• Advanced Lighting Concepts LLC v. Mate LLC.Institution denied
  PTAB · Feb 13, 2024 · IPR2023-01257 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 5, 7, 13, 15, or 21 unpatentable.

  RulingsInstitution decision

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

    “provides that an inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute inter partes review of” slip op. at 2

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

    “art depicted in Figure 5 (relied upon for claim element 1(b)) either relates to or can be combined with Shteynberg’s discussion of its Figure 10 embodiment depicting capacitor 345 (relied upon for claim element 1(d)). For a prior art reference to anticipate a claim, it “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.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For example, in Net MoneyIN, the Federal Circuit held that an “Internet payment system” was not anticipated by a prior art reference that disclosed all the components of the invention, because the reference disclosed two separate payment protocols, each of which contained only a subset of the components claimed in the patent at issue. Id. at 1371. “[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. at 1371 (citation omitted). Here, Petitioner relies upon two disparate disclosures without any indication as to how these disclosures could be combined. Second, Petitioner has not sufficiently shown that capacitor 345 functions as an inrush current limit or that Shteynberg discloses a “power factor correction (PFC) boost connected to the inrush current limit” as required by claim element 1(d). Petitioner and its declarant have clearly stated that a person having ordinary skill in the art “would readily understand that using a resistor in series with a capacitor to limit inrush current as described in Shteynberg is analogous to the inrush current limit of the ‘446 [p]atent.” Pet. 17 (emphasis added); Ex. 1002 ¶ 57. Neither Petitioner nor its declarant make any persuasive argument that a capacitor only, such as capacitor 345, can constitute an inrush current limit. Indeed, Mr. McAlexander provides no testimony that a capacitor alone can constitute an inrush current limit, let alone that Shteynberg discloses an inrush current limit that is connected to power factor correction (PFC) boost as required by claim element 1(d). See Ex. 1002 ¶¶ 53–61 (providing testimony that Shteynberg anticipates claim 1 but not discussing the inrush current limit of claim element 1(d)). Indeed, Petitioner does not include any citations to Mr. McAlexander’s declaration to support its contention that Shteynberg discloses an inrush current limit as required by claim element 1(d). See Pet. 19–22. Thus, Petitioner has not provided persuasive evidence or argument that Shteynberg’s Figure 10 discloses an inrush current limit, let alone an inrush current limit that is connected to a power factor correction (PFC) boost. As noted above, Petitioner has provided no persuasive argument as to how Shteynberg’s disclosures regarding its discussion of the resistor in series with a capacitor shown in prior art Figure 5 can be combined with Shteynberg’s disclosures regarding its inventive embodiment of Figure 10. Thus, we find that Petitioner fails to demonstrate a reasonable likelihood that Shteynberg discloses the recited inrush current limit as required by claim 1.” slip op. at 15

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner’s declarant, Mr. McAlexander, testifies that a person having ordinary skill in the art (“POSITA”) to which the ’446 patent pertains, would have “at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with power regulation devices, like LED drivers and dimmers.” Ex. 1002 ¶ 31. Patent Owner, having waived its Preliminary Response, does not contest Petitioner’s articulation of the level of skill in the art. Paper 7. We regard Petitioner’s definition as consistent with the prior art before us and the skill reflected in the Specification of the ’601 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art may reflect an appropriate level of skill). Thus, for the purpose of this Decision, we apply Mr. McAlexander’s definition.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,525,446
• Advanced Lighting Concepts LLC v. Mate LLCInstitution denied
  PTAB · Feb 13, 2024 · IPR2023-01259 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1, 2, 5, 10, 12, or 13 were unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we do not institute inter partes review.” slip op. at 2

  • BurdenDenied

    “comports with the standard for anticipation. Under the applicable standard for anticipation, neither Petitioner nor its declarant provides persuasive analysis that would show that one skilled in the art would have reasonably understood or inferred from Zudrell-Koch that its input voltage pin discloses the claimed power limit. Eli Lilly, 849 F.3d at 1074–1075. Mr. McAlexander testifies: “As discussed above, a POSITA would understand that the input voltage pin is the power limiter that receives power from the power circuit.” Ex. 1002 ¶ 58. Mr. McAlexander cites no evidence in paragraph 58. Regarding the “As discussed above” portion of paragraph 58, the only previous paragraph cited by Petitioner in connection with its limitation 1(b) argument is paragraph 57, in which Mr. McAlexander states that “IC power-supply pins denote voltage and current supply terminals in electric, electronics engineering, and in integrated circuit design.” Id. ¶ 57. Mr. McAlexander, however, provides no citation in support of this statement and does not provide any clarification if or how IC power-supply pins relate to the input voltage pin discussed in Zudrell-Koch. Id. The only support in paragraph 57 is a summary of a short website page titled “Digital Input,” which provides: “Digital input is where a pin will detect the presence of a voltage level that is either ‘high’ or ‘low,’” and which discusses the topic of” slip op. at 15

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

    “comports with the standard for anticipation. Under the applicable standard for anticipation, neither Petitioner nor its declarant provides persuasive analysis that would show that one skilled in the art would have reasonably understood or inferred from Zudrell-Koch that its input voltage pin discloses the claimed power limit. Eli Lilly, 849 F.3d at 1074–1075. Mr. McAlexander testifies: “As discussed above, a POSITA would understand that the input voltage pin is the power limiter that receives power from the power circuit.” Ex. 1002 ¶ 58. Mr. McAlexander cites no evidence in paragraph 58. Regarding the “As discussed above” portion of paragraph 58, the only previous paragraph cited by Petitioner in connection with its limitation 1(b) argument is paragraph 57, in which Mr. McAlexander states that “IC power-supply pins denote voltage and current supply terminals in electric, electronics engineering, and in integrated circuit design.” Id. ¶ 57. Mr. McAlexander, however, provides no citation in support of this statement and does not provide any clarification if or how IC power-supply pins relate to the input voltage pin discussed in Zudrell-Koch. Id. The only support in paragraph 57 is a summary of a short website page titled “Digital Input,” which provides: “Digital input is where a pin will detect the presence of a voltage level that is either ‘high’ or ‘low,’” and which discusses the topic of” slip op. at 15

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

    “Petitioner’s obviousness grounds do not cure the deficiency in Petitioner’s argument and evidence about whether Zudrell-Koch discloses every element of claim 1. Here, in its obviousness grounds, Petitioner relies on the same reasoning as it presents for anticipation and has not provided any argument or evidence as to why Zudrell-Koch might disclose or suggest the limitations of claim 1 under an obviousness standard. Nor do Petitioner’s arguments present any reasoning as to why Zhdanau or Veskovic might disclose or suggest the limitations of claim 1 under an obviousness standard. On this record, Petitioner’s obviousness arguments fail to meet Petitioner’s burden of demonstrating that the prior art discloses or suggests every element of the challenged claims. For the foregoing reasons, Petitioner has not established a reasonable likelihood of prevailing in showing obviousness of claims 12 and 13 by Zudrell-Koch, Zhdanau, and Veskovic.” slip op. at 27

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,591,713
• Advanced Lighting Concepts LLC v. Mate LLC.Institution denied
  PTAB · Feb 13, 2024 · IPR2023-01264 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because the Petition did not establish a reasonable likelihood of prevailing on any challenged claim under 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 (2018); 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we decline to institute inter partes review on any of the asserted grounds of unpatentability.” slip op. at 2

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

    “described limits current to an amount that is proportional to the amount of the resistance.” Ex. 1002 ¶ 56. Consistent with Shteynberg’s disclosure, Mr. McAlexander makes it clear that it is the resistor that limits the flow of current, not a capacitor. Neither Petitioner nor Mr. McAlexander identifies a resistor in Shteynberg’s current regulator or switching power supply that limits the inrush current. Cf. Net MoneyIN, Inc., 545 F.3d at 1369. Also, we are not persuaded that Petitioner’s “analogous to” argument comports with the standard for anticipation. Under the applicable standard for anticipation, neither Petitioner nor its declarant provides persuasive analysis that would show that one skilled in the art would have reasonably understood or inferred from Shteynberg that its capacitor 345 is the claimed inrush current limit. Cf. Eli Lilly & Co. v. L.A. Biomedical Research Inst., 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017) (“[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference”). For these reasons we find that Petitioner fails to demonstrate a reasonable likelihood that Shteynberg discloses a power circuit that includes an inrush limit as recited in limitations 1(a) and 1(b).” slip op. at 15

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

    “F. Ground 3: Asserted Obviousness of Claims 6, 8, 9, 19, and 20 over Shteynberg and Gandhi Petitioner contends that claims 6, 8, 9, 19, and 20, which depend directly or indirectly from claim 1, are rendered obvious by the combination of Shteynberg and Gandhi. Pet. 53–60. We discern nothing in Petitioner’s analysis directed to these dependent claims, much less any analysis directed to Gandhi’s teachings, that remedies the deficiencies we identify for claim 1. Accordingly, we determine that that the information in the Petition fails to demonstrate a reasonable likelihood that claims 6, 8, 9, 19, and 20 would have been unpatentable as obvious over Shteynberg and Gandhi, for at least the reason that these claims depend from a claim that is not proven unpatentable.” slip op. at 28

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Also, we afford little weight to Mr. McAlexander’s verbatim testimony, because he does not provide any basis for his opinion, nor does he provide any evidence in support of his opinion. See 37 C.F.R. § 42.65(a) 8 The Petition references paragraph 63 of Mr. McAlexander’s Declaration, but this language corresponds to paragraph 65. (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning).” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,078,310
• Sma Solar Technology America, LLC v. Tigo Energy, Inc.Institution denied
  PTAB · Jan 22, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Mieth, alone or in the asserted combinations, disclosed or suggested the claimed micro-controller.

  RulingsInstitution decision

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

    “To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the parties’ submissions and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we decline to institute inter partes review.” slip op. at 2

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

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 20 (citing Ex. 1007 ¶ 31). Patent Owner disputes Petitioner’s definition because it excludes “individuals with higher education and less experience.” Prelim. Resp. 7. However, Patent Owner does not argue that the level of ordinary skill in the art impacts the analysis. See id.” slip op. at 6

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

    “We agree with Patent Owner that Petitioner fails to show Mieth expressly discloses the claimed micro-controller. Petitioner relies on Mieth’s load 20 (Pet. 23, 50), but Patent Owner correctly observes that (citing Ex. 1002, 1:19–21, 1:23–28, 2:1–15, 4:25–27, 8:8–9, 8:20–23, 8:29– 33). We also agree with Patent Owner that Petitioner fails to show Mieth inherently discloses the claimed micro-controller. Petitioner argues that a “PHOSITA would understand that a load in a circuit can be or include a micro-controller” and “the load 20 is analogous to the claimed micro-controller.” Pet. 23. Petitioner’s argument itself, however, as noted by Patent Owner (Prelim. Resp. 9), admits that load 20 is not “necessarily” a micro-controller, and that load 20 does not “necessarily” include a micro-controller. Continental Can Co., U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (“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.”); see also Pet. 50 (discussing, in the context of claim limitation [10E], “load 20 (micro-controller))” (citing Ex. 1007 ¶ 163).” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,966,848
• Sma Solar Technology America, LLC v. Tigo Energy, Inc.Institution denied
  PTAB · Jan 12, 2024 · IPR2023-01133 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted Mieth-based grounds.

  RulingsInstitution decision

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

    “To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the parties’ submissions and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we decline to institute inter partes review.” slip op. at 2

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

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(citing Ex. 1007 ¶¶ 30–31). Patent Owner disputes Petitioner’s definition because it excludes “individuals with higher education and less experience.” Prelim. Resp. 7. However, Patent Owner does not argue that the level of ordinary skill in the art impacts the analysis. See id. For the purposes of this Decision, we adopt Petitioner’s proposal because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6

  • BurdenNot shown unpatentable

    “We also agree with Patent Owner that Petitioner fails to show Mieth inherently discloses the claimed micro-controller. Petitioner argues that a include a micro-controller” and “the load 20 is analogous to the claimed micro-controller.” Pet. 22–23. Petitioner’s argument itself, however, as noted by Patent Owner (Prelim. Resp. 9), admits that load 20 is not “necessarily” a micro-controller, and that load 20 does not “necessarily” include a micro-controller. Continental Can Co., U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (“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.”); see also Pet. 56 (discussing, in the context of claim limitation [7G], “load 20, which may be a micro-controller” (citing Ex. 1002, 17:19–18:3; Ex. 1007 ¶ 170; Ex. 1014, 1180, Fig. 5)). Additionally, Petitioner argues that Mieth’s load 20 is “analogous to” the claimed micro-controller. Pet. 22–23 (citing Ex. 1007 ¶ 97–99 (same language as Petition); Ex. 1014, 1180, Fig. 5). We are not persuaded that Petitioner’s “analogous to” argument comports with the standard for anticipation. Under the applicable standard for anticipation, neither Petitioner nor its declarant provides any analysis that would show that one skilled in the art would have reasonably understood or inferred from Mieth that load 20 is a micro-controller. See Eli Lilly, 849 F.3d at 1074–1075.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,333,405
• Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology LimitedInstitution denied
  PTAB · Sep 22, 2023 · IPR2023-00587 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution for claims 1–17 under § 314(a), finding the parallel litigation favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel proceeding the grounds advanced in the petition. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 11–12, 12 n.5 (June 16, 2020) (informative). “The PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo, 7–8 (emphasis added); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A). Here, Petitioner’s stipulation extends to the same grounds raised in the Petition, but does not extend to any ground “that could have been reasonably raised,” pursuant to Sotera. Patent Owner points to the narrowness of the proffered stipulation in the Sur-Reply and asserts this factor “only marginally weighs in favor of institution.” Sur-Reply 3. Because Petitioner’s stipulation obviates some potential for duplication or redundancy with respect to the patentability of the challenged claims (albeit not to the extent a full Sotera-type stipulation would have) and the parallel litigation does not include claims 10–16, we determine that the fourth Fintiv factor weighs against denial of institution.” slip op. at 15

  • 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). “Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)). “[T]he 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.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Fintiv Memo 4. While the Petition and Dr. Gido provide an explanation for the full range in which Iwai’s D90 necessarily would be found, the Petition and Dr. Gido identify only a single value for the adhesive porous layer thickness of Iwai’s Example 7 and Comparative Example 2. Pet. 48, 51; Ex. 1003 ¶¶ 165, 174. The Petition and Dr. Gido direct us to the average thickness “a” of Iwai’s adhesive porous layer without taking into account Iwai’s disclosure of the ratio of the average thickness layer “a” to the volume average particle diameter “r.” Iwai describes the volume average particle diameter “r” being “projected at a proper height . . . formed on a surface of the adhesive porous layer.” Ex. 1006 ¶ 43. Thus, the evidence of record purportedly mapping claim 1’s recited “thickness of the porous layer” to Iwai does not plainly lead to a conclusion that Iwai necessarily discloses to a POSA the claimed “ratio of Dv90 of the inorganic particles to the thickness of the porous layer is in a range from 0.3 to 3.0.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as anticipated by Iwai.” slip op. at 23

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

    “In addition to the lack of support in the record for the Petition and Dr. Gido’s assumption that the porous layer thicknesses of Examples 4 and 5 are the same as the porous layer thickness of Example 1 discussed above in connection with the anticipation challenge of claim 1, the cited record does not plainly support Petitioner’s assertion that Nishikawa teaches or suggests claim 10’s recited “uniform coating solution.” The Petition acknowledges that Nishikawa teaches a mixed solvent containing DMAc and TPG to provide a coating slurry. Pet. 31; Ex. 1003 ¶ 64; Ex. 1005, 22:26–33 (Example 4), 22:46–51 (Example 5). Nishikawa teaches that the solvent mixture includes a polar solvent (DMAc preferred) and a poor solvent (such as TPG) that “induces a microscopic phase separation structure to facilitate formation of pores upon providing the heat resistant porous layer.” Ex. 1005, 11:1–5. The Petition does not sufficiently explain why such a phase separation structure produced by Nishikawa’s mixed solvent meets claim 10’s recited “uniform coating solution.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 10 as obvious over Nishikawa’s teachings.” slip op. at 25

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,964,987
• Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Ltd.Institution denied
  PTAB · Aug 18, 2023 · IPR2023-00586 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Hong disclosed claim 1’s required propyl propionate proportion or that claims 2–12 overcame that deficiency.

  RulingsInstitution decision

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

    “On the present record, we are not persuaded that Petitioner has shown sufficiently that Hong discloses all of the elements of independent claim 1. We agree with Patent Owner that the Petition does not adequately support how Hong’s disclosure of solvent containing 25% PP satisfies claim 1’s required ratio of trinitrile to PP (Y/Z). The Petition itself acknowledges that Hong’s disclosure of the amount of PP in the solvent is not a disclosure of how much PP is present in the electrolyte because the solvent is only one component of Hong’s electrolyte. Pet. 19. The Petition also acknowledges that assumptions are required to compute an amount of PP present in the electrolyte. Id. Thus, the assumptions have a bearing on how much PP is present in Hong’s electrolyte. We agree with Patent Owner that the assumptions underlying the asserted PP content of Hong’s electrolyte do not adequately support the conclusions drawn therefrom because the record does not support the factual basis for the assumptions made. We also agree with Patent Owner that the Petition relies on a computational methodology involving serial calculations based on guesswork that is not adequately explained. Accordingly, we determine Petitioner does not have a reasonable likelihood of prevailing on the anticipation challenge to claim 1 based on this record. We discuss in detail each of the assumptions relied upon by Petitioner, below.” slip op. at 12

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

    “On the present record, we are not persuaded that Petitioner has shown sufficiently that Hong discloses all of the elements of independent claim 1. We agree with Patent Owner that the Petition does not adequately support how Hong’s disclosure of solvent containing 25% PP satisfies claim 1’s required ratio of trinitrile to PP (Y/Z). The Petition itself acknowledges that Hong’s disclosure of the amount of PP in the solvent is not a disclosure of how much PP is present in the electrolyte because the solvent is only one component of Hong’s electrolyte. Pet. 19. The Petition also acknowledges that assumptions are required to compute an amount of PP present in the electrolyte. Id. Thus, the assumptions have a bearing on how much PP is present in Hong’s electrolyte. We agree with Patent Owner that the assumptions underlying the asserted PP content of Hong’s electrolyte do not adequately support the conclusions drawn therefrom because the record does not support the factual basis for the assumptions made. We also agree with Patent Owner that the Petition relies on a computational methodology involving serial calculations based on guesswork that is not adequately explained. Accordingly, we determine Petitioner does not have a reasonable likelihood of prevailing on the anticipation challenge to claim 1 based on this record. We discuss in detail each of the assumptions relied upon by Petitioner, below.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “liquid components does not meaningfully change after mixing. Pet. 19; Ex. 1003 ¶¶ 110–111. According to Dr. Anderman, the polarity of the liquid components in Embodiments 2, 18, 25, and Comparison Case 6 are “similar,” therefore it is “unlikely that there will be a meaningful change in volume in comparison to adding the individual volumes.” Ex. 1003 ¶ 110 (emphasis added). As Patent Owner notes, however, neither the Petition nor Dr. Anderman provide a basis for what is meant by “similar” or “meaningful” in terms of a threshold that would impact the calculations for Formula (3). Prelim. Resp. 37; Ex. 2001 ¶ 71. Further, the Petition’s assertion that Hong’s liquid components (to which the Petition includes Hong’s solvents listed in Hong’s Table 3 excerpted above as EC, PP, DEC, and PC) have similar polarity is unsupported by the record. Patent Owner demonstrates that Hong’s solvents have widely varying dielectric constants, which Dr. Koch explains is a measure of polarity. Prelim. Resp. 38; Ex. 2001 ¶ 77 (stating that “[t]he higher the dielectric constant of a solvent, the more polar it is”). Patent Owner asserts that there is a 34-fold difference in polarity between EC and DEC and a 20-fold difference in polarity between EC and PP based on dielectric constants reported for these solvents. Prelim. Resp. 38; Ex. 2001 ¶¶ 77–78; Ex. 1025, Table 2 (reporting a dielectric constant of 95.3 at 25°C for EC); Ex. 2004, 13 (reporting a dielectric constant of 2.82 at 68°F for DEC); Ex. 2005, 1 (reporting a dielectric constant of 64.9 at 20°C for PC), Ex. 2004, 34 (reporting a dielectric constant of 4.7 at 68°F for PP). Based on the information presented by Patent Owner, we credit Dr. Koch’s testimony that Dr. Anderman’s assumption that all of Hong’s liquid components have similar properties is not correct. Ex. 2001 ¶ 78.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSA”) “would have a Ph.D. or a similar advanced degree in chemistry, chemical engineering, materials science, or a related field, and two or more years of experience related to . . . electrochemical energy storage devices” with more experience compensating for less formal education. Pet. 12 (citing Ex. 1003 ¶¶ 24–25). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. See Prelim. Resp. 16. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 6

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 10,833,363
• U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution denied
  PTAB · Dec 20, 2022 · IPR2022-01163 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on its anticipation or obviousness grounds.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic 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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 9

  • BurdenDenied

    “Here, Petitioner’s approach of arguing that every limitation in the claims challenged under Ground 1 can be both anticipated by and obvious over Koederitz fails to identify with sufficient specificity the approach that Petitioner intends to invoke. Although arguing in the alternative is generally permissible, in this case, both the Petition and Petitioner’s expert fail to explain in adequate detail which, why or how the identified elements of Koederitz, or the addition of the knowledge of one of ordinary skill in the art to Koederitz’s elements, meet the limitations of the challenged claims. In each subsection discussing the limitations of claim 1, Petitioner relies on Koederitz, seemingly individually, but then adds language indicating that, with respect to limitations 1[c], 1[d], and 1[e], a “POSITA would understand that . . .” or “SPC techniques would be understood by a POSITA to . . . .” Pet. 16–19. This leaves it unclear whether Petitioner intends to rely on Koederitz as an anticipation reference, or Koederitz as an obviousness reference, or something else.” slip op. at 15

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

    “adequately explained how Koederitz’s sensors meet the limitations of at least independent claims 1, 9, 18, and 22. Patent Owner argues that Koederitz discloses “redundant sensor[s] at each respective sensed position, such that each sensing act is performed by two or more sensors at each location.” Prelim. Resp. 30 (citing Ex. 1004, 8:4–7, [sic] 7:5–9). With respect to limitation 1[b], “monitoring a plurality of signals with a computerbased monitoring system, each signal being associated with one of the three or more oilfield equipment subsystems,” Petitioner relies on Koederitz’s disclosure that a “programmable system controller 100 and one or more sensors 80, 82, 84, and 95” may “sense and/or receive information pertaining to one or more well bore and/or drilling parameters.” Pet. 15–16 (citing Ex. 1004, Abstract, 6:19–24, 6:37–44). Petitioner further argues that Koederitz’s disclosure of different parameters “which may be sensed and input to the controller 100” may include, i.e., mud tank volume/level, mud pump rate and/or stroke counter, fluid pressure in the mud system and the drill string, well bore pressure near the surface, and/or the positions of the choke and the blowout preventers, and these are the “type of oilfield equipment subsystems monitored.” Id. at 16 (citing Ex. 1004, 6:37–44). As argued by Patent Owner, however, the portion of Koederitz that discusses comparison of signals from sensors 80, 82, 84, 94, and 95 may pertain only to “duplicate sensors that monitor repeat signals” from the same location. Prelim. Resp. 30–31. The portion of Koederitz that discusses comparison of sensed signals relied upon by Petitioner (i.e. signals from sensors 80, 82, 84, 94, and 95) discloses that the “sensed information from each sensor at a respective position may be compared to the other sensed information at that respective position to determine the accuracy, variance, and/or reliability of the sensed value.” Ex. 1004, 7:9–13; see also id. at 10:66–11:2 (“well bore annulus pressure sensor 84 and the drill pipe pressure sensor 80 may include one or more additional respective sensors to provide a second measurement or sensing of the respective pressure being sensed”). This does not support Petitioner’s argument that each of these signals are compared among each other, and therefore among different subsystems, as required by claim 1. Rather, it appears that Koederitz discloses comparing duplicate signals from the same position, and compares those duplicate signals to each other to ensure accuracy of the signal received from that position. Petitioner does not, therefore, clearly articulate how Koederitz’s sensing and comparison of its redundant signals maps to the required “each signal being associated with one of the three or more oilfield equipment subsystems” limitation of claim 1[b] or the “comparing at least some of the signals” associated with one of the three or more oilfield equipment subsystems limitation of claim 1[d]. Additionally, with respect to limitation 1[e], which requires indicating that “at least one oilfield equipment subsystem’s signal . . . does not agree with at least two other oilfield equipment subsystems’ signals,” Petitioner generalizes that the method and system of Koederitz identifies sensor failures, erroneous data, and sensor inconsistencies with in a system with a multitude of equipment subsystems and therefore “necessarily teaches the step of” limitation 1[e]. Pet. 18–19; Ex. 1003 ¶ 61. This explanation also fails to find support in Koederitz’s disclosure of monitoring duplicate signals from the same location, as discussed above, and fails to articulate with sufficient clarity how these disclosures anticipate or necessarily teach the disclosures of limitation 1[e].” slip op. at 12

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

    “secondary references is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure”). “[A] clear, evidence-supported account of the contemplated workings of the combination is a prerequisite” to concluding “that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,574,325
• China Lithium Battery Technology Co., Ltd. v. Contemporary Amperex Technology Co., LimitedInstitution denied
  PTAB · Jun 6, 2022 · PGR2022-00008 · APJ Jo-Anne M Kokoski · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–19 were more likely than not unpatentable on the asserted anticipation, obviousness, written-description, enablement, or further-limitation grounds.

  RulingsInstitution decision

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

    “that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we deny the Petition and do not institute a post-grant review.” slip op. at 2

  • Skill levelSkill level board ownOther

    “We agree with the parties that a person having ordinary skill in the art would have had a post-graduate or equivalent degree in material science and engineering, mechanical engineering, chemical engineering, or a related field, and three to five years of work experience lithium ion battery technology, battery electrode materials, and experience with XRD analysis, which is consistent with the level of skill in the art at the time of the 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)). Although we do not fully adopt either party’s definition of the person having ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and we note that our conclusions would be the same under either definition.” slip op. at 8

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “results of the tests relied on by Petitioner are representative of the properties of Batteries #1–6, L, M, and S prior to the June 29, 2018 effective filing date of the ’932 patent.17 In that regard, we credit Dr. White’s testimony, which is supported by objective evidence of record, that the condition of lithium-ion batteries can change over time upon storage or usage, and that such changes could lead to changes in the OI values of the positive film. Ex. 2003 ¶ 73 (citing Ex. 2017, 617–618, Fig. 4; Ex. 2018, 418, Figs. 7, 8; Ex. 2019, 2737, 2739–40, Figs. 2, 3; Ex. 2020, 33, Fig. 6). We further credit Dr. White’s testimony, also supported by objective evidence of record, that “overcharging, deep discharging, or exposure to heat, among other things” can cause swelling and deterioration of the batteries, which “in turn could lead to altered structure and OI values of the cathode.” Id. ¶ 74 (citing Ex. 2021; Ex. 2022; Ex. 2023).” slip op. at 14

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

    “The parties propose constructions for the terms “layered lithium- containing compound” recited in claim 1 and “monocrystal particles” recited in claim 17. Pet. 11–14; Prelim. Resp. 13–14. For purposes of this Decision, based on the record before us, we determine that no claim term requires an explicit construction.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,930,932
• Berkeley Lights, Inc. v. The University Of British ColumbiaInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01250 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2

  • 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. 9 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute this proposed level of ordinary skill in its Preliminary Response. See Prelim. Resp. 5–6. Because it is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’936 patent, we adopt Petitioner’s proposed level of ordinary skill in the art for this decision.” slip op. at 8

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

    “Regardless of whether Patent Owner is correct that the Petition is deficient under § 42.104(b)(3), our decision not to institute does not depend on the construction of “chamber” or whether claim 6 invokes § 112 para. 6. Thus, we do not need to construe either term explicitly for our decision. 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 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “Petitioner has the ultimate burden of persuasion on the question of whether a claim is entitled to the priority date of an earlier application. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). “[A] patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). In particular, “[t]o be entitled to a parent’s effective filing date, a continuation must comply with the written description requirement of 35 U.S.C. § 112, ¶ 1.” In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013) (citations omitted). The test for the written description requirement “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). A prior application need not contain precisely the same words as are found in the asserted claims. See Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995); Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). On the other hand, “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997). A key factor in this written description analysis, which Petitioner did not clearly address in its Petition, is the meaning of “measuring a cell product” in limitation 1D. The ’936 patent discloses that “[t]he measuring the cell product [step] may be selected from one or more of: lineage staining; cell-surface protein staining; antibody staining; enzymatic assay; RT-PCR analysis; PCR analysis; sequencing; functional assay; and bead capture assay to characterize the cells.” Ex. 1001, 6:47–51. This appears to be definitional, such that the meaning of “measuring a cell product secreted by the individual clonal cell populations, or subset thereof,” as in limitation 1D, would include using any one of these listed techniques to analyze cell secretion products. This passage is also consistent with the other claims in the ’936 patent, such as claim 18, which depends from claim 1 and further states that the “measuring the cell product” step “comprises flowing a fluid comprising an immunostaining agent, an enzymatic reagent, a dye or a functionalized bead into the individual chambers.” Id. at 48:29–32; see also id. at 48:33–48 (similar limitations in claims 19–23). As Patent Owner persuasively shows on the present record, the ’213 application discloses many of these analytical techniques, including staining, functional assay, and bead capture. See Prelim. Resp. 15–17. We also find persuasive Dr. Pelanda’s testimony that a person of ordinary skill in the art would have understood that the references in the ’213 application to these analytical techniques relate to analysis of secreted cell products, and that a particular focus of the ’213 application was to use the microfluidic device for analyzing autocrine signaling, which involves detecting or analyzing cell secretions. See Ex. 2008 ¶¶ 22–32. For the above reasons, on the present record, Petitioner has not shown sufficiently that the ’213 application lacks disclosure such that Lecault is prior art to the challenged patent. Accordingly, we determine that Petitioner has not shown that there is a reasonable likelihood that it would prevail on its first and third grounds with respect to any of the challenged claims.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,421,936

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.