- Intel Corporation v. Besang Inc.No claims unpatentablePTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision
The Board held claims 1 and 13–17 not unpatentable, finding the asserted obviousness grounds deficient in claim limitations or motivation to combine.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties proposed definitions differ in that Petitioner would permit a degree in “materials science” and require three years, as opposed to two years, of relevant experience. Compare Pet. 9 with PO Resp. 14. On this record, we adopt Patent Owner’s proposed definition, as it is more consistent with the prior art of record and the disclosures of the ’702 patent. We note, however, that neither party contends that the outcome of this case depends on the slight differences in the proposed definitions of a person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate. Pet. 11–12. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells; that plurality is bonded to the dielectric layer. Ex. 1001, 12:29–32. A construction that gives meaning to all words of the claim is preferred. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, we do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. Pet. 16, 29 n.11, 51 (“In Lee, each level 3104 is deposited on the underlying level of array 3101.”). Therefore, Petitioner has not shown that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Analysis: Claims 14–17 Claims 14–17 each depend, directly or indirectly, from claim 13. Petitioner’s arguments with respect to these claims do not remedy the deficiencies noted above with respect to claim 13. Pet. 31–41. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14–17 would have been obvious over Lee.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not demonstrated that Aspar would improve Lee, would solve a problem in Lee, and that Petitioner is proposing to use Aspar in a way that is not disclosed in the reference. PO Resp. 49–50 (citing Ex. 2029 ¶¶ 153–162); Tr. 57:24–58:12; Pet. 61; KSR, 550 U.S. at 417 (asking whether a technique “would improve similar devices in the same way”), 420 (asking whether there was a known problem in the art), 421 (asking whether one of ordinary skill in the art had reason to “pursue the known options”); Intel, 61 F.4th at 1381 (explaining that obviousness may be demonstrated by showing that there was a known problem in the art (“cache coherency in multiprocessor systems”) and that a person of ordinary skill in the art would recognize that that the prior art solution to this problem (“global segmented secondary cache”) would improve the system of another prior art reference). Petitioner does not persuasively show that there was any known problem in the art with respect to Lee or its monolithic method of constructing memory arrays. Nor does Petitioner provide persuasive argument or evidence that Aspar’s wafer bonding would improve Lee’s memory device.10 For example, Petitioner states in a conclusory fashion that Aspar would address the known problem of “fabricating 3D structures,” but does not explain what those problems were or why Lee fails to solve them. Pet. 61. Dr. Sechen’s testimony merely parrots the Petition, providing no further analysis or explanation of what problem might exist in Lee when fabricating its 3D structures. Ex. 1003 ¶ 212. The Petition notes that Aspar transfers “thin layers of very good thickness homogeneity and with a high crystalline quality,” but the Petition never asserts that Lee’s direct deposition method fails to provide these same or similar qualities. Pet. 60–61.” slip op. at 27
Patent outcomesUS 7,378,702 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,378,702 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Besang Inc.No claims unpatentablePTAB · Nov 13, 2024 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Final written decision
Claims 13–17 were not shown unpatentable: Lee-based grounds fail on the stackable add-on layer limitation, and Watanabe-based grounds fail on nonvolatile memory, enablement, or motivation to combine.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“meaning in the art. See Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (stating that, absent an accepted meaning in the art, “we construe a claim term only as broadly as provided for by the patent itself”). Thus, we must attempt to discern the meaning of this term from the claim language itself and from the remainder of the intrinsic record. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, we construe “stackable add-on layer” to not include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. See Pet. 52 (asserting that in Lee “the layers of the array are directly deposited on the layers of each underlying level, and the array is deposited on the interlayer insulating layer formed over a substrate”); see also id. at 70 (“Lee discloses forming vertical memory devices through layer-by-layer sequential deposition on the substrate . . . .”). Therefore, Petitioner does not show that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Claims 14 and 15 Claims 14 and 15 depend from claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments for these claims do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 54–59. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14 and 15 would have been obvious in view of Lee alone. E. Claims 16 and 17 over Lee and Endoh Petitioner contends the subject matter of claims 16 and 17 would have been obvious over the combined disclosures of Lee and Endoh. Pet. 59–69. Petitioner’s arguments with respect to these claims, however, do not remedy the deficiencies noted above with respect to Lee and its monolithic, sequentially deposited memory array. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 16 and 17 would have been obvious over Lee and Endoh.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“combined Lee and Watanabe to achieve improved integration density. Pet. 71. Petitioner concedes, however, that the benefits of Lee’s design related to 3-D integration and improved integration density would be obtained if Lee’s memory structures are formed using either Lee’s monolithic construction method or Watanabe’s alternative stacking method. Pet. Reply 13–14 (citing Ex. 1041 ¶ 34). Thus, we are not persuaded that improved integration density provides a sufficient rationale for Petitioner’s combination of Lee’s memory device and Watanabe’s stacking method. Petitioner argues that Watanabe’s stacking method “improves the accuracy of the wiring” because the wiring is made “for each planar member.” Pet. 72 (citing Ex. 1005, 6:1–3). Watanabe also states that its disclosed methods provide “a low interconnection wire resistance.” Ex. 1005, 6:20–23. Petitioner does not, however, explain sufficiently how Watanabe’s stacking method would improve Lee’s device. For example, Petitioner does not address whether the alleged wiring benefit already existed in Lee’s monolithic array or explain how this benefit would also apply to Lee’s particular memory array, which differs in construction and elements from Watanabe’s device. This diminishes Petitioner’s benefits-based motivation to combine arguments. In general, a petitioner need not demonstrate that a particular alternate method would improve a prior art device in order to show a motivation to combine. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023); see Pet. Reply 20 (citing Intel). But here, Petitioner affirmatively invokes improvement of Lee’s device as a reason for the combination, and we must evaluate Petitioner’s contention. Moreover, any relative lack of improvement or benefits must be weighed against any problems the alternative method would introduce. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795–96 (Fed. Cir. 2021) (noting that simultaneous advantages and disadvantages to a proposed combination must be analyzed to determine whether the disadvantages “outweighed any reason to combine”). Here, as discussed above in more detail with respect to the ground based on Watanabe, the evidence shows that one of ordinary skill in the art would have expected Watanabe’s bonding temperature of 900– 1000° C to damage the electronic devices in an underlying substrate. Ex. 2029 ¶¶ 75–76; Ex. 2028, 123:13–124:7; Ex. 2027, 715. The expected damage to Lee’s device, when balanced against the limited evidence of a benefit to the combination,7 outweighs the reason to combine Lee and Watanabe set forth in the Petition. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious over Lee and Watanabe. 2. Analysis – Claims 14 and 15 Claims 14 and 15 both depend directly from independent claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments with respect to claims 14 and 15 do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 73. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that these claims would have been obvious over Lee and Watanabe.” slip op. at 40
- Expert testimonyPatent owner expert creditedOther
“We credit the testimony of Dr. Przybylski that one of ordinary skill in the art would have understood that Watanabe’s stacked structure would be severely impacted if bonded at a temperature above 900° C, as disclosed in Watanabe. Ex. 2029 ¶¶ 76–77. Dr. Przybylski’s opinion is supported by Dr. Lee’s testimony (Ex. 2028, 123:13–124:7, 125:6–126:7), as well as Watanabe (Ex. 1005, 6:6–14) and Batude (Ex. 2027, 715). As further discussed below, we find that Petitioner has not rebutted Patent Owner’s showing of nonenablement, and Patent Owner has carried its burden to demonstrate that Watanabe was not enabled for bonding temperatures of 900–1000° C, as of the 2004 filing date of the ’702 patent.” slip op. at 32
Patent outcomesUS 7,378,702 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,378,702 - PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,421,195 - Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentablePTAB · Sep 10, 2024 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–16 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, and Rapparini.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“To obtain the benefit of the filing date of an earlier application, Patent Owner bears the burden of producing evidence to establish where each limitation of the challenged claims is disclosed in a single priority application. Studiengesellschaft Kohle, 112 F.3d at 1564; NTP, 654 F.3d at 1276. Petitioner identifies limitations of the challenged claims that are missing from each individual German priority application. Pet. 39–42. Patent Owner responds with no evidence or arguments suggesting that the identified limitations are disclosed in a single application. Resp. 10–12. On this record, no challenged claim is entitled to the benefit of the filing date of any of the three German priority applications; therefore, Jarisch qualifies as prior art under at least 35 U.S.C. § 102(e).” slip op. at 19
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In other words, even if we accept that Dr. Howle has some experience designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to “at least five years” or involved “experience with sensors for recognizing identifiers.” Dec. 8 (adopting Patent Owner’s own proposed definition of ordinary skill in the art); see Sur-reply 3 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3–12, 102:30– 104:9; Ex. 2017 ¶¶ 3, 4) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.12 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). The Federal Circuit has made plain that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” 12 To be clear, we are not saying that a witness supplying expert opinions must have satisfied the requirements of the level of ordinary skill in the art on or before the priority date of the challenged patent, which Patent Owner seems to understand. See Sur-reply 4–5. Instead, we evaluate whether Dr. Howle had at least the requisite qualifications of a person having ordinary skill in the art by the time he rendered his opinions. Osseo Imaging, LLC v. Planmeca USA, Inc., Appeal No. 2023-1627, slip op. at 7 (Fed. Cir. Sept. 4, 2024) (“[A]n expert can acquire the necessary skill later and develop an understanding of what a person of ordinary skill knew at the time of the invention,” however, where “the expert was not a person of ordinary skill at the time of the invention may well be used during cross-examination to undermine the credibility of the expert.”); see id., slip op. at 5–6 (affirmatively quoting Kyocera). Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. “‘Admitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’” That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). Alternatively, even if we accept that Dr. Howle possesses “at least five years” of relevant design experience, on this record, we agree with Petitioner that his opinions are entitled to less weight than those of Petitioner’s witness, Mr. Jobin. Reply 27. Unlike Dr. Howle, Mr. Jobin is a designer by profession, with more than 30 years of industry experience. Reply 27 (citing Ex. 1003 ¶¶ 5–30). For example, Mr. Jobin designed a home-based beer dispensing system utilizing cartridge identification technologies. Id. (citing Ex. 1003 ¶ 24). Mr. Jobin also “has substantial experience with sensors for recognizing identifiers.” Id. (citing Ex. 1003 ¶ 19; Ex. 1072, 3712–19, 67:22–70:19). Dr. Howle, by contrast, “has never designed a beverage machine.” Reply 22; see generally Sur-reply (declining to contest that assertion).13” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In Petitioner’s contrary view, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 45–46; Reply 21–22 (Ex. 1003 ¶¶ 194–195; Ex. 1005 ¶¶ 82–84, Fig. 5). Although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as depicted in Figure 5 of Jarisch. We credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing. Ex. 1003 ¶ 184. For reasons explained above, we assign little or no weight to Dr. Howle’s conflicting testimony because he has little or no experience designing a mechanical beverage system or similar product. See supra 10– 16. Petitioner lays out persuasive reasons why Dr. Howle’s testimony, on this particular point, is “conclusory” and rests on “bodily incorporation” of the references. Reply 24; see id. at 22–24 (pointing out with particularity fundamental flaws in Dr. Howle’s opinions); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In addition, Patent Owner contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that there is a “snug fit” to avoid “unbalances.” Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of multiple volume capsules or permit a “snug fit” in the modified device of Yoakim. Id. at 8–9. Patent Owner’s view that Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch and, in any event, other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Furthermore, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange. Ex. 1003 ¶¶ 187–195. With respect to the argument that the use of Jarisch’s design would not allow a snug fit, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or less effective. Resp. 39–40; see Reply 22 (citing Ex. 2019, 36:18–37:6). Indeed, as Petitioner points out, Jarisch indicates that its device, including its capsule holding means, allows the capsule to be successfully driven in rotation. Reply 22 (citing Ex. 1005 ¶ 23).” slip op. at 49
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“That argument is not persuasive. A reference need not identify or discuss another prior art patent or application in order for that reference to be deemed relevant or analogous art. Nor do we endeavor to determine why, or why not, a particular reference is discussed in a prior art reference. The analogous art inquiry focuses on reasonable pertinence and involves assessing the similarities between the claimed invention and the prior art, including the problems addressed and the closeness of the subject matter, as viewed by an ordinarily skilled artisan. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020); see Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380-81 (Fed. Cir. 2019) (relevant analysis focuses on comparing the disclosed embodiments, function, and structure of the claimed invention to the disclosures of the prior art). Against that backdrop, we reject Patent Owner’s suggestion that the inquiry involves whether the inventors of Jarisch saw a need to discuss Yoakim’s disclosure in Jarisch’s priority document.” slip op. at 45
Patent outcomesUS 10,994,923 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,994,923 - Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentablePTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision
Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed
“Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely 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”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22
Patent outcomesUS 10,689,740 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,689,740 - Honeywell International Inc. v. DSM IP Assets B.V.Institution deniedPTAB · Aug 21, 2024 · IPR2024-00493 · APJ Erica A Franklin · IPR · Institution
The Board denied institution because Honeywell did not show a reasonable likelihood that claims 1–9 were unpatentable over any of its three obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its obviousness challenge of independent claim 1 or dependent claims 2–9 over the combination of Simmelink and Section 73.1015.” slip op. at 23
- Skill levelOther
“PHOSITA) at the time of the ’532 patent “would have had at least a Bachelor’s degree in the field of chemistry, chemical engineering, polymer chemistry, or materials science and at least three years of relevant work experience in the field of high strength fibers.” Pet. 8 (citing Ex. 1003 ¶ 18). Petitioner adds that individuals with different educational backgrounds could still be of ordinary skill in the art if they have “additional experience [that] compensates for a deficit in their education and experience stated above.” Id. According to Patent Owner, a person or ordinary skill in the art, would have (i) a bachelor’s degree in chemistry, polymer chemistry, materials science, chemical engineering, or biomedical engineering and (ii) three years of experience in designing and manufacturing gel-spun UHMWPE yarns. At this level of skill, a PHOSITA would have a detailed understanding of the information provided in the Technology Background, Section II, supra, including (i) the differences between linear HDPE and UHMWPE, (ii) the history underlying Section 73.1015 and the early failures of the 1960s-era blue, melt-extruded polyethylene sutures, (iii) why the molecular orientation of polyethylene molecules leads to strong yarns in the special case of gel-spun UHMWPE, and (iv) the challenges associated with coloring gel-spun UHMWPE yarns, especially for end-use medical applications. Prelim. Resp. 33–34. We note that the parties’ proposed definitions are largely similar, except that Patent Owner additionally recognizes a Bachelor’s degree in biomedical engineering and requires experience in designing and manufacturing gel-spun UHMWPE yarns. In any event, we do not need to the same under either proposed definition.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“a skilled artisan would have understood that the “gel spinning” process recited in the claims requires the use of a solvent during the spinning process. Indeed, the Specification describes this term, as follows: Gel spinning is understood to include at least the steps of spinning filaments from a solution of ultra-high molecular weight polyethylene in a spin solvent; cooling the filament obtained to form a gel filament removing at least partly the spin solvent from the gel filament; removing at least partly the spin solvent from the gel filament; and drawing the filament in at least one drawing step before during or after removing spin solvent. Ex. 1001, 2:31–37. We recognize the inventor’s lexicography as dispositive with respect to the meaning of the term “gel spinning.” See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Claim 1 describes gel spinning as the manner by which the filaments comprised in the claimed colored multi-filament yarn are obtained. This, on its face, is a product-by-process claim element because it describes the filament structure being obtained in a particular way, i.e., by gel spinning. See Kamstrup A/S v. Axioma Metering UAB, 43 F.4th 1374, 1382 (Fed. Cir. 2022) (agreeing with the Board that “cast in one piece” is a product-by-process claim element as it describes the structure being cast “in a particular way”). For this element to be limiting, it must impart “structural and functional differences” that distinguish the claimed product from the prior art. See Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009). Patent Owner argues persuasively that gel spinning imparts structural and functional differences to the claimed product because the process “creates overlap between polyethylene molecules within the UHMWPE filaments that maximizes the intermolecular Van der Waals interactions, resulting in highly crystalline filaments with high tensile strength.” Prelim. Resp. 38, 22 (citing Ex. 1014, 62–66). According to Patent Owner, “the structure of the gel spun UHMWPE is substantially different from other types of UHMWPE such as compression-molded and ram-extruded UHMWPE used to make joint replacements and other orthopedic implants.” Id. at 38.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,280,532 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express 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 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally 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 and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artOther
“a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,554,910
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.