- Stmicroelectronics, Inc. v. The Trustees Of Purdue UniversityInstitution deniedPTAB · Nov 8, 2022 · IPR2022-00723 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution because Petitioner did not show that Ryu disclosed or suggested the claimed current spreading layer, defeating the sole obviousness ground for claims 1–8 and 12–15.
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). The findings and conclusions set forth in this Decision are provided solely for the purpose of explaining our determination that Petitioner has not met that standard on this record.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner directs us to Dr. Subramanian’s opinion that a person of ordinary skill in the relevant technical field at the time of the invention “would have had the equivalent of a Bachelor’s [D]egree in electrical engineering or a related subject and two or more years of experience in the field of semiconductor devices.” Pet. 3; Ex. 1035 ¶ 23. In Petitioner’s and Dr. Subramanian’s further view, “Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa.” Pet. 3; Ex. 1035 ¶ 23. Patent Owner counters, “Petitioner’s asserted level of skill in the art is absurdly low given the silicon carbide technology” that is the subject of the ’633 patent. Prelim. Resp. 17. In Patent Owner’s view, the ordinarily skilled artisan would have possessed a Master’s Degree in electrical engineering or a related field “with a concentration in design and fabrication of silicon carbide power semiconductor devices” or a Bachelor’s Degree in electrical engineering or a related field combined with “two years of experience in design and fabrication of silicon carbide power semiconductor devices.” Id. at 18–19. Patent Owner directs us to evidence that “[t]his level of ordinary skill is consistent with the specialized nature of the field of silicon carbide power semiconductor devices.” Id. at 19; Ex. 2004, x. Patent Owner further advances evidence that the ’633 patent inventors, as well as a “few others who were active in the highly specialized field of silicon carbide power devices,” possessed backgrounds consistent with Patent Owner’s proposed narrower definition of the level of ordinary skill. Prelim. Resp. 20; Ex. 2007, 1–2, 19; Ex. 2017, 1; Ex. 2018, 1; Ex. 2019, 1–2. 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) (“the prior art itself” may “reflect[] 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, at least because neither party explains how the result would change based on our selection of a definition. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition, which is consistent with the disclosures of the asserted prior art. In any event, even under Petitioner’s broader 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We agree with the parties that no claim term requires express construction for purposes of this Decision. Pet. 34–35; Prelim. Resp. 21–22. To the extent that the scope of a term requires discussion, however, we provide it in the following analysis of the challenge.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“Petitioner, however, further argues that an ordinarily skilled artisan “would have understood Ryu’s regions 26a and the strip to be a ‘current spreading layer’ both because . . . current spreads laterally within it and Ryu forms that layer in the same way as the ’633 patent forms its current spreading layer.” Pet. 40 (text shading omitted) (citing Ex. 1035 ¶ 85). On that point, we agree with Patent Owner that this is an inherency argument. Prelim. Resp. 49; see id. at 53 (further distinguishing the process of Ryu from the process disclosed in the ’633 patent). Inherency “is a high bar that requires the missing element be ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Prelim. Resp. 49 (citation omitted; Patent Owner’s emphasis). Although Petitioner points out that both Ryu and the ’633 patent involve p-wells that are “implanted” (Ex. 1003 ¶¶ 41–42 (Ryu)) or formed by “ion implantation” (Ex. 1001, 5:57–60), Petitioner does not explain adequately why that asserted similarity supports a conclusion that Ryu’s process necessarily produces a MOSFET having a current spreading layer as claimed in the ’633 patent. Pet. 48–49. Petitioner, therefore, does not meet that “high bar” in the Petition. See Pet. 48–49 (inadequate analysis). In a nutshell, Petitioner does not explain adequately why an ordinarily skilled artisan would have distinguished two structural components from the single component––JFET region 21––that is illustrated in Ryu’s Figure 2A. Petitioner’s rationale is insufficient to support trial institution because it is not tethered adequately to any intrinsic disclosure within the four corners of the reference. Pet. 40. Petitioner relies largely on extrinsic opinion testimony and background publications. Id. at 43–48. We detect in this exercise the taint of impermissible hindsight reconstruction.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,498,633 - Ideavillage Products Corp. v. Koninklijke Philips N.VInstitution deniedPTAB · Oct 25, 2022 · IPR2022-00904 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution on the sole claim, finding the obviousness challenges inadequate and exercising discretion to deny the marginal anticipation challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An obviousness analysis involves two steps; first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; second, “once this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” High Point Design, 730 F.3d at 1311 (internal quotation and citations omitted). Even when secondary references are not used, however, the analysis still requires an explanation as to how and why the primary reference (something having design characteristics basically the same as the claimed design) would have been modified to arrive at a design that has the same overall visual appearance as the claimed design. See, e.g., In re Nalbandian, 661 F.2d at 1217 (involving single-reference obviousness rejection and addressing the differences between the reference and the claimed design); In re Lamb, 286 F.2d 610, 611 (CCPA 1961) (affirming the Board in a case involving a single-reference obviousness rejection where “the board observed that it is conventional to use relatively slimmer handles with slim blades and that therefore, ‘it would be expected that a designer skilled in the cutlery art would use a somewhat narrower or slimmer handle with a slim blade’”). None of the 42 obviousness challenges advanced in the Petition is supported by an adequate analysis of those two steps. See id. at 64–88. In particular, none sufficiently discusses both the differences between the been modified (alone or in view of any other reference) to have the same visual appearance as the claimed design. Id.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“An obviousness analysis involves two steps; first, “one must find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”; second, “once this primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design.” High Point Design, 730 F.3d at 1311 (internal quotation and citations omitted). Even when secondary references are not used, however, the analysis still requires an explanation as to how and why the primary reference (something having design characteristics basically the same as the claimed design) would have been modified to arrive at a design that has the same overall visual appearance as the claimed design. See, e.g., In re Nalbandian, 661 F.2d at 1217 (involving single-reference obviousness rejection and addressing the differences between the reference and the claimed design); In re Lamb, 286 F.2d 610, 611 (CCPA 1961) (affirming the Board in a case involving a single-reference obviousness rejection where “the board observed that it is conventional to use relatively slimmer handles with slim blades and that therefore, ‘it would be expected that a designer skilled in the cutlery art would use a somewhat narrower or slimmer handle with a slim blade’”). None of the 42 obviousness challenges advanced in the Petition is supported by an adequate analysis of those two steps. See id. at 64–88. In particular, none sufficiently discusses both the differences between the been modified (alone or in view of any other reference) to have the same visual appearance as the claimed design. Id.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“Specifically, on that crucial issue, Mr. Peyser testifies “that the multiple perspective views are informative enough to prov[id]e me an understanding of what the front and rear views of the shaver head would look like.” Ex. 1003 ¶ 60 (emphasis added). Mr. Peyser neither explains why the perspective views are sufficient to disclose the missing front and rear views of the Philips OneBlade shaver head, nor keys his testimony, with sufficient clarity, to the understanding of an ordinary observer. Ex. 1003 ¶ 60 (referring to “me,” not the ordinary observer). When Mr. Peyser does turn to the relevant inquiry, therefore, focusing on the ordinary observer, his opinions are not tethered adequately to supporting facts. Ex. 1003 ¶ 61. Stated somewhat differently, his ultimate opinion is conclusory. See id.; see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (a petitioner’s burden of proving obviousness cannot be satisfied by employing “mere conclusory statements”).” slip op. at 15
- Expert testimonyPetitioner expert discountedOther
“Specifically, on that crucial issue, Mr. Peyser testifies “that the multiple perspective views are informative enough to prov[id]e me an understanding of what the front and rear views of the shaver head would look like.” Ex. 1003 ¶ 60 (emphasis added). Mr. Peyser neither explains why the perspective views are sufficient to disclose the missing front and rear views of the Philips OneBlade shaver head, nor keys his testimony, with sufficient clarity, to the understanding of an ordinary observer. Ex. 1003 ¶ 60 (referring to “me,” not the ordinary observer). When Mr. Peyser does turn to the relevant inquiry, therefore, focusing on the ordinary observer, his opinions are not tethered adequately to supporting facts. Ex. 1003 ¶ 61. Stated somewhat differently, his ultimate opinion is conclusory. See id.; see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (a petitioner’s burden of proving obviousness cannot be satisfied by employing “mere conclusory statements”).” slip op. at 15
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips - Tekni-Plex, Inc. v. Converter Manufacturing, LLCAll claims unpatentablePTAB · Oct 20, 2022 · IPR2021-00916 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–15, 17, 20–22, and 24–29 are unpatentable, based on anticipation by Portelli and obviousness over Portelli alone or with Long.
RulingsFinal written decision- Skill levelDecided for patent owner
“B. Level of Ordinary Skill in the Art We review the grounds of unpatentability in view of the understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “would be a person with either (1) a Bachelor of Science degree in packaging science, mechanical engineering, material science, or chemistry and two years of experience designing and manufacturing thermoformed plastic items, or (2) three years of experience designing and manufacturing thermoformed plastic items. Pet. 7–8 (citing Ex. 1002 ¶ 35). Patent Owner states that Petitioner’s proposed level of skill “is acceptable” with a series of “clarifications,” which do not address the relevant level of skill, but instead purport to list activities a person of ordinary skill in the art can, or cannot, do “without considerable experimentation.” PO Resp. 6 (emphasis omitted) (citing, e.g., Ex. 2007 ¶ 31).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. “formed from a thermoformable sheet” Claim 1 (and claim 24) recites, in the preamble, “[a]n article formed from a thermoformable sheet.” Ex. 1001, 38:30. The Specification does not otherwise describe a “formed from a thermoformable sheet.” According to Patent Owner, “‘thermoformable sheet’ . . . excludes sheets made of paperboard or sheets made by injection molding,” because during prosecution of a related application “the Applicant argued that ‘thermoplastic sheet’ . . . excluded paperboard and injection molded material.” PO Resp. 10 (citing Ex. 2012, 8). We disagree with Patent Owner’s characterization of the relevant prosecution history, as explained below. A parent application to the ’281 patent recited “a method of making a container . . . the method comprising thermoforming a thermoplastic sheet to yield a precursor article.” Ex. 1046, 63. In regard to that claim, the Applicant argued that it recited “a method in which a thermoplastic sheet (i.e., not paperboard . . .) is thermoformed (i.e., not injection molded . . .) into a precursor article having a rim. Ex. 2012, 8. Petitioner does not address whether “thermoformable” may include paper board. See generally Reply 1–2. But, Petitioner argues that “[t]he prosecution statements cited by [Patent Owner] have no relevance to its definition of ‘thermoformable,’” as none of the amendments cited address the term “thermoformable” and instead address “thermoforming.” Reply 1– 2. Petitioner also asserts that “whether a material is thermoformed or injection molded does not dictate whether it is thermoformable, since many thermoplastics are both thermoformable and injection moldable.” Id. at 2” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. “the article has a smooth periphery” Claim 1 recites an article where “the article has a smooth periphery.” Ex. 1001, 38, 30–42. Patent Owner argues that because the claims use the word “the” to refer to the article, this “signifies that the entirety of the article has a smooth periphery, and not just a portion of the article.” PO Resp. 11. Petitioner asserts that “[i]t is unclear whether [the smooth periphery] refers to the outer periphery or to an edge that may come into contact with the overwrap film. Reply 2. Petitioner argues that Patent Owner, on one hand attempts to exclude “Long’s . . . peripheral edge—which is not at the outer periphery” as having a “smooth periphery,” but on the other hand “alleges that a tray with a nearly identical edge has a smooth periphery.” Id. at 2–3. According to Petitioner, this “will improperly allow the term to be interpreted narrowly for validity and broadly for infringement.” Id. at 4. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position,6 we determine that the identified claim term requires no express construction to resolve the issues in dispute in this proceeding. 3. Additional Claim Terms We find that no other claim term requires an express construction for” slip op. at 16
- ExcludeMotion to exclude, deniedDenied
“Quarterly, third quarter 2016, discussing the K-Show in Germany where certain samples were displayed and distributed to customers. Ex. 2070, 125:24–134:5. Furthermore, the OMV images Mr. May provides purport to originate from a presentation given at the SPE Conference in Indianapolis in 2004 and were provided to him by individuals who attended that presentation. Id. at 212:7–213:16; 214:13–16. Mr. May testifies that he confirmed the presentation was given at the conference by discussing the presentation with conference attendees, through internet research, and his own experience with OMV and conversations with OMV personnel. Id. at 213:8–214:16, 215:20–217:5. We agree with Petitioner that experts like Mr. May would reasonable rely on materials, like those described in paragraphs 39–40, 42, 44, 46, 51–53, 116, 270–271, and 332–333 Exhibit 1044, in forming the basis of their opinions. See Fed. R. Evid. 703. Therefore, Patent Owner’s motion to strike paragraphs 39–40, 42, 44, 46, 51–53, 116, 270–271, and 332–333 of Exhibit 1044 is denied. C. Exhibit 1045” slip op. at 83
Patent outcomesUS 9,908,281 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,908,281 - Tekni-Plex, Inc. v. Converter Manufacturing, LLCAll claims unpatentablePTAB · Oct 20, 2022 · IPR2021-00919 · APJ James A Tartal · IPR · Final written decision
Claims 1–5, 7–12, and 15–24 are unpatentable based on the asserted anticipation and obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“New Zealand and Washington. Ex. 2070, 136:20–137:8; Ex. 1045 ¶¶ 15–19. Mr. May further testifies that he confirmed the samples were made near the 2016 time frame through his discussions with Mr. Naughton, Mr. Willemse, and through an article appearing in Thermoforming Quarterly, third quarter 2016, discussing the K-Show in Germany where certain samples were displayed and distributed to customers. Ex. 2070, 125:24–134:5. Furthermore, the OMV images Mr. May provides purport to originate from a presentation given at the SPE Conference in Indianapolis in 2004 and were provided to him by individuals who attended that presentation. Id. at 212:7– 213:16; 214:13–16. Mr. May testifies that he confirmed the presentation was given at the conference by discussing the presentation with conference attendees, through internet research, and his own experience with OMV and conversations with OMV personnel. Id. at 213:8–214:16, 215:20–217:5. We agree with Petitioner that experts like Mr. May would reasonable rely on materials, like those described in paragraphs 39–40, 42, 44, 46, 51–53, 116, 270–271, and 332–333 of Exhibit 1044, in forming the basis of their opinions. See Fed. R. Evid. 703. Therefore, Patent Owner’s motion to strike paragraphs 39–40, 42, 44, 46, 51–53, 116, 270–271, and 332–333 of Exhibit 1044 is denied.” slip op. at 73
- Strike new argumentNew argument disregardedDecided for petitioner
“10 Patent Owner argues for the first time in its Sur-reply that a person of ordinary skill in the art “would have no expectation of success in enabling even obvious teachings or suggestions of Portelli, whether cited individually or in combination with Brown or Long.” Sur-reply 27. In its Response, Patent Owner argued that Petitioner failed to show a reasonable expectation of success with regard Petitioner’s contention that claims 4, 9, and 24 would have been obvious over Portelli, alone. Resp. 72–75. Patent Owner did not argue that Petitioner failed to show a reasonable expectation of success with regard to Petitioner’s contentions based on obviousness over Portelli and Long. See generally id. Accordingly, we find Patent Owner’s arguments improper as new arguments in its Sur-reply that were not raised in the Response, and, therefore, are deemed waived. See Paper 8, 8 (“any arguments not raised in the response may be deemed waived”).” slip op. at 56
- Skill levelSkill level petitioner adoptedDecided for petitioner
“experimentation.” Resp. 6 (citing, e.g., Ex. 2007 ¶ 31); Sur-reply 30. Patent Owner directs us to no authority, and we are aware of none, that informs that the level of ordinary skill in the art is determined based on a list of activities that allegedly require, or do not require, “considerable experimentation,” as Patent Owner suggests. Patent Owner appears to confuse consideration of the level of ordinary skill in the art with whether a patent is enabled. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (explaining that the touchstone of enablement is whether undue experimentation would have been required to practice the claimed invention). Accordingly, we find Patent Owner’s purported “clarifications” of Petitioner’s proposed level of ordinary skill inapplicable.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“during prosecution. Accordingly, we find that ‘thermoplastic substrate sheet’ excludes sheets made of paperboard, but does not exclude sheets made by injection molding. Moreover, had we adopted Patent Owner’s proposed construction, the outcome of this Decision would be the same.” slip op. at 17
Patent outcomesUS 10,562,680 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,562,680 - Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentablePTAB · Aug 25, 2022 · PGR2016-00012 · APJ Sheldon M Mcgee · PGR · Remand
Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the remaining anticipation, obviousness, and enablement grounds.
RulingsRemand decision- RemandOther
“On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). And, although there are no bright-line rules for the amount of disclosure needed in an unpredictable art, that amount “necessarily changes with each invention” and “changes with progress in the field.” Ariad, 598 F.3d at 1351. Here, we find that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. Thus, we conclude that the ’525 application requires a more-detailed disclosure than would be required in a predictable field to adequately demonstrate possession of a heat-transfer composition consisting essentially of HFO-1234yf and PAG for use in AAC. (iii) Disclosure in the ’525 Application With these background findings in mind, we now turn to the four corners of the ’525 application—and we find that the ’525 application does not contain the detailed disclosure needed in this case to reasonably convey possession of a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for use in AAC.” slip op. at 37
- Skill levelSkill level board ownDecided for patent owner
“develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable
“Tr. 114:15–115:18 (emphases added). Thus, we find that Patent Owner does not contest that a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for AAC was in public commercial use before the March 26, 2014, filing date of the ’017 patent. Accordingly, we find that Petitioner’s evidence, together with Patent Owner’s concessions, demonstrates by a preponderance of evidence that the claimed subject matter of the ’017 patent was in commercial use before its March 26, 2014, effective filing date. See Ex. 1002 ¶¶ 399–409. In particular, as to claims 1, 3–10, 12, 13, and 15–20, we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant AAC composition of the Ford Transit Custom Bus, the Mazda CX 5 (2.0i and 2.2D), and the Opel Mocca used HFO-1234yf and a PAG lubricant as early as 2012. Ex. 1002 ¶ 399 (citing Ex. 101324, 2, 38, 55, 70). We also credit Dr. Brown’s 24 Behr Hella Services, Refrigerant and Oil Filling Quantities Passenger Cars & Commercial Vehicles 2014–15. PGR12 Ex. 1013. (“Service Guide”). PGR12 Ex. 1013. The Service Guide provides tables setting forth specifications for refrigerant type, refrigerant quantity, vehicle manufacturers’ original equipment compressor oil type, and oil filling quantity for the air-conditioning system of each vehicle listed in the tables. Id. at 2–3. Petitioner and Dr. Brown direct us to the Sevice Guide’s entries calculations, which show that the Ford Transit Custom Bus had an AAC refrigerant-lubricant composition of 26.7% of PAG lubricant and 73.3% of HFO-1234yf (Ex. 1002 ¶ 401 (citing Ex. 1013, 38)); the Mazda CX 5 2.0i had 16.7% PAG lubricant and 83.3% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 55)); the Mazda CX 5 2.2D had a 17.5% PAG lubricant and 82.5% HFO-1234yf (id.); and the Opal Mocca had 11.6% PAG lubricant and 88.4% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 70)). As to dependent claims 2, 11, and 14, which all require that the lubricant is present “in an amount from about 30% to about 50% weight,” we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant composition of the Ford Transit Custom Bus recited lubricant amount. Ex. 1002 ¶ 403. In particular, we agree with Dr. Brown that, because the lubricant accounts for 26.7% of the AAC refrigerant-lubricant composition in the Ford Transit Custom Bus, the lubricant makes up “about 30%” of the refrigerant-lubricant composition as claimed. Id. For these reasons, we find that Petitioner has met its burden to show that claims 1–20 are unpatentable for anticipation under § 102(a)(1).” slip op. at 55
Patent outcomesUS 9,157,017 unpatentable§ 102 anticipation§ 112 disclosurePatents in suitUS 9,157,017 - Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentablePTAB · Aug 25, 2022 · PGR2016-00011 · APJ Grace Karaffa Obermann · PGR · Remand
Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the other anticipation, obviousness, and enablement grounds.
RulingsRemand decision- RemandOther
“On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3
- Skill levelSkill level board ownDecided for petitioner
“develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We agree with Petitioner that the ’525 application’s statement that the compounds are “adaptable for use” weighs against a finding of adequate written description. First, “adaptable for use” is vague, as Dr. Bivens acknowledges. See Ex. 1177, 151:15 (testifying that “adaptable for use can have a wide range of meaning”). Second, the ’525 application gives no direction on how a skilled artisan would need to adapt any particular composition for use in AAC, or even if any “adaptation” was necessary. We find that such a teaching is important in this case to show that the inventors had possession of the claimed invention, given our findings above that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. For completeness, we again reject Patent Owner’s argument that “[t]o show the inventors possessed claim 1 requires no more” than the statement in the written description that “‘the compositions of the present invention are believed to be adaptable . . . with or without system modification.’” PGR12 Resp. 27–28 (quoting Ex. 1001, 7:4–8). Regardless of the exact wording of claim 1, the inventors “still [had to have] describe[d] some way of performing the claimed methods.” Ariad, 598 F.3d at 1355. And here, with merely a passing reference to AAC, the ’525 application fails to provide any credible “technologic knowledge” to demonstrate to an ordinarily skilled artisan that Patent Owner “was in possession of the invention that is claimed.” Id.” slip op. at 43
- Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable
“unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). “The proper test for the public use prong . . . is whether the purported use was accessible to the public or was commercially exploited.” Delano Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243, 1247 (Fed. Cir. 2015) (quotation omitted). “Commercial exploitation is a clear indication of public use . . . .” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).” slip op. at 53
Patent outcomesUS 9,157,017 unpatentable§ 102 anticipation§ 112 disclosurePatents in suitUS 9,157,017 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentablePTAB · May 16, 2022 · IPR2021-00184 · APJ Erica A Franklin · IPR · Final written decision
Claims 1–16 and 21–25 were not shown unpatentable because Banin’s gold clusters were not shown to be molecular cluster compounds, and the Zaban combinations lacked motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them” and “[a]dditional education might supplement practical experience and vice-versa.” Pet. 18–19 (citing Ex. 1002 ¶ 70). Patent Owner neither addresses Petitioner’s description of the level of ordinary skill in the art nor provides its own description. See PO Response. Accordingly, we adopt Petitioner’s definition as we find it is unopposed and consistent with the level of skill in the art at the time of the invention as reflected by the prior art in this proceeding.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed
“suggested formula” assigned to them is “based on a calculation that relied on the average of a wide distribution of particle sizes reported in the literature by Hutchison.” Ex. 2030 ¶ 103(citing Ex. 2017, 12891). We assign persuasive weight to her testimony because it is based upon the disclosures in Hutchison, which Banin explicitly identifies as the published procedures by which it synthesized its clusters. In particular, Dr. Cossairt’s testimony is supported by the following discussion in Hutchison: To calculate an average molecular formula for 1 it is necessary to know the number of gold atoms in the metal core. Given the average particle size (1.5 nm) this number is estimated to be ~101 by the method of Whetten et al. and leads to an estimated formula of Au101(PPh3)21Cl5. Ex. 2017, 12891. In other words, Hutchison explains that it calculated an average molecular formula for its synthesized nanoparticles by estimating the number of gold atoms in the metal core based upon the average particle size of 1.5 nm. Id. Indeed, as Dr. Cossairt has recognized, Banin’s “suggested formula” is exactly the same molecular formula that Hutchison discloses as the “average molecular formula” for its nanoparticles. Thus, we determine that the record as a whole supports finding that a person of ordinary skill in the art would have understood that Banin’s “suggested formula” represents an average molecular formula for a disperse mixture of gold clusters that are not identical and do not have sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula, as required for MCCs. slip op. at 23
- Prior constructionPrior construction adoptedDecided for patent owner
“Specification expressly defines the term “molecular cluster” in a manner that refers to the cluster compound. According to the Specification, “Molecular cluster” is a term which is widely understood in the relevant technical field but for the sake of clarity should be understood herein to relate to clusters of 3 or more metal or nonmetal atoms and their associated ligands of sufficiently well defined chemical structure such that all molecules of the cluster compound possess the same relative molecular mass. Ex. 1001, 5:3–9. We note that the District Court determined that “the term ‘molecular formula’ as opposed to ‘molecular mass’ is most appropriate. By necessity, a compound with the same molecular formula will necessarily have the same molecular mass.” Ex. 1091, 16. The District Court explained also, “it appears that the difference between a molecular formula and a molecular mass, at least for purposes of this claim construction, in inconsequential.” Id. We agree and do not find any dispute on the current record from the parties on this matter. Accordingly, for purposes of this Decision, we agree with the District Court that the term “molecular cluster compound” means “clusters of 3 or more metal atoms and their associated ligands of sufficiently well-defined chemical structure such that all molecules of the cluster compound possess the same relative molecular formula.” Id. at 18.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“that Petitioner has not shown persuasively that a person of ordinary skill in the art would have considered Banin’s small Au clusters to be MCCs. According to Petitioner and Dr. Green, Banin’s gold clusters are MCCs because they are clusters of three or more metal atoms with their associated ligands and “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. To begin, we do not find that the record supports Petitioner’s contention or Dr. Green’s opinion that “each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90; Pet. 23. Petitioner and Dr. Green do not identify any disclosure in Banin describing the clusters as being identical. Instead, they refer to Banin’s disclosure that the Au clusters have “the suggested formula Au101(PPh3)21Cl5” and are “1.4 nm in mean diameter.” In doing so, Petitioner and Dr. Green do not meaningfully address or adequately explain how Banin derived its “suggested” molecular formula for the gold clusters or why Banin reported a “mean” diameter for those clusters. To that end, Petitioner and Dr. Green have failed to provide any reason why a skilled artisan would have understood Banin’s disclosures of a “suggested formula” and a “mean diameter” to convey that the Au clusters are identical.” slip op. at 22
Patent outcomesUS 7,803,423 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,803,423 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Nanoco Technologies Ltd.No claims unpatentablePTAB · May 16, 2022 · IPR2021-00182 · APJ Christopher M Kaiser · IPR · Final written decision
Claim 1 was not shown unpatentable because Petitioner did not establish that Dubrow’s disclosures concerned one embodiment or that separate embodiments should be combined.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“of a first liquid phase in a second liquid phase” and invited the parties to address at trial whether that construction is correct. Inst. Dec. 16. In the parallel proceeding in the Eastern District of Texas, the court construed “emulsion” as “a colloidal dispersion of two or more immiscible liquids.” Ex. 2022, 35. Patent Owner argues that, for the purpose of resolving the unpatentability issues presented in this proceeding, “there is not a meaningful distinction between the Board’s or District Court’s construction of ‘emulsion,’” because “[b]oth constructions require the presence of two immiscible liquids (e.g., a suspension of a liquid in another liquid).” PO Resp. 14 (emphases omitted). Petitioner agrees that the unpatentability issue should be resolved identically under both our previous construction and that adopted by the District Court. Reply 2 n.2 (“Claim 1 is . . . unpatentable under [either] the district court’s construction [or the Board’s construction].”). Thus, both parties agree that there is no meaningful distinction between our previous construction and that adopted by the District Court. Accordingly, we maintain our previous construction, and we note further that the two liquid phases in the “suspension of a first liquid phase in a second liquid phase” must be immiscible. See Ex. 2022, 31–35.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“b. To show anticipation, Petitioner must show that the separate portions of Dubrow on which it relies refer to the same embodiment When a prior-art reference discloses every limitation of the challenged claim only through a combination of multiple embodiments, it does not anticipate the challenged claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370–71 (Fed. Cir. 2008) (“it is not enough that the prior art reference discloses . . . multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention”). Accordingly, to prevail on its anticipation argument, Petitioner must show that both the “preferred embodiment” disclosure of Dubrow and the “experimental example” portion of Dubrow describe the same embodiment.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“argument relies on a single embodiment of Dubrow. Unlike an anticipation argument, an obviousness argument need not rely on a single embodiment within a prior-art reference. However, regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). To the extent that Petitioner intends to argue that it relies on multiple embodiments of Dubrow to teach or suggest the limitation “forming an emulsion comprising a first phase that comprises a first polymer and quantum dots and a second phase that comprises a second polymer,” Petitioner does not provide a reason to combine the teachings of those embodiments. See Pet. 27–29. Instead, Petitioner relies solely on its anticipation argument as support for Dubrow teaching this limitation. Id. at 27 (citing Pet. 21–23). To the extent that Petitioner intends to argue that the multiple portions of Dubrow on which Petitioner relies all relate to a single embodiment, Petitioner does not prove this by a preponderance of the evidence, for the reasons discussed above with respect to the anticipation argument. Thus, Petitioner has not shown either (1) that Dubrow’s teachings regarding the “forming an emulsion” limitation all relate to a single embodiment or (2) that those teachings relate to multiple embodiments that a person of ordinary skill in the art would have had a reason to combine.” slip op. at 13
Patent outcomesUS 9,680,068 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,680,068 - Ideavillage Products Corp. v. Koninklijke Philips N.VInstitution deniedPTAB · Mar 24, 2022 · PGR2021-00116 · APJ Ken B Barrett · PGR · Institution
The Board denied institution because eight grounds failed the threshold showing and the remaining lack-of-ornamentality ground was marginal, making trial inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Here, Petitioner advances nine challenges against the claim of the ’346 patent. Pet. 8. As discussed above, we determine that, on this record, Petitioner has not met its burden for institution under eight grounds—an on-sale bar ground, six obviousness grounds, and an indefiniteness ground. Additionally, we determine that the ninth ground— the challenge based on the alleged lack of ornamentality—is marginal, at 5 We acknowledge that SAS and Harmonic address inter partes reviews, but see no reason to interpret differently § 324(a), the statute governing post-grant reviews. 6 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 7 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf best. Based on the particular facts of this proceeding, instituting a trial with respect to all grounds based on evidence and arguments directed only to the one ornamentality ground would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, we do not institute a post-grant review.” slip op. at 26
- Other 314aInstitution denied discretionary otherInstitution denied
“Under the Office Guidance, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).6 When a petition fails to satisfy the “more likely than not” institution standard as to some challenges, the Board evaluates “all the challenges and determine[s] whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” Patent Trial and Appeal Board Consolidated Trial Practice Guide7 64 (Nov. 2019) (citing 37 C.F.R. §§ 316(b), 326(b)). Here, Petitioner advances nine challenges against the claim of the ’346 patent. Pet. 8. As discussed above, we determine that, on this record, Petitioner has not met its burden for institution under eight grounds—an on-sale bar ground, six obviousness grounds, and an indefiniteness ground. Additionally, we determine that the ninth ground— the challenge based on the alleged lack of ornamentality—is marginal, at 5 We acknowledge that SAS and Harmonic address inter partes reviews, but see no reason to interpret differently § 324(a), the statute governing post-grant reviews. 6 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 7 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf best. Based on the particular facts of this proceeding, instituting a trial with respect to all grounds based on evidence and arguments directed only to the one ornamentality ground would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, we do not institute a post-grant review.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The POSITA relating to the subject matter of the D’346 patent would possess [a] Bachelor’s degree in industrial design (or a related or equivalent field) and at least ten (10) years of research or work experience related to designing, developing, specifying, testing or analyzing multi-component consumer products (or supervising the same), with experience related to handheld consumer electronic products. Pet. 14. For purposes of this decision, we assume Petitioner is referring to the designer of ordinary skill in the art. See In re Nalbandian, 661 F.2d 1214, 1216 (CCPA 1981) (“In design cases we will consider the fictitious person identified in § 103 as ‘one of ordinary skill in the art’ to be the designer of ordinary capability who designs articles of the type presented in the application.”). Patent Owner has not filed a preliminary response and therefore, at this stage, does not disagree or propose a different definition of the designer of ordinary skill in the art. Based on the limited record in front of us, we determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the designer of ordinary skill in the art.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“incorrect standard, but also lacks credibility because it is internally inconsistent with other parts of his testimony. Mr. Fletcher testifies that it is his understanding that indefiniteness is viewed through the perspective of the ordinary observer, stating the following: I understand that an ordinary observer must be able to understand the scope of an invention with reasonable certainty. If not, a design is indefinite under 35 U.S.C. § 112. It is my understanding that errors and inconsistencies between drawings of a design patent can be indefinite, and thus invalid, if an ordinary observer cannot discern the overall appearance of the claimed design without resorting to conjecture or speculation. Ex. 1003 ¶ 27 (emphasis added). However, his opinions regarding indefiniteness all are in terms of the “POSITA.” Ex. 1003 ¶¶ 32–58; see, e.g., id. ¶ 32 (“The D’346 Patent is indefinite due to the inclusion of conflicting views, which would prevent a POSITA from understanding the claimed design as drawn. . . . A POSITA cannot discern from the D’346 Patent figures what design is actually being claimed.”). Casting further doubt on the reliability of his testimony, Mr. Fletcher does not articulate any definition for the POSITA, which is a necessary foundation for his opinions.4 Mr. Fletcher does not refer to the perspective of the ordinary observer (or even one skilled in the art, viewing the design as would an ordinary observer) in his opinions regarding indefiniteness (Ex. 1003 ¶¶ 32– 58), and we decline to assume his references to the unadorned “POSITA” implicitly encompass the perspective of the ordinary observer. Thus, Mr. Fletcher’s testimony regarding indefiniteness is unhelpful because it utilizes the incorrect perspective.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips - PTAB · Mar 16, 2022 · IPR2021-01496 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood that Pohlert anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the evidence and argument presented in the Petition and determine, for purposes of this Decision, that Petitioner has shown a reasonable likelihood of prevailing with respect to its contention that the subject matter of claim 1 of the ’257 patent is anticipated by Pohlert. Therefore, Petitioner establishes a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose any claim terms for construction. See Pet. 7. For purposes of this Decision, we need not expressly construe any claim terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“2. Analysis of Claim 1 Petitioner alleges that Pohlert anticipates claim 1. Pet. 58. Petitioner asserts that “Pohlert discloses a method for controlling a lighting system having LED ‘light panels’ controlled by a ‘power controller,’ enabling users to select and modify lighting special effects such as patterns of strobing, flashing, and dimming and brightening the lights” as claimed in claim 1. Id. (citing Ex. 1003, Abstract, ¶¶ 20, 50, 63, 67, 103). According to Petitioner, Pohlert’s method “can be used for ‘photography, film, television, and other applications.’” Id. (quoting Ex. 1003 ¶ 3); see also Ex. 1003, Figs. 1, 3 (illustrating both video cameras and still cameras).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“84–89, 94–99) and that Pohlert would have rendered claims 11 and 16 of the ’257 patent obvious (id. at 83–84, 90–94). We have reviewed the evidence and arguments Petitioner provides, including the relevant portions of the Wood Declaration, and determine, on this record, that Petitioner’s challenges to claims 2–21 based on anticipation or, alternatively, obviousness (claims 11 and 16), in view of Pohlert, are adequately supported for institution purposes.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,197,257
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.