003 ¶¶ 151, 152. As discussed above, Choi and Kim teach different ways to improve thermal stability. Whereas Choi’s small diameter cathode active materials confer thermal stability (Ex. 1005, 7, 10), Kim teaches that thermal stability and discharge characteristics are improved by a protective layer formed by a complex between the surface of a cathode active material and an aliphatic dinitrile compound. Ex. 1006, code (57), ¶¶ 32, 33, 37–42. According to Kim, a “polar cyano group with high dipole moment in the aliphatic nitrile cathode” and “X-ray photoelectron spectroscopy data . . . show a complex is formed by a bond between a cobalt metal oxide and the cyano group of the dinitrile compound.” Id. ¶¶ 39, 40, Figs. 1, 2. Because Choi’s cathode active material likewise contains a transition metal, such as cobalt, the references support a reasonable inference that the same sort of cyano group complex would be formed if a dinitrile compound were included in Choi’s electrolyte. Ex. 1005, 5–6; Ex. 1006 ¶¶ 37–40. On this record, there is no evidence that Choi’s dopants would have interfered with complexation between the surface of a cathode active material and an aliphatic nitrile compound or formation of a protective layer on the cathode, as described by Kim. To the contrary, Dr. van Schalkwijk testified that the addition of small amounts of an additive element, such as magnesium, to the cathode “wouldn’t change . . . the types of results they were looking for in terms of film formation on what is substantially lithium cobalt oxide or lithium nickel oxide.” Ex. 2016, 37:18–40:3 (discussing Kim). In our Institution Decision, we observed that “Dr. Lucht does not say that Kim’s teachings about an aliphatic nitrile compound are inapplicable to Choi’s cathode materials.” Inst. Dec. 19. On this record, there is still no such testimony from Dr. Lucht. At the oral hearing, Patent Owner’s counsel conceded that Patent Owner is not arguing that the result would be different when combining a dinitrile (or mononitrile) compound with a “complex” cathode material, as compared with a “basic” cathode material. Tr. 32:7–20. Accordingly, Patent Owner’s distinction between “complex” and “basic” lithium-containing transition metal oxides (PO Resp. 5–7; Ex. 2008 ¶¶ 34– 36; Ex. 2015 ¶¶ 10–12) does not undermine Dr. van Schalkwijk’s testimony that a POSITA would have been motivated to include an aliphatic nitrile in characteristics of Choi’s battery and would have expected that the electrolyte additive would have been effective. Ex. 1003 ¶¶ 147, 148, 150–152.” slip op. at 16

  Patent outcomesUS 9,350,019 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,350,019
• Amperex Technology Limited v. Maxell, Ltd.All claims unpatentable
  PTAB · Mar 28, 2023 · IPR2021-01441 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over Choi and Noh; the Board did not reach the alternative Negishi-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a 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. 5 (citing Ex. 1003 ¶ 11). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We find that Petitioner’s articulation of the level of ordinary skill in the art is consistent with the scope and content of the ’035 Patent and the asserted prior art. We apply Petitioner’s definition of a POSITA, with the caveat that the phrases “at least” and “or more” do not require significantly more education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither party seeks express construction of any claim term. See Pet. 3–4; PO Resp. We determine that no claim term requires express construction for purposes of resolving the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “There is no dispute that Choi discloses Mg and Al as possible constituents of a cathode active material. PO Resp. 14–15; Ex. 1005 ¶¶ 10, 11 (disclosing Formula 2, LixCo1-y-zNiyMzO2-αXα, where “M is selected from the group consisting of Al, Ni, Mn, Cr, Fe, Mg, Sr, V, rare earth elements and mixtures thereof”). Undisputed evidence shows that a POSITA would have had several reasons to select Mg and Al from the options Choi discloses for element M. 17 S. Madhavi et al., Cathodic properties of (Al, Mg) co-doped LiNi0.7Co0.3O2, Solid State Ionics 152–153, 199–205 (2002) (“Madhavi”). material’s electronic conductivity; (2) that Al would provide structural enhancement to the cathode; (3) that Mg and Al would be less likely to disrupt the structure of the cathode material because they are the smallest elements in Choi’s list; and (4) that Mg and Al would not be oxidized or reduced because they each have singular oxidation states. Pet. 15–16 (citing Ex. 1003 ¶¶ 178–180; Ex. 1024). We credit the following unrebutted testimony of Dr. van Schalkwijk: First, each doping element (e.g., Mg, Al, etc.) plays a different role in modifying the material properties of the host material (e.g., lithium cobalt oxide). . . . Mg atoms were first successfully doped into the LiCoO2 lattice, the result being an increase in the electronic conductivity of the material. . . . Mg doping also altered the phase transition behavior of the delithiation process, which is the removal of lithium ions from the cathode during battery charging. . . . Mg’s effect was to increase the charge voltage available to the cathode; however, this was not a large effect because the solubility of Mg in the cathode was quite small, i.e. only small amounts of Mg could be doped into LiCoO2. . . . Al was another dopant that was used at the time of Choi and the ’035 Patent. . . . However, it did not enhance the conductivity of the cathode as much as the effect from Mg doping. The strength of Al was that it was able to affect the same structural enhancements to the cathode, and it was much more soluble in the cathode, i.e. more aluminum could be doped into the cathode. . . . The motivation to use two dopants (and Mg and Al were common co-dopants) was the structural enhancement of the larger concentration of Al and the electronic conductivity enhancement due to the Mg. . . .” slip op. at 26

  Patent outcomesUS 9,077,035 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,077,035
• Amperex Technology Limited v. Maxell, Ltd.All claims unpatentable
  PTAB · Mar 28, 2023 · IPR2021-01440 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Choi and Kim; the Board did not reach the alternative Koshiishi and Abe ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a 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. 7 (citing Ex. 1003 ¶ 11). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We find that Petitioner’s articulation of the level of ordinary skill in the art is consistent with the scope and content of the ’446 Patent and the asserted prior art. We apply Petitioner’s definition of a POSITA, with the caveat that the phrases “at least” and “or more” do not require significantly more education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Petitioner contends that the proper construction of “different compositions of elements” in claims 1 and 3 and “composition of elements . . . is different” in claim 2 is “the plain and ordinary meaning of the terms, i.e. different elements or different amounts of the same elements between the at least two lithium-containing transition metal oxides.” Pet. 5 (citing Ex. 1003 ¶ 126). Patent Owner neither opposes this construction, nor proposes any express construction of its own. See PO Resp. We apply Petitioner’s unopposed claim construction, which is supported by the specification of the ’446 Patent. Ex. 1001, 11:21–25 (In formula (2), “M1, M2 and M3 are selected from the same elements as in the formula (1), but the elements selected or the constituting element ratios selected in the individual positive electrode active materials having different average particle sizes may differ from each other.”). The specification provides several examples in which the cathode active material is a mixture of two lithium-containing transition metal oxides having different average particle sizes and different amounts of the same elements. Ex. 1001, 22:44–49, 25:58–65, 26:32–38, 26:48–54, 26:64–27:3; see also Ex. 1003 ¶ 123 (discussing Examples 1, 6, and 9–11).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “As discussed above, Choi and Kim teach different ways to improve thermal stability. Whereas Choi’s small diameter cathode active materials confer thermal stability (Ex. 1005, 7, 10), Kim teaches that thermal stability and discharge characteristics are improved by a protective layer formed by a complex between the surface of a cathode active material and an aliphatic dinitrile compound. Ex. 1006, code (57), ¶¶ 32, 33, 37–42. According to Kim, a “polar cyano group with high dipole moment in the aliphatic nitrile compound forms a bond with a transition metal, such as cobalt, in the cathode” and “X-ray photoelectron spectroscopy data . . . show a complex is formed by a bond between a cobalt metal oxide and the cyano group of the dinitrile compound.” Id. ¶¶ 39, 40, Figs. 1, 2. Because Choi’s cathode active material likewise contains a transition metal, such as cobalt, the complex would be formed if a dinitrile compound were included in Choi’s electrolyte. Ex. 1005, 5–6; Ex. 1006 ¶¶ 37–40. On this record, there is no evidence that Choi’s dopants would have interfered with complexation between the surface of a cathode active material and an aliphatic nitrile compound or formation of a protective layer on the cathode, as described by Kim. To the contrary, Dr. van Schalkwijk testified that the addition of small amounts of an additive element, such as magnesium, to the cathode “wouldn’t change . . . the types of results they were looking for in terms of film formation on what is substantially lithium cobalt oxide or lithium nickel oxide.” Ex. 2016, 37:18–40:3 (discussing Kim). In our Institution Decision, we observed that “Dr. Lucht does not say that Kim’s teachings about an aliphatic nitrile compound are inapplicable to Choi’s cathode materials.” Inst. Dec. 19. On this record, there is still no such testimony from Dr. Lucht. At the oral hearing, Patent Owner’s counsel conceded that Patent Owner is not arguing that the result would be different when combining a dinitrile (or mononitrile) compound with a “complex” cathode material, as compared with a “basic” cathode material. Tr. 32:7–20. Accordingly, Patent Owner’s distinction between “complex” and “basic” lithium-containing transition metal oxides (PO Resp. 5–7; Ex. 2008 ¶¶ 34– 36; Ex. 2015 ¶¶ 10–12) does not undermine Dr. van Schalkwijk’s testimony that a POSITA would have been motivated to include an aliphatic nitrile in the electrolyte to increase the thermal stability and improve the discharge characteristics of Choi’s battery and would have expected that the electrolyte additive would have been effective. Ex. 1003 ¶¶ 141, 142, 144–146.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “In IPR proceedings, “where there is a range disclosed in the prior art, and the claimed invention falls within that range, the burden of production falls upon the patentee to come forward with evidence” of teaching away, unexpected results or criticality, or other pertinent objective indicia indicating that the overlapping range would not have been obvious in light of that prior art. DuPont, 904 F.3d at 1008 (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Here, Patent Owner does not meet its burden to produce evidence of non-obviousness of the claimed range for the molar amount of M2.” slip op. at 33

  Patent outcomesUS 8,691,446 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,691,446
• Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00415 · APJ Wesley B Derrick · IPR · Final written decision

  Claims 1–5, 11, 12, and 14–19 are unpatentable as obvious over Finegan and Tipton; the Board did not reach the remaining instituted grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “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 both Petitioner’s and Patent Owner’s proposed level of skill are grounded on a relevant engineering degree and/or significant experience designing food service equipment, both of which reasonably also indicate some understanding of heat transfer concepts.9 Accordingly, we adopt Patent Owner’s proposed definition, which overlaps that proposed by Petitioner, particularly that of a person with a mechanical engineering degree and/or four years of experience designing food service equipment who also has an understanding of heat transfer concepts. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. Cf. Okajima, 261 F.3d at 1355 (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself 9 We note that neither Patent Owner nor Dr. Mayor provide any particular definition of an understanding of heat transfer concepts, and it is not apparent that more than a rudimentary understanding is required.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Mayor’s testimony as to the meaning of “well” (Ex. 2027 ¶¶ 29– 32) is entitled to little weight because it fails to explain how the cited portions of the specification and file history support his position, and it is not otherwise apparent that it does. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). In sum, we determine that the meaning of “well,” as used in the ’253 patent, includes the interior walls and exterior walls (if present).” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededMixed

    “On this record, we determine that “well” includes at least the well bottom (or floor), the interior well walls, and the exterior well walls (if present). The specification discloses that “[w]ell 18 may comprise generally vertically-extending interior walls 22 connected by bottom or floor 26 . . . [that] [w]ell 18 additionally may comprise four exterior walls 30,” and that “well 18 preferably . . . is formed of stainless steel,” which by the plain meaning of the words indicates that the bottom (or floor), the interior walls, and the exterior walls are part of the well. See Ex. 1201, 4:3–17. Further, the disclosure that “well 18 preferably . . . is formed of stainless steel” indicates that a well includes physical structure(s), such as the walls and the bottom (or floor). Id. at 4:15–17. Also, each independent claim requires” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Further, as depicted in the figures, including Figures 1 and 4, the exterior walls are not shown to be in contact, as there is no well structure depicted in the region spanned by D1, despite Figure 5, depicting a cross-sectional view of the same embodiment, showing an exterior wall 30. In sum, the depicted structure in the relied-on figures appears wholly consistent with D1 being the distance between the exterior walls 30 of adjacent wells 18, where wells are defined as including the interior walls 22 and exterior walls 30. Having a space D1 between exterior walls 30 of adjacent wells 18 is also consistent with claim 1 reciting “at least one exterior wall of one well is spaced an insulative distance from an exterior wall of an adjacent well.” Ex. 1201, 5:46–48. inconsistencies identified above between their positions and what is actually disclosed and depicted in the ’253 patent. Having considered the parties’ arguments and evidence, as well as the related District Court proceeding and Federal Circuit proceeding,14 we adopt Petitioner’s construction of “adjacent” as “next to.” We are not directed to anything in the record that requires the wells to be “immediately next to or abutting,” as Patent Owner contends. Rather, as the ’253 patent discloses a distance D1 between wells, the proper meaning is simply “next to.”” slip op. at 18

  Patent outcomesUS 9,795,253 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,795,253
• Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentable
  PTAB · Jul 6, 2022 · IPR2021-00414 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–26 are unpatentable: claims 1, 6, 7, 10, 12, 14, 16–20, and 22–26 as anticipated by Finegan; claims 1–26 as obvious over Finegan, Safyan, and Hansen; and claims 3–5 as obvious over Finegan and …

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “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 › 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 control system limitations sufficiently connote structure and are 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”). As to Petitioner’s argument that Patent Owner only demonstrates support for “controls” and “controllers” being known in the art and not for a “system,” as the claims recite (Reply 11–12), we determine that there is no meaningful distinction because the controls or controllers disclosed in the ’970 patent are necessarily included in systems with other known elements to control temperature. Further, the disclosure of exemplary apparatus in the specification, including disclosure incorporated by reference (Ex. 1101, 1:58–61), 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 control system limitations 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 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Regarding Patent Owner’s first argument, we find that Finegan sufficiently discloses thermally isolated wells and insulative gaps. Finegan’s wells are either thermally isolated as a result of their relative orientation (Pet. 31 (citing annotated Finegan Fig. 7)), or as a result of the insulation or insulative air gap (Pet. 29–31 (citing annotated Finegan Figs. 4, 7)). Finegan’s flanges, whether frosted or not, are “part of the well and must themselves be thermally isolated from their surroundings to facilitate frost formation,” and “the inclusion of the flanges does not defeat the well’s thermal isolation.” Reply 13; Ex. 1103 ¶¶ 294–297 (Dr. Homan’s testimony). Petitioner also demonstrates that Finegan’s insulation material would reduce heat transfer. Ex. 1149 ¶¶ 84–85 (Dr. Homan’s testimony that Finegan’s insulation material and insulation tape reduce heat transfer). Finegan’s insulation “extends over most of the well and the thermally-conductive material (38), to insulate the well.” Reply 13 (citing Ex. 1149 ¶ 84; Ex. 1105, 7:22–26, Fig. 4). Although we agree with Patent Owner that Finegan states that there is a “need to provide for a food service table or buffet that employs a shallow pan for use in both hot and cold service conditions while still providing sufficient frosting of the top surface” (Ex. 1105, 2:11–13), Petitioner has demonstrated that Finegan’s thermal isolation and insulation would not defeat this objective. Reply 13–14. Regarding Patent Owner’s second argument, we refer to our claim construction to find that Finegan teaches wells in a single frame. Because, under our construction, a well includes at least the interior well walls and exterior well walls (if present), and a frame refers to a “rigid supporting structure,” we find that Petitioner persuasively demonstrates that Finegan teaches wells in a single frame. Pet. 26–27, 29–31. We disagree that “skilled artisans would view the two apparatuses (10) in Figure 7 of Finegan to be independent pieces of equipment and thus not a module with wells bound by a single frame” and that “Finegan does not teach wells in a single frame” because the pans are separated by what Patent Owner argues is an “indeterminate distance of countertop.” PO Resp. 32. As discussed above, we decline to adopt Patent Owner’s claim construction for “a frame.” Accordingly, we find that, under our claim constructions, Petitioner demonstrates that Finegan’s countertop 14 and side walls housing its wells 18 meet the limitations of the challenged claims, particularly those that require an arrangement between the frame and the wells (i.e. claims 14, 23, and 25). Reply 14–15, 17 (citing Ex. 1105, annotated Figs. 1, 7; Ex. 1149 ¶ 101); see also Ex. 2050, 10–11 (finding unfounded the district court’s determination “that Finegan’s Figure 7 only discloses a single pan in each of two separate modules” and determining that Figure 7 “discloses a single ‘apparatus 10’ with two wells 18A and 18B . . . . Those wells are shown within a single countertop 14.”). Additionally, we disagree with Patent Owner’s characterization of Dr. Homan’s testimony as admitting that Finegan’s pans/wells are separate modules. PO Resp. 30–32 (citing Ex. 1130, 241:24–242:3, 217:20–24, 240:5–14). A fair reading of Dr. Homan’s testimony indicates that he was referring to “wells,” despite counsel using the term “modules,” ultimately supporting Petitioner’s position that Finegan discloses two wells in a single frame. Reply 15–16 (citing Ex. 1130, 241:15–242:2). Regarding Patent Owner’s third argument, and referring to our claim construction, we find that Finegan teaches the control system limitations. Although we do not find these terms to be subject to means-plus-function construction, we nevertheless find sufficient Petitioner’s mapping of these limitations to the structures in Finegan performing the functions of the control system limitations. See, e.g., Pet. 31–32 (regarding claim 1.c.1, referring to Finegan Fig. 7 to map PLC 80 connected to heating elements 78 (via switches 94) and valving 90 for controlling refrigerant flow from condensing unit 118 to cooling coils 32, and using user interface 96 and temperature sensors 82A). Petitioner persuasively argues that Finegan’s PLC (programmable logic controller) 80 and user interface 96 meet the control system limitations: “Both Finegan’s global control and the ‘970 patent’s individual controls perform this function [of independently controlling the wells’ temperatures] in the same way, by connecting the electrical resistance heating elements to an electrical power source and by operating valving to control the flow of refrigerant.” Reply 20 (citing Ex. 1101: 4:49–52, 4:56–63; Ex. 1105, 9:27–11:28); Pet. 32–33.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “sufficiently discloses insulative gaps. The Petition shows that Finegan’s wells are “individually insulated and thermally isolated by thermal insulation (40) between exterior and interior wall (44, 20 (identifiable by opposed surfaces (36, 46))).” Pet. 50 (citing Ex. 1103 ¶ 273; Ex. 1105, Fig. 4). Safyan teaches air gaps (i.e., an unfilled insulating space) as an alternative to foam. Id. at 51 (citing Ex. 1103 ¶¶ 276–277, Ex. 1106, Fig. 2, 4:36–46). Petitioner argues with evidentiary support that one of ordinary skill in the art would have had reasons to omit Finegan’s insulating material to leave an insulative gap, as in Safyan, to reduce material and labor costs, as a matter of simple substitution, with a reasonable expectation of success. Id. at 52 (citing Ex. 1103 ¶¶ 279–282). Patent Owner’s argument that Finegan does not disclose an insulative gap and that its insulation does not meet the limitations of the challenged claims argues against Finegan individually, rather than against the Finegan-Safyan combination. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Petitioner also provides adequate motivation to combine Finegan and Safyan, not limited to arguing that the two references are in the same field of endeavor. Pet. 51–53 (relying on Ex. 1103 ¶¶ 276–282); Reply 22–23. Regarding claim 9, we find that Petitioner provides adequate motivation as to why one of ordinary skill in the art “would have minimized the distance between wells.” Pet. 53–54; Ex. 1149 ¶ 124–126. We credit Petitioner’s reliance on references and evidence supporting its assertion that one of ordinary skill in the art “would have located Finegan’s wells as close together as needed (e.g., three inches or less)” to “meet size restrictions for a compact space-saving design.” Pet. 56 (citing Ex. 1103 ¶¶ 298–299). We disagree that “Finegan’s frost top would be destroyed” (PO Resp. 43) by this combination, because spacing “as small as a fraction of an inch between the flanges of adjacent wells would ensure thermal isolation of the wells and that a cooled flange would form frost.” Pet. 56 (citing Ex. 1103 ¶297).” slip op. at 36

  Patent outcomesUS 8,661,970 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,661,970
• Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,307,761
• Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,534,382
• Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,534,382
• Sealed Air Corporation v. Ranpak Corp.All claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01249 · APJ Wesley B Derrick · IPR · Final written decision

  Claims 13–15 are unpatentable as obvious over Kirkpatrick; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner fails to cite any authority to support its argument that we should, in effect, disregard Mr. Klass’ testimony as to the level of ordinary skill in the art because he is not a person of ordinary skill in what Patent Owner contends is the relevant field. See PO Resp.; PO Sur-Reply. Patent Owner’s counsel similarly was unable to identify any such authority at the hearing. Tr. 42:9–15. Further, Mr. Klass’ testimony was not that he is not a person of ordinary skill in the art, but rather that his opinions set forth in his earlier declaration would not be different under the level of ordinary skill as defined by Mr. May. Ex. 1028 ¶¶ 4–5. On this record, we find Mr. Klass’ testimony well-supported as it pertains to relevant issues and see no reason to summarily disregard it. See Exs. 1002, 1028. Complete overlap between a witness’ technical qualifications in the field of the invention is not necessary for the witness’ testimony to be admissible. See SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“CTPG”)5 at 34 (“There is . . . no requirement of a perfect match between the expert’s experience and the relevant field.”). Nor must they themselves be a person of ordinary skill in the art, but only that they are “qualified in the pertinent art.” CTPG at 34 (citing Sundance, Inc. v. DelMonte Fabricating Ltd., 550 F.3d 1356, 136364 (Fed. Cir. 2008)). Mr. Klass’ education includes a minor in Pulp & Paper Technology (Ex. 1006) and his lengthy experience in the pulp and paper industry includes work—as a process engineer—involving splicing and corrugators (Ex. 1002 ¶ 8). Mr. Klass has the “knowledge, skill, experience, training, [and] education” of a “specialized” nature that is likely to “assist the trier of fact to understand the evidence.” Fed. R. Evid. 702. Accordingly, we find Mr. Klass has sufficient relevant technical expertise to consider and weigh his testimony as we have in this decision. See SEB S.A., 594 F.3d at 1373.” slip op. at 8

  • Skill levelSkill level board ownDecided for petitioner

    “On this record, we determine that a person of ordinary skill in the relevant art would have included those with a bachelor’s degree in mechanical or paper engineering with at least a year’s experience relating to producing cushioning materials, dunnage pads, and other protective packaging. As admitted by Patent Owner, production of such materials using kraft paper stock was known. PO Resp. 14. As to the use of double-sided adhesive, we do not agree with Patent Owner that it was unknown to the person of ordinary skill in the art because using double-sided tape to join rolls of sheet stock was known in the wider field of paper processing and we find that field reasonably includes producing paper cushioning products, and that such related knowledge reasonably would also have been within the knowledge of a skilled artisan in the “cushioning conversion machine” field as the same or similar paper cushioning products are produced. Moreover, regardless of whether double-sided tape was used in what Patent Owner contends is the “cushioning conversion machine” field, Mr. May’s testimony is limited to it not being used in that field, not that double-sided tape itself was not known to one of ordinary skill in the art in the field. Ex. 2001 ¶¶ 53–57. It reasonably follows that a person having knowledge of double-sided tape would also have knowledge of joining together sheets of paper or other stock using double-sided tape. Further, to the extent that Patent Owner and Mr. May rely on “cushioning conversion machines” differing from paper processing machines that produce paper cushioning products, on this record, there is insufficient evidence of a meaningful difference in their complexity, size, or operation. For example, Patent Owner relies heavily on the paper processing machines including machinery to allow splicing on the fly, but the prior art also teaches that non-continuous roll-to-roll splicing can be used. See Ex. 1010, 1:13–16 (disclosing that a splicing tape system “is applicable both to systems in which the splice is made on the fly and to systems in which the splice is made while the running web is stationary”); Ex.1017, 1:15–19 (disclosing that “[t]he splicing operation can be performed in a static or a dynamic mode.”). As to size, similarly, Patent Owner relies on the machinery for paper making or producing corrugated cardboard being larger than “cushioning conversion machines,” but there is no clear distinction between the two as to size, as discussed below. Also, there is no evidence that paper processing machines forming paper cushioning products from paper itself do not do so in the same general manner as the ’096 patent. Accordingly, finding no meaningful distinction to “cushioning conversion machines,” we discern no meaningful difference in the knowledge of the skilled artisan as it relates to the challenged claims. Moreover, to the extent that there would be a narrower “cushioning conversion machine” field that did not include the use of double-sided tape, as Patent Owner contends, there would be no difference in the outcome of this case. As to obviousness, the scope of analogous prior art is not limited to the field of inventor’s endeavor, but also includes references that are “still reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As discussed below, we find Kirkpatrick reasonably pertinent to the particular problem with which the inventor is involved.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “On this record, we determine that the preamble’s recitation of “sheet stock material for use in a cushioning conversion machine” is a statement of intended use and does not constitute a limitation. In doing so, we must construe the meaning of the term “cushioning conversion machine.” In construing “cushioning conversion machine,” we note there is no guidance elsewhere in the remaining claim language as to its meaning, including in other claims, and so turn to the specification of the ’096 patent. See Phillips, 415 F.3d at 1312–13, 1315. The ’096 patent states that “[c]ushioning conversion machines convert [paper] sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). The ’096 patent also identifies its “invention [as] relat[ing] to machines for converting sheet stock material into a dunnage product.” Id. at 1:15–16 (Field of the Invention). Figures 1 and 2 are identified as top plan and side elevational views of a cushioning conversion machine. Id. at 3:57–63. The ’096 patent discloses that the “operation of the [cushioning] conversion machine 10 may be controlled by a controller, also in a well-known manner” (emphasis added). Id. at 6:42–44. The ’096 patent provides no disclosure as to the size of the cushioning conversion machine or the sheet stock material that it converts into cushioning dunnage product. See Ex. 1001.” slip op. at 20

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “On this record, Mr. May’s testimony of what “cushioning conversion machine” means in the field of paper dunnage machines fails to bear the weight required to limit the term as Patent Owner proposes. The ’096 patent identifies “cushioning conversion machines” to be machines that “convert sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). This is in effect the plain and ordinary meaning of the words themselves identifying a machine that converts feedstock into cushioning. Further, we find it consistent with the ’096 patent as a whole. Mr. May’s contrary testimony, as discussed above, lacks sufficient evidentiary basis to support Patent Owner’s contended construction over the plain and ordinary meaning. In effect, the basis for Mr. May’s testimony is limited to a showing that the meaning of the term encompasses a machine such as shown in the ’096 patent’s Figure 1 and 2. Mr. May’s testimony as to the PadPak machine being a “popular cushioning conversion machine[]” only goes to establishing that “cushioning conversion machine” encompasses similar machines, not that the term would be understood to be limited to the PadPak machine. Ex. 2001 ¶¶ 65–66. As to “cushioning conversion machines” being stop/start machines, the ’096 patent’s states that “the conversion machine 10 may be controlled by a controller” (emphasis 7 Elsewhere Patent Owner cites a number of its patents for using the term “cushioning conversion machine,” but this only supports that Patent Owner uses the term. See PO Resp. 27. added), not that it must be. Ex. 1001, 6:42–43. As to size, as discussed above, the ’096 patent provides no limitation as to the size of the apparatus or the sheet stock material. Petitioner highlights that another of Patent Owner’s patents, U.S. Patent No. 6,200,251 B1 (Ex. 1026, “the ’251 patent”), discloses “that in a ‘preferred cushioning conversion machine, the stock supply assembly is adapted to supply stock material which is between 25 to 35 inches wide’” (emphasis added). Pet. Reply 14 (citing Ex. 1026, 2:56–59). Petitioner also highlights that the ’251 patent was filed before the ’096 patent’s priority date and names the ’096 patent’s inventor among its inventors. Id.; compare Ex. 1026, codes (22), (75), with Ex. 1001, codes (22), (75). Such disclosure of a preferred embodiment in this circumstance is reasonable evidence that a skilled artisan would understand that a “cushioning conversion machine” included those “adapted to supply stock material . . . between 25 and 35 inches wide,” but not that such machines were limited to using such widths. The relevance of this is that the sheet stock material used is not manifestly distinct from the sheet stock material used for corrugators, ranging from 35 to 110 inches in width, where Patent Owner contends corrugators are distinct from “cushioning conversion machines.” See Ex. 2003, 95:22–96:6 (Mr. Klass testifying that the “width of commercial corrugators could be anywhere from 35 to 110 inches.”); PO Resp. 33–34 (relying on Mr. Klass’ testimony). Similarly, there is no persuasive evidence of a clear distinction in weight. Patent Owner and Mr. May rely on Mr. Klass’ testimony as to the weight of paper rolls for corrugators, focusing solely on testimony as to the weight of large rolls and ignoring that the testimony also set forth that “[s]ome corrugators use smaller rolls.” PO Resp. 34; Ex. 2001 ¶¶ 77–79; Pet. Reply 14–15; see also Ex. 1028 ¶¶ 21–22 (Mr. Klass’ testimony that “web feed rolls at the lower end of that range would be especially well suited for use in a cushioning conversion machine, even under [Patent Owner’s] narrow definition of such a machine” and that “my testimony certainly was not that Kirkpatrick’s web feed rolls would weigh tons.”). In sum, on this record, we determine that “cushioning conversion” slip op. at 22

  Patent outcomesUS 6,756,096 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,756,096

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