• Gilead Sciences, Inc. v. The United States Of America, Represented By The Secretary Of The Department Of Health & Human ServicesInstitution denied
  PTAB · Feb 5, 2020 · IPR2019-01456 · APJ Timothy G Majors · IPR · Institution

  The Board denied institution on claims 1–19 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over Szekeres or Smith and Szekeres.

  RulingsInstitution decision

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

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008); In re Chudik, 851 F.3d 1365, 1372 (Fed. Cir. 2017) (“[A] prior art reference anticipates a claim only if it discloses all the elements in the same form and order as in the claim.”) (internal quotation marks and citation omitted). Turning to obviousness, a claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which that subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) 19 objective evidence of nonobviousness when presented. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A party who petitions the Board for a determination of unpatentability” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “claim’s preamble is limiting when it is “necessary to give life, meaning, and vitality to the claim.” MBO Labs., Inc. v. Becton Dickinson & Co., 474 F.3d 1323, 1330 (Fed. Cir. 2007). As an initial matter, we observe that claim 1’s step (a) recites “selecting a primate host not infected with the immunodeficiency retrovirus.” Ex. 1007, 13:1–2 (emphases added). The “immunodeficiency retrovirus” in step (a), therefore, requires the preamble language for antecedent basis, and the preamble provides further meaning about the nature of the infection to which the claim is directed—“a self-replicating infection by an immunodeficiency retrovirus.”16 Id. at 12:65–67;” slip op. at 24

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

    “It is not clear that further interpretation of this phrase is needed to resolve the dispute presented here. Nevertheless, Petitioner provides sufficient support for its interpretation on this record and, as it is unopposed at present by Patent Owner, we will adopt Petitioner’s interpretation of this phrase for purposes of this Decision.” slip op. at 31

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

    “The brief, high-level mention in Szekeres of Truvada’s FDA-approval does not sufficiently describe Truvada’s use in a PrEP treatment that satisfies step (b) of the claims. Although claim language need not appear ipsissimis verbis in the allegedly anticipating prior art,24 the test remains one of “strict identity.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (explaining that the “test for novelty” requires “strict identity”). When anticipation is the issue, close is not enough. Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1560 (Fed. Cir. 1985) (holding “anticipation is not shown by a prior art disclosure which is only ‘substantially the same’ as the claimed invention”), overruled on other grounds, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc). Indeed, “[a] prior art disclosure that ‘almost’” discloses all the elements arranged exactly as in the claim, “may render the claim invalid under § 103, [but] it does not ‘anticipate.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (internal citation omitted). Petitioner’s theory pieces together a host of disclosures, such as a potential for resistance with certain agents, and then filters and combines those disclosures based on what an ordinarily skilled person allegedly would have “understood” to ultimately conclude that Szekeres unambiguously 24 In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). 40 describes PrEP combination therapy with Truvada. Pet. 38–42 (asserting that Szekeres “teaches orally administering Truvada in a tablet to an uninfected individual before an HIV exposure”).25 But Szekeres simply does not describe in any adequate detail actual or prophetic use of Truvada in a PrEP regimen. To our eyes, Petitioner’s theory invokes obviousness (if anything), not anticipation. See Net MoneyIN, 545 F.3d at 1371 (Fed. Cir. 2008) (“[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.”).” slip op. at 40

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,335,423
• Gilead Sciences, Inc. v. The United States Of America, Represented By The Secretary Of The Department Of Health & Human ServicesInstitution denied
  PTAB · Feb 5, 2020 · IPR2019-01455 · APJ Timothy G Majors · IPR · Institution

  The Board denied institution because Petitioner had not shown a reasonable likelihood that claims 1–19 were unpatentable over Szekeres or Smith and Szekeres.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “claim’s preamble is limiting when it is “necessary to give life, meaning, and vitality to the claim.” MBO Labs., Inc. v. Becton Dickinson & Co., 474 F.3d 1323, 1330 (Fed. Cir. 2007). As an initial matter, we observe that claim 1’s step (a) recites “selecting a primate host not infected with the immunodeficiency retrovirus.” Ex. 1005, 12:35–36 (emphases added). The “immunodeficiency retrovirus” in step (a), therefore, requires the preamble language for antecedent basis, and the preamble provides further meaning about the nature of the infection to which the claim is directed—“a self-replicating infection by an immunodeficiency retrovirus.”17 Id. at 12:32–33; Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”). Furthermore, the body of claims 1 and 13 requires, inter alia, administering “pharmaceutically effective amount[s]” of the combined agents. Without the preamble and other allegedly non-limiting portions of the claims, sufficient context for the “effective amount” language is lacking. Rather, these are amounts that can bring on the recited efficacy—in claim 1, “protecting” the host from infection. Otherwise the claims, focusing on the” slip op. at 24

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

    “in time after an HIV exposure when the body’s immune system alone cannot prevent progression of the HIV infection.” Pet. 24 (citing 1009 ¶¶ 187– 188). Petitioner asserts that this corresponds to a time about 72 hours after exposure “when infected CD4+ cells are being produced faster than the immune system can destroy them.” Id. at 24–25; Ex. 1005, 1:45–49 (describing retroviral particles being transferred to an individual and “self-replicating” “within a few days”). Petitioner, thus, asserts that “self-replicating infection” means “an HIV infection that can no longer be suppressed solely by the host’s immune system.” Pet. 25 (italics omitted). 30 Patent Owner does not challenge Petitioner’s interpretation of this phrase or offer an interpretation of its own. Prelim. Resp. 26–31. It is not clear that further interpretation of this phrase is needed to resolve the dispute presented here. Nevertheless, Petitioner provides sufficient support for its interpretation on this record and, as it is unopposed at present by Patent Owner, we will adopt Petitioner’s interpretation of this phrase for purposes of this Decision.” slip op. at 30

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

    “Patent Owner on this record. Szekeres describes PrEP monotherapy using TDF as the agent. Indeed, that is the only agent Szekeres describes being used in the numerous ongoing PrEP studies/trials or even projected for use in PrEP studies planned for the future. Ex. 1011, 6–11 (“These studies all make use of tenofovir disoproxil fumarate (TDF) as the investigational PrEP agent.”). And, even with respect to those studies, Szekeres expresses reservations as to whether TDF monotherapy, much less a combination therapy like claimed, would be safe or effective. See id. at 1 (“If PrEP proves to be safe and effective, numerous clinical questions will need to be resolved”), 3 (“It is not yet known whether PrEP is a safe or effective approach to HIV prevention.”), 12 (describing questions about PrEP’s use as “currently unanswerable and may or may not be clarified by currently planned studies”) (emphases added). We are unpersuaded on this record that those reservations reflect only “epidemiological” issues or questions, and that they are inapplicable to whether PrEP would be seen as safe or effective in particular individuals following a course of treatment. The brief, high-level mention in Szekeres of Truvada’s FDA-approval does not sufficiently describe Truvada’s use in a PrEP treatment that satisfies step (b) of the claims. Although claim language need not appear 39 ipsissimis verbis in the allegedly anticipating prior art,25 the test remains one of “strict identity.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (explaining that the “test for novelty” requires “strict identity”). When anticipation is the issue, close is not enough. Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1560 (Fed. Cir. 1985) (holding “anticipation is not shown by a prior art disclosure which is only ‘substantially the same’ as the claimed invention”), overruled on other grounds, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc). Indeed, “[a] prior art disclosure that ‘almost’” discloses all the elements arranged exactly as in the claim, “may render the claim invalid under § 103, [but] it does not ‘anticipate.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (internal citation omitted). Petitioner’s theory pieces together a host of disclosures, such as a potential for resistance with certain agents, and then filters and combines those disclosures based on what an ordinarily skilled person allegedly would have “understood” to ultimately conclude that Szekeres unambiguously describes PrEP combination therapy with Truvada. Pet. 38–42 (asserting that Szekeres “teaches orally administering Truvada in a tablet to an uninfected individual before an HIV exposure”).26 But Szekeres simply” slip op. at 39

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot reached

    “On whether the ordinarily skilled person would have combined Smith and Szekeres to produce the claimed subject matter with a reasonable expectation of success, we have doubts on this record. From the prior art and other evidence here, a theme emerges. That is, while some of the evidence might indicate promise with TDF and TDF-combination therapies in PEP or PrEP, other (and sometimes the same) evidence casts doubts on whether those therapies would be safe or effective. For example, Subbarao notes a “partial protection” with TDF monotherapy among the group of treated primates, but data show that only 1 of the 8 subjects receiving TDF remained uninfected. See Ex. 1050, 907 (Fig. 1, showing all 4 subjects receiving weekly administration became infected, and 3 of 4 receiving daily, oral administration became infected). Subbarao further explains that whatever delay in infection was seen was not statistically significant. Id. at 904, 909 (explaining, in 2006, that there “exists no precedent for giving chemoprophylaxis to large populations of people at risk for infection through repeated exposure to HIV”). Grant-2006 (cited by Petitioner) notes that Subbarao’s model “set the bar much higher for chemoprophylaxis” and remarks that “[a]t the end of 14 weeks, all animals were infected.” Ex. 1051, 874. According to Grant-2006, however, the “limited efficacy of TDF alone in highly stringent monkey models . . . raise the possibility that combinations of agents may be more suited to PrEP,” and hypothesizes that Truvada might be a promising drug combination. Id. at 874–875. Yet, with respect to the then-ongoing 48 investigations with TDF, Grant-2006 explains that “[l]imited information about safety . . . may become available by the end of 2006, whereas information about efficacy is not expected until 2008-2009,” and “[u]ntil then, PrEP is not recommended for clinical use.” Id. at 875. A similar pattern is present in Szekeres and Smith. For example, Szekeres discloses that “[a]lthough some guidelines exist for nonoccupational PEP, the safe and effective delivery of PEP remains complex, and reliable data on the use of PEP in settings in the United States is not available.” Ex. 1011, 4. With respect to PrEP, Szekeres notes that studies investigating TDF’s efficacy are “just beginning to get underway” and questions about how PrEP should be used were, at that time, “unanswerable.” Id. at 12, 23 (“Ultimately, however, data from planned PrEP studies will be needed before it can be determined for whom PrEP is an appropriate strategy.”). On the other hand, Szekeres discloses that “models” about the potential impact in California “indicate that introduction of PrEP may quickly reduce incidence, with effects on prevalence being less dramatic and over a longer period of time.” Id. at 1; see also id. at 11–12 (“As prescription medicines go—and HIV drugs in particular—TDF appears to be a relatively safe agent with few adverse side effects and interactions with other drugs.”). Smith teaches, for example, that “data indicate that nPEP might sometimes reduce the risk of HIV infection,” but also discloses that “[a]nimal studies have demonstrated mixed results,” that “[a]ntiretriviral PEP does not prevent all infections” and “PEP failures have been documented,” and “[b]ecause nPEP is not 100% effective in preventing transmission” and carries risks for “serious toxicities, nPEP should be used 49 only for infrequent exposures.” Ex. 1012, 2, 5, 6 (disclosing that persons who engage in conduct “that result[s] in frequent, recurrent exposures . . . should not take nPEP”).” slip op. at 48

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,937,191
• American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCAll claims unpatentable
  PTAB · Oct 30, 2019 · CBM2018-00035 · APJ Frances L Ippolito · CBM · Final written decision

  Claims 1, 2, 5, 6, 9, 10, 13, and 14 are unpatentable under § 101; proposed substitute claims 17–20 are unpatentable under § 101, and the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelOther

    “F. Level of Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”)” slip op. at 32

  • Expert testimonyOther

    “For the above reasons, we are persuaded that Petitioner has met its” slip op. at 62

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “1. Principles of Law Use of the word “means” in a claim gives rise to a rebuttable” slip op. at 12

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Further, based on the entirety of the record, we determine that proposed substitute claims 17–20 are unpatentable by a preponderance of the evidence based on 35 U.S.C. § 101. Motion to Amend Outcome Claims Substitute Claims: Proposed in the Amendment 17–20 Substitute Claims: Motion to Amend Denied 17–20” slip op. at 101

  Patent outcomesUS 8,423,402 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 8,423,402
• Intel Corporation v. Institute Of Microelectronics, Chinese Academy Of SciencesInstitution denied
  PTAB · Mar 29, 2019 · IPR2018-01574 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 6, or 7 were unpatentable over 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). 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 shown a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we do not institute inter partes review of any claim of the ’719 patent on the grounds asserted in the Petition.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “specification of the patent in which they appear.7 37 C.F.R. § 42.100(b) (2016). Claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need to be construed, and then 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 does not request an explicit construction for any of the claim terms. Patent Owner argues that we should construe the term “a dielectric spacer surrounding the gate line.” Prelim. Resp. 9–10. Specifically, Patent Owner argues that we should interpret this phrase as “forming a dielectric spacer enclosing the gate line on all side surfaces.” Id. Petitioner does not argue to the contrary, Pet. 1–87, and Petitioner appears tacitly to accept this construction, because Petitioner argues that the asserted prior-art references disclose the formation of dielectric spacers enclosing gate lines on all side surfaces. See, e.g., Pet. 34 (“Because sidewall spacers on the long lateral sides and the ends of the gate line are on substantially vertical surfaces, the etching technique disclosed in Liaw and Mandelman [which removes material from horizontal surfaces while leaving material in place on vertical surfaces] resulted in sidewall spacers surrounding the gate lines.”). Moreover, Patent Owner’s proposed construction is consistent with 7 A recent amendment to this rule does not apply here, because the Petition was filed before November 13, 2018. See “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). the language of the ’719 patent. Ex. 1001, 6:18–21 (“dielectric spacer layer 1005 is formed on opposite lateral outer sides of the respective gate lines 1004 in the horizontal direction of the figure, besides those formed at the ends of the gate lines 1004 in the vertical direction of the gate line”). Accordingly, on the present record, we adopt Patent Owner’s proposed construction, and we interpret “a dielectric spacer surrounding the gate line” as “forming a dielectric spacer enclosing the gate line on all side surfaces.”” slip op. at 7

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

    “We agree with Patent Owner. Petitioner’s argument rests on the idea that all processes that involve blanket deposition of a dielectric spacer layer over a gate line followed by anisotropic etching to remove spacer material from horizontal surfaces will result in spacer material being present on the vertical end faces of the gate line. Pet. 33–34. For example, Dr. Thompson, Petitioner’s declarant, testifies that “[b]lanket deposition [in general] is a process in which the sidewall spacer material is laid across the entire circuit structure, including around all sides of and on top of any gate line found on top of the substrate.” Ex. 1002 ¶ 223. Dr. Thompson also testifies that “[t]he term ‘blanket’ is used because the sidewall spacer material covers every exposed surface in the semiconductor substrate being processed.” Id. Because the material is placed on every surface, and because anisotropic etching removes the material only from the horizontal surfaces of the structure, Dr. Thompson testifies that the process of blanket deposition followed by anisotropic etching must leave spacer material on all vertical surfaces, including the end faces of the gate line. Id. But Liaw itself contradicts this testimony. Liaw discloses a method for forming “first spacers 211” on dummy layers 207 and 209. Ex. 1003, 3:61–4:6, Figs. 2B, 2C. As with Liaw’s process for forming permanent spacers, on which Petitioner relies, this process involves “blanket depositing a spacer layer over the previously formed structure,” and “anisotropically etching and removing the spacer layer 210 from the horizontal surfaces of the structure.” Id. at 3:61–4:6. The blanket deposition covers at least one end of each dummy layer. Id. at Fig. 2C (depicting spacer layer 210 as covering one end of dummy layers 207 and 209). The spacers formed by this process, however, are formed only on the long lateral surfaces of the dummy layers, and not on the end faces of the dummy layers. Id. at Figs. 2C, 2E, 2G. Thus, despite Dr. Thompson’s testimony, it is not necessarily the case that all processes involving blanket deposition of spacer material over a gate line followed by anisotropic etching of that material necessarily leave spacer material on all side surfaces of the gate line, including the end faces. Accordingly, simply showing that Liaw discloses a process of spacer formation in which spacer material is blanket deposited over a gate line and then anisotropically etched is not sufficient to show that Liaw discloses a process of spacer formation that results in spacer material being placed on all side surfaces of the gate line. Because Petitioner has not shown sufficiently that Liaw discloses “forming a dielectric spacer surrounding the gate line,” we conclude that Petitioner has not established a reasonable likelihood of prevailing in showing the unpatentability either of claim 1 or of claims 2 and 6, which depend from claim 1, as anticipated by Liaw.” slip op. at 11

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

    “On the present record, Okuno itself suggests that spacer material is not present on the end faces of its gate lines. Both Figure 6C and Figure 7B depict only spacers10 formed on the long lateral surfaces of the gate electrodes, without depicting the end faces of those lines, which is at best ambiguous evidence that could not prove either the presence or the absence of spacer material on the end faces of the gate lines. Ex. 1005, Figs. 6C, 7B. Accordingly, these figures do not themselves depict spacer material enclosing the gate line on all side surfaces. Petitioner argues that Figure 7B 10 The parties dispute whether Okuno’s sidewall spacers 27 are dielectric spacers of the type recited in the challenged claims or whether they are instead extension implantation regions buried in the substrate. Pet. 49–52; Prelim. Resp. 23–26; Reply 1–6; Sur-Reply 1–4. On the present record, it is unclear which party is correct in its interpretation of Okuno. supports the argument that spacer material is present on the end faces of the lines by noting that the “curvilinear ends” on the gate lines in Figure 7B “indicate that the gate lines continue to the left and right.” Pet. 50 (citing Ex. 1002 ¶ 266). Petitioner is correct that Figure 7B indicates the continuation of the gate lines beyond the edges of the illustration, but the fact that the gate lines continue beyond the edges of the illustration says nothing about the presence or absence of spacer material on the end faces of the gate lines. Moreover, Okuno states that its sidewall spacers “are provided only in the longitudinal direction of the gate (i.e. along the gate length direction),” which is evidence that the spacers actually are not placed on the end faces of the gate lines. Ex. 1005 ¶ 28. As it argued with respect to Liaw, Pet. 33, Petitioner argues that Okuno teaches using a deposition process to form its sidewall spacers that will always result in spacer material covering the end faces of the gate lines as well as their long lateral surfaces. Id. at 49. Specifically, Petitioner argues that “[a] person of skill in the art would have understood that” the CVD oxide film of Okuno “would cover the entire surface of the semiconductor substrate, including the long sides and ends of the gate lines.” Id. (citing Ex. 1002 ¶¶ 265–266). This argument is supported by the testimony of Dr. Thompson, who testifies that “the conventional CVD . . . technique used to form the dielectric oxide sidewall spacers on the sidewalls of the gate lines in Okuno” would always result in “sidewall spacers [being] formed on all sides of the gate line, both the lateral sides and the end faces.” Ex. 1002 ¶ 266. As discussed above with respect to the Liaw anticipation ground, however, the disclosure of Liaw makes clear that not all processes involving blanket deposition of spacer material over gate lines followed by anisotropic etching necessarily result in spacer material being present on the end faces of the gate lines. Ex. 1003, 3:61–4:6, Figs. 2B, 2C, 2E, 2G; Section B.2, supra. Accordingly, simply showing that Okuno discloses a process of spacer formation in which spacer material is blanket deposited over a gate line and then anisotropically etched is not sufficient to show that Okuno teaches or suggests a process of spacer formation that results in spacer material being placed on all side surfaces of the gate line. Thus, Petitioner has not shown sufficiently that either Okuno or Liaw teaches or suggests “forming a dielectric spacer surrounding the gate line.” Because claims 1–3 and 6 all include this limitation directly or through their dependence from claim 1, we conclude that Petitioner has not established a reasonable likelihood of prevailing in showing the unpatentability of claims 1–3 and 6 as obvious over the combination of Okuno and Liaw.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,070,719
• Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentable
  PTAB · Jan 16, 2019 · IPR2017-01654 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 2, 7–9, and 12–14 are unpatentable: Borchert anticipates claims 1, 2, 8, and 12–14; Borchert alone or with Van Schaftingen renders claim 7 obvious; Borchert and Kachnic render claim 9 obvious.

  RulingsFinal written decision

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

    “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). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406 (citing Graham, 383 U.S. at 17–18). In an inter partes review, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. With these standards in mind, we address each challenge below. slip op. at 10

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

    “inventors, Hervé Lemoine and Frédéric Jannot, were obligated to assign their inventions, including the subject matter of both Jannot and the application that led to the issuance of the ’490 patent, to Patent Owner.2 PO Resp. 16–17. Patent Owner proffers testimony from both men that supports its argument. Id. (citing Ex. 2007; Ex. 2008). Messrs. Lemoine and Jannot each testify that at all times while they have been employed by Patent Owner, including the time at which they developed the subject matter claimed in the ’490 patent, they have been obliged to assign to Patent Owner or its predecessor all rights and resulting patent applications for any invention made in the course of their employment. Ex. 2007 ¶ 2–4; Ex. 2008 ¶ 2–4. This testimony is unrebutted. Tr. 12:21–13:7. Petitioner contends that Jannot is prior art under § 102(e). Pet. 16. (noting that the effective filing date of Jannot in the U.S. predates the priority date of the ’490 patent). Patent Owner has established with unrebutted evidence that Messrs. Jannot and Lemoine were obliged to assign rights to the subject matter of both Jannot and the ’490 patent at the time they developed the subject matter of the ’490 patent. Ex. 2007 ¶¶ 2–4; Ex. 2008 ¶¶ 2–4. Under § 103(c), commonly owned subject matter is removed from the scope of prior art under § 102(e). Accordingly, we” slip op. at 20

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

    “a parison that is divided into two parts. Pet. 36–37 (citing Ex. 1003 ¶ 3). Petitioner concedes that Borchert does not expressly describe cutting a parison “along two diametrically opposed lines” as recited in claim 7. Id. at 37. However, Petitioner contends that an ordinarily skilled artisan would have considered doing so to have been obvious. Id. (citing Ex. 1007 ¶ 65). Dr. Kazmer testifies that an ordinarily skilled artisan would have considered it obvious to divide Borchert’s parison into two parts with equal width because Borchert’s mold halves 9a and 9b are shown as being the same width. Ex. 1007 ¶ 65. Alternatively, Petitioner relies upon Van Schaftingen as expressly describing “extruding a single parison that is cut over an entire length along two diametrically opposed lines.” Pet. 37–38 (citing Ex. 1004, 3:15–23). Dr. Kazmer testifies that an ordinarily skilled artisan would have been motivated to use Borchert’s process as modified by Van Schaftingen to obtain sheets of equal width for use in Borchert’s equal-width mold halves 9a and 9b and because Van Schaftingen describes its diametrically opposed cuts as being “very particularly preferred.” Id. at 38 (citing Ex. 1007 ¶ 68).” slip op. at 21

  Patent outcomesUS 9,079,490 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,079,490
• Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentable
  PTAB · Dec 11, 2018 · IPR2017-01605 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–3, 7, 11, 12, and 14 are unpatentable: claims 1–3, 12, and 14 are anticipated by Linden, and claims 7 and 11 are obvious over Linden and Hata.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “article whose surface has at least one empty or concave part.” Id. at 11 (citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is understood to mean any article whose surface has at least one empty or concave part.” Ex. 1001, 1:66–67. Where an inventor defines specific terms used to describe an invention, we will give effect to those definitions, as long as they are set out “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, the phrase “is understood to mean,” as used in the ’253 patent, signals that the inventor presents a clear, deliberate, and precise definition. Accordingly, we interpret “hollow body” as having the definition given it in the ’253 patent, “any article whose surface has at least one empty or concave part.”” slip op. at 6

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

    “supporting its proposed construction of “incorporate” as “insert.” First, Petitioner argues that the language of the ’253 patent requires a construction of “incorporating” as encompassing “inserting” rather than as limited to “attaching.” Reply 2–4. Both parties argue that the “incorporating” recited in the challenged claims must occur before the mold closes to form the hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14 (“. . . after said step of incorporating, closing said mould . . .”). Thus, it is important to note the processes that the ’253 patent describes as occurring before, during, and after mold closure. Because “incorporating” must occur before mold closure, the process of “incorporating” may not be limited to any process that the patent describes as occurring during or after mold closure. Petitioner is correct that the ’253 patent describes a process in which a preassembled structure for supporting an accessory “may . . . be fastened by welding to the wall of the hollow body, upon closing the mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the language of the ’253 patent does not support construing the term “incorporating” as limited to “attaching.” Petitioner also argues that both parties agreed in the related infringement suit in District Court that the proper construction of “incorporating” under the Phillips standard, used in that forum, was “inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that litigation, Patent Owner agreed that the correct construction of “incorporating at least one of an accessory or a duct within the hollow body” was “inserting an accessory or duct into the hollow body.” Ex. 1010, at Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard. 37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-precedential). Here, for the term “incorporating,” Patent Owner’s proposed broadest reasonable interpretation (“attaching”) is narrower than the Phillips construction Patent Owner has advanced (“inserting”). Thus, “attaching” cannot be the broadest reasonable interpretation of “incorporating.” Other than Patent Owner’s proposed “attaching” construction, the only construction the parties have proposed either in this case or in the related District Court case is Petitioner’s proposed “inserting” construction. PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions); Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4 (both parties proposing “inserting”). The ’253 patent supports such a construction, because it describes at least some of its embodiments as involving only insertion of an object between the sheets that will form the hollow body before mold closure. Ex. 1001, 4:23–30. Accordingly, for the foregoing reasons, we adopt Petitioner’s proposed construction of “incorporating” as “inserting.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Finally, Patent Owner directs us to the testimony of Professor Tim Osswald as support for its view that “incorporate” should mean “attach.” PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony states that, “[a]fter reading the specification of the ’253 patent, one of ordinary skill in the art would understand and interpret the word ‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald does not cite any evidence in support of his testimony. “[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Accordingly, we give little weight to Professor Osswald’s statement regarding the proper construction of “incorporate.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations . . . .” (citations omitted)).” slip op. at 9

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

    “preform which has at least one opening for that purpose, to be applied to the inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3. Patent Owner argues that this teaching is insufficient to disclose attaching the surge cup to the wall of the hollow body before the mold closes. PO Resp. 23–24. We agree that Linden does not teach attaching its accessory to the inside wall of the fuel tank before the mold closes around the preform. Instead, in Linden, the mold halves are closed around the preform and the mandrel, and “a suitable blowing agent . . . is introduced under pressure” through the mandrel, causing the preform to expand to press “against the inside wall defining the mold cavity,” and only then is the holding means for the accessory displaced to be brought into contact with the inner wall of the expanded preform, welding the holding means to the wall. Ex. 1003, 7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with Patent Owner about the proper construction of “incorporating” in the challenged claims. Claim 1 requires only that an accessory or a duct be “incorporat[ed] . . . within the hollow body” before mold closure occurs, and we construe “incorporating” to mean “inserting,” without requiring “attaching.” Thus, it is unimportant that Linden fails to teach attaching the surge cup to the wall before mold closure. All that is required is that Linden disclose inserting the surge cup into the preform before mold closure, and Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3. The next question is whether Linden discloses “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” As discussed above, Linden discloses closing the mold halves after placing the additional body within the preform. But Linden discloses that “[a]t its lower end the preform 28 is pressed around the mandrel 14 by virtue of closure of the mold halves 10a and 10b.” Id. at 7:40–42, Fig. 2. Because mandrel 14 is hollow, id. at 6:35–39; 6:46–54, it is not completely clear that closure of Linden’s hollow body around mandrel 14 necessarily eliminates any interface between the additional body inside Linden’s hollow body and the atmosphere outside the hollow body. On the other hand, the closure of the mold described in the ’253 patent occurs with blowing nozzle 6 “positioned between the two parts of the [mold],” and “blowing air is injected under pressure via the nozzle,” which is quite similar to the use of hollow mandrel 14 in Linden. Ex. 1001, 5:50–57. Given the similarity between Linden’s method and the method described in the ’253 patent, we determine that Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring the step of, “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” The final question with respect to claim 1 is whether Linden discloses that the additional body incorporated within the hollow body “is supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.” Petitioner argues that Linden’s “[h]olding means 24 is a preassembled structure” in which “leg members 44, 45” have “enlarged foot portion[s] 36.” Pet. 18 (citing Ex. 1003, 9:23–34). We agree. “[H]olding means 24 . . . substantially comprises first and second support or leg members 44, 45,” and “support or leg members 44, 45 are each provided with an enlarged foot portion 36 of substantially plate-like configuration.” Ex. 1003, 9:23–34. Even if Linden’s holding means 24 were not in the aggregate the recited “preassembled structure,” each leg member 44, 45, taken together with its respective foot portion 36 is. Ex. 1001, 4:26–28 (describing a “preassembled structure” as “for example, an arm provided with a tab for fastening to the wall of the hollow body”). Linden’s “foot portions 36 are pressed against the inside surface, which is still hot and thus plastic, . . . of the hollow body . . . thereby to produce a welded joint between the foot portions 36 and the inside surface.” Id. at 9:34–42. Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring that the accessory or duct be “supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.”” slip op. at 19

  Patent outcomesUS 7,166,253 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,166,253
• Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.No claims unpatentable
  PTAB · Nov 2, 2018 · IPR2017-01312 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Petitioner did not prove claims 1–12 unpatentable: Zhou-based combinations lacked a supported motivation to combine, and Ren did not anticipate or render the claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe meaningful differences between the parties’ assessment of a person having ordinary skill in the art. We further note that both assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level 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))). Our determination regarding the patentability of the challenged claims does not turn on the differences between these definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Dr. Moran’s assessment. B.” slip op. at 7

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).9 Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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)). 9 The revised claim construction standard for interpreting claims in inter partes review proceedings as set forth in the final rule published October 11, 2018 does not apply to this proceeding, because the new “rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on or after the effective date.” Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). For purposes of the Institution Decision, we construed “controlled environment” as set forth in independent claims 1 and 2 to mean “an air environment in which one or more conditions are controlled.” Dec. on Inst. 10. The parties do not contest our construction of the term “controlled environment” (see PO Resp. 3; Pet. Reply 1; Supp. PO Resp. 3–5; Supp. Pet. Reply 2), and we see no reason to modify that construction in light of the record developed at trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “that Zhou is unclear as to whether its test atmosphere is an air or inert environment. Much of the evidence, as described above, could support either interpretation. It is Petitioner’s burden, however, to establish facts supporting its challenge that claims 1, 2, 6, and 8–12 would have been obvious over the combined teachings of Zhou and Young by a preponderance of the evidence. 35 U.S.C. § 316(e); see also Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). “Failure to prove the matter as required by the applicable standards means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Because Petitioner’s argument that a POSA would have been motivated to apply the environmental conditions of Zhou’s retention step to Young’s open-to-the air pressing step is based on its contention that Zhou’s test atmosphere was air, and because Petitioner has not established that Zhou’s test atmosphere was air, we are not persuaded that Petitioner has made a sufficient showing that a POSA would have combined the teachings of Zhou and Young in the manner proposed. Accordingly, we find that Petitioner has not shown by a preponderance of the evidence that claims 1, 2, 6, and 8–12 of the ’565 patent are unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings of Zhou and Young. F.” slip op. at 23

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

    “We agree with Patent Owner. As set forth above, we interpreted “controlled environment” to mean “an air environment in which one or more conditions are controlled.” See supra Section II.B. Ren discloses controlling the conditions of an isolated, inert gas environment. See, e.g., Ex. 1003, 2:48–54 (“The isolated environment generally comprises . . . means for supplying inert gas into the enclosure and desiccating agents disposed between the inert gas supply means and the enclosure, along with desiccating agents within the enclosure.”), 7:53–57 (“Pumping an inert gas, such as nitrogen, into a sealed environment is an effective means for reducing the oxygen content from in [sic] the surrounding environment, but this does not reduce or eliminate H2O from the surrounding environmental humidity.”), 9:16–20 (“After placing the individually-wrapped packages of magnetic powder into the isolated environment, a flow of inert gas” into the isolated environment is activated, and “[t]he inert gas purges humidity and/or oxygen from the isolated environment.”). Consequently, we are not persuaded that Petitioner has established that Ren teaches “providing a controlled environment having a temperature ranging from 5° C. to 30° C. and a relative humidity ranging from 40% to 65%” as recited in independent claims 1 and 2. Therefore, based on our review of the record, we find that Petitioner has not established by a preponderance of the evidence that claims 1 and 2, and claims 6 and 8 that depend directly therefrom, are anticipated by Ren. H.” slip op. at 26

  Patent outcomesUS 6,461,565 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,461,565
• Formlabs Inc. v. Envisiontec, Inc.All claims unpatentable
  PTAB · Oct 5, 2018 · IPR2017-01258 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 9–15 are unpatentable: claims 9, 11, 12, and 15 as anticipated; claims 13–15 as obvious over Akamine; and claim 10 as obvious over Akamine, Mizukami, and McDonald.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Owner. During prosecution, the applicant argued that “the general understanding of the term ‘gel-like elastic material[]’ to one of ordinary skill in the art . . . is a material that has the required elasticity for being deformable, yet [sic] the elasticity for recovering its original state after deformation.” Ex. 1004, 15. An inventor may define specific terms used to describe an invention, but must do so “with reasonable clarity, deliberateness, and precision” and must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). This definition may appear in either the patent specification or the prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); see also Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (“Applicants can define . . . claim scope during prosecution,” just as they can in a patent specification.). In our view, the statement in the prosecution history that “the general understanding of . . . ‘gel-like elastic material[]’ . . . is a material that has the required elasticity for being deformable, yet the elasticity for recovering its original state after deformation” is a reasonably clear, deliberate, and precise definition of the term. Ex. 1004, 15 (emphasis added). Accordingly, at least on this record, this is the proper interpretation of “gel-like elastic material.” Thus, we construe “gel-like elastic material” as “a material that has the required elasticity for being deformable, yet the elasticity for recovering its original state after deformation.”” slip op. at 7

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

    “2. “Adhesion” Patent Owner proposes construing the term “adhesion” as “separation force per unit area.” PO Resp. 26–27. Petitioner argues that no construction of “adhesion” is necessary but does not otherwise object to Patent Owner’s proposed construction. Reply 4. The evidence of record supports Patent Owner’s proposed construction. Pet. 28 (arguing that “the adhesion of the silicone coating to the hardened resin is approximately 1.85 x 104 N/m2”); Ex. 1001, 1:65–2:7 (suggesting that adhesion is “independent[] of [the] hardened surface area”); Ex. 1007, Fig. 5 (reporting “Adhesion strength” in units of “N/m2”); Ex. 2001 ¶ 46 (“Adhesion is a well-known evaluation of the force per unit area required to separate two surfaces.”); Ex. 2002, 147:13–149:9 (“The adhesion strength is an overall number that is agnostic of the actual cross-section[al] area that is being produced.”). Accordingly, on the record developed during this proceeding, we conclude that the proper construction of “adhesion” is “separation force per unit area.”” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Because Petitioner’s proposed construction is broader than the alternative, if it is reasonable, it is the broadest reasonable construction we have been offered. The parties dispute whether this construction is reasonable. There is, however, no need for us to resolve this dispute. As discussed below, Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable even under the narrower “at least twice” construction. Because the claims are unpatentable under the narrower construction, they also would be unpatentable under the broader construction, and we need not decide whether the broader construction is reasonable. Accordingly, for purposes of this decision, we base our analysis on Patent Owner’s construction of “greater by a multiple” as “at least twice.”” slip op. at 10

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

    “As noted above, “gel-like elastic material” is “a material that has the required elasticity for being deformable, yet the elasticity for recovering its original state after deformation.” Akamine discloses that layer 7 is “elastically deformable” and that layer 7 elastically deforms when fabricated article 10 is separated from transparent plate 4. Id. Akamine also discloses that the sequence of preparing a gap between the cured layers and the irradiation face, then curing a new layer, then peeling the fabricated article off the irradiation face is repeated to create a series of layers making up the fabricated article. Id. ¶ 27. Based on these disclosures, Petitioner directs us to evidence suggesting that a person of ordinary skill in the art would have understood that layer 7 returns to its original shape after deforming upon separation of fabricated article 10 from transparent plate 4. Pet. 18 (citing Ex. 1002 ¶ 59). In addition, Akamine discloses that layer 7 is part of “an irradiation face” that “is a composite molded body formed with a transparent glass or plastic plate.” Ex. 1005 ¶ 26. Patent Owner does not contest this evidence or Petitioner’s assertion that Akamine anticipates claim 9. We find that Petitioner has shown by a preponderance of the evidence that Akamine discloses the “gel-like elastic material that is applied directly to the plane” limitation of claim 9.” slip op. at 16

  Patent outcomesUS 7,195,472 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,195,472
• Bedra, Inc. / Berkenhoff GmbH et al. v. Seong, Ki ChulInstitution denied
  PTAB · Aug 29, 2018 · IPR2018-00667 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 were unpatentable over Tomalin or Mukherjee and Briffod I.

  RulingsInstitution decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “On the present record, we are persuaded that Patent Owner’s construction is correct. Although it is true that the ’535 patent describes “produc[ing] uniform cracks in the coating layer and the alloy layer to form a porous structure on the surface,” Ex. 1002, 6:51–52, it is not clear on the present record that this necessarily means the cracks themselves are the surface pores. Instead, “the porous nature of the wire” merely “arises from the cracks in the alloy layer and the coating layer.” Id. at 4:32–33 (emphasis added). Thus, the ’535 patent does not necessarily treat the cracks as synonymous with the pores; it also may allow the creation of pores merely as a result of the creation of separate cracks. In addition, the ’535 patent places restrictions on the shape of cracks that are more consistent with Patent Owner’s proposed construction than with that proposed by Petitioner. The ’535 patent consistently describes the cracks as directional and oriented perpendicular to the length of the wire. Id. at 4:43–45 (“the alloy layer includes cracks having a direction perpendicular to the longitudinal direction of the wire”), 5:35–37 (“the cracks have a direction approximately perpendicular to the longitudinal direction of the wire”), 6:53–55 (“These cracks are propagated through the grain boundary of the coating layer and the direction of the propagation is perpendicular to the longitudinal direction of the wire”). Interpreting “crack” as synonymous with “pore,” which refers to any small hole or opening without any limit on shape, Ex. 2004, is inconsistent with the description of cracks in the ’535 patent as directional. Far more consistent with this description is Patent Owner’s proposed construction of “crack” as “narrow break.” Accordingly, on the present record, we construe “crack structure” as “an arrangement of narrow breaks.”” slip op. at 6

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

    “evidence currently of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “In other words, for the ’535 patent to be entitled to the priority date of the Korean application, the Korean application must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. § 112(a). The question Petitioner presents here is whether the Korean application adequately describes the presence of an alloy layer with the “crack structure on its surface” that is recited in the challenged claims.” slip op. at 8

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by [35 U.S.C. §] 112.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 6,482,535
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · May 16, 2018 · IPR2017-00360 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Takahashi and Meguro did not anticipate, and the asserted combinations did not render the claims obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “We note, first, that the specification of the ’501 patent expressly defines the term “biaxially tensilized” as “having been subjected to tensilization in both the machine direction and the crossweb direction.” Ex. 1001, 3:33–35. Petitioner asks us to construe the term “biaxially tensilized” as it is defined in the specification. Pet. 14. Because Patent Owner has acted as its own lexicographer for the term “biaxially tensilized,” we accept the express definition set forth in the specification. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1980).” slip op. at 6

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

    “Applying the broadest reasonable interpretation, we construe the term “tensilized” to mean “stretched.” The specification defines “biaxially tensilized” as “having been subjected to tensilization in both the machine direction and the crossweb direction,” indicating that tensilization has a directional component, i.e., that tensilization can occur in a machine direction, or in a crossweb direction, or both. Ex. 1001, 3:33–35. No other properties such as heating or heat setting are mentioned in the specification’s definition of “biaxially tensilized.” Attempting to substitute the term “heating” or “heat setting” for the term “tensilized” in the definition of “biaxially tensilized” is nonsensical—it does not appear that a substrate could be, for example, “heated” in a machine direction or “heat set” in a crossweb direction. The specification’s paragraph describing “film production,” upon which both parties rely, does not mention tensilization ipsissimis verbis. Ex. 1001, 5:18–31. This paragraph’s description states that film production “typically involves” the steps identified in the paragraph, indicating that not all steps are required at all times. Id. Dictionary evidence indicates that “tensile,” the root word at issue, means “capable of being stretched.” See Ex. 1026, 6. Extrinsic evidence indicates that substrates can be cold-stretched, i.e., stretched without heat. See generally Ex. 1022. Construing “tensilized” to mean “stretched,” in view of broadest reasonable interpretation standards, does not mean that a heating or a heat-setting component must be absent, but allows for the presence of other steps without requiring them to be part of the construction. Thus, we construe the term “tensilized” to mean “stretched.” B. Level of Ordinary Skill in the Art” slip op. at 6

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

    “tensilized,” “longitudinal direction” and “crossweb direction,” “degrees,” and “ferromagnetic pigment.” Pet. 14–16. For purposes of our Institution Decision, we determined that no claim term required express construction. Dec. 5. Patent Owner, in its Response, proposes that we construe the preamble and the term “tensilized.” PO Resp. 7–10. For purposes of this Decision, we determine that the terms “longitudinal direction” and “crossweb direction,” “degrees,” and “ferromagnetic pigment” are not in controversy, and require no express construction. We discuss, here, the terms “biaxially tensilized” and “tensilized.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “undisputed contention that a person of ordinary skill in the art would have been a person with (1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording or (2) a master’s degree or higher in those fields, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 13. Patent Owner does not, in its Response, appear to dispute this definition. In light of the evidence before us, we adopt Petitioner’s definition of one of ordinary skill in the art. We also find that Petitioner’s proposed level of skill in the art is reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Overview of the Asserted References” slip op. at 7

  Patent outcomesUS 6,979,501 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,979,501

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.