- Viking Drill & Tool, Inc. v. Hongjia WangAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,007,583 - PTAB · Nov 17, 2023 · IPR2023-00833 · APJ Cynthia L Murphy · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that Corazza anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Here, Petitioner demonstrates a reasonable likelihood that it would prevail in establishing the unpatentability of at least independent claim 1 of the Challenged Patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Independent claim 1 sets forth limitations involving a “dynamic emoticon.” Ex. 1001, 12:1, 12:5, 12:9. Petitioner proposes a claim construction in which a “dynamic emoticon” includes “graphics, symbols, characters, emojis, videos, avatars, or the like, that reflect the expression a sender uses to help explain the context of the message.” Pet. 10–11. As Patent Owner did not file a Preliminary Response, Patent Owner does not offer a contrary construction. Petitioner’s proposed claim construction is aligned with the Challenged Patent’s specification (see Ex. 1001, 5:6–8, 8:60–64), the Challenged Patent’s prosecution history (see e.g., Ex. 1002, 192–193, 317–318), and Patent Owner’s position in the district court action (see Ex. 1007, 4–5). We therefore adopt Petitioner’s proposed construction. Insofar as a party believes that supplemental claim construction would be beneficial, this can be addressed during development of the record for trial.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“(Pet. 6.) A claim is anticipated under 35 U.S.C. § 102 only if “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). A. CLAIM 1 Petitioner demonstrates a reasonable likelihood that it will prevail in establishing that Corazza (Ex. 1004) discloses each and every element in independent claim 1. See Pet. 7–16.” slip op. at 6
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,042,623 - PTAB · Jul 18, 2023 · IPR2023-00350 · APJ Cynthia L Murphy · IPR · Institution
Review instituted for claims 1–8 on all asserted grounds, based on a reasonable likelihood of success on the Publicover anticipation challenge and the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In Part Two of the Advanced Bionic framework, we determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact the patentability of the challenged claims.” Id. at 8 n.9. Here, the prosecution history of the ’687 Patent reflects that the Office materially erred by overlooking Publicover’s non-illustrated embodiments. As discussed above in Section V, the prosecution history reflects that the different treatment of Application Claim 1 (i.e., rejected as anticipated by Publicover) and Application Claim 11 (i.e., not anticipated by Publicover) seemed to rest on Application Claim 11 requiring the support members to be connected to the barrier net only at or near an upper peripheral part of the barrier (i.e., a top-only connection (c)), while Application Claim 1 did not. As discussed above in Section VI, a claim that did not required a top-only connection (c) could be anticipated by Publicover’s non-illustrated embodiment. And Petitioner demonstrates that when Publicover’s non-illustrated embodiment is taken into consideration, there is a reasonable likelihood that Issued Claim 1 is anticipated by Publicover. Infra § VIII. Thus, we decline to exercise our discretion to deny the Petition under § 325(d).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that Petitioner demonstrates a reasonable likelihood that it will prevail on its challenge to Issued Claim 1 as anticipated by Publicover. We have reviewed Petitioner’s cited evidence and explanation regarding why Publicover anticipates claims 2–8 and find them sufficient at this stage. At this stage, Patent Owner raises no other arguments regarding these claims other than those considered above with respect to claim 1. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Publicover anticipates claims 2–8.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). “[A] reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“With respect to Ground 2—Obviousness of claims 3 and 4 over Publicover and Coan, Petitioner relies on Coan “[i]f Publicover is determined not to teach ‘so that in their natural rest state the enclosure support members extend away from the mat.” Pet. 40. Patent Owner contends that Coan does not teach this limitation, and because the rigid nature of Coan’s enclosure, Coan teaches away from the combination with Publicover. Prelim. Resp. 50–53. Patent Owner further argues that Petitioner only offers a conclusory motivation to combine the references. Given our conclusion above, we do not resolve this argument, which may have some merit. The parties should address these arguments further during trial.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,854,687 - PTAB · Jul 10, 2023 · IPR2023-00474 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 7, 8, 12-15, 18, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Zhou.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Prelim. Resp. 5–12; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation”4 (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because 4 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Petitioner has offered a stipulation like in Sotera, i.e., “[to] not pursue in the Litigation the Grounds asserted herein or any other grounds that reasonably could have been raised in this IPR” (Pet. 91), we do not discretionarily deny institution under Fintiv, for the reasons set forth in the Director’s Memo.” slip op. at 7
- Parallel petitionsDecided for petitioner
“Petitions. Prelim. Resp. 2–5. Petitioner filed two Petitions challenging the ’583 patent and, as required in our Consolidated Trial Practice Guide (Nov. 2019)5 (“CTPG”), submitted an explanation of why two petitions were necessary. Paper 2. According to the Consolidated Trial Practice Guide, “the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. It also states that “the patent owner may seek to avoid additional petitions by proffering a stipulation that certain . . . references qualify as prior art.” Id. at 61. We have a dispute over the priority date of the ’583 patent as it relates to the Wang reference in IPR2023-00473. This issue is not present here. Therefore, we have a situation recognized by the Consolidated Trial Practice Guide where multiple petitions are permitted. Accordingly, we do not discretionarily deny institution based on multiple petitions.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion for Zhou Anticipation Ground Reviewing the Petition and the Preliminary Response, we find that Petitioner has sufficiently identified where Zhou discloses each limitation of claim 1. Accordingly, we determine that Petitioner has established a reasonable likelihood of showing that claim 1 is anticipated. E. Alleged Obviousness in View of Zhou, Bannister, Gentry, and Durfee” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A 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. Pet. 25 (internal citations omitted); see also Ex. 1004 ¶ 14. Patent Owner does not appear to challenge this proposed level of skill or offer its own. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the ’583 patent and prior art.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,007,583 - Reboot Labs LLC v. Lpi, Inc.Institution deniedPTAB · May 18, 2023 · IPR2023-00134 · APJ Cynthia L Murphy · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were anticipated or obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a). Petitioner bears the burden of demonstrating this reasonable likelihood. 35 U.S.C. § 314(a). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“A. water heating device The challenged claims all require a water heating device. Ex. 1001, 12:28, 13:1, 13:48, 14:31. A person of ordinary skill would understand that a “water heating device” is a device that actually heats water, as opposed to, for example, a device that merely interacts with already heated water. This claim construction aligns with the disclosure of the ’161 Patent. See, e.g., Ex. 1001, 6:39–45.6 Consequently, the claim term “water heating device” would not be met by a device that merely interacts with already hot water.” slip op. at 6
- Skill levelDecided for patent owner
“V. LEVEL OF ORDINARY SKILL IN THE ART Petitioner’s prior art arguments all hinge, one way or another, on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art. See, e.g., Pet. 4, 12, 27, 28, 29, 31, 32, 33. Yet Petitioner does not discuss, much less provide us with a proposed definition of, the level of ordinary skill in the art. Petitioner’s omission of any discussion whatsoever about the level of ordinary skill in the art, alone, makes us question the likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Although the prior art can be used to establish the level of ordinary skill, here, Petitioner does not give any indication that its position is based upon a level of ordinary skill established in this manner. This, at best, introduces conjecture into Petitioner’s prior art arguments because, as indicated above, they all hinge on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In the circuit diagrammed in Petitioner’s annotated drawing, water is conveyed through heating device 46, through cross-feed line 80, into cold tub chamber 14, out of cold tub chamber 14, through cooling device 67, into tub cold chamber 14, through weir 19, into hot water tub 16, out of hot water tub 16, and back to heating device 46. Thus, in Petitioner’s diagrammed circuit, water is conveyed to both the heating device 46 and the cooling device 67 only by passing through tub chambers 14/16 therebetween. As discussed above in Section IV, the specific coupled-in-series arrangement required by the challenged claims is not met by an arrangement in which water is conveyed to both the heating device and the cooling device only by passing through the tub therebetween. Consequently, Hargrove does not disclose the specific coupled-in-series arrangement required by the challenged claims. Thus, Petitioner has not shown a reasonable likelihood that it would prevail in showing that independent claims 1 and 15 are anticipated by Hargrove.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,712,161 - PTAB · Mar 23, 2023 · PGR2022-00058 · APJ Benjamin D M Wood · PGR · Institution
The Board instituted PGR on claims 1–17 on all asserted grounds, finding it more likely than not that claim 1 is unpatentable under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence), the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), the Preliminary Reply, and the Preliminary Sur-reply, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage of the proceeding. See Prelim. Resp. 18 (“[f]or purposes of this Preliminary Response only, Patent Owner uses Petitioner’s proposed level of skill in the art.”). We discern no reason, at this stage of the proceeding, to question Petitioner’s proposed level of ordinary skill, which is supported by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- BurdenDecided for petitioner
“Section 42.6(a)(3) states that “[a]rguments must not be incorporated by reference from one document into another document.” The purpose of this rule to prevent a party from circumventing page limits and to conserve Board resources. See Cisco, 10 (“incorporation by reference of numerous arguments from Dr. Roy’s 250-page Declaration into the Petition serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 250 pages of Dr. Roy’s Declaration . . . to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioner’s assertions.”). Patent Owner does not identify specific arguments in Mr. Plunkett’s declaration that are not in the Petition, or specific conclusory statements within the Petition that are overly reliant on the Plunkett Declaration. Nor have we found any improper incorporation in the course of our own review. Accordingly, we are not persuaded that we should ignore any portion of the Plunkett Declaration on this basis.” slip op. at 28
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Claim terms using the word “means” are presumed to invoke § 112(f), and terms without the word “means” are presumed not to invoke this subsection. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Because “server gateway” does not include the word “means,” it is presumed not to be a means-plus-function claim term under § 112(f). This presumption can be rebutted, however, by demonstrating that the term fails to “recite sufficiently definite structure,” or recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal quotation marks omitted). It is Patent Owner’s burden to produce sufficient evidence to overcome this presumption. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1367 (Fed. Cir. 2022) (“From a procedural standpoint, this presumption imposes on the party challenging the presumption the burden of going forward with evidence . . . that a person of ordinary skill in the art believes the term does not recite sufficiently definite structure.”) (internal citation, quotation marks, and alterations omitted). There does not appear to be a dispute, at this stage of the proceeding, that “server gateway” denotes at least some structure to persons of ordinary skill: a server connecting a game user computational device and a blockchain. Thus, we are not persuaded, on the current record, that “server gateway” is a “generic term[] or black box recitation[] of structure or abstractions.” MTD Prods. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019). Patent Owner nonetheless argues that although the term may recite some structure, the recited structure is insufficient to perform “the recited functions,” which Patent Owner asserts are: (1) “operating a blockchain” slip op. at 14
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · GrahamPatents in suitUS 11,189,131 - PTAB · Mar 6, 2023 · IPR2022-01472 · APJ Cynthia L Murphy · IPR · Institution
The Board instituted IPR on claims 1–4, 7, and 9–23 on all asserted grounds, finding a reasonable likelihood that the Lennox, Harris, and Nailor combination renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“35 U.S.C. § 314(a) to deny institution in view of the parallel district court litigation involving the challenged claims (“the Parallel Proceeding”). Prelim. Resp. 34. Petitioner contends that “discretionary denial is not appropriate in this case” at least because of its Soreta stipulation (Sotera [Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)]. Pet. 64. In particular, Petitioner stipulates that, if IPR is instituted on the grounds set forth in this Petition, it will not pursue in the Parallel Proceeding the specific grounds asserted in the Petition against the challenged claims, or any other ground that could have been reasonably raised in the Petition against the challenged claims.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying the above standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’988 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–4, 7, and 9–23) of the ’988 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find that Petitioner has shown sufficiently that the combination accounts for the preamble, regardless of whether or not it is limiting. Patent Owner’s arguments that Harris and Nailor do not teach a “linear bar grille” are not persuasive because Petitioner relies on Lennox for that limitation. As for the reason to combine, we find that Petitioner has shown a sufficient reason to combine. As Petitioner explains, extrusion is a well-known manufacturing process with known economic advantages, which at this stage, is a sufficient motivation to combine the teachings of Lennox with Harris and Nailor. See Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1337 (Fed. Cir. 2009) (noting “efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable” generally are obvious); see also KSR, 550 U.S. at 417 (noting “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“has made a reasonable showing that Nailor—the document in the record as Exhibit 1006, including the figures, without magnification, was publicly accessible. Nor does Patent Owner dispute that the figures accurately represent enlargements of the figures shown in Nailor. See Prelim. Resp. 11 (acknowledging that the 300% enlarged figure is the “same figure”). Instead, Patent Owner argues that Petitioner must make an additional showing that the magnified drawings, already existed and these magnifications were publicly accessible. See id. We disagree. A party is allowed to magnify and annotate figures to aid its presentation in its papers. See Lubanski v. Coleco Indus., Inc., 929 F.2d 42, 48 (1st Cir. 1991) (allowing photographs and enlargements of photographs, if “the photograph depicts a correct likeness of the scene it purports to represent”); Durant v. Surety Homes Corp., 582 F.2d 1081, 1089 (7th Cir. 1978) (allowing using of “blowups of otherwise admissible pictures” noting “[e]nlarged photographs are frequently used in trials”). Petitioner clearly labels the figures as annotated and enlarged. See Pet. 26–28 (indicating that the figures are “enlarged” and “annotated”). Moreover, contrary to Patent Owner’s argument that the figures are not “substantiated in any declaration,” Petitioner’s expert provides similar enlargements and annotations and explains what they are. Ex. 1003 ¶¶ 54, 55. As Patent Owner acknowledges and we have confirmed, the figures appear to accurately represent 300% magnification of portions of Exhibit 1006. See Prelim. Resp. 11. “It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Thus, we disagree with Patent Owner that Petitioner needed to separately show that the enlargements were publicly accessible apart from showing that Nailor was publicly accessible. We have reviewed Petitioner’s evidence that Nailor was publicly accessible before the effective filing date of the ’988 patent. See Pet. 25–26 (citing Ex. 1030 ¶ 5; Ex. 1028 ¶¶ 5–7; Ex. 1029 ¶¶ 5–7). On this record, we find that it is sufficient to establish a reasonable likelihood that Nailor qualifies as prior art in this proceeding. See Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential). We address Patent Owner’s other arguments about whether Nailor teaches indented slots, or not, Prelim. Resp. 25, below.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,765,988 - PTAB · Mar 6, 2023 · IPR2022-01475 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–4, 8–11, and 14–16 on all asserted grounds, finding a reasonable likelihood that the Lennox, Harris, and Nailor combination renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying the above standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’305 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–4, 8–11, and 14–16) of the ’305 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)] stipulation, which is dispositive on the question of discretionary denial.” Pet. 64. In particular, Petitioner stipulates that, if IPR is instituted on the grounds set forth in this Petition, it will not pursue in the Parallel Proceeding the specific grounds asserted in the Petition against the challenged claims, or any other ground that could have been reasonably raised in the Petition against the challenged claims. Id. at 65 (citing Sotera, Paper 12 at 13–14). We will not discretionarily deny institution in view of parallel district court litigation when a petitioner stipulates not to pursue in that parallel litigation the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 3, 7–8.3 Because Petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, or at least 3 years of experience designing, manufacturing, installing, and/or finishing drywall using accessories such as grilles or grates.” Pet. 12 (citing Ex. 1003 (Kaczkowski Decl.) ¶ 65). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 4–5. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’305 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). C. Claim Construction” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because we find that Petitioner has shown a reasonable likelihood of prevailing on the second challenge—the combination of Lenox, Harris and Nailor— under either party’s construction of the preamble, we find that no construction of the preamble is necessary at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 2. “Flexible” Both parties seek construction of the term “flexible.” See Pet. 19; Prelim. Resp. 10–11. Here, we find that none of the patentability challenges raised in the Petition turn on the meaning of the term “flexible.” Accordingly, we determine that no construction of the term is necessary. See Nidec, 868 F.3d at 1017.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,871,305
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.