- PTAB · Jun 15, 2023 · IPR2023-00214 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.11 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date12 of the challenged patent.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Conclusion Factor one weighs strongly against exercising our discretion to deny institution, factor three weighs against exercising our discretion to deny institution or is neutral, factors six and seven are neutral or weakly favor discretionary denial, and the remaining factors are neutral. The balance of the General Plastic factors thus weighs against exercising our discretion under § 314(a) to deny institution. Accordingly, we decline to exercise our discretion to deny institution based on the General Plastic factors.” slip op. at 24
- Parallel petitionsDecided for petitioner
“Here, we decline to exercise discretion to deny this Petition based upon multiple Petitions for three reasons. First, as we explain in Section III(H) of this decision, the Petition is strong on the merits, and Patent Owner has, at this stage, offered little argument refuting the merits. Second, Patent Owner’s burden to respond to both petitions is lessened by Patent Owner’s familiarity with much of the prior art at issue. As Patent Owner emphasizes, all or nearly all of the art in the Petitions was previously raised either during prior examination or in other inter partes reviews. Indeed, it seems likely that, if the Cree IPR (or related follow on IPRs) proceeds to a decision on the merits, there may be little left unresolved for the instant Petition. Institution here, however, provides Petitioner an opportunity to challenge the ’961 patent based on Krames in the event that the IPR based on Cree does not reach a decision on the merits. Third, while the two petitions present different invalidity grounds (addressing the same claims) and, as explained above, are not wholly redundant, the two parallel petitions have a great deal of overlap. Prelim. Resp. 26 (arguing that the two petitions are “redundant”). Because portions of the petitions are similar, this also reduces Patent Owner’s burden to respond. Thus, based on the totality of specific circumstances unique to these two petitions, we decline to exercise discretion to deny institution based on parallel petitions.” slip op. at 25
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 21, 25–29, 36, 40–43, 47– 49, and 52–57 of the ’961 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 of the ’961 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - PTAB · Jun 15, 2023 · IPR2023-00213 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds, finding a reasonable likelihood of success on the §103 obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion as to claim 21 Based on the evidence in the present record, we determine that Petitioner has shown sufficiently for purposes of this Decision that the combination of Begemann, Bogner, and Sugiura teaches or suggests all elements of claim 21 and that Petitioner sufficiently shows that a person of ordinary skill in the art would have had reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine Petitioner has established a reasonable likelihood of prevailing in showing that claim 21 is unpatentable over the combination of Begemann, Bogner, and Sugiura. b. Dependent Claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 Petitioner accounts for the limitations recited in claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 (which depend from claim 21). Pet. 6, 51–71. Petitioner shows sufficiently for purposes of this Decision that each element of claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 is taught or suggested by the combined teachings of Begemann, Bogner, and Sugiura and shows reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine that Petitioner has sufficiently established a reasonable likelihood of establishing claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 are obvious in view of Begemann, Bogner, and Sugiura.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We do not agree, however, that Petitioner fails to show material error. Rather, Petitioner shows sufficiently that the outcome of the reexamination hinged on Patent Owner’s representation that the prior art did not teach LED chips “configured to output light at greater than about 40 milliwatts.” Pet. 19 (quoting Ex. 1014, 238–239 (Patent Owner’s statement in file history); see also Ex. 1014, 159 (examiner explaining that claims are found patentable based on Patent Owner’s argument that the “greater than about 40 milliwatts” recitation is not “taught or suggested by any reference currently relied on”). Petitioner then explains in detail why Patent Owner’s representation, and the Examiner’s resulting conclusion, was in error. Pet. 20–24. Petitioner’s explanation as to why Begemann, the cited art, actually taught the “greater than about 40 milliwatts” recitation is supported by the evidence of record sufficiently to demonstrate a reasonable likelihood of success at trial. See, e.g., Ex. 1002 ¶¶ 85–93, 141–144 (Petitioner’s witness, Dr. Jokerst, explaining why the references suggest the “greater than about 40 milliwatts” recitation when a correct calculation is applied).” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the presently cited art at the time a different petitioner filed the Cree IPR. Prelim. Resp. 27. We note, however, that this factor also includes considering whether the prior art relied on in the later petition “could have been found with reasonable diligence.” General Plastic, slip op. at 20. Although the cited references easily could have been found by reviewing the ’961 patent’s file history, it is less clear that the key alleged error in Patent Owner’s representations concerning the teachings of those references would have been readily apparent. As such, this factor is neutral. 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; Patent Owner argues that Petitioner used the Board’s institution decision (instituting trial) in the Cree IPR as a roadmap for its petitions. Prelim. Resp. 27–28. Patent Owner, however, presents no factual evidence merely result from the strength of references raised in prior reexamination rather than copying from one petition to another. The record lacks evidence directly establishing how or why Petitioner came to select the evidence the Petition relies upon, and we decline to speculate. to support this point, for example, instances in the Petition that facially support a finding that the arguments presented in the Petition track the analysis in the Board’s prior institution decision. Moreover, we agree with Petitioner that the road-mapping concern is either not relevant or is less relevant when the earlier IPR was instituted. Reply 1–2; see also General Plastic, slip op. at 17–18 (explaining that factor 3 is directed to road-mapping concerns). This is not a multiple-bites-of-an-apple situation where the second bite is modified after the first bite fails. This factor weighs against discretionary denial or is neutral.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. The indicia also suggest that the paper was published by an established publisher—SPIE (the international society for optics and photonics). As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.10 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date11 of the challenged patent.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - Liquidia Technologies, Inc. v. United Therapeutics CorporationRehearing deniedPTAB · Feb 2, 2023 · IPR2021-00406 · APJ Christopher M Kaiser · IPR · Rehearing
Rehearing was denied; claims 1–8 remain unpatentable because conference distribution established Voswinckel JESC and Voswinckel JAHA as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the abuse of discretion standard. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, reply, or a sur-reply.” Id. An abuse of discretion may be found where a decision “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)). D. We Overlooked Patent Owner’s Argument Patent Owner is correct that its argument that the Ghofrani and Sulica research aids were dated after May 15, 2005, appeared in the Sur-Reply. Sur-Reply 9–11. Patent Owner also is correct that we overlooked this argument in relying on these research aids as supporting that Petitioner had established that Voswinckel JESC and Voswinckel JAHA were prior art to the ’793 patent. Final Dec. 11–12; Paper 81, 2 (“the Board’s analysis did not consider whether the research aids themselves were available prior to the critical date”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Under at least some circumstances, a reference may be a printed publication under § 102(b) if it was “displayed to the public,” even if it “was not later indexed in any database, catalog, or library.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). There are several factors relating to whether such a display is sufficient to constitute a printed publication, including “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. In addition, distribution of a reference at a professional conference may, under at least some circumstances, constitute sufficient dissemination to show public accessibility. Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1375–80 (Fed. Cir. 2018); Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380–83 (Fed. Cir. 2018).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether the Voswinckel JESC and Voswinckel JAHA references qualify as prior art” and in particular “whether the Voswinckel JESC and Voswinckel JAHA references were publicly accessible by way of their presentation and/or inclusion in distributed materials, such as at a conference.” Paper 81, 3. As discussed above, we find that both references were distributed sufficiently at professional conferences to be publicly accessible at the time of those conferences. By virtue of this public accessibility, both Voswinckel JESC and Voswinckel JAHA were printed publications early enough to qualify as prior art under 35 U.S.C. § 102(b). G. Asserted Obviousness over ’212 Patent, Voswinckel JESC, and Voswinckel JAHA Petitioner argues that claims 1–8 would have been obvious over the combination of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA. Pet. 30–46. As discussed above, Petitioner has shown by a preponderance of the evidence that both Voswinckel JESC or Voswinckel JAHA qualify as prior art. Accordingly, we do not disturb the obviousness analysis in the Final Written Decision, which relies on the prior-art status of Voswinckel JESC and Voswinckel JAHA. Final Dec. 12–35. slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,716,793 - Berkeley Lights, Inc. v. The University Of British ColumbiaNo claims unpatentablePTAB · Jan 19, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable because the asserted references did not establish selective recovery or a sufficient motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 8–9 (citing Ex. 1002 ¶ 40). Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 3–4 (citing Ex. 2012 ¶¶ 19–20). We find Petitioner’s uncontested articulation to be reasonable in light of the subject matter involved in the ’408 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:15–2:54 (describing the field and related art as relating to the construction and use of microfluidic devices in cell culture and analysis). Thus, we adopt it for our decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no terms require express construction for purposes of resolving the challenges in this proceeding.” Pet. 9; accord Pet. 12. Petitioner also notes that in the parallel district court proceedings, Patent Owner has proposed constructions for the terms chamber and retaining position that differ from Petitioner’s proposed constructions. Pet. 9–10 (citing Ex. 1013 App’x A, 1, 3 (Patent Owner’s proposed constructions); Ex. 1021, 7, 8 (Petitioner’s proposed constructions); Ex. 1002 ¶ 44). In those proceedings, Patent Owner’s proposed construction for chamber is “an enclosed space within a microfluidic device,” and its proposed construction for retaining position is “a location in the chamber at which a cell is maintained during cell culture and media exchange.” Ex. 1013, 6, 8. Although Petitioner does not contend that its arguments rely on the choice of construction for these terms, Petitioner adopts Patent Owner’s constructions for this proceeding. Pet. 11. Patent Owner does not contest these proposed constructions, or propose any other explicit constructions. See generally PO Resp. We agree with Petitioner that we do not need to construe the terms chamber and retaining position to decide the issues presented in this proceeding, and to the extent we need to interpret the meaning of any claim language, we address the interpretations below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“selectively recovering a cell based on the response in the monitoring step. Although Dimov discloses non-selective recovery and briefly lists a few general techniques that might be used for either mixing or recovery, Dimov does not specifically indicate which of the techniques would be useful for recovery rather than just mixing, and Dimov does not explicitly disclose that any cell recovery would be selective. Nor has Petitioner shown that Dimov inherently discloses selectively recovering any particular cell that has been cultured and monitored, because, as Dr. Gale persuasively testifies, Dimov’s removal techniques could, as far as a person of ordinary skill in the art would have known based on Dimov’s disclosure, be merely for “removing . . . unwanted particles out of the capture chamber/trench.” Ex. 2012 ¶ 64; see also id. ¶ 63 (“Dimov . . . may suggest removing cellular materials (rather than intact cells) after capture . . . .”). In other words, given Dimov’s general focus on performing experiments within the trenches and the lack of any specific disclosure about how or why to remove cells, Petitioner has not met its burden to show that Dimov’s potential cell-removal techniques would have necessarily been based on a response of a specific cell being cultured and monitored in limitation 1D. We also agree with Patent Owner that Dimov does not disclose any specifics about how to carry out a selective cell removal based on one of Dimov’s listed techniques, such as laser tweezers. See PO Resp. 8–9. Nor does Petitioner meet its burden of showing that such a technique would have been within the ordinary skill in the art at the time of the claimed invention. “In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation.” Novo Nordisk Pharms., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed. Cir. 2005)). Given the labyrinthine outlet channels leading from Dimov’s chambers to the common waste stream and Dimov’s lack of any disclosure of a way to identify and extract cells in the outlet streams, we credit Dr. Gale’s testimony that there would have been substantial obstacles to recovering any specific cells that had been liberated from a trench in Dimov’s device. See Ex. 2012 ¶ 63. Petitioner has not shown that a person of ordinary skill in the art would have overcome those obstacles without undue experimentation.” slip op. at 23
- Strike new argumentNew argument disregardedOther
“18 Patent Owner contends that these arguments are untimely, and we agree at least as to certain of the arguments. See Paper 27, Nos. 6, 9, 10; see Paper 28, Nos. 6, 9, 10 (Petitioner’s responses). The new arguments introduce new theories as to how to combine Park and Kovac, including additional steps or new modifications necessary for a successful combination, which could have been presented in the Petition but were not. Nevertheless, as we discuss below, we find these arguments unpersuasive. Petitioner also contends, for the first time, that a person of ordinary skill in the art would have addressed the problem of Park’s downward-forcing circulation patterns19 by starting with flow turned off and then turning on flow “after levitation begins, including after the cell has been pushed up out of a well high enough to be clear of recirculating flow lines created once it is turned on.” Pet. Reply 19–20 (citing Ex. 1039 ¶¶ 175– 177); see also id. at 22 (citing Ex. 1039 ¶ 193).” slip op. at 64
Patent outcomesUS 10,087,408 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,087,408 - Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.All claims unpatentablePTAB · Dec 9, 2022 · IPR2021-00988 · APJ Brian D Range · IPR · Final written decision
Claims 1–6, 11, and 13 are unpatentable as obvious over Huang and Wu; claims 1, 2, and 4 are also anticipated by Zhang.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless technical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8
- Skill levelSkill level board ownOther
“Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1001, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself. We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of (a) experience designing, developing, and/or researching in the field or 7 Our analysis is constrained to the extent neither party addresses the Best Medical factors with particularity. For example, the briefing does not address the educational level of the inventor. patent’s field.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We next assess whether or not Dr. Kimball’s testimony properly qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of a person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues, however, that where claim 4 recites “the first and second solar cell series are coupled with the bypass diode of the first solar cell unit via a first cross-connector, and the third and fourth solar series are coupled with the bypass diode of the second solar cell unit via a second cross-connector,” the word “a” means “one.” PO Resp. 13–14. In particular, Patent Owner argues that a person of ordinary skill in the art via one or more cross-connectors” and that “a” meaning “one” in claim 4 is necessary for claim 4 to further limit claim 1. Id. Petitioner argues that “a” means “one or more.” Pet. Reply 2–4. We agree with Petitioner. The ’040 patent explicitly defines “a” consistently with Petitioner’s position by stating that “it should be noted that the term ‘comprising’ does not exclude other elements or steps and the ‘a’ or ‘an’ does not exclude a plurality.” Ex. 1001, 7:62–63. The ’040 patent’s explicit definition is consistent with typical usage of “a” in this patent law context. See, e.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (explaining that “a” in patent parlance means “one or more” for open-ended claims reciting the transitional phrase “comprising”). Patent Owner’s argument regarding claim construction is unpersuasive because Claim 4 further limits claim 1 by explicitly requiring first and second crossconnectors; claim 1 does not recite a “cross-connector.” Ex. 1001, 8:2–22. Thus, we construe “a” in this context as meaning “one or more.”” slip op. at 15
Patent outcomesUS 10,749,060 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,749,060 - FTC Solar, Inc. v. FCX Solar, LLCInstitution deniedPTAB · Nov 28, 2022 · IPR2022-01101 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least an undergraduate degree in mechanical engineering, physics, or a similar discipline, and at least three to five years of work experience designing, analyzing, or evaluating solar trackers.” Pet. 6 (citing Ex. 1003 ¶¶ 35–39). Patent Owner supplements Petitioner’s description of a POSITA to include as similar disciplines “applied aerodynamics, aerospace engineering, fluid dynamics, photovoltaic systems engineering” and asserts that a POSITA in the field of solar trackers would “enlist the expertise of a damper expert in designing the dampers to provide desired characteristics to trackers.” Prelim. Resp. 14. For the purposes of this Decision, we adopt Petitioner’s description of the level of one of ordinary skill in the art, as modified by Patent Owner; any differences between the parties’ descriptions do not affect our analysis. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 6
- Prior constructionPrior construction adoptedDecided for patent owner
“In the litigation, the District Court determined that a person having ordinary skill in the art would understand “damping ratio” to refer to “the damper providing the photovoltaic system with different damping ratios depending on the conditions.” Ex. 2005, 6:15–20. The District Court noted that intrinsic evidence supports “references to a damper having a [damping] ratio are made in the context of a damper installed in a system and are not about a damper in isolation.” Id. at 6:21–25. The District Court also noted that FTC’s7 expert, Dr. Codd, recognized that “pluck testing is the primary tool for determining a damping ratio, and that a person of ordinary skill in the art would be familiar with how to perform pluck testing.” Id. at 8:4–7. In view of the parties’ agreed-upon definition of the term “damping ratio” and the District Court’s claim construction analysis, we construe “damping ratio” to mean “a ratio determined by dividing the actual damping coefficient of a system by the critical damping coefficient of the system.”” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“parameter that is used imprecisely in the claims of the ’782 Patent to signify the damping force provided by the damper to the system.” Pet. 7 n.4 (citing Ex. 1003 ¶ 40 n.7). Thus, the Petition acknowledges a difference between the terms “damping ratio” and “damping force.” The footnote concludes “[h]ere, Petitioner has adopted Patent Owner’s interpretation of ‘damping ratio’ to signify the damping force provided by the damper to the invariant system.” Id. Petitioner cites to paragraph 40 n.7 of the Codd Declaration to support its assertion, but that paragraph parrots the language in the Petition, and Dr. Codd does not provide the underlying facts supporting his testimony.9 See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,903,782 - Motif Foodworks, Inc. v. Impossible Foods Inc.Institution deniedPTAB · Oct 26, 2022 · IPR2022-00887 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were unpatentable on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“replica approximates the taste, texture or color of an equivalent muscle tissue derived from an animal source.” Ex. 1001, 5:34–36; Pet. 15. The ’761 patent describes many meat products comprising a high proportion of striated skeletal muscle in which individual muscle fibers are organized in an isotropic fashion and that replicas may mimic muscle by being “formed into asymmetric fibers” that “replicate muscle fibers” using extrusion and other methods known in the art. Ex. 1001, 25:48–50, 26:44–57; Pet. 15–16. These portions of the ’761 patent support Patent Owner’s position that “muscle replica” is not actual muscle because actual muscle tissue is “not a replica” of muscle tissue. Prelim. Resp. 8. Petitioner directs us to the ’761 patent’s disclosure that “[i]n some embodiments, the muscle replica and/or meat substitute product comprising the muscle replica are partially derived from animal sources.” Ex. 1001, 25:42–45; Pet. 16. Petitioner asserts that claim 1 encompasses “replicas made with animal products” because claim 12, which depends from claim 1, recites “wherein said beef replica product contains no animal products.” Ex. 1001, 50:26–28; Pet. 16. However, as Patent Owner points out, the ’761 patent discloses components derived from an animal source such as myoglobin, an isolated and purified heme-containing protein. Ex. 1001, 37:30–47, 38:25–32; Prelim. Resp. 8. The ’761 patent describes muscle replica being “partially derived from animal sources” or “entirely derived from non-animal sources.” Ex. 1001, 25:42–48 (emphasis added). The ’761 patent lists a number of components present in animal muscle tissue that may be included in the muscle replica and specifically describes protein components that are isolated, purified proteins or artificially designed proteins to emulate physical properties of animal muscle tissue. Ex. 1001, 26:59–27:43. Therefore, based on the context of “muscle replica” as used in the ’761 patent written description, the term “muscle replica” may include components derived from animal sources; however, animal muscle tissue itself is not “muscle replica.” As such, a “replica” does not encompass the actual material that it replicates or approximates. Accordingly, we construe “muscle replica” to mean “a composition approximating the taste, texture or color of an equivalent muscle tissue derived from an animal source; the muscle replica may include components derived from an animal source, but does not include muscle tissue itself” and “replica” such that it “excludes the actual material being replicated or approximated” for purposes of the present decision.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted); see PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (inherency “may not be established by probabilities or possibilities.”). In addition, a prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim’” in order to anticipate under 35 U.S.C. § 102. NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“animal-free embodiments in McMindes, Petitioner does not clearly articulate that it is relying on an embodiment of McMindes that does not contain any animal tissue in combination with hemoglobins from Ljublinksij as corresponding to the claimed muscle replica. Petitioner’s failure to clearly articulate its challenge violates our rules, and is inadequate to satisfy Petitioner’s burden on institution. See 37 C.F.R. § 42.104(b)(4) (requiring, inter alia, that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). To the extent that Petitioner is relying on a combination that includes an entirely animal-free embodiment of McMindes, Petitioner contends that “a POSITA would be motivated to incorporate Ljublinskij’s hemoglobin at a concentration between 0.1–5.0%, precisely as claimed in the ’761 patent” to attain desirable coloration of the McMindes product. Pet. 59. This argument is not persuasive, as Petitioner relies on the ’761 patent itself for the exact amount of heme protein that a person of ordinary skill in the art would have incorporated into McMindes’s animal-free product to achieve a desirable color. Pet. 59 (citing Ex. 1001, 34:50–55, 37:24–26). In this regard, we agree with Patent Owner that Petitioner’s suggested motivation to combine McMindes and Ljublinskij is guided by improper hindsight. See Prelim. Resp. 45–46. We recognize Petitioner’s assertion that “McMindes’s ‘preferred’ concentration of colorant is ‘between 0.1% to 5%.’” Pet. 59 (citing Ex. 1003 ¶ 91). This statement in McMindes, however, refers to the concentration of colorants such as caramel color and other food dyes, and McMindes provides great detail for coloring a soy protein containing food product, including the use of carmine as “an internal color” and caramel as “the external color” to achieve contrasting red and brown coloring. Ex. 1003 ¶¶ 86–91. Petitioner asserts a person of ordinary skill in the art would substitute Ljublinskij’s hemoglobin for these colorants because it purportedly provides “a more natural meat-like coloring than these ingredients,” but Petitioner does not direct us to evidence demonstrating that the use of hemoglobin achieves this result. Pet. 60. Petitioner cites to paragraph 372 of the Tarté Declaration to support its assertion, but that paragraph parrots the language in the Petition, and Dr. Tarté does not provide the underlying facts supporting his testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Thus, we find Petitioner does not provide adequate support for its assertions regarding the substitution of Ljublinskij’s hemoglobin for the colorants of McMindes at all, let alone in the amounts recited in claim 1. In addition, Petitioner’s attempt to address separately “muscle replica” and “comprising 0.1%-5% of a heme-containing protein” is unavailing, as it effectively rewrites the claim language. Accordingly, Petitioner has not established a reasonable likelihood of prevailing in showing claim 1, as well as its dependent claims, would have been obvious over McMindes in combination with Ljublinskij.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“obviousness argument does not sufficiently explain what portions of McMindes’s disclosure would have been modified by a POSITA and how those portions would have been modified to form a “muscle replica” as required by claim 1. To the extent Petitioner’s argument relies on McMindes’s hybrid product containing meat, Petitioner has not established that McMindes discloses a “muscle replica comprising 0.1%–5% of a heme-containing protein, at least one sugar compound and at least one sulfur compound” as construed herein. To the extent that Petitioner’s argument relies on substituting Sonac’s colorant for meat with McMindes’s colorants for a nonmeat containing product, Petitioner does not establish sufficiently that a person of ordinary skill in the art would have had reason to make that substitution or that using different types of colorants for such different products are interchangeable. We recognize Petitioner’s assertion that Sonac teaches that Harimix gives meat products a “natural color,” but there is insufficient evidence to support a determination that the substitution would result in “better meat-like coloring” than those used in McMindes. Pet. 63– 64 (citing Ex. 1003 ¶ 388). At best, Dr. Tarté’s testimony demonstrates Harimix provides a “meat color,” whereas carmine (used in McMindes) produces a “red/pink” color. Ex. 1003 ¶ 388. But Dr. Tarté does not explain sufficiently why one color is better than another, or address the fact that McMindes does not use only carmine as its colorant. Accordingly, Petitioner has not established a reasonable likelihood of prevailing in showing claim 1, as well as its dependent claims, would have been obvious over McMindes in combination with Sonac.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,863,761 - PTAB · Aug 31, 2022 · IPR2022-00661 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Because the “total amount of protein . . . on a dry weight basis” required by claim 1 and taught by the asserted prior art is disputed in the parties’ papers, we construe this claim term in order to determine whether or not to institute trial. As Petitioner indicates, the ’146 patent states “the term ‘total protein’ pertains to the total amount of true protein of a composition or product and disregards non-protein nitrogen (NPN).” Ex. 1001, 3:53–56; Pet. 11. The ’146 patent also specifies “the term ‘dry weight’ of a composition or product relates to the weight of the composition or product when it has been dried to a water content of 3% (w/w) water.” Ex. 1001, 11:26–29; Pet. 11. These portions of the ’146 patent support Petitioner’s proposed construction of “total amount of protein . . . on a dry weight basis” as the total weight of true protein disregarding non-protein nitrogen when the composition in question has been dried to 3% (w/w) water. Pet. 11. Accordingly, we adopt Petitioner’s construction for purposes of the present decision.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted); see PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (inherency “may not be established by probabilities or possibilities.”). The proper inquiry for inherent anticipation is whether the claimed limitations “necessarily result” from practicing V Powder. See, e.g., Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 960–61 (Fed. Cir. 2014) (affirming judgment that claims were not inherently anticipated where the prior art only showed that the limitation might occur, not that it inevitably occurred). Even if a theoretical value is appropriate to establish the claimed limitations “necessarily result” from practicing V Powder, Petitioner has not established that V Powder discloses a protein amount on a dry weight basis as construed herein. Petitioner argues that “[t]he V Powder Publication taught that ‘substantially denatured whey protein . . . is dried to a moisture content of less than 5%’” and that, “[t]hus, the protein content of Powder F was reported ‘on a dry weight basis.’” Pet. 28–29 (quoting Ex. 1004, 24:1– 2). V Powder does indeed teach that, “[i]n certain embodiments the heat treated, substantially denatured whey protein, for example the WPC or WPI, is dried to a moisture content of less than 5%.” Ex. 1004, 24:1–2. Petitioner, however, has not shown sufficiently that a dried to a moisture content of less than 5% necessarily discloses the required dried to a moisture content of 3%. Thus, Petitioner has not established a reasonable likelihood of prevailing in showing V Powder anticipates claims 1–4, 6–9, and 22. slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although the ’146 patent defines “dry weight basis” as requiring drying “to a water content of 3% (w/w) water,” V Powder teaches only drying “to a moisture content of less than 5%.” Ex. 1001, 11:26–29; Ex. 1004, 24:1–2. Petitioner does not explain why the obviousness of a claim requiring a specific water content of 3% is supported by a reference teaching a much broader range of water contents between 0% and 5%. Pet. 28–29. Nor is it clear to us why such an obviousness argument should prevail. It is true that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). But the specific water content of the challenged claims (precisely “a water content of 3% (w/w) water”) is not a “somewhat narrower claimed range” that is encompassed by the broader range of V Powder. Id. It is not a range at all; rather, it is a single, discrete point. This distinguishes the present situation from that in Peterson, in which the claims at issue recited ranges formed from single values that were modified in each case by the term “about.” Id. at 1327 (reciting, e.g., “about 14 percent chromium,” “about 9.5 percent cobalt,” and “about 3.8 percent tungsten”). Instead, this case presents a situation more analogous to that in In re Baird, in which the prior art taught a wide range of chemical compounds and the claims at issue recited a single compound within that range. 16 F.3d 380, 382 (Fed. Cir. 1994) (“the generic diphenol formula disclosed in [the reference] . . . encompasses more than 100 million different diphenols, only one of which is [the claimed] bisphenol A”). The teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus. In re Baird, 16 F.3d at 382. Here, the challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 13:18–21. There are numerous discrete points within the continuous range of 0% to 5% water content taught by V Powder. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that the disclosure in V Powder supports the obviousness of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that the prior art teaches or suggests the “dry weight basis” limitation present in all the challenged claims. Thus, Petitioner has not shown sufficiently that the combination of V” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,709,146 - Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentablePTAB · Aug 17, 2022 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Final written decision
The Board found that Tennant did not prove claims 13, 14, and 17–27 unpatentable because the asserted references did not establish the claimed microbubbles and nanobubbles, and the obviousness combinations were inadequately supported.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states, for “purposes of this proceeding, PO does not challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Because patentee has acted as its own lexicographer, and because Petitioner agrees that the definition provided in the specification is the preferred construction, we adopt the construction of “nanobubble” provided in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). Namely, we construe “nanobubble” as “a bubble with a diameter less than that necessary to break the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any additional language to our construction, as proposed by Petitioner, because the additional quoted sentence in the specification appears to describe an effect of nanobubbles on the appearance of water when nanobubbles are present, rather than define the nanobubbles themselves. On this record, we determine that no other claim terms require express construction.” slip op. at 14
- BurdenDecided for patent owner
“We disagree that our Institution Decision established a prima facie case that Petitioner met its burden at the Final Written Decision stage. An affirmative decision on institution is a determination that Petitioner has shown, on the record at that stage in the proceeding, that Petitioner has a reasonable likelihood of prevailing on its arguments as to at least one challenged claim. Dec. 40; 35 U.S.C. § 314(a). To prevail in an instituted inter partes review, however, 35 U.S.C. § 316(e) requires Petitioner to meet “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial . . . . The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.”). To state that our Institution Decision established a prima facie case that Petitioner was correct would be erroneous, as such a position conflates different burdens required of Petitioner and, in doing so, would have us improperly give Petitioner an advantage in the actual trial culminating in a final written decision. Fan Duel, 966 F.3d at 1341–42.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“On this complete record, we find that Petitioner’s testing does not sufficiently demonstrate that Wikey inherently discloses nanobubbles. Pet. 22–29. Petitioner apparently had the ability to test for the express disclosure of nanobubbles in its Wikey-based apparatus, but did not do so. Sur-Reply 2–3. Patent Owner points out that nanobubbles, which Petitioner’s expert indicated were on the order of 0.1 microns, are detectable using available technology that Petitioner knew of and had used in the past. Id. However, Petitioner’s expert acknowledged that he did not do any testing that would determine whether nanobubbles were formed. Id. at 7 (citing Ex. 2172, 70:1–4). Petitioner’s reliance on milkiness and supersaturation to demonstrate the presence of nanobubbles is also unsupported. Petitioner argues that milky appearance equals supersaturation (Reply 9 (citing Ex. 1101, 9:38– 50)), and also that milky appearance equals nanobubbles (id. (citing Ex. 1101, 4:14–15)); the inference Petitioner apparently wants us to draw is that supersaturation equals nanobubbles. Patent Owner, however, persuasively argues that dissolved oxygen content over 100% does not prove the water is milky. PO Resp. 25–26; Sur-Reply 6–7; see also Tr. 13:24–26 (Petitioner’s counsel agreeing that “you can have supersaturation without milkiness”). Patent Owner also demonstrates that supersaturation does not necessarily mean that nanobubbles are present. PO Resp. 26; Sur-Reply 7; Ex. 2172, 76:9–14, 77:23–78:21. Thus, Petitioner’s argument based on supersaturation equaling nanobubbles because milkiness equals both breaks down because milkiness does not necessarily equal either. Accordingly, we determine that Petitioner’s arguments and testing fail to show that Wikey inherently discloses nanobubbles.” slip op. at 28
Patent outcomesUS RE45,415 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Liquidia Technologies, Inc. v. United Therapeutics CorporationAll claims unpatentablePTAB · Jul 19, 2022 · IPR2021-00406 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over the ’212 patent, Voswinckel JESC, and Voswinckel JAHA; the Board did not reach the other grounds.
RulingsFinal written decision- Strike new argumentNew argument consideredDecided for petitioner
“Petitioner is permitted a “limited opportunit[y]” to present new evidence in or with its Reply, as long as that new evidence is “responsive to the prior briefing” and does not constitute “changing theories after filing [the] petition.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29, at 14–15 (PTAB Dec. 20, 2019) (precedential). Here, both of the arguments that Patent Owner alleges are new—the argument that Voswinckel JESC and Voswinckel JAHA were presented publicly and the argument that these references were cited in other publicly available references—respond to Patent Owner’s argument in the Patent Owner Response that Voswinckel JESC and Voswinckel JAHA were not publicly accessible. PO Resp. 11–18. The argument that Voswinckel JESC was publicly presented is not a change in theory from the Petition, because Petitioner presented this argument in the Petition. Pet. 22. As to both Voswinckel JESC and Voswinckel JAHA, Petitioner’s Reply evidence showing citation to the references in other publicly accessible documents is merely additional evidence supporting Petitioner’s original theory that a person of ordinary skill in the art could have located the references. Accordingly, we find that the following arguments made by Petitioner are not untimely: (1) that Voswinckel JESC was presented publicly, (2) that Voswinckel JESC was referenced in a publicly accessible document, and (3) that Voswinckel JAHA was referenced in a publicly accessible document.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Voswinckel JESC and Voswinckel JAHA were publicly accessible. “[T]he presence of a ‘research aid’ can . . . establish public accessibility” of a reference if that research aid “provide[s] a skilled artisan with a sufficiently definite roadmap leading to” the reference by “provid[ing] enough details [to] determine that an interested party is reasonably certain to arrive at the destination: the potentially invalidating reference.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1350 (Fed. Cir. 2016). Here, Petitioner directs us to research aids for finding both Voswinckel JESC and Voswinckel JAHA: a “June 2005 Ghofrani article in the journal Herz” for the former, and “a March 2005 article authored by Roxana Sulica et al. in the Expert Review of Cardiovascular Therapy” for the latter. Reply 3, 7 (citing Ex. 1010, 298, 301; Ex. 1104, 359). The Ghofrani article cites Voswinckel JESC as providing a solution to patients experiencing “pain at the injection site” by replacing injected treprostinil for “pulmonary arterial hypertension” with “inhaled treprostinil.” Ex. 1010, 298 (citing reference 6), 301 (defining reference 6 as Voswinckel JESC). The Ghofrani article also discusses the study reported in Voswinckel JESC, summarizing both the “major reduction in pulmonary selective pressure and resistance” and the lack of “adverse effects” described in Voswinckel JESC. Id. The Sulica article cites to Voswinckel JAHA, explaining that the reference reports that “inhaled treprostinil demonstrated substantial pulmonary vasodilatory efficacy in acute administration, as well as symptomatic and functional benefit in chronic use in a small number of PAH patients.” Ex. 1104, 351, 359. Thus, both the Ghofrani article and the Sulica article provide roadmaps directing a person of ordinary skill in the art looking for successful studies discussing the use of inhaled treprostinil in pulmonary arterial hypertension straight to Voswinckel JESC or Voswinckel JAHA. Because these articles provide these roadmaps, they are “research aid[s]” that “establish [the] public accessibility” of Voswinckel JESC and Voswinckel JAHA. Blue Calypso, 815 F.3d at 1350.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The preponderance of the evidence supports Petitioner’s position. Patent Owner is correct that Voswinckel JESC notes that side effects could occur more frequently at higher doses than at lower doses. Ex. 1007, 7. But there is considerable evidence of record that a person of ordinary skill in the art would not have avoided increasing Voswinckel JESC’s dose due to the side effects reported in Voswinckel JESC. First, Dr. Hill testifies that “[p]otential side effects are always weighed against potential clinical benefit, and pulmonary arterial hypertension is a serious, life-threatening disease where physicians and patients are more willing to tolerate side effects . . . to obtain clinical benefit.” Ex. 1106 ¶ 74. Second, Dr. Waxman testifies that “[u]sually the headache goes away” and “there are things that can be done to help ameliorate the cough so in general we are able to get over that issue.” Ex. 1108, 101:19–102:10. Together with Voswinckel JESC’s description of potential side effects as “mild and transient,” this evidence supports a finding that a person of ordinary skill in the art would not have been deterred from pursuing the course that is supported by the evidence to which Petitioner directs us. With respect to reasonable expectation of success, Petitioner argues that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA because Voswinckel JAHA teaches that “[t]olerability is excellent” for its short-duration, high-concentration treprostinil inhalation therapy. Pet. 33 (citing Ex. 1008, 3). Other than the argument discussed above about side effects reported in Voswinckel JESC, Patent Owner does not raise any timely counter to this argument.8 PO Resp. 10–40. The record supports Petitioner’s argument. Ex. 1008, 3. Accordingly, Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reason to combine the teachings of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA and that they reasonably would have expected to succeed in doing so.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for petitioner
“[U]nexpected results must establish . . . a difference between the results obtained and those of the closest prior art.” Bristol-Myers Squibb v. Teva Pharms. USA, 752 F.3d 967, 977 (Fed. Cir. 2014). Petitioner argues that the prior art over which Patent Owner argues the challenged claims showed unexpected results is not the closest prior art. Reply 24. We agree. As noted above, Patent Owner argues that the challenged claims show unexpected results over inhaled iloprost, intravenous epoprostenol, and intravenous treprostinil. PO Resp. 55–57. But the challenged claims recite inhaled treprostinil, and, as discussed above, inhaled treprostinil is taught by each of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA. Ex. 1001, 18:22–44; Ex. 1006, code (57); Ex. 1007, 7; Ex. 1008, 3; Ex. 1035, 582. Patent Owner does not even allege that the results of the challenged claims are unexpected over these references.9 Accordingly, we find that the evidence of record does not establish that the challenged claims produced a result that was unexpected over the closest prior art. slip op. at 22
Patent outcomesUS 10,716,793 unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,716,793
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.