- Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentablePTAB · Apr 6, 2022 · IPR2020-01533 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over the combined prior art, considered with the knowledge of a person of ordinary skill in the art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither Patent Owner nor Dr. Jaczynski disputes Petitioner’s definition of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For purposes of this proceeding, I will accept [Petitioner’s] definition of a [person of ordinary skill in the art].”). Upon review of the ’046 patent and the prior art of record, we find Petitioner’s uncontested definition reasonable and supported by the evidence of record. Accordingly, we adopt this definition of one of ordinary skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the parties’ arguments and supporting evidence, we determine that no terms of the ’046 patent require construction in order to resolve the disputes in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral estoppel applies “[i]f the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” Id. Petitioner points to no prior decision of the Board where the issue of whether it would have been obvious to denature a krill product and then store it for 1 to 36 months before extraction was at issue. Moreover, to demonstrate that the added limitation would have been obvious, Petitioner relies heavily on the disclosures of Budziński, which was not at issue or analyzed in the prior proceedings. Pet. 39. Accordingly, Petitioner has not demonstrated that collateral estoppel applies to any issue in this proceeding. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Breivik II’s disclosures would have understood that extraction of fresh krill is preferable over stored krill products, and that extraction should be performed on the fishing vessel as opposed to on land. PO Resp. 53. On this record, we agree with Patent Owner that Breivik II teaches or suggests a successful method of immediately processing and extracting fresh caught krill on-board a fishing vessel. We also agree that Breivik II suggests that its disclosed method may have advantages over conventional krill oil extraction processes. The disclosed advantages to immediately denaturing and extracting krill oil discussed in Breivik II, however, are only “expected,” not definitive, and we are directed to no disclosure in Breivik II to suggest that extraction from a stored, denatured krill meal was unlikely to result in a useful krill oil. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (noting that the case law “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (explaining that a reference teaches away when it suggest that a particular course of action “is unlikely to be productive of the result sought by the applicant,” and that “[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product of the same use”). Moreover, although, as noted in Breivik II, oxidation and enzymatic hydrolysis are of particular concern during krill processing procedures, Petitioner and Dr. Tallon persuasively demonstrate that the denatured and “stable” krill meal of Budziński was not subject to significant enzymatic hydrolysis or deterioration of krill lipid antioxidants, such as astaxanthin. Ex. 1006 ¶¶ 172, 421, 434; Ex. 1086 ¶¶ 50–51; see also Ex. 1010, 822–823 (Fricke disclosing storing denatured krill products for a period of time before extraction with a polar solvent). As such, we are not persuaded that Breivik II would have taught away from, or otherwise discouraged, one of ordinary skill in the art from extracting krill oil from a denatured and stable krill meal that has been stored from between 1 and 36 months. Patent Owner further argues that, consistent with Breivik II’s disclosures, Budziński instructs that krill should be “processed as soon as possible after capture” and that “[t]he only way to meet this requirement is to install processing facilities on-board the vessel.” PO Resp. 51 (citing Ex. 1008, 25). The required processing of Budziński, however, is to denature the problematic krill enzymes, not to extract krill oil. Ex. 1008, 25. And, once the krill products are denatured, Petitioner persuasively demonstrates that krill oil extraction could be successfully performed either on-board a vessel or on land after a storage period of up to 13 months. In view of the foregoing, we find that Breivik II and Budziński do not teach away from, or counsel against, extracting krill oil from a krill meal that had been denatured and stored for 1 to 36 months.” slip op. at 26
Patent outcomesUS 9,816,046 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,816,046 - Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentablePTAB · Apr 6, 2022 · IPR2020-01532 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over the asserted combinations of prior art, because the combined teachings establish every limitation and a reason to combine with a reasonable expectation of success.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral estoppel applies “[i]f the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity.” Id. Petitioner points to no prior decision of the Board where the issue of whether it would have been obvious to denature a krill product and then store it for 1 to 24 months before extraction was at issue. Moreover, to demonstrate that the added limitation would have been obvious, Petitioner relies heavily on the disclosures of Budziński, which was not at issue or analyzed in the prior proceedings. Pet. 45; PO Resp. 13 (asserting that the prior art in the previous proceedings “did not include Budziński”). Accordingly, Petitioner has not demonstrated that collateral estoppel applies in this proceeding. slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither Patent Owner nor Dr. Jaczynski dispute Petitioner’s definition of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For purposes of this proceeding, I will accept [Petitioner’s] definition of a [person of ordinary skill in the art].”). Upon review of the ’169 patent and the prior art of record, we find Petitioner’s uncontested definition reasonable and supported by the evidence of record. Accordingly, we adopt this definition of one of ordinary skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“oil,” “denature lipases and phospholipases,” “polar solvent,” “astaxanthin esters,” “krill meal,” and “freshly harvested.” Pet. 32–39. With respect to “krill meal,” Petitioner contends this term should be construed to mean “processed krill with reduced water content from which krill oil can be extracted.” Id. at 38. Patent Owner provides proposed constructions for the terms “krill meal” and “denature lipases and phospholipases.” PO Resp. 7–12. With respect to “krill meal,” Patent Owner contends Petitioner’s proposed construction of “krill meal” is overbroad and ignores the ordinary and customary meaning of a meal, which is a “powder formed by particle size reduction of a starting material.” Id. at 8 (citing Ex. 2015 ¶¶ 14–16). Thus, Patent Owner construes “krill meal” to mean “a krill powder resulting from the processing of krill.” Id. Upon review of the parties’ arguments and supporting evidence, we determine that no terms of the ’169 patent require construction in order to resolve the disputes in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“As noted by Patent Owner, the evidence of record suggests that one of ordinary skill in the art would have known that krill processing—both denaturation and krill oil extraction—could be successfully performed on board a ship. Ex. 1037, 3–4; Ex. 2019, 49:18–25 (Dr. Tallon testifying 12 Because Patent Owner relies on various disclosures of Breivik II as potentially counselling against combining the references to arrive at the claimed subject matter, we will consider these teachings in our Decision. We do not, however, consider Breivik II or Petitioner’s arguments with respect to this reference in determining whether the prior art teaches or suggests every limitation of the challenged claims. during cross-examination that flammable solvents can be successfully managed on a ship). At the same time, Petitioner and Dr. Tallon explain that the dangers of using flammable solvents on a vessel are still a relevant consideration. Ex. 1086 ¶¶ 97–99; Ex. 2019, 49:18–25 (Tallon Deposition). Moreover, Dr. Tallon also persuasively identifies several other benefits of land-based krill oil extraction, such as the reduced costs of outfitting each ship with its own processing equipment (which is often essentially identical to that used on land), the ability to extract krill oil to meet specific demand in the market, and cheaper access to fuel. Pet. 61 (citing Ex. 1006 ¶¶ 173, 443); see KSR, 550 U.S. at 418 (noting that market forces and design needs can provide the reason to combine or modify prior art references). Patent Owner presents no argument or evidence to refute these additional benefits of land-based extractions, other than to note that Dr. Tallon does not cite any specific documents to support his assertions. PO Resp. 45 (Patent Owner noting the testimony of Dr. Tallon). Upon review of the evidence of record, we credit the testimony of Dr. Tallon that one of ordinary skill in the art would have understood that, in addition to avoiding the need to manage the use of flammable solvents at sea, there were a number of other benefits to land-based extractions of krill oil that would have motivated a skilled artisan to store the denatured krill products for between 1 and 24 months, as recited in claim 1.” slip op. at 25
Patent outcomesUS 9,644,169 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,644,169 - PTAB · Mar 18, 2022 · IPR2021-01346 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted obviousness grounds, finding a reasonable likelihood that Samsung would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded there is a reasonable likelihood Petitioner would prevail with respect to the challenged claims. Accordingly, we institute an inter partes review of claims 1–16 on all of the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art . . . (“POSITA”) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field. . . . More education can supplement practical experience and vice versa. Pet. 4–5 (citing Ex. 1002 ¶¶ 20–21). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’466 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any specific claim constructions. Pet. 6. No terms require construction at this stage. 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.”) (internal quotation omitted).” slip op. at 7
- BurdenOther
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5
Claim constructioncites KSR · GrahamPatents in suitUS 10,499,466 - PTAB · Mar 18, 2022 · IPR2021-01345 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board instituted IPR on claims 1–20 on all three § 103 grounds, finding a reasonable likelihood that claims 1, 7, 16, and 20 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing 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). Moreover, if the Board institutes a trial, the Board will institute on all challenges raised in the petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018) (“SAS”) (holding that a decision to institute under 35 U.S.C. § 314 may not institute review on fewer than all claims challenged in the petition); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”). Applying those standards, and upon consideration of the information presented in the Petition, as well as the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. 1 Petitioner identifies itself, Samsung Electronics Co., Ltd., as well as Samsung Electronics America, Inc. as real parties-in-interest. Pet. 1. 2 Patent Owner identifies itself, Lynk Labs, Inc., as the real party-in-interest. Paper 4, 1. Accordingly, we institute an inter partes review of all challenged claims of the ’252 patent, based on all grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field,” whereby “[m]ore education can supplement practical experience and vice versa.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner, as it is supported by Dr. Baker’s testimony and appears to be consistent with the ’252 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine we need not explicitly construe any claim terms at this stage of the proceeding.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner further contends that “[i]n light of Garcia’s disclosure (incorporating DeMuro’s disclosures), a [person of ordinary skill in the art] would have been motivated, and found it predictable, to configure Hack’s device 100 (‘apparatus’) in the manner described above in this section (i.e., resulting in an implementation tracking the features of [this] limitation).” Id. at 16 (citing Ex. 1002 ¶ 88). Petitioner supplies detailed reasoning why one of ordinary skill in the art would have modified Hack to incorporate Garcia’s wireless charging technique, and would have had a reasonable expectation of success in doing so. Id. at 16–20; Ex. 1002 ¶¶ 89–91. e) a proximity sensor Petitioner relies on the combined teachings of Hack and Garcia for teaching this limitation of claim 1. Pet. 20–23. Garcia discloses proximity sensor 208. Id. at 20–21 (citing Ex. 1006, 2:66–3:3, Fig. 3; Ex. 1002 ¶ 92). According to Petitioner, Garcia “explains that it was known even at the time of Garcia to determine if a battery charger is close (proximate) to a battery, in order to determine if a wireless communication link should be established to support wireless recharging.” Id. at 21 (citing, e.g., Ex. 1006, 2:8–17; Ex. 1002 ¶ 93). Petitioner contends that a person of ordinary skill in the art “would have . . . found such a proximity sensor to be useful and predictable to implement in Hack’s device 100 to similarly support wireless charging.” Id. at 22 (citing Ex. 1002 ¶ 94). Petitioner further explains that a person of ordinary skill in the art “would have had a reasonable expectation of success implementing this configuration” (i.e., including a proximity sensor in Hack’s device 100) Id. at 22–23 (citing Ex. 1002 ¶ 94). f) Conclusion as to Claim 1 Petitioner’s contentions and cited evidence as to claim 1, summarized above, are persuasive on the preliminary record now before us. As noted, Patent Owner does not offer arguments at this stage of the proceeding. Based on the current record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over the combined teachings of Hack and Garcia.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,252 - PTAB · Mar 15, 2022 · IPR2021-01299 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that the challenged claims would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded there is a reasonable likelihood Petitioner would prevail with respect to the challenged claims. Accordingly, we institute an inter partes review of claims 1–20 on all of the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art (“POSITA”) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and two or more years of experience with LED devices and/or related circuit design, or a related field. . . . More education can supplement practical experience and vice versa. Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not address the level of skill in the art at this stage. See generally Prelim. Resp. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’674 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties propose no constructions. Pet. 5; see generally Prelim. Resp. No terms require construction at this stage. 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.”) (internal quotation omitted).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“At this stage, Petitioner’s arguments are more persuasive. We agree with Petitioner’s stated rationales and do not view them or its supporting declaration as conclusory. Certainly they are more detailed than Patent Owner lets on, as Petitioner does not merely rely on Oba and Gillespie being in the same field. Rather, as detailed above, Petitioner contends, for example, that the combination would help eliminate the need for a special dedicated LED status display in Oba. Pet. 11 (citing Ex. 1071 ¶ 53). Petitioner further argues that the combination of Gillespie’s capacitive touch circuitry with Oba’s display was one of a finite number of available and known technologies for implementing touch detection at the time, which would facilitate touch detection in Oba. Id. at 20 (citing Ex. 1002 ¶ 97). And Petitioner contends that Gillespie’s OLED display would conserve power used by Oba’s display and would provide better readability of the display. Id. at 25 (citing Ex. 1002 ¶ 103; Ex. 1071 ¶ 113). None of these arguments are conclusory, as Patent Owner suggests.8 Not only that, but on this record, Gillespie’s OLED and capacitive touch features are not present in Oba, which undercuts Patent Owner’s argument that Oba “discloses all aspects of Gillespie such that there would be no reason to combine these references.” Prelim. Resp. 7–8. As for hindsight, we note: Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1394–1395 (CCPA 1971). We find no impermissible hindsight on this record because Petitioner bases its arguments on the teachings of Oba and Gillespie, not on the disclosure in the ’674 patent Specification.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,506,674 - PTAB · Mar 15, 2022 · IPR2021-01347 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–25 on all asserted grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a)(2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the arguments and evidence of record, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the Challenged Claims of the ’298 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“to modify Birrell to use Logan’s method of transferring power using inductive coupling because this method would avoid interference problems and would allow “flexibility” when wirelessly powering devices having different voltage requirements. Id. at 13–14 (explaining that voltage magnitude adjustments may be made by adjusting the windings of the coils; for example, by including more windings in the transmitting coil than the receiving coil the transmitted voltage may be reduced). On this record, Petitioner explains sufficiently for purposes of institution why one of ordinary skill in the art would have combined the disclosures of Birrell and Logan to arrive at the devices and circuits set forth in Demonstrative A, and as described by Petitioner.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, Petitioner identifies sufficiently for purposes of institution where Birrell discloses every limitation of claim 6. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 6 is anticipated by Birrell.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,966,298 - PTAB · Mar 15, 2022 · IPR2021-01300 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all asserted grounds, finding a reasonable likelihood that Petitioner would show the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion with Respect to Claim 1 On this record, Petitioner sufficiently identifies where each limitation of claim 1 is taught or suggested by Oba, Sato, Gillespie, and Hara. Petitioner also sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the identified references to arrive at the subject matter of claim 1 with a reasonable expectation of success. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 1 would have been obvious over Oba, Sato, Gillespie, and Hara.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“aspects of notebook computers, or generic computer systems, were known in the art and could be successfully substituted with, or used to modify, specific components of Oba. We disagree that reliance on these types of references is, by itself, evidence of hindsight reconstruction. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). Nor do we find that the Petition and the supporting evidence that it relies upon place an undue burden on the Board to resolve the current dispute between the parties, as argued by Patent Owner. c) Conclusion with Respect to Claim 1 On this record, Petitioner sufficiently identifies where each limitation of claim 1 is taught or suggested by Oba, Sato, Gillespie, and Hara. Petitioner also sufficiently explains for purposes of institution why one of ordinary skill in the art would have sought to combine the identified references to arrive at the subject matter of claim 1 with a reasonable expectation of success. Accordingly, Petitioner demonstrates a reasonable likelihood that claim 1 would have been obvious over Oba, Sato, Gillespie, and Hara.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“provides only a single, conclusory assertion regarding expectation of success with respect to implementing Hara’s disclosures in Oba’s notebook computer. Prelim. Resp. 10 (citing Pet. 21). We disagree. As noted above, Petitioner provides specific arguments and citations to record evidence to support its argument that one of ordinary skill in the art would have had a reasonable expectation of success in implementing Hara’s disclosures in the apparatus of Oba, Sato, and Gillespie. Pet. 20–21 (citing Ex. 1002 ¶¶ 106– 108; Ex. 1045, 11:27–35, 11:60–62, Fig. 4D2; Ex. 1013, 4:19–24, Fig. 1; Ex. 1044, 6:3–14, Fig. 14). In the absence of specific reasons to doubt Petitioner’s arguments, on this record Petitioner explains sufficiently for purposes of institution why one of ordinary skill in the art would have had a reasonable expectation of success in implementing Hara’s disclosures in the electronic device of Oba, Sato, and Gillespie.” slip op. at 16
§ 103 obviousnesscites KSRPatents in suitUS 11,019,697 - PTAB · Feb 18, 2022 · IPR2021-01369 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1, 11, and 13 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the Challenged Claims of the ’251 patent. Accordingly, we institute an inter partes review with respect to all Challenged Claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The following two-part framework is used to determine whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition does not provide proposed constructions for any terms of the ’251 patent. Pet. 11. And although Patent Owner disputes Petitioner’s assertions regarding certain claim terms, it does not contend that any terms of the ’251 require express construction for purposes of this Decision. See, e.g., Prelim. Resp. 23–24, 35. Upon review of the parties’ arguments and supporting evidence, we find that no terms of the ’251 patent require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,492,251 - Home Depot USA, Inc. v. Lynk Labs, Inc.InstitutedPTAB · Feb 18, 2022 · IPR2021-01367 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 5, 7, and 8 on all asserted grounds, finding a reasonable likelihood that Petitioner would show them unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Pursuant to 35 U.S.C. § 325(d), in determining whether to institute review “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The following two-part framework is used to determine whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the Challenged Claims of the ’551 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“circuity that provides an input to another circuit. Ex. 1010, 339. Simply providing an input to another circuit, however, would not allow the driver to accomplish the goals outlined in the ’551 patent. Instead, in each embodiment of the ’551 patent the driver is used to power a device or circuit, not merely provide a generic signal. See Ex. 1001, 6:37–39. This use of the term “driver” generally aligns with the second dictionary definition provided by Petitioner, i.e., “a program, circuit, or device used to power or control other programs, circuits or devices.”8 Ex. 1010, 339 (definition 3); Ex. 1001, 6:37–39; see Vitronics, 1584 n.6 (noting that dictionary definitions may be used when construing claims, “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents”). Thus, we find a “driver,” as that term is used in the ’551 patent, must be capable of providing power to another device or circuit. With respect to Patent Owner’s proposed construction, we note that although the ’551 patent discloses that a driver may be designed to provide a relatively fixed voltage and frequency output to LEDs, the written description does not suggest that the term “driver,” by itself, requires such functionality. Indeed, the ’551 patent reports optionally including an LED circuit inverter driver in order to sense changes to the load and re-adjust the 8 Consistent with this dictionary definition, the “driver” may both power and control another program, circuit, or device. On this record, however, mere control of another program, circuit, or device is insufficient to meet the requirements of the claimed “driver,” which must provide power to the program, circuit, or device. Thus, at this stage we do not find it necessary to include the optional capability of “control” in our adopted construction.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,154,551 - PTAB · Feb 9, 2022 · IPR2021-01370 · APJ Scott Raevsky · IPR · Institution
Instituted IPR of claims 9–17 on all petitioned grounds after finding a reasonable likelihood of success on each ground and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to speculate as to whether Petitioner’s stay request will be granted. See Fintiv, Paper 15 at 12 (PTAB May 13, 2020) (informative); Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative). Under these circumstances, factor 1 is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded there is a reasonable likelihood Petitioner would prevail with respect to the challenged claims. Accordingly, we institute an inter partes review of claims 9–17 on all of the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“indirectly controlled by a user. We agree with Petitioner that the “second switch” limitation does not require that the user directly control the switch. Reply 2. The plain language of the claim is illuminating. Claim 9 recites in part, “a first switch configured to be controlled by a user to control an amount of voltage or current” and “a second switch that allows the first LED circuit to be disconnected from the AC voltage source.” Patent Owner demonstrated that it knew how to claim user control by explicitly reciting that the first switch is “configured to be controlled by a user.” But Patent Owner omitted this same language from the recitation of the second switch, indicating an intentional decision to claim the second switch more broadly. In this situation, Patent Owner is mistaken that the second switch should be interpreted the same as the first switch because the claim explicitly limits each switch differently. The Specification supports our preliminary interpretation. It broadly explains that power to the LEDs “may be adjusted and controlled using any means known in the art.” Ex. 1001, 14:7–9. The Specification then gives an example of a dimmer switch for adjusting the power. Id. at 14:9–11. But not only does the Specification not state that a user directly turns the dimmer switch, it does not state that a user turns the dimmer switch at all. E.g., id. at 14:19–20 (“As the dimmer switch is turned . . . .” (emphasis added)). Even if one of ordinary skill in the art were to understand the dimmer switch to be directly user-actuated, it is merely one example of power adjustment “using any means known in the art.” See id. at 14:7–9. We thus do not see, on this record, any definition or disavowal in the Specification that would require a user to directly select the second switch.8” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Patent Owner because, on this record, Patent Owner’s argument rests on a claim construction of the “second switch” limitation that we have not adopted. That limitation does not require direct user control, as Patent Owner urges. Thus, on this record, Petitioner persuades us that Dowling’s processor-controlled switching discloses the disputed limitation. Patent Owner also attacks Petitioner’s reliance on Dowling’s three- way switch. Id. at 23–24. But this argument is similar to its previous argument—Patent Owner contends that Dowling uses a look-up table, program, or other system controls to control the LEDs via control signals, not a direct user-controlled switch. Id. at 24 (citing Ex. 1004 ¶ 65). This argument also relies on the claim construction that we have rejected at this stage. Lastly, Patent Owner contends that Petitioner’s statement that this three-way switch “could” be used for color control does not “demonstrate that it is in fact used for color control.” Id. We disagree—Patent Owner is splitting hairs. Dowling says that the switch “could be used for . . . color control,” which is sufficient at this stage to show that Dowling teaches color control using the switch.9 See Ex. 1004 ¶ 65. On this record, we agree that Dowling discloses this limitation.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,349,479
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.