• Crusoe Energy Systems, LLC v. Upstream Data Inc.Some claims unpatentable
  PTAB · Jan 21, 2025 · PGR2023-00039 · APJ Matthew S Meyers · PGR · Final written decision

  Claims 1 and 24 are unpatentable under § 101 as directed to an abstract idea without an inventive concept; the petitioner did not prove the remaining challenged claims unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations omitted). “The patent’s purpose can also be informative.” Id. (citation omitted). Petitioner asserts that one of ordinary skill in the art (“POSITA”) would have had “a degree in chemical engineering, petroleum engineering, process engineering, mechanical engineering, or a similar field with 1–2 years of experience in designing power generation systems, Blockchain mining systems, or other comparable hands-on experience.” Pet. 7 (citing Ex. 1003 ¶ 19). Petitioner adds that “[a]lternatively, a person having 3–5 years of experience in the Blockchain mining industry would also qualify as a POSITA” and “[a]dditional education could substitute for professional experience, or vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 19).” slip op. at 10

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

    “We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2024). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).” slip op. at 11

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

    “To address that “the mining processors are connected to the network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database,” as recited by limitation [1c_iii], Petitioner asserts that CryptoKube’s system includes “Bitcoin miners such as spondooliestech SP35 servers.” Pet. 25 (citing Ex. 1006, 1–4). And, relying on the declaration testimony of Mr. Kasdorf, Petitioner concludes that one of ordinary skill in the art would have understood that to mine Bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database, which is implemented as a public ledger distributed among many peer-to-peer devices connected to the Internet. Id. (citing Ex. 1004 ¶¶ 108–109; Ex. 1010 ¶ 419). Mr. Kasdorf’s declaration testimony is nearly verbatim to the Petition and similarly provides no indication as to what in CryptoKube constitutes a “mining processor” other than his conclusory opinion that one of ordinary skill in the art “would have understood that to mine bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the 19 We note that Mr. Kasdorf’s reliance on Kheterpal is limited to Kheterpal’s background discussion regarding the Bitcoin protocol inasmuch as it “defines a system in which the creation and distribution of the bitcoin cryptocurrency is governed by consensus among a peer-to-peer network” and includes “a public ledger in which new transactions are verified and recorded by members of the network via cryptography.” Ex. 1010 ¶ 4. Ex. 1004 ¶ 108 (citing Ex. 1010 ¶ 4). Thus, we agree with Patent Owner that in the Petition, neither Petitioner nor Mr. Kasdorf explains or “cite[s] any evidence regarding which component is the ‘necessarily’ present mining processor (limitation 1[c_i]) or how this unspecified mining processor is ‘connected to the network interface and adapted to . . . communicate with the blockchain database’ (limitation 1[c_iii]).” PO Resp. 42–43 (citing Ex. 1004 ¶¶ 104–105, 108–109).” slip op. at 21

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s contention that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation” (Pet. Reply 11 (citing Ex. 1036 ¶ 21)) is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Rather, Petitioner supplements its conclusory assertion that a “mining processor” is necessarily present in CryptoKube’s spondooliestech SP35 servers (Pet. 23, 25 (citing Ex. 1006, 1–4)) with its new assertion that that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation.” Pet. Reply 11. Petitioner does not purport to have presented this theory in the Petition. Id. Instead, Petitioner argues that this theory was properly raised in response to what Petitioner alleges to be an admission by” slip op. at 27

  Patent outcomesUS 11,574,372 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 11,574,372
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00992 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, and 17 are unpatentable; claims 3–6, 9, and 14 are not shown unpatentable, and claims 15 and 16 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design.” 3 The parties do not provide evidence or argument regarding objective indicia of nonobviousness. See, e.g., Pet. 9–93; Resp. 18–66. Pet. 6. Petitioner also asserts that an ordinarily skilled artisan “could have also obtained similar knowledge and experience through other means.” Id. Dr. Wolfe’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 30. Patent Owner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience.” Resp. 3. Patent Owner also asserts that “[a]dditional relevant industry experience may compensate for lack of formal education or vice versa.” Id. Dr. Goossen’s testimony supports Patent Owner’s assertions. See Ex. 2008 ¶ 16.” slip op. at 15

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

    “10. SUMMARY “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Above, we discussed issues concerning the “component” limitations in claims 1, 3, and 4 and an ambiguity in claim 4. See supra §§ III.C.4(c), III.C.5(c), III.C.6(c), III.C.7(c), III.C.8(c), III.C.9. We determine that no other claim language requires a discussion of scope or an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. D. Alleged Obviousness over Fukumoto: Claims 1–3, 7–9, and 17 Petitioner contends that claims 1–3, 7–9, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto. See Pet. 9–35; Reply 16–22. Patent Owner disputes Petitioner’s contentions. See Resp. 18–27; Sur-reply 7–14. Below, we provide an overview of Fukumoto. Then, we consider the obviousness issues. For the reasons explained below, we agree with Petitioner that claims 1, 2, 7, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto but disagree that claims 3, 8, and 9 are unpatentable based on Fukumoto.” slip op. at 44

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “2. MEANS-PLUS-FUNCTION CLAIMING The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2006). The absence of the word “means” in a claim limitation creates a rebuttable presumption that § 112’s means-plus-function provision does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). When a claim limitation lacks the word “means,” a party may rebut the presumption that § 112’s means-plus-function provision does not apply by demonstrating that “the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson, 792 F.3d at 1348 (alteration by the court) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Construing a means-plus-function limitation involves two steps: first, identify the claimed function or functions; and second, determine what structure, if any, disclosed in the patent’s specification corresponds to the claimed function or functions. Williamson, 792 F.3d at 1351; see Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). For the second step, a person of ordinary skill in the art must “recognize the structure in the specification and associate it with the corresponding function in the claim.” All-Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007). The “duty to link or associate structure to function is the quid pro quo for the convenience” of using means-plus-function claiming. B. Braun Med., Inc., v. Abbott Lab’ys, 124 F.3d 1419, 1424 (Fed. Cir. 1997). When a limitation recites two or more functions, the specification” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Conclusion About Obviousness/Nonobviousness For the reasons discussed above, Fukumoto teaches claim 1’s subject” slip op. at 64

  Patent outcomesUS 9,369,081 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,369,081
• Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentable
  PTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision

  Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5

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

    “In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. 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 5

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15

  Patent outcomesUS 11,373,058 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · Graham
  Patents in suitUS 11,373,058
• Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,994,923
• Viking Drill & Tool, Inc. v. Hongjia WangAll claims unpatentable
  PTAB · Jul 5, 2024 · IPR2023-00474 · APJ William V Saindon · IPR · Final written decision

  Claims 1, 2, 5, 7, 8, 12–15, 18, 19, and 22 are unpatentable as obvious over Zhou, Bannister, Gentry, and Durfee; the Board did not reach the additional Welty-based grounds.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “known that a spiral flute helps to lift swarf away from the cutting surface. Pet. 67 (citing Ex. 1004 ¶¶ 201–202). The testimony of Petitioner’s expert states that a person of ordinary skill in the art would have known that “the spiral shape of the flute side walls was desirable since it helps to lift chips, or swarf, away from the cutting surface and evacuate it from the hole being cut.” Ex. 1004 ¶ 202. This makes intuitive sense, as a wall perpendicular to the surface would push accumulated chips along, whereas the wedge shape of the spiral will lift them away from the cutting surface. According to Petitioner, a person of ordinary skill in the art would have been motivated to modify Zhou’s flute to arrange the cutting edges such that they, as a whole, have a spiral shape in order to achieve these chip-lifting benefits. Thus, we find that a person of ordinary skill in the art at the time of the invention had a reason to include the known feature of cutting tips that spiraled around the cone portion, in order to achieve the benefit of providing better chip removal.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person of ordinary skill in the art (POSA)] with respect to the ’583 patent would have been an individual educated in mechanical engineering with a bachelor’s degree and at least one or two years of experience in the development of drill bits, or an associate’s degree and at least five years of experience in the development of drill bits. A POSA would typically work in a team with machinists and would be aware of developments in the field of machine tools, particularly drill bits, for example by attending trade shows, and by reading patents and trade journals.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “formed sequentially and spirally on a cone portion exterior” of the twist drill. The parties agreed to construe the cutting blade groups being “formed spirally” as meaning that the cutting blade groups are slanted with respect to the rotational axis, i.e., are not perpendicular to the rotational axis. The parties have agreed that being “formed spirally” is met by axial relief. Pet. 23; Tr. 77:9–12. We adopted this construction. slip op. at 18

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

    “2. Construction of Remaining Terms We determine that no further terms require construction. 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 19

  Patent outcomesUS 11,007,583 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,007,583
• Medit Corporation v. 3shape A/SInstituted
  PTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution

  The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

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

    “For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15

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

    “C. Claim Construction In inter partes reviews, we interpret a claim “using 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 this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted

    “We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24

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

    “teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,695,151
• Advanced Lighting Concepts LLC v. Mate LLC.Institution denied
  PTAB · Feb 13, 2024 · IPR2023-01257 · APJ James J Mayberry · IPR · Institution

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

  RulingsInstitution decision

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

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

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

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

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

  RulingsInstitution decision

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

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

  • BurdenDenied

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

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

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

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

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

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

  The Board denied institution because the Petition did not establish a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we decline to institute inter partes review on any of the asserted grounds of unpatentability.” slip op. at 2

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

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

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

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

  • Expert testimonyPetitioner expert discountedDecided for patent owner

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

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,078,310
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Instituted
  PTAB · Jan 10, 2024 · IPR2023-00993 · APJ Michael T Cygan · IPR · Institution

  The Board instituted review of claims 1–9, 11, 14–17, 19, and 20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–9, 11, 14–17, 19, and 20 of the ’830 patent. Accordingly, we institute an inter partes review as to claims 1–9, 11, 14–17, 19, and 20 of the ’830 patent on all asserted grounds of unpatentability.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that its analysis has been made under this proposed definition and “would not change if minor variations were made to it.” Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8

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

    “electromagnetic coil oscillation sufficiently teaches the claimed driving component. Infra at II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term for purposes of institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))). With respect to limitation [1f], a “control component that controls supply of power from the power supply to the driving component to cause the moveable component to oscillate at a frequency and an amplitude specified by one or more stored values,” Petitioner argues that it should be construed as a means (component) having a function (to control supply of power from the power supply to the driving component to cause the moveable component to oscillate at a frequency and an amplitude specified by one or more stored values). In our analysis, we determine limitation [1f] to be taught by Petitioner’s assertions under its alternate non-means-plus-function construction. For this reason, and because Petitioner has not provided sufficient analysis under 35 U.S.C. 112, paragraph 6, we need not construe limitation [1f] for purposes of institution. Petitioner also argues that dependent claim 4 contains the terms “the one or more operational control outputs of the control component,” “the sensors,” and “the one or more sensors,” that lack antecedent basis in claim 1 from which it depends, and therefore proposes two constructions. Pet. 9. However, Petitioner argues that these limitations are taught by its asserted combination of references under either construction. Id. at 51. We Therefore, construction is not required at this stage of the proceeding. Whether § 112’s means-plus-function provision applies to those limitations is better resolved at trial on a more developed record.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,941,830

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.