- PTAB · Jan 6, 2023 · IPR2022-01203 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–10, 12–14, and 17–19 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. Patent Owner has not persuaded us that we should exercise our discretion to deny institution. We hereby institute an inter partes review as to claims 1–10, 12–14, and 17–19 of the ’989 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in situations where a district court trial date is set to occur before the issuance of the Board’s final written decision. The facts and reasoning of Fintiv are, at a minimum, only applicable to cases in which the district court has actually set a trial date in a copending litigation. But here, as will be discussed below, the parties agree that no trial date has been set, and the District Court has stayed the litigation. Prelim. Reply 8; Prelim. Sur-Reply 6 (“There has never been a trial date.”). Furthermore, that stay will continue until our final determination should we decide to institute trial. Without a trial date, we see no need to engage in a full analysis of the Fintiv factors,14 as there is no basis for Patent Owner’s argument for discretionary denial.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“numerical solubility limit into the claims, noting that the ’989 patent expressly defines “non-ionic side groups capable of imparting solubility in water” as simply “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solution with no visible particulates.” Prelim. Reply 1 (citing Ex. 1001, 54:9–13). Petitioner notes that this definition contains no numerical limit, and that it is followed by a statement that in some embodiments, the R group is capable of imparting solubility in excess of 10 mg/mL. Id. at 2 (citing Ex. 1001, 54:13–16). Petitioner contends that reading a limitation from “some embodiments” into the claims would be “one of the cardinal sins of patent law.” Id. (citing Phillips, 415 F.3d at 1320; Polaris Innovations Ltd. v. Brent, 48 F.4th 1365, 1375–76 (Fed. Cir. 2022)). Petitioner also directs our attention to related patents that expressly claim a solubility in excess of 10 mg/mL, arguing that when Patent Owner sought to claim such polymers, it knew how to do so. Id. (citing Ex. 1005, 218:11–12; Ex. 1006, 239:43–45, 252:51–52, 254:39–40, 262:56–57, 269:31–35).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“proposed claim construction on solubility above, which we declined to do on the present record. For this reason, we find them unpersuasive. In addition, we note that Xue expressly discloses that its glycopolymers utilizing PEG-tethered spacers (Polymers B and C) “are highly water-soluble due to their long, flexible, hydrophilic spacers.” Ex. 1010, Abstract, 2289–90. Petitioner sufficiently sets forth why a person of ordinary skill in the art would have considered the PEG side chains of Xue to impart solubility in water, which is all we have construed the claims to require.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,458,989 - Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentablePTAB · Dec 1, 2022 · IPR2021-00849 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–14 are unpatentable under § 103 over the Swinger-based grounds; the Board did not reach the Blumenkranz-based grounds.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 26; PO Resp. 10. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with different expertise and various academic degrees would work together to design laser surgery systems intended to make incisions in the lens of the eye. Accordingly, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science such as optical engineering, with experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., Ph.D. or five or more years to compensate for lesser degrees). Such individuals would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult the engineer on technical issues). This definition marries the two proposed by the parties.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“device to obtain “a qualitatively novel and previously unachievable quantitative description of the eye in respect of diagnostics and therapeutics” and providing this information as a data record to introduce the optimal ablation pattern to a patient’s eye. Ex. 1020 ¶¶ 38–39, 46. As Patent Owner notes, Benedikt does not describe the laser system that obtains the “data record” and introduces the optimal ablation pattern to a patient’s eye. PO Resp. 48. Benedikt also does not expressly state that a controller generates the incision pattern, as opposed to the incision pattern being generated by a surgeon or technician. Id. at 49. That said, Benedikt discloses using programs and data to generate the optimal ablation pattern and to automate laser surgery. Ex. 1020 ¶¶ 39, 46. When viewed as a whole, we credit the testimony of Dr. Lubatschowski that one of ordinary its data record to a controller that is programmed to generate optimal incision patterns for the cornea of a patient’s eye. Ex. 1001 ¶¶ 472–473 (citing Ex. 1020 ¶¶ 36, 39, 42); Pet. 56. In view of the foregoing, we find persuasive Petitioner’s argument that the combination of Swinger, Weikert, Benedikt, and Kurtz teaches or suggests a controller programmed to use OCT signals (in addition to signals from a profilometer) to determine an incision pattern for the cornea of a patient’s eye, as recited in independent claim 1.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties provide a construction for the term “cataract incision.” Pet. 7–9; PO Resp. 12–13. Upon review of the parties’ arguments and supporting evidence, and in view of the fact that neither party contests that Weikert discloses a cataract incision under either party’s proposed construction of that term, we determine that no claim terms require express construction for purposes of this Final Written Decision. 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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 28–29. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review” slip op. at 12
Patent outcomesUS 10,709,548 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,709,548 - Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentablePTAB · Dec 1, 2022 · IPR2021-00846 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Swinger, Weikert, and Benedikt (claims 1–8), and with L’Esperance added (claims 9–12).
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 25; PO Resp. 8. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with design laser surgery systems intended to make incisions in the lens of the eye. Accordingly, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science such as optical engineering, with experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., Ph.D. or five or more years to compensate for lesser degrees). Such individuals would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult the engineer on technical issues). This definition marries the two proposed by the parties.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “cataract incision” and “a delivery system for delivering the laser beam to the target tissue to form a cataract incision.” Pet. 7–9. Patent Owner provides a construction for the term “cataract incision.” PO Resp. 10–11. Upon review of the parties’ arguments and supporting evidence, including the fact that neither party disputes that Weikert expressly discloses cataract incisions under either parties’ interpretation of that term, we determine that no claim terms require express construction for purposes of this Final Written Decision. 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 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5–6, 27–28. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73; Pet. 5–6, 27–28.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Benedikt describes its combined topometer/OCT imaging device as providing a “previously unattainable comprehensive topometerical/topographical illustration of the cornea” and discloses using this comprehensive data to automate corneal laser surgery. Ex. 1020 ¶¶ 39, 46; Pet. 55–56. In contrast to the comprehensive illustration of the cornea provided by Benedikt’s system, Petitioner demonstrates that HeNe beams are limited to visualizing the surface of eye tissue at a single point. Ex. 1070 ¶¶ 32–34; Pet. Reply 23; Ex. 1073, 254:2–14; Ex. 1001 ¶¶ 29–31. As Petitioner proposes to use the system of Swinger to make incisions in the cornea, which Benedikt’s system can image comprehensively, we find persuasive Petitioner’s argument that one of ordinary skill in the art would have found it beneficial to implement Benedikt’s imaging device to aid Swinger’s corneal surgery procedure(s). (2)” slip op. at 25
Patent outcomesUS 10,376,356 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,376,356 - Google LLC v. Parus Holdings, Inc.InstitutedPTAB · Nov 7, 2022 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–26, finding a reasonable likelihood of prevailing on the Wise–Dasan obviousness grounds and the Wise–Dasan–Uppaluru ground for claim 26.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony—“throughout the Petition”—for the understanding of a person of ordinary skill in the art as “baseless” because “the expert declaration does nothing more than repeat the unsupported attorney argument in the Petition.” Prelim. Resp. 28. Although we agree with Patent Owner’s general characterization that Mr. Lipoff largely repeats most of the Petition verbatim and that such testimony is of less probative value than more elaborative testimony, we disagree with Patent Owner’s implication that we should therefore summarily discount Mr. Lipoff’s testimony. See id. (“This type of copy-and-paste analysis has no probative value and is therefore unhelpful.”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1002 ¶ 77. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Mr. Lipoff, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314 - Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentablePTAB · Nov 4, 2022 · IPR2021-00843 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–17 are unpatentable under §103 over the asserted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 28; PO Resp. 8. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with different expertise and various academic degrees would work together to design laser surgery systems intended to make incisions in the lens of the eye. Accordingly, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science such as optical engineering, with experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., Ph.D. or five or more years to compensate for lesser degrees). These individuals would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, and as discussed in further detail below, the Examiner expressly allowed the claims, in part, due to an Examiner’s Amendment changing “scanning system” to “cataract surgery scanning system.” Ex. 1006, 13, 15, 18. This reliance on the preamble to help define the claimed invention transforms this portion of the preamble into a limitation. See Catalina Mkt’g, 289 F.3d. at 808. slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“(4) Analysis As discussed above, the intrinsic record of the ’023 patent, that is, the claims, written description, and prosecution history, suggests that a “cataract surgery scanning system” is one that is capable of performing at least one incision related to cataract surgery. This may include cataract and relaxation incisions in the cornea, limbus, or sclera, or incisions in the lens or lens capsule. Accordingly, we construe the claim term “cataract surgery scanning system” to require that the system be designed to, or capable of, performing at least one step of cataract surgery, such as creating an incision in the cornea or other exterior tissues to allow access for surgical instruments, correcting for astigmatism, creating an opening in the anterior lens capsule, or fragmenting the lens. See Pet. 20 (Petitioner describing the steps of a “typical cataract surgery”).” slip op. at 20
- Prior constructionPrior construction adoptedDecided for patent owner
“In the Institution Decision, after reviewing the claims, written description, and prosecution history, we construed the claim phrase “cataract incision therein that provides access to an eye chamber of the patient’s eye, the incision . . . only partially extending through the target tissue” to require “a partially penetrating cataract incision that, when completed by the surgeon or another individual, allows access for lens removal instrumentation.” Dec. 13–14. Patent Owner agrees with this construction (PO Resp. 13) and Petitioner does not expressly dispute the construction in its Reply. Accordingly, for the reasons set forth in the Institution Decision, we adopt this construction for purposes of this Final Written Decision.” slip op. at 21
Patent outcomesUS 9,233,023 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,233,023 - Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCAll claims unpatentablePTAB · Nov 4, 2022 · IPR2021-00845 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–17 and 20–26 are unpatentable, including as obvious over Kurtz, Swinger, and Weikert and, for specified claims, over Blumenkranz, Kurtz, Weikert, and Benedikt.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Both parties present compelling evidence that those of skill in the art would include individuals with experience in ophthalmology, as well as in the research, manufacture, and design of medical optics or medical lasers. Pet. 24–25; PO Resp. 10. The evidence of record also demonstrates that few individuals actually had such experience. Rather, teams of individuals with different expertise and various academic degrees would work together to design laser surgery systems intended to make incisions in the cornea, limbus, sclera, or lens of the eye. Thus, we find that the person of ordinary skill in the art would have been an ophthalmic surgeon or someone with a Ph.D., M.S., or B.S. degree in physics, biomedical engineering, or a related science, such as optical engineering, and having experience in researching, manufacturing, or designing medical optics or medical lasers (e.g., 5 years of experience for a Ph.D. or more to compensate for lesser degrees). We further find that such persons would have worked in collaboration with one another to fill any necessary gaps in knowledge (e.g., the engineer would consult the medical doctor on clinical issues or physiology and the medical doctor would consult” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Here, and as discussed in further detail below, the Examiner expressly allowed the claims, in part, due to an Examiner’s Amendment changing “[a] method” to “[a] cataract surgery method.” Ex. 1009, 16. This reliance on the preamble to define the claimed invention transforms this portion of the preamble into a limitation. See Catalina Mkt’g, 289 F.3d. at 808. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In view of the foregoing, we understand that the addition of the term “cataract surgery method” was intended to make clear that the claimed method is used to make specific incisions related to cataract surgery, and not merely incisions “whose purpose is to reshape the cornea,” as disclosed for example in Bille. Id. at 64. We do not find that the prosecution history suggests that the term “cataract surgery method” requires that the method be used to form the claimed incisions in the cornea, limbus, or sclera, as well as unclaimed incisions in the lens or lens capsule. d) Analysis As discussed above, the intrinsic record of the ’024 patent, that is, the claims, written description, and prosecution history, suggests that a “cataract surgery method” is one that is used to create at least one incision related to cataract surgery. This may include cataract and relaxation incisions in the cornea, limbus, or sclera, or incision in the lens or lens capsule. require that the method be used to perform at least one incision related to cataract surgery, such as the expressly claimed cataract and relaxation incisions. Pet. 18–19 (Petitioner describing the steps of a “typical cataract surgery”).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“A petition must “identify with particularity the grounds for institution and evidence supporting such grounds,” including “the prior art relied upon and evidence that it qualifies as such.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (citing 35 U.S.C. § 312(a)). The Petition identifies the grounds for institution and the evidence supporting such grounds, and presents evidence that Weikert qualifies as prior art under 35 U.S.C. § 102(b). Pet. 5, 26. For example, Petitioner and Dr. Lubatschowski assert that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists,” and that Weikert was included in the 2005 edition of CATARACT AND REFRACTIVE SURGERY as Chapter 14: Refractive Keratotomy: Does it Have a Future Role in Refractive Surgery? Ex. 1001 ¶ 73. In addition, Hulu contemplates additional evidence being admitted in a reply to a patent owner preliminary response, as long as that evidence is responsive to the prior briefing. Hulu, Paper 29 at 14. In this case, Petitioner’s evidence submitted in its Reply is responsive to arguments made in prior briefs (i.e., Patent Owner’s Preliminary Response and Response), and simply confirms what was asserted in the Petition and Dr. Lubatschowski’s declaration, i.e., that Weikert is Chapter 14 of CATARACT AND REFRACTIVE SURGERY and the document bears a copyright date of 2005 (or, as asserted by Dr. Lubatschowski, is a “2005 edition”). Ex. 1060, 5, 12; Pet. 5, 26–27; Ex. 1001 ¶ 73. In addition, this evidence indicates that CATARACT AND REFRACTIVE SURGERY was published by document that would be expected to be made publicly accessible. See Ex. 1001 ¶ 73 (asserting that CATARACT AND REFRACTIVE SURGERY “is a quarterly review series comprising chapters written by well-known specialists”); Ex. 1019, 220, 224, 227, 228, 230, 232 (providing a “Summary for the Clinician” at the end of several sub-chapters); Ex. 1060, 4–5. The information presented in the Petition, as confirmed by the Preliminary Reply evidence submitted by Petitioner, sufficiently demonstrates that Weikert is prior art to the ’024 patent.” slip op. at 22
Patent outcomesUS 9,233,024 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,233,024 - PTAB · Oct 28, 2022 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8–11, and 14 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with this assessment. We also note that Petitioner takes the position that “[t]he Challenged Claims are unpatentable under both proposed levels,” and Patent Owner takes the position that “the challenged claims are patentable under either proposed level of ordinary skill.” Pet. 8; Prelim. Resp. 7. For purposes of this Decision, we adopt Patent Owner’s proposed articulation of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion to institute an inter partes review were we to adopt Petitioner’s proposal.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“Ex. 1007, 4; Pet. 8–9; Prelim. Resp. 7 (Patent Owner agreeing that “[t]hose constructions are set out in the Petition”). Petitioner states that it “applied these agreed constructions” in the Petition, and Patent Owner also states that it “applies the agreed constructions” in its Preliminary Response. Pet. 8; Prelim. Resp. 7. We adopt these constructions as preliminary constructions for purposes of this Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“(Petitioner asserting that, in the related ITC Investigation, “Patent Owner attempted to narrowly construe three additional phrases . . . . The ALJ has not addressed these new constructions, but as discussed below, Patent Owner’s new constructions should be rejected.”). Patent Owner does not ask that we construe these phrases and, indeed, asserts that it is not necessary for us to do so to decide whether to institute the proceeding. Prelim. Resp. 8–9 (“the Board does not need to resolve that claim construction dispute in order to properly deny institution”); see also id. at 41 (“Petitioners’ arguments on this point all deal with an aspect of [Patent Owner’s] proposed claim construction in the ITC Investigation that is not at issue here”). At this time, we decline to address construction of these additional phrases. 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 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,378,875 - ROKU, Inc. v. Universal Electronics, Inc.All claims unpatentablePTAB · Sep 22, 2022 · IPR2021-00758 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–13 are unpatentable as obvious over Chardon, HDMI 1.3a, and Mishra because the combined teachings meet each limitation and support a reason to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15–19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 13 (citing Ex. 2004 ¶¶ 24–29, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ultimate difficulty with Patent Owner’s theory is that it presumes relationships between various elements of the claim, but such relationships are not expressed by the language of the claim. This includes relationships between the “command communication,” the “functional operation of the media sink device,” and “activation of an input element of the controlling device.” See id. at 29:13–31:20, 33:10–35:2. Under such circumstances, we necessarily agree with Petitioner that “[t]he patentee chose to claim broadly and vaguely,” such that there is “no principled reason to exclude steps 500/502/504 from reading on the broadly-worded first wherein clause [that the media source device is programmed to provide the ‘message having data’ to the controlling device].” See Reply 13. For the reasons explained above, the prosecution history of the ’785 patent and its ancestors provides insufficient basis to discriminate between the parties’ positions. But both the plain and ordinary meaning of the claim language and the specification of the ’785 patent support Petitioner’s position, which we accordingly adopt. That is, we construe the “message having data” limitation as not requiring actual transmission of a “command communication” to indicate responsiveness to such a “command communication.”” slip op. at 26
- Expert testimonyPatent owner expert creditedDecided for patent owner
“1 Petitioner asks that we “discount Dr. Turnbull’s testimony with respect to HDCP [i.e., High-bandwidth Digital Content Protection]” because Dr. Turnbull “did not know what HDCP stands for” and incorrectly testified that “HDCP break” is a term of art in the HDCP standard. Reply 10–11 n.4. We decline to do so after reviewing Dr. Turnbull’s testimony, and instead accord his testimony due weight when evaluated in context.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“contention that HDMI 1.3a is a printed publication under 35 U.S.C. § 102(b): (1) internet web pages referring to HDMI 1.3a, together with affidavits from the Internet Archive supporting a date of June 8, 2009, 5 When citing to HDMI 1.3a, we cite to the native pagination. Exs. 1042, 1045, 1048, 1049; (2) a declaration by Steve Venuti, former Vice President of Marketing HDMI Licensing, LLC, who attests to facts within his personal knowledge that support public availability of HDMI 1.3a at least as of November, 2006, Ex. 1043; (3) citations to HDMI 1.3a as prior art by the Office before October 28, 2011, Exs. 1037–1041; and (4) the date of November 10, 2006 on the face of HDMI 1.3a itself, Ex. 1010, 1. Patent Owner does not contest that HDMI 1.3a is prior art to the challenged claims. See PO Resp. 11–12. We have reviewed Petitioner’s evidence and find it sufficient to treat HDMI 1.3a as prior art.” slip op. at 29
Patent outcomesUS 9,641,785 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,641,785 - PTAB · Jun 7, 2022 · IPR2022-00052 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 2–5, 7, 11–13, 21, and 23, finding a reasonable likelihood that Petitioner would show them 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). 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.” For the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to the remaining challenged claims— claims 2–5, 7, 11–13, 21, and 23 of the ’251 patent. Accordingly, we institute an inter partes review with respect to these claims on all grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Typically, “one petition should be sufficient to challenge the claims of a patent,” but “there may be circumstances in which more than one petition may be necessary.” CTPG 59. For example, more than one petition may be necessary “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Given the priority date dispute addressed only in the -00051 Petition, and in light of Patent Owner’s decision not to challenge Petitioner’s filing of parallel petitions, we decline to exercise our discretion to deny either petition. See CTPG 61 (“The Board will consider the parties’ submissions in determining whether to exercise its discretion to institute inter partes review under 35 U.S.C. § 314(a).”).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same claim construction standard 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 that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party asserts that any claim terms of the ’251 patent require construction. Pet. 6–7; Prelim. Resp. 13. And, upon review of the parties’ arguments and supporting evidence, we find that no terms require construction for purposes of this Decision. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In view of the foregoing, and after reviewing the parties’ arguments and supporting evidence, we determine that Petitioner demonstrates a reasonable likelihood that Birrell and Schultz teach or suggest “at least one LED circuit having a plurality of LEDs . . . wherein the at least one LED circuit is mounted on a reflective substrate,” as recited in claim 1 of the ’251 patent. Petitioner also provides a sufficient rationale, supported by record evidence, explaining why one of ordinary skill in the art would have combined Birrell and Schultz. b) Reasonable Expectation of Success Patent Owner contends the Petition does not support institution because incorporating Schultz’s flexible, multilayer optical film in Birrell would present substantial challenges “for reconciling the build characteristics of the multi-layer rigid frame construction of Birrell with the flexible construction of Schultz.” Prelim. Resp. 22. And, given the differences in construction between the two lighting devices, Patent Owner contends the combination of Schultz’s reflective surface materials with Birrell’s circuit board 58 is not a “predictable use of known lighting design techniques and components according to their established functions,” as asserted by Petitioner. Id. at 21–22. Contrary to Patent Owner’s argument, Petitioner does not contend that one of ordinary skill in the art would have used Schultz’s specific reflective material in Birrell. Rather, Petitioner argues that the use of reflective substrates to provide mechanical support for an array of LEDs was well known in the art and, given Schultz’s disclosure of the benefits of such a reflective coating, one of ordinary skill in the art would have sought to apply a reflective coating in Birrell. Pet. 13–16. In addition, Dr. Baker, citing to multiple disclosures in the prior art, testifies that one of ordinary skill in the art would have reasonably expected success in implementing a reflective substrate in Birrell. Ex. 1002 ¶¶ 82–85. Patent Owner’s bare attorney argument is not sufficient to call this testimony into question at this stage of the proceeding. c) Conclusion with Respect to Claim 1 For the reasons set forth above, Petitioner demonstrates sufficiently” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,492,251 - PTAB · Apr 19, 2022 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13 and 20, finding a reasonable likelihood of success on each asserted ground in the petition.
RulingsInstitution decision- Parallel petitionsOther
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we find that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1–3 and 8–10 as anticipated by Tracy; Claims 1–3 and 8–10 as obvious over Tracy; Claims 4 and 11 as obvious over Tracy and Fujimoto; Claims 6 and 20 as obvious over Tracy and De; Claim 7 as obvious over Tracy and Bond; XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’822 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). construed as means plus function terms: DC to AC converter, switch[ing] controller, AC ground leak detector, bi-directional DC-to-DC converter, common-mode filter. Pet. 17–21. Although Petitioner states these terms “could be construed as means-plus-function limitations,” Petitioner states that if the panel does not construe them as such, these terms should be construed according to their ordinary and customary meaning. Id. at 17. According to Petitioner, whether these limitations are construed as means plus function terms or according to their ordinary and customary meaning, the prior art discloses the limitations of the challenged claims. Petitioner does not explain why terms that have an ordinary and customary meaning should be construed as means-plus-function limitations in the context of the ’822 patent. Therefore, we apply the ordinary and customary meaning to each limitation. Vivid Techs., 200 F.3d at 803.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that at the time of the patent application, a person of ordinary skill “would have had a bachelor’s degree in electrical engineering or a similar discipline and three years of design experience with power electronics, including experience designing power converters.” Pet. 17 (citing Ex. 1002, Declaration of Dr. R. Joseph Baker (“Baker Decl.”)). Patent Owner does not discuss the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); of ordinary skill is consistent with the subject matter of the claims and references, we apply Petitioner’s proposed level of skill in this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,937,822
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.