• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

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

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Aug 28, 2023 · IPR2023-00476 · APJ Wesley B Derrick · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–11 unpatentable, principally failing to establish distinct lead wiring lines.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows that there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We deny inter partes review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). For the reasons discussed below, we deny institution of inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). 7 Yoneda, JP2000267590A, published Mar. 19, 1999. Ex. 1011. 8 Tanaka, JP2004094020A, published Mar. 25, 2004, with exhibit including certified English language translation. Ex. 1012. 9 Hirosue, US 2003/0189686 A1, published Oct. 9, 2003. Ex. 1013. have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 5 (citing Ex. 1002 ¶¶ 41‒44). Patent Owner, “[f]or purposes of th[e] Preliminary Response . . . does not dispute the level of skill for a person of ordinary skill in the art.” Prelim. Resp. 7. 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 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,335,913
• Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution

  Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,116,390
• Takeda Vaccines, Inc. v. Valneva Austria GmbHInstitution denied
  PTAB · Jun 9, 2023 · IPR2023-00354 · APJ Wesley B Derrick · IPR · Institution

  The Board denied institution because the Patent Owner disclaimed all challenged claims before institution; it declined to enter adverse judgment.

  RulingsInstitution decision

  • Adverse judgmentDecided for patent owner

    “Patent Owner’s statutory disclaimer of the challenged claims, Petitioner correctly notes that the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018), construed Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner cancels all challenged claims prior to institution. Paper 6, 2‒3; Arthrex, 880 F.3d at 1350. Neither Arthrex nor Rule 42.73(b), while permitting us to do so, requires us to enter adverse judgment. In the present instance, and consistent with 35 U.S.C. § 253(a), Arthrex, Rule 42.107(e) and the Board’s precedential General Electric decision, we determine that a denial of institution is sufficient to dispose of this case. We acknowledge Petitioner’s request to treat the terminal disclaimer as a request for adverse judgment (see Ex. 3003), but determine that denying institution without entering adverse judgment against the Patent Owner is consistent with § 253(a), Rule 42.107(e), and General Electric, where there are no pending claims for us to consider following disclaimer of all challenged claims prior to institution of trial.” slip op. at 4

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

    “disclaiming all challenged claims of the ’681 patent, and paid the requisite fees. See Ex. 3002; see also 35 U.S.C. § 253(a) (providing that a patentee may disclaim); 37 C.F.R. § 1.321 (setting forth requirements for statutory disclaimer). In particular, based on our review of Ex. 3002 and Patent Office public records, we are satisfied that a disclaimer of the challenged claims of the ’681 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of March 21, 2023. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998) (holding that a disclaimer filed under immediately “recorded” on the date the Office receives the disclaimer without any requirements of further action). Accordingly, we deny institution of the requested inter partes review. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (“General Electric”) (denying institution of inter partes review under 37 C.F.R. § 42.107(e) based on disclaimer).” slip op. at 3

  None
  Patents in suitUS 11,219,681
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedInstituted
  PTAB · Apr 13, 2023 · PGR2023-00003 · APJ William A Capp · PGR · Institution

  The Board instituted PGR on claims 1–5 after finding claim 1 more likely than not anticipated by Davison.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9

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

    “Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “In view of the foregoing and for purposes of this preliminary stage of the proceeding, we will construe the “optimized” term as relating to a hole shape associated with a known liner design that most closely approximates the desired hole shape in some objectively discernable manner when compared to hole shapes that are associated with other liner designs that are maintained in a library. Converge toward the desired hole shape” slip op. at 7

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “1 QinetiQ has filed a motion to dismiss the Petition. Paper 6. Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to dismiss in a separate order issued substantially contemporaneously herewith.” slip op. at 2

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 11,215,039
• Walt Disney Parks And Resorts U.S., Inc. v. Raven Sun Creative, Inc.Instituted
  PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution

  The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (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 [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

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

    “controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,266,028
• 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

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.