- PTAB · Apr 13, 2023 · IPR2022-01577 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–10 on all petitioned grounds, finding a reasonable likelihood that claim 1 was anticipated by the HDI 3000 Manual.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). 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 provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’157 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” 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: would have a degree in electrical engineering, biomedical engineering, or a related discipline, along with relevant experience (at least 2–3 years for a Ph.D., 3–5 years for a Master’s, and 5+ years for a Bachelor’s) researching or developing ultrasound systems or other medical imaging devices. EX1008, ¶¶21–26. The POSA would have general knowledge of ultrasound systems and related technologies as of January 15, 2001. Id. Pet. 7–8. Patent Owner applies Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 5. We adopt the parties’ accepted definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In this case, Patent Owner’s assertion that its proposed construction is “consistent with the specification” fails to articulate or apply the proper standard. For example, any interpretation whose scope is equal to or narrower than a proper construction would logically be consistent with that proper construction. Thus, Patent Owner could only establish that its proposed interpretation is equal to or narrower in scope than the proper interpretation. Comparing the claims to prior art using a claim construction potentially narrower than what is claimed would not be a fruitful exercise because the claim could read on the prior art but not on the unduly narrow interpretation. Cf. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (holding that a broad claim is anticipated by any narrow disclosure falling within the broad claim). Patent Owner’s assertion that its proposed construction is consistent with examples in the specification is also not persuasive, and no more persuasive than its prior implication that its proposed construction is not inconsistent with the specification. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.” (internal quotation omitted)). Similar to the situation in i4i, Patent Owner here has failed to explain how the claim is clearly limited to the examples in the specification. Instead, we construe “information of object” to be an identification of the object to be studied in the ultrasound examination, based on its plain language in the context of the claimed ultrasound device. We are not apprised of any language, on this record, in the ’157 patent or prosecution history that otherwise constrains what types of “object” would be inspected by the claimed device. For example, there is no indication that the machine is less capable than other ultrasound machines in a way that limits its use to examinations of certain things in a body such as a liver or a heart, but not simpler things in a body such as blood vessels or more complex things such as a fetus. Accordingly, we see no reason to constrain “object” to something other than those things in a body that a person of ordinary skill in the art would investigate during an ultrasound examination.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It does not appear necessary at this time to specifically construe any other claim terms. 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 9
Claim construction§ 102 anticipationcites Phillips · KSRPatents in suitUS 6,901,157 - PTAB · Apr 13, 2023 · IPR2022-01576 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–3 on all petitioned grounds, finding a reasonable likelihood that claim 1 is unpatentable over Petruzzelli.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). 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 provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’985 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, computer science, or a related discipline, along with relevant experience (at least 1– 2 years for a Ph.D., 2–3 years for a Master’s, and 3+ years for a Bachelor’s) researching or developing graphical user interfaces (GUIs) for ultrasound systems or other medical imaging devices. EX1007, ¶¶14–19. The person would have general knowledge of GUIs for ultrasound systems or other medical imaging devices as of April 18, 2014. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner asserts that no claim terms require construction at this stage. Pet. 15. Patent Owner does not offer any claim constructions, but does challenge Petitioner’s choice not to offer any claim constructions, and suggests that we should deny the Petition on that basis. Prelim. Resp. 75– 77. We find Patent Owner’s arguments unavailing. First, we note that the parties have not offered competing claim constructions, such that there is no specific claim construction issue between the parties at this time. Second, we note that we consider Petitioner’s interpretation of the claims sufficiently clear based on their application of the claims on the art. Thus, we are able to proceed without explicitly construing any claim terms, and we are not persuaded to deny on that basis. In view of the above, we do not construe any claim terms. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,538,985 - PTAB · Apr 13, 2023 · IPR2022-01575 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR on claims 1–6, 12, 13, and 15 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated and/or obvious over Halmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented in the parties’ briefs, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least 1 of the claims 1–6, 12, 13, and 15 of the ’168 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any terms require construction at this stage.” Pet. 10. At this stage of the proceeding, Patent Owner has not yet filed a response. For purposes of this decision, we do not expressly construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)), cert. denied, 138 S. Ct. 1695 (April 30, 2018) (noting that “we need only construe terms ‘that are in controversy, 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)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We have reviewed Petitioner’s evidence and argument, and find that Petitioner has sufficiently shown that Halmann discloses this limitation of claim 1 for the purposes of institution.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,867,168 - Salem Fabrication Technologies Group, Inc. v. Uniglass Engineering OYInstitution deniedPTAB · Mar 22, 2023 · IPR2022-01517 · APJ Donna M Praiss · IPR · Institution
The Board denied institution under § 314(a), finding only claim 1 over Plumat alone met the institution threshold and the remaining grounds lacked adequate motivation to combine.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), we may not institute an inter partes review 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.” For the reasons stated below, we exercise our discretion to deny institution because Petitioner has not established a reasonable likelihood that it would prevail with respect to most of its asserted grounds of unpatentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“combining the references does not meet the threshold for institution. The Petition does not provide a sufficient non-hindsight biased rationale for why a POSITA would have combined Vehmas with any of Plumat, Vitkala, or Vehmas ’923 (the “base references” in the asserted grounds) in a manner that would have led to the claimed invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (stating “be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention”).” slip op. at 14
- Other 314aInstitution denied discretionary otherInstitution denied
“remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc., 815 F.3d at 1367 (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). In exercising that discretion, we are guided by the statutory requirement, in promulgating regulations for inter partes review, to consider the effect of any regulations on “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings,” 35 U.S.C. § 316(b), as well as the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). Office guidance, issued June 5, 2018, also explains that the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).11” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Because we exercise our discretion to deny institution under 35 U.S.C. § 314(a), we need not address the arguments presented under 35 U.S.C. § 325(d).” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,479,540 - Salem Fabrication Technologies Group, Inc. v. Uniglass Engineering OYInstitution deniedPTAB · Mar 22, 2023 · IPR2022-01516 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to our delegated authority, we may not institute an inter partes review “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); 37 C.F.R. § 42.4(a) (2022). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that separate structures are required. The strongest evidence for this requirement is the claim language itself, which plainly recites two different elements: “a pressurization unit” for inside air and “a compressor” for outside air. The separate naming of two elements in the claim strongly implies that they are not one and the same structure. Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.” (punctuation omitted) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“At most, the similarities between each pair of references establish, as a threshold matter, that they would have been considered by a POSITA. See K-Tec, Inc. v. Vita-Mix, Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either in the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). But the asserted similarities alone are not sufficient to show that a POSITA would have had a reason to combine the teachings in the manner described in the challenged claims. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (It is not enough that a skilled artisan, once presented with two references, would have understood that they could be combined; Petitioner needs to establish a motivation to pick out the two references and combine them to arrive at the claimed invention.). Next, Petitioner asserts that a POSITA would have been motivated to modify the glass tempering furnace of each base reference “to temper low-E glass more quickly and efficiently.” Pet. 24, 27, 30 (citing Ex. 1003 ¶¶ 82, 90, 98). As discussed below, Petitioner fails to show a sufficient logical connection between the asserted motivation and the proposed modification(s) of the base references. Stated differently, Petitioner fails to show a sufficient reason why a POSITA would have made the modifications necessary to bridge the gap between the prior art and the claimed subject matter. We discuss each pair of references more specifically below.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “at least a two-year technical degree in engineering or science (materials, chemistry, etc.), or at least two years of work experience in the field of materials processing and/or fabrication (such as glass or ceramics), and/or the industrial processes and machinery used for materials processing and/or fabrication.” Pet. 7 (citing Ex. 1003 ¶ 27). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 27. For purposes of this Decision, we apply Petitioner’s definition of a POSITA, which is consistent with the scope and content of the ’911 Patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,650,911 - Ericsson, Inc. v. Dali Wireless, IncInstitutedPTAB · Mar 9, 2023 · IPR2022-01419 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all petition grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“other information defining or describing the way data is being transmitted by a wireless access point because Petitioner only maps “radio resources” to analog downlink RF carriers. Pet. 37–40. Thus, whether “radio resources” encompass other information defining or describing the way data is being transmitted by a wireless access point is not at issue here. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Analysis Petitioner argues that Sabat-552 teaches a baseband unit communicatively coupled to another baseband unit, or receiving radio resources from another baseband unit, as claimed in claims 6, 12, and 17, or the indirect connection to yet another baseband unit, as claimed in claim 7. Pet. 52–56 (citing Ex. 1008, 6:55–61, Fig. 1; Ex. 1012 ¶¶ 107, 109, 110, 113). Petitioner argues that the combination would be motivated by Sabat- 552’s teaching of easily sharing the system among service providers to reduce costs, and that one of ordinary skill in the art would have expected success. Id. at 54–55 (citing Ex. 1008, 2:48–58, 3:65–4:5; Ex. 1012 ¶ 110).” slip op. at 25
- PTAB / AIA Trials › §315(e) estoppelNot reached
“Patent Owner responds that “it is well settled law . . . that 37 C.F.R. § 42.73(d)(3) does not apply to a patent owner defending the validity of issued claims in IPR proceedings because the patent owner is not ‘obtaining’ a patent in this post-issuance proceeding as required by the language of § 42.73(d)(3).” Prelim. Resp. 2–3. Patent Owner also asserts that “the claims of the ’499 patent are also materially different from the claims of the ’178 patent such that Patent Owner is not taking any positions inconsistent with the prior IPR proceeding.” Id. at 3, 17–20. of institution as discussed above, we do not reach alleged estoppel under 37 C.F.R. § 42.73(d)(3).” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - PTAB · Mar 9, 2023 · IPR2022-01293 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood of unpatentability based on Wu grounds and compelling merits despite Fintiv factors favoring denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“f) Conclusion – Initial Fintiv Analysis We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors, we determine that they favor a discretionary denial. 2. Assessment of the Compelling Merits As we have found that the first five Fintiv factors favor discretionary denial, we proceed to assess whether the record shows that Petitioner has presented a compelling unpatentability challenge.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s definition appears generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as systems. For the purpose of institution, we adopt Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art, which does not encompass an open-ended (“at least 3 years”) amount of experience, and which is supported by the testimony of Dr. Acampora. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Thus, the record does not support Patent Owner’s proposed construction of “radio resources,” that requires the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include the user payload data that is transmitted. 4. Our Partial Construction For our present purposes, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including those in which underlying data is transmitted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - Ericsson Inc. v. Dali Wireless Inc.InstitutedPTAB · Feb 1, 2023 · IPR2022-01212 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on claims 1–12 because Ericsson showed a reasonable likelihood that claims would be unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–12 of the ’338 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites /default/files/documents/interim_proc_discretionary_denials_aia_parallel_di strict_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a 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.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner “adopts the identical stipulation from Sotera, namely, that if the IPR is instituted, . . . Petitioner will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR for the challenged patent.” Pet. 81.” slip op. at 55
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Patent Owner as it is consistent with the ’338 patent and the asserted prior art. Even if we were to adopt Petitioner’s similar assessment, it would not alter our decision to institute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Turning to the claim language, limitation vii recites “reconfiguring each remote radio unit by: determining a load percentage for each remote radio unit.” Claim 1 simply does not specify how to determine the load percentage for each remote radio unit and “load percentage” is a broad term. Stated differently, claim 1 does not specify the numerator or denominator to be used in determining the load percentage, but the parties agree that the numerator is the amount of load used in an RRU, as indicated above. On this preliminary record, Petitioner’s interpretation of “available capacity” as including “a single radio, a group of radios or the entire DAS system, [able to] be determined using throughput, number of connections, number of users, number of carriers, or power,” is sufficient for purposes of institution. See Pet. Reply 3 (citing Ex. 1005, 4:24–27; 5:13–15; 6:1–4; Ex. 1003 ¶¶ 104–06). On this preliminary record, as Petitioner argues (Pet. Reply 2) and contrary to Patent Owner’s construction, the claim language and the specification do not support limiting available capacity to a single RRU, or similarly, limiting the scope of “load percentage” to a load consumed by a remote radio unit divided by the assigned available capacity for that remote radio unit.6” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,682,338 - Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Jan 18, 2023 · IPR2022-01431 · APJ Sheldon M Mcgee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. ANALYSIS We have authority to institute an inter partes review only where “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Our findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The question of whether the prior art references are in the same field of endeavor is merely a threshold issue that must be satisfied before an obviousness determination can be made. See K-Tec, Inc. v. Vita-Mix, Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either in the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). In other words, once it is determined that the prior art is analogous to the claimed invention, it is then necessary to show that it would have been obvious for the skilled artisan to select and combine the teachings of the prior art in the manner claimed. Thus, we agree with Patent Owner that the Petition needs to set forth specific reasoning as to why an ordinarily skilled artisan would have been motivated to combine these references even if they are in the same or similar fields. Prelim. Resp. 31. Petitioner fails to do so on this record. The absence of such reasoning is particularly noteworthy here in view of Ma’s numerous teachings which appear to discredit the “passive” method of pulling the composite strand from the extruder as recited in claim 4, which is challenged in each of Grounds 2 and 3. Patent Owner identifies no fewer than eight disclosures within Ma that seemingly disparage the passive “pulling” method and discuss benefits of the active “pushing” method. Prelim. Resp. 16–19 (citing Ex. 1007, 53, 95–96, 98–107, 143–147, 149, 167–168). In the absence of any explanation from Petitioner on this point, we are not persuaded that the skilled artisan would have ignored those teachings and selected Ma’s pulling method.” slip op. at 19
- Expert testimonyPetitioner expert discountedDecided for patent owner
“explained why the ordinarily skilled artisan would have combined the non-precoating embodiment of Lipsker’s Figure 2 and the precoating embodiment of Lipsker’s Figure 5, much less with a reasonable expectation of successfully arriving at the subject matter of challenged claims 1–3. Prelim. Resp. 22–23. As Patent Owner correctly observes (id.), Petitioner’s general assertion that “Lipsker discloses that combinations of disclosed embodiments and features are possible and proper” (Pet. 20) does not constitute a reasoned explanation regarding why the skilled artisan would have combined Lipsker’s precoating and non-precoating actuator embodiments to arrive at the claimed subject matter. Moreover, Dr. Rosen’s declaration testimony on this point is entitled to little to no weight as it merely parrots the Petition. Compare Pet. 20, with Ex. 1002 ¶ 69. 37 C.F.R. § 42.65(a).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. In any event, for the reasons explained below, even under Petitioner’s definition, Petitioner fails to establish a reasonable likelihood of prevailing at trial with respect to any challenged claim based on the grounds of unpatentability advanced in the Petition.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,173,660 - Markforged Inc. v. Continuous Composites, Inc.Institution deniedPTAB · Jan 11, 2023 · IPR2022-01220 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 13, 14, and 17–20 unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 7
- Expert testimonyPetitioner expert discountedOther
“means of the precuring device 15, causing the surface to dry and stick.”). In light of these disclosures in Wohrl, Petitioner does not adequately explain why a POSITA would have understood that using a nip roller to press the path onto the core, then precuring the path as it is laid, creates an anchor as the ’798 patent teaches. Nor does Petitioner sufficiently address why a POSITA would have understood Wohrl to be teaching the use of an anchor when Wohrl uses a core to support the formation of the part. Moreover, Dr. Rosen’s declaration testimony on this point is entitled to little to no weight as it merely parrots the Petition. Compare Pet. 101–102, with Ex. 1002 ¶¶ 414–416; see 37 C.F.R. § 42.65(a).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” (citation and internal quotation marks omitted)). Having reviewed the parties’ arguments and evidence of record, we are not persuaded that Petitioner provides sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Ma and Lipsker in the manner recited in the challenged claims.” slip op. at 14
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,987,798
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.