- Billerud Aktiebolag (Publ) v. Westrock MWV, LLCSome claims unpatentablePTAB · Mar 12, 2025 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 2, and 4–22 are unpatentable as obvious; claim 23 was not shown unpatentable. Substitute claims 25–26 are allowed, while 24 and 27 are denied for lack of written-description support.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“Exhibits 1013 and 1014 are also not admissible as expert testimony because Mr. Wirén is not “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 703. “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Mr. Wirén does not meet our definition of a person of ordinary skill in the art. See Section II.B, supra. That definition is based on the undisputed testimony of Messrs. Zotterman and Klass. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. Although Mr. Wirén has a Master’s of Science in chemical engineering, he lacks any experience or specialization in paperboard manufacturing. Ex. 2011, 12:1–10, 19:6–25, 20:2–7. We therefore agree with Patent Owner that Exhibits 1013 and 1014 are the testimony of Mr. Wirén and should be excluded from evidence because Mr. Wirén is not a person of ordinary skill in the relevant art. PO MTE 5–6, 9; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008) (“Unless a patent lawyer is also a qualified technical” slip op. at 61
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art Based on the testimony of the parties’ witnesses, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in paper science and engineering, chemical engineering, process engineering, mechanical engineering, or a related degree, with three to five years of experience in paperboard manufacturing, or a master’s degree in paper science and engineering, chemical engineering, process engineering, or mechanical engineering, or a similar field with a specialization in paperboard manufacturing. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’142 Patent Specification and the asserted prior art references.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“A claim construction that excludes a particular element is viewed as a “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, we find no claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Petitioner shows persuasively that the temperature limitation is taught by the combination of Fugitt and Papermaking. Pet. 32–34. Fugitt discloses that “[t]he rolls of the calender may be steam heated.” Ex. 1004 ¶ 26. In a section titled “Heated Rolls,” Papermaking discloses that “Steam can be used up to 170°C [338°F] surface temperature.” Ex. 1010, 95, 98. Petitioner is thus correct that, “[w]hile Fugitt teaches that a hot calender may be steam heated, Papermaking clarifies that one of ordinary skill in the art would understand that steam heated thermo-rollers may reach up to 338°F.” Pet. 36. Based on these disclosures, we are persuaded by Mr. Zotterman’s testimony that it would have been “obvious to heat the thermo-roller of Fugitt to at least 250°F.” Ex. 1003 ¶ 159. combine Fugitt and Papermaking because of Papermaking’s status as a “trusted handbook[],” because both references disclose a method of manufacturing a paperboard structure with hot calendering,” and “because of the known advantages of heated rollers.” Pet. 36–37; Ex. 1003 ¶¶ 157, 159, 162. Petitioner’s contention is supported by Papermaking’s disclosures that, for cartonboard, “[p]recalendering is used before the coater to reduce roughness and porosity” and “[h]igh thermo roll temperatures (in some cases over 200°C) result in bulk savings because of the temperature gradient.” Ex. 1005, 80–82; see also Pet. 38; Ex. 1003 ¶ 164 (citing these disclosures). Papermaking’s disclosed range of “up to 170°C [338°F]” for steam- heated rolls (Ex. 1010, 98), overlaps the claimed range of “at least 250°F.” Patent Owner agrees. Tr. 27:11–13. “If the relevant comparison between a disputed claim limitation and the prior art pertains to a range of overlapping values, ‘. . . even a slight overlap in range establishes a prima facie case of obviousness.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). “[S]uch an overlap creates a presumption of obviousness, and . . . the burden of production falls upon the patentee to come forward with pertinent evidence that the overlapping range would not have been obvious in light of the prior art.” Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018)). slip op. at 21
Patent outcomesUS 11,293,142 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,293,142 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 10, 2025 · IPR2024-01054 · APJ Michael T Cygan · IPR · Institution
Institution denied for claims 1–15 because Petitioner did not show Seet was prior art, defeating the reasonable-likelihood showing for every asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any one of claims 1–15 of the ’768 patent. Accordingly, we do not institute an inter partes review of the ’768 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We agree with Patent Owner that Petitioner has not met its burden to show that Seet is prior art. Seet is not entitled to the benefit of its provisional filing date unless a claim in Seet has written description support in the Seet provisional. See Dynamic Drinkware, 800 F.3d at 1381–82. As the “‘hallmark’ of written description, . . . the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted).” slip op. at 12
- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–7. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’768 patent and the prior art of record.” slip op. at 7
Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,510,768 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “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)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178 - PTAB · Jan 24, 2024 · IPR2023-01184 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood that claims 1, 2–4, 6–8, 15–16, and 18–19 are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateOther
“Although Petitioner has asserted the absence of specific supporting disclosure for claims 1, 15, and 18 from the ’780, ’317, and ’977 applications and the ’155, ’587, ’601, ’977, and ’753 provisional applications, the burden to show an effective filing date (or dates) of the challenged claims prior to April 22, 2010 falls on Patent Owner here because Petitioner has asserted prior art references with earlier effective dates. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016) (In an inter partes review, “a patentee bears the burden of establishing that its claimed invention is entitled to an earlier priority date than an asserted prior art reference.”). An earlier effective filing date is not presumed because, as shown in the above figure, the ’783 application is a continuation-in-part to each of the ’780, ’317, and ’977 applications that have filing dates earlier than April 22, 2010. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (“When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a [continuation-in-part] application are entitled to the effective filing date of an earlier filed application.”). On this record, and in the absence of the development of any contrary argument, we find that Petitioner has demonstrated sufficiently for institution that each of the asserted references are prior art to the challenged claims. The parties will have an opportunity to present their positions on the issue of the effective filing date of the challenged claims further during trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“of Kronberg, discloses or suggests all of the elements of claim 6. Pet. 28–34 (citing Ex. 1002 ¶¶ 107–148). More particularly, Petitioner argues that Adest discloses the limitations of claims 6, but to the extent there is a dispute that Adest discloses the “watchdog unit” limitation [6A], a person of ordinary skill in the art would have been motivated to combine the watchdog apparatus taught by Kronberg with the solar power system taught by Adest to monitor communications between signal mechanism 420 and power modules 405 of Adest. Id. at 32 (citing Ex. 1002 ¶ 127). Petitioner further argues that the watchdog taught by Kronberg was a well-known technique for detecting malfunctions at the time of the invention, and would have been one of a number of solutions for detecting the absence of a periodic signal. Id. (citing Ex. 1002 ¶¶ 128–129; Ex. 1009, 1269). Petitioner further argues that Kronberg “suggests that its watchdog apparatus is to be used to provide ‘automatic shutdown of critical devices in case of failure,’” consistent with Adest’s objective of shutting down a power generating facility when a transmitter fails to send a communication because of, for example, a fire or theft of a photovoltaic module. Id. at 32–33 (citing Ex. 1006, 1:12–15; Ex. 1005, 7:6–12).” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“The limitation “means to poll the central controller to determine if an interruption of the communication is transient” presumptively invokes 35 U.S.C. § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, our rules require that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Further, “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification” Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Federal Circuit precedent requires disclosure of an algorithm in the specification for any computer-implemented function beyond “basic functions of a microprocessor.” See EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer implemented functions require disclosure of an algorithm.”). Petitioner does not identify any portion of the ’218 patent specification that describes corresponding structure for performing the claimed function of “poll[ing] the central controller to determine if an interruption of the communication is transient.” See Pet. 39. Accordingly, Petitioner has not identified sufficient corresponding structure for performing the function of this presumptive means-plus-function limitation.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,823,218 - Eden Park Illumination, Inc. / Larson Electronics LLC et al. v. S. Edward NeisterAll claims unpatentablePTAB · Nov 14, 2023 · IPR2022-00381 · APJ Julia Heaney · IPR · Final written decision
Claims 1–10 and 12–18 are unpatentable as obvious; the revised contingent motion to amend is denied because proposed claims 19–25 lack written description support.
RulingsFinal written decision- Skill levelOther
“1. Principles of Law In an inter partes review, the petitioner bears the ultimate burden of persuasion to show unpatentability, which never shifts to the patent owner. Dynamic Drinkware LLC v. National Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). “However, when a patent owner attempts to antedate an asserted prior art reference, the patent owner takes on a temporary burden of production.” Medtronic, Inc. v. Teleflex Innovations S.À.R.L., 68 F.4th 1298, 1303 (Fed. Cir. 2023) (citing Dynamic Drinkware, 800 F.3d at 1378– 79)). “Once that burden is met, the burden shifts back to the petitioner.” Id. “[A] patent’s claims are not entitled to an earlier priority date because the patentee claims priority. . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120,” including a written description in the earlier-filed application that satisfies § 112. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011) (citations omitted)); see also Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010). “[T]he hallmark of written description is disclosure,” and “the test [for satisfaction of the written description requirement] requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description “must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed,’” and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. (alteration in original). Stated another way, “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). To provide sufficient written description support, “[a] ‘disclosure” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Reason to Combine Petitioner contends it would have been obvious to a person of ordinary skill in the art to combine (1) Eckhardt’s method of disinfecting skin using any light source that emits light capable of sterilization or disinfection, with (2) Sosnin’s KrCl or XeBr light sources, which generate photons having a wavelength of 222 nm and 282 nm, respectively. Pet. 21– 22 (citing Ex. 1003 ¶¶ 40, 81; Ex. 1004 ¶¶ 31, 69; Ex. 1005, 1547). Petitioner contends a person of ordinary skill would have been motivated to combine the teachings of Eckhardt and Sosnin for several reasons: (1) Eckhardt’s teaching of using any light source capable of sterilization or disinfection, and specifically “narrow spectrum light (e.g., a line spectrum)” would have suggested to a person of ordinary skill in the art to incorporate other well-known germicidal UV light sources like Sosnin’s, and both references teach that their light sources kill bacteria; (2) a person of ordinary skill would have implemented Eckhardt’s high-level disclosure of using UV- C light to disinfect skin with Sosnin’s 222 nm excimer lamp because Sosnin’s lamp’s wavelength is within the range of 220 to 310 nm suggested by Eckhardt; (3) the effectiveness and relative safety of directing UV-C light of 222 nm on bare skin for disinfection was already understood by persons of ordinary skill in the art, even though there was general caution against exposing skin to excessive UV radiation. Pet. 22–24 (citing Ex. 1003 ¶¶ 40, 81–92; Ex. 1004 ¶¶ 5, 31, 69, 70; Ex. 1005, 1545–47; Ex. 1011 ¶¶ 28, 40; Ex. 1013 ¶ 8; Ex. 1015, 2:22–67; Ex. 1016, 2:23–26; Ex. 1017, 58).” slip op. at 25
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“with our analysis of the effective filing date of original claims 12–18 that Patent Owner does not meet its burden to demonstrate the inventor’s possession in the ’626 provisional of generating photons of at least two single line wavelengths. Having considered the additional disclosures of the ’626 provisional Patent Owner points to in its RMTA (see RMTA 9), we find that none of these disclosures describe using both 222 nm and 254 nm single line wavelengths. See Ex. 1008 ¶¶ 8, 12, 27, claim 9; Ex. 2047, 6–9. For example, the recitation of “apparatus that consists of a NUV source, ESP, ozone generator, mercury lamps, and humidifier with controls as defined in claims 3–8 and any combination therein” in claim 9 of the ’626 provisional generally identifies various sources that may be used, but would not have indicated to a person of ordinary skill that the inventor had possession of generating single line wavelengths of 222 nm and 254 nm. Mr. Lawal’s testimony supports this finding. Ex. 1053 ¶¶ 1–12. Accordingly, we determine that Patent Owner does not meet its burden to demonstrate written description support for generating photons of at least two single line wavelengths, in claims 19–25 of its RMTA.19 Because Patent Owner has not satisfied the statutory and regulatory prohibition against introducing new matter in the revised proposed substitute claims, we deny the RMTA as to claims 19–25. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Accordingly, we need not reach the patentability challenges Petitioner raises with regard to claims 19–25.” slip op. at 77
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteOther
“19 We also determine that claim 19 does not particularly point out and distinctly claim the invention sought to be patented, as required by 35 U.S.C. § 112(b), because “the microorganisms” in element [19B] lacks antecedent basis.” slip op. at 78
Patent outcomesUS 9,700,642 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,700,642 - PTAB · Aug 11, 2023 · PGR2023-00013 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 on all asserted grounds; the Board found it more likely than not that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A post-grant review may be instituted only if “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons below, Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’286 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 9
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. “Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b), which is identical to 35 U.S.C. § 326(b)). Although rare circumstances may necessitate two petitions, “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Id. To help the Board determine whether multiple petitions are necessary, the Trial Practice Guide further instructs a petitioner filing multiple petitions challenging the same patent to explain “the differences between the petitions, why the issues addressed by the differences are material, and why identifies one petition that satisfies petitioner's burden under 35 U.S.C. § 314(a).” CTPG 59–60. Additionally, the Trial Practice Guide instructs the patent owner to “clearly proffer any necessary stipulations,” where the patent owner asserts that “the differences identified by the petitioner are directed to an issue that is not material or not in dispute.” Id. at 61. The patent owner may, for example, “seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.” Id. In light of the particular facts before us, we decline to exercise our discretion to deny the Petition pursuant to 35 U.S.C. § 324(a) on the basis of the filing of two parallel petitions. In particular, we recognize that the two petitions do not include duplicate attacks on the basis of unpatentability over prior art, but rather break the issues into two distinct parts—prior-art based unpatentability challenges, in PGR2023-00012, and 35 U.S.C. §§ 101 and 112 challenges here. The usual considerations of fairness, timing, and efficiency do not weigh in favor of exercising our discretion to deny institution. In particular, the petitions were filed concurrently, which means that Petitioner did not gain a timing advantage that might otherwise occur if the petitions were filed serially. Additionally, the proceedings can be coordinated, and a similar or common schedule can be adopted. To the extent that Patent Owner argues (see Prelim. Resp. 55–56) that Petitioner was attempting to avoid providing a single stipulation that (upon institution) Petitioner will pursue neither section 103 grounds on certain art, as per the stipulation offered in PGR2023-00012, nor section 101 and 112 grounds as per the stipulation here (see Pet. 49), discretionary denial of this Petition would not provide such a stipulation. Because we institute both here and in is equivalent to our best understanding of Patent Owner’s desired stipulation “tak[ing] into account” the two Petitions. Accordingly, based on the particular facts and circumstances before us, we decline to exercise our discretion to deny the instant Petition under § 324(a) on the basis of the Petitioner’s filing of multiple petitions.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Conclusion We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 23
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · Enfish · Phillips · NautilusPatents in suitUS 11,328,286 - PTAB · Aug 11, 2023 · PGR2023-00012 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 and all asserted grounds after finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“On this record, and for the purposes of institution, we agree that Petitioner has sufficiently shown that the information presented on the interface of the card device is not described in the ’891 provisional as being limited to use in an in-store merchant card reader facility. The ’891 provisional describes the card “connect[ing] to a personal computer” for use in generating payment information for online purchases. Ex. 1012 ¶ 17. While Patent Owner argues that the description in the ’891 provisional of “uniquely generat[ing] a credit card number” means a use “unique from that used for in-store transactions,” this description echoes the general description of the use of the card to provide “a unique credit card number . . . for each transaction.” Compare Ex. 1012 ¶ 14, with id. ¶ 17.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Because the trial in the district court litigation, under any of the parties’ proposed approaches, appears likely to begin several months before our deadline to reach a decision, this factor weighs in favor of discretionary denial.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We address the meaning of several claim terms below and determine that no additional claim construction is needed for purposes of this Decision.” slip op. at 23
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,328,286 - PTAB · Jul 6, 2022 · PGR2022-00022 · APJ Elizabeth M Roesel · PGR · Institution
The Board denied institution because Petitioner failed to establish that the ’629 Patent was eligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Determining whether a patent is subject to the first-inventor-to-file provisions of the AIA, and therefore eligible for post-grant review, is straightforward when the challenged patent issued from an application filed before March 16, 2013, or when the challenged patent issued from an application filed on or after March 16, 2013, without any priority claim. The determination is more complex, however, for a patent that issues from a “transition application,” that is, an application filed on or after March 16, 2013, that claims the benefit of an earlier filing date. See MPEP § 2159.04.3 Entitlement to the benefit of an earlier filing date under 35 U.S.C. §§ 119, 120, 121, or 365 is premised on disclosure of the claimed invention “in the manner provided by § 112(a) (other than the requirement to disclose the best mode)” in the earlier application. See 35 U.S.C. §§ 119(e)(1), 120. Thus, for a patent issuing from a transition application, eligibility for post-grant review depends on whether the patent contains or contained at any time a claim that lacks written description or enabling support in a priority application filed before March 16, 2013.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“We agree with Patent Owner that Petitioner disregards the second part of the Federal Circuit’s two-part test by failing to address whether the specification of the ’629 Patent discloses structural features common to the members of the alleged genus. Prelim. Resp. 15–16; see Pet. 39 (quoting AbbVie, but omitting the two-part test). More fundamentally, however, we determine that Petitioner fails to establish that the claims of the ’629 Patent recite a “functionally-defined genus” that would trigger the application of the Federal Circuit’s two-part test. Ajinomoto, 932 F.3d at 1358, 1360; AbbVie, 759 F.3d at 1299; Ariad, 598 F.3d at 1349. Petitioner fails to show that the ’629 Patent claims recite a functionally-defined genus. Petitioner asserts that “claim 1 of the ’629 Patent claims a genus range of acceptable proportions of sugar reactants and amine reactants to the overall binder reactants.” Pet. 39. We agree with Patent Owner, however, that the limitations that Petitioner characterizes as a “genus range” are structural, not functional. See PO Resp. 17 (asserting that “[t]he claims themselves identify the[] common ‘structural features,’ specifying the ‘percent by dry weight’ of the ‘reducing sugar reactant’ and ‘amine reactant’ in the ‘binder solution’ used in the claimed method,” citing Ex. 1001, 6:4–11)).” slip op. at 13
§ 112 disclosurePatents in suitUS 10,968,629 - Beckman Coulter, Inc. v. Sysmex Corporation And Sysmex America, Inc.All claims unpatentablePTAB · Feb 18, 2022 · IPR2020-01503 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 7–15 are unpatentable as obvious over Nagai and Jagtiani; the priority applications lack written-description support for the claimed electrical detection and cell-counting combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we determined that Petitioner’s definition was consistent with the disclosure of the ’351 patent and the scope and content of the asserted prior art to the extent that Petitioner’s definition requires familiarity with the design and operation of automated hematology analyzers available in the market. Dec. 8 (citing Ex. 1001, 1:45–61, 15:52– 58). We also determined that Petitioner’s proposal was more reasonable than Patent Owner’s with respect to the duration of a POSA’s practical experience, whether such practical experience is in addition to or possibly as experience could be merely using hardware and/or software for an analyzer, as opposed to developing such hardware and/or software. Id. at 8–9. Neither party contends that the differences in proposals affect the outcome of this proceeding, and we find that they do not. Nonetheless, on the full record now before us, we find that our identification of the level of ordinary skill in the art in the Institution Decision, modified to state that a higher level of experience can compensate for less technical education, is supported by the ’351 patent, the prior art of record, and the opinions of Mr. Roche and Dr. Robinson (which, as discussed above, recognize that additional work experience can compensate for technical education). Thus, we find that a POSA would have had at least a Bachelor’s or Master’s degree in biologic science, biomedical engineering, and/or electrical engineering or a related field and at least five years of experience in developing hardware and/or software for hematology analyzers, and would have been familiar with the design and operation of hematology analyzers available in the market. We also find that less technical education may be compensated by a higher level of experience, or vice versa.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“a controller programmed to,” “optical detector,” “electrical detector,” and “mono-nucleated cells and poly-nucleated cells” as recited in claim 7, and “total count of nucleated cells” as recited in claims 8 and 13. Pet. 22–29. Patent Owner responds that “[t]he District Court issued an opinion regarding claim construction on April 6, 2021,” and, “[f]or purposes of this proceeding, Patent Owner applies the District Court’s constructions.” PO Resp. 13. Patent Owner also specifically addresses the terms “controller programmed to” and “electrical detector.” Id. at 13–14. Petitioner replies that its proposed claim constructions are consistent with the District Court’s constructions. Pet. Reply 4–5. At the oral hearing, the parties confirmed that they do not dispute the District Court’s claim constructions. See Tr. 16 (Petitioner’s counsel stating that “Petitioner would request that this Board adopt these same [District Court] constructions in this IPR”), 34 (Patent Owner’s counsel agreeing that “neither side has objected to the court’s claim construction”). Based on the parties’ apparent agreement, and considering the record before us and the Report and Recommendation from the District Court (Ex. 2065), we agree with and adopt the District Court’s claim constructions. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.”). Accordingly, we construe the terms “controller programmed to,” “electrical detector,” and “optical detector” as set forth below. slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“that Petitioner has established that the priority applications do not provide adequate written description support for the challenged claims. More specifically, we find that the priority applications do not reasonably convey to a POSA that the inventors were in possession of a sample analyzer that both (1) uses an electrical detector to electrically sense cells in a body fluid measurement sample, and (2) from the analysis of the cells sensed by the electrical detector, counts the number of mono-nucleated cells and poly-nucleated cells in the body fluid measurement sample as required by claim 7.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on our review of the record, we determine that Petitioner has established that a POSA would have had reason to combine the teachings of Nagai and Jagtiani to achieve the claimed subject matter. Nagai describes an electrical detector (RBC/PLT detection unit 42) that “is capable of measuring the number of red blood cells and platelets by a sheath flow-DC detection method.” Ex. 1044, 6:58–63, Fig. 5. Nagai also describes WBC detection unit 41 that produces a DIFF scattergram that, in the body fluid measuring mode, is analyzed in order to classify the white blood cells into two subclasses, namely, mono-nucleated cells and poly-nucleated cells. Id. at 5:56–58, 12:27–36. Nagai teaches that WBC detection unit 41 is “configured as an optical detection unit” that performs white blood cell classification in the body fluid measurement mode using a combination of electrical resistance and absorbed light. Id. at 5:56–58, 15:52–16:6. Jagtiani teaches a channel sensor that can detect impedance to differentiate between different types of cells in a biological sample, including differentiating between red blood cells, white blood cells, and platelets. Ex. 1045 ¶¶ 21, 25; see also id. ¶ 187 (“The channel sensor is based on impedance sensing using the Coulter principle.”). Jagtiani teaches the sensor can be configured to differentiate between and count the number of eosinophils, basophils, neutrophils, monocytes, and lymphocytes in the biological sample. Id. ¶ 25; see also id. ¶ 121 (“In some embodiments, the cell count can include a white blood differential, and can include a count of basophils, a count of eosinophils, a count of lymphocytes, a count of neutrophils, and/or a count of monocytes.”). Jagtiani further teaches that “[s]uch biological samples can include, for example, blood, serum, saliva, sweat, tears, urine, or any other biological sample or derivative suspended in a fluid.” Id. ¶ 119. In light of these teachings in Nagai and Jagtiani, we credit Mr. Roche’s testimony that Jagtiani demonstrates a known technique of detecting poly-nucleated and mono-nucleated white blood cells using an electrical detector. A POSA at the time of the invention would have been led to modify Nagai with the teaching of Jagtiani in the manner claimed to allow the body fluid measurement of Nagai to differentiate poly-nucleated and mono-nucleated blood cells (instead of measuring red blood cells alone). Such a motivation is found, for example, in Petitioner’s DxH system, which discloses use of an electrical detector in both a blood measuring mode and a fluid measuring mode. Ex. 1042 ¶¶ 30, 31. In the DxH system, use of an electrical detector in both the blood measuring mode and body fluid measuring mode allows identification of total number of cells in measured body fluid.” slip op. at 29
Patent outcomesUS 10,401,351 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 10,401,351 - Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.All claims unpatentablePTAB · Jan 10, 2022 · PGR2020-00071 · APJ Jeffrey W Abraham · PGR · Final written decision
Claims 1–12 and 18–30 are unpatentable: claims 1–9, 11, 12, 19–26, and 28–30 as obvious over Robinson and Greim; claim 18 over Robinson, Greim, and Wang; claims 10 and 27 for lack of written description.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and one to two years of industry experience. Such a POSA would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein. Pet. 14 (citing Ex. 1004 ¶¶ 26–30). Patent Owner states that “[f]or purposes of the trial in this proceeding, [Patent Owner] accepts Petitioner’s proposed education and experience level of the [person of ordinary skill in the art].” PO Resp. 13. In view of the foregoing, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art. The prior art of record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent, i.e., the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and 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).” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“that Greim discloses some advantages over other known heaters in the art, including, inter alia, that Greim provides flexibility in the design to give desired heat distribution and to heat different portions of the tobacco for different durations, at different times, and at different temperatures. Pet. 59– 60; Reply 27–28; PO Resp. 70 (acknowledging that “some of the items in Petitioner’s list may be advantages in the abstract”). Petitioner directs us to Dr. Deevi’s unrebutted declaration testimony that Greim’s flexibility “would facilitate more efficient heating of the tobacco and make it easier for a [person of ordinary skill in the art] to optimize the heating design” (Ex. 1002 ¶ 167), and deposition testimony from Mr. Clemens that a person of ordinary skill in the art would have appreciated “flexibility in their design” (Ex. 1065, 25:19–26:6). Reply 27–28.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents . . . and to the background knowledge possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at 401. Here, Petitioner directs us to evidence demonstrating that a person of ordinary skill in the art would have understood Robinson to invite that person to use their own knowledge in selecting a heater, and evidence from Greim explaining that its heaters are advantageous. Pet. 55–61. This evidence demonstrates persuasively that a person of ordinary skill in the art would have had reason to combine the teachings of Greim and Robinson. And, contrary to Patent Owner’s assertions otherwise (PO Resp. 70–79), this evidence shows Petitioner has provided an articulated reasoning with rational underpinning to support its obviousness challenge. Additionally, Robinson’s statement regarding design choice, combined with Greim’s description of the design, manufacture, and installation of its heaters persuasively supports Petitioner’s assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention. Pet. 60–62 (citing Ex. 1006, 28:41–44; Ex. 1004 ¶¶ 160–162, 171–176); Reply 25 (“Greim’s additional details do not add more work to the design process. They subtract from it.”); Ex. 1064 ¶¶ 49–52. Additionally, testimony from Mr. Clemens suggests that implementing Greim’s heater in Robinson’s housing would not have been beyond the skill of a person of ordinary skill in the art. Ex. 1065, 78:5– 83:21 (stating that a person of ordinary skill in the art would have known how to design and implement heaters, including heaters configured to allow for air flow). slip op. at 31
Patent outcomesUS 10,492,542 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,492,542
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.