- Moleculight, Inc. v. Swift Medical Inc.InstitutedPTAB · Nov 9, 2022 · PGR2022-00041 · APJ Brian D Range · PGR · Institution
The Board instituted PGR of claims 1–20 on all petition grounds, finding it more likely than not that at least one claim is unpatentable under § 102 or § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenges the patentability of claims 1–20 of the ’345 patent under 35 U.S.C. §§ 102 and 103. Patent Owner did not file a preliminary response. We have jurisdiction under 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention would “have had at least a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems.” Pet. 14 (citing Ex. 1004 ¶ 48). Petitioner further asserts that “[a]dditional relevant work experience could substitute for a bachelor’s degree, and additional education or training could substitute for relevant work experience.” Id. We find Petitioner’s proposed definition is consistent with the cited prior art and the disclosure of the ’345 patent. Thus, for purposes of this decision, we determine that a person of ordinary skill in the art as of the date of the invention would have had a bachelor’s degree in engineering with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding 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))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, Petitioner “submits that no explicit construction is necessary when applying the prior art presented,” but notes “the Board may wish to construe ‘a central aperture of the illumination unit’ in claim 5[, construe] ‘proper distance’ in claim 13, and [consider] application of 35 U.S.C. § 112(f) in view of the prosecution history of the ‘345 patent.” Pet. 10. Petitioner also addresses “a central aperture of the illumination unit” as claim 5 recites and “proper distance” as claim 13 recites. Id. at 10–11. Petitioner also addresses the possibility of various terms invoking 35 U.S.C. § 112(f). Id. at 11–13. For purposes of this decision, we determine that claim construction is unnecessary for institution of this post grant review. As we explain herein, Petitioner adequately establishes that it is more likely than not that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable under §§ 102 or 103. This is true whether based on plain and ordinary meaning or based on the various alternatives Petitioner presents when addressing claim construction. Pet. 9–14” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“C. Relevant Law To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,266,345 - PTAB · Sep 12, 2022 · IPR2022-00650 · APJ Brian D Range · IPR · Institution
Instituted IPR on claims 1–3, 5–8, 11–14, and 16 based on the asserted grounds, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’304 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Takeda-322 does not explain how to space adjacent turns of its spiral booster and exciting coils. Ex. 1003 ¶ 75. As explained above, however, Ayala-362 explains how this spacing or pitch should be adjusted in order to optimize inductive coupling, resonant frequencies, and communication. Pet. 17; Ex. 1003 ¶¶ 76–77; Ex. 1006, code (57), 25–26. It has long been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). The present record supports that a person of ordinary skill in the art would have known to choose a pitch for Takeda-322’s various coils as Ayala-362 suggests. The record also supports that such an implementation would have had a reasonable expectation of success. Pet. 19 (providing citations to evidence providing support); Ex. 1003 ¶ 85. As such, the present record adequately establishes that a person of ordinary skill in the art would have reached the “Takeda-322/Ayala-362 smart card” as Petitioner describes it. Pet. 21.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“The Federal Circuit has held that in an inter partes review there are two distinct burdens of proof: the burden of persuasion and the burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to Patent Owner. Id. at 1379. Dynamic Drinkware, however, also establishes that Petitioner has the initial burden of production to show a reference is prior art. Id. Once Petitioner’s burden of production is satisfied, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim terms for construction and contends that “the prior art meets the claim terms under any reasonable interpretation.” Pet. 9. Petitioner also argues that the plain meaning of “pitch” may refer to interturn gap distance (IGD). See Pet. 35–36; see also id. at 5 (explaining IGD). Petitioner also presents an alternative argument in the event that pitch is limited to average center-to-center distance (CCD). Id. at 36–39. As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,304 - Cartessa Aesthetics, LLC / Aesthetics Biomedical, Inc. v. Serendia, LLCInstitution deniedPTAB · Aug 12, 2022 · IPR2022-00593 · APJ Scott Raevsky · IPR · Institution
Institution was denied on the merits because neither asserted obviousness combination showed a reasonable likelihood of rendering claims 1–18 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims. We thus deny institution of 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
“The claims recite, “apply energy to body segments around each electrode rather than to body segments between the electrodes.” Ex. 1001, 10:56–58 (independent claim 1, emphasis added); see also id. at 11:22–25 (independent claim 10). The plain and ordinary meaning of this limitation, as indicated by the phrase “rather than,” precludes applying energy to body segments that extend continuously from one electrode to another electrode. This construction is consistent with the Specification, for example, Figure 5, a copy of which we reproduce below: As shown in Figure 5 of the ’379 patent, energy field 909 occurs around each individual needle 301, without extending from needle-to-needle. See supra § II.B (summarizing Figure 5). The Specification describes certain embodiments in which “the temperature is raised about the tip of each needle, not between needles.” Ex. 1001, 3:32–33 (emphasis added). We understand that by raising the temperature “about the tip of each needle,” while not raising temperature “between needles,” the application of energy would only occur “around each electrode rather than . . . between the electrodes,” as recited in the claims. Id.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Turning to our analysis, we agree with Patent Owner that Petitioner’s own annotated Figures (that is, Mehta’s Figures 13A and 13B) depict energy application that extends continuously between electrodes. As explained above, we construe “apply energy to body segments around each electrode rather than to body segments between the electrodes” to mean that energy application occurs around each electrode without such energy application fully extending from one electrode to another electrode. In other words, the energy application must be configured such that energy application between electrodes does not extend continuously between the electrodes. Instead, Mehta discloses, and Figures 13A and 13B depict, fractional lesions 2 that extend continuously between pairs of electrode probes 105. See Mehta ¶ 241 (referencing Figure 13A); see also id. ¶ 242 (referencing Figure 13B). Mehta discloses that Figures 13A and 13B “show[] an example illustration of an array of probes 108 comprising five electrode pairs 105 inserted into a reticular dermis layer 19 to create a series of discrete fractional lesions 2 leaving tissue in the adjacent epidermal layer 16 and subcutaneous layer 12 undamaged.” Id. ¶ 241; see also id. ¶ 242. Mehta explains that “[t]his is accomplished by passing current 107 between adjacent electrodes 104 of opposite polarity in the electrode pair.” Id. ¶ 241. We refer again to Petitioner’s annotated copy of Mehta Figure 13A, below: As we noted above, Mehta’s Figure 13A above depicts energy application by five bipolar electrodes. Pet. 47; Ex. 1005 ¶¶ 173, 243. Petitioner’s annotation (1) asserts that no energy is deposited in body segments between each electrode, and depicts a green highlighted section between the first pair of bipolar electrodes. Pet. 47. This annotation is unpersuasive because below it in red, energy concentration is shown between that electrode pair. Consequently, energy is applied to body segments between those electrodes, so it is not the case that energy is applied around each of those electrodes “rather than”—i.e., instead of—“body segments between the electrodes.”” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityOther
“To that end, our reviewing court and this Board repeatedly point to the case of In re Wyer, 655 F.2d 221 (CCPA 1981) for the proposition that a video is a “printed publication” so long as it is publicly accessible. There, the court explained that “printed publication” should be approached as a unitary concept. The traditional dichotomy between “printed” and “publication” is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the “probability of dissemination” of an item very often has little to do with whether or not it is “printed” in the sense of that word when it was introduced into the patent statutes in 1836. . . . [T]he printed publication provision was designed to prevent withdrawal by an inventor, as the subject matter of a patent, of that which was already in the possession of the public. Thus, the question to be examined under [the statute] is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded. Id. at 226 (emphases added). In other words, accessibility to the relevant public is the “criterion” by which a prior art reference is judged when resolving the “printed publication” inquiry, not whether the reference is “printed” in the word’s strictest sense. See In re Klopfenstein, 380 F.3d 1345, 1350 n.2 (Fed. Cir. 2004).” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,058,379 - Amcol International Corp. v. Oil-Dri Corporation Of AmericaInstitution deniedPTAB · Jun 10, 2022 · IPR2022-00206 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner did not show that House disclosed the construed “removably clumpable” limitation required by the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“purposes of institution, that House discloses the “removably clumpable” limitation when using the claim construction that Patent Owner proposes and that we adopt above. That construction requires “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed,” but Petitioner provides no argument or evidence to support any conclusion that House discloses a mixture having such a clump strength. See Pet. 53–55. Instead, Petitioner assumes that its broader claim construction of “removably clumpable” applies, and does not attempt to show that House discloses the limitation using a narrower construction such as the construction we adopt here. See id. Patent Owner correctly points out that such a showing fails to establish that House discloses a “removably clumpable” mixture as the claims require because a “litter that clumps does not necessarily mean it is ‘removably clumpable’” under the proper construction. Prelim. Resp. 18– 19. Because all of Petitioner’s challenges depend on the assertion that House alone discloses the “removably clumpable” limitation in independent claims 1 and 10, Petitioner’s failure to establish, for purposes of institution, that House discloses the limitations fatally undermines its challenges. Based on the foregoing, we determine that Petitioner has not established sufficiently that House anticipates any of the independent claims or that the combination of House and Goss renders any of the challenged claims unpatentable. Accordingly, Petitioner has not demonstrated a reasonable likelihood of establishing the unpatentability of any challenged claim.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“determine that “removably clumpable” in independent claims 1 and 10 refers to a mixture having “a clump strength of ≤ 1.33 using the Standard Drop Method Test” in addition to the other aspects of the “removably clumpable” definition provided in the specification. See Ex. 1001, 5:24–36. The claim language, standing alone, sheds little light on this issue because it merely refers to a “removably clumpable” mixture. See id. at 50:4, 50:33. The specification provides further guidance as to the scope of the limitation because the applicant operated as its own lexicographer in defining the limitation in the specification. See id. at 5:24–36. Petitioner relies on the first sentence of the paragraph addressing “removably clumpable” in the specification, while Patent Owner relies on the entire paragraph in its proposed construction. See Pet. 18; Prelim. Resp. 12–13. We conclude that the definition of “removably clumpable” includes the phrase “a clump strength of ≤ 1.33 using the Standard Drop Method Test” for two reasons. First, the phrase appears within a paragraph devoted to addressing “removably clumpable” within a section of the specification titled “Definitions,” which at least suggests that the entire paragraph should be treated as definitional. See Ex. 1001, 3:63, 5:24–36. Second, as Patent Owner correctly points out, the use of the term “i.e.” just prior to the phrase signals an intent to define the limitation. See id. at 5:33–35 (“A litter that is removably clumpable, i.e., has a clump strength of ≤ 1.33 using the Standard Drop Method Test.”). This approach comports with cases finding that the use of “i.e.” in a specification indicates an intent to define the limitation in question.3” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“purposes of institution, that House discloses the “removably clumpable” limitation when using the claim construction that Patent Owner proposes and that we adopt above. That construction requires “a clump strength of ≤ 1.33 using the Standard Drop Method Test . . . 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed,” but Petitioner provides no argument or evidence to support any conclusion that House discloses a mixture having such a clump strength. See Pet. 53–55. Instead, Petitioner assumes that its broader claim construction of “removably clumpable” applies, and does not attempt to show that House discloses the limitation using a narrower construction such as the construction we adopt here. See id. Patent Owner correctly points out that such a showing fails to establish that House discloses a “removably clumpable” mixture as the claims require because a “litter that clumps does not necessarily mean it is ‘removably clumpable’” under the proper construction. Prelim. Resp. 18– 19. Because all of Petitioner’s challenges depend on the assertion that House alone discloses the “removably clumpable” limitation in independent claims 1 and 10, Petitioner’s failure to establish, for purposes of institution, that House discloses the limitations fatally undermines its challenges. Based on the foregoing, we determine that Petitioner has not established sufficiently that House anticipates any of the independent claims or that the combination of House and Goss renders any of the challenged claims unpatentable. Accordingly, Petitioner has not demonstrated a reasonable likelihood of establishing the unpatentability of any challenged claim.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“C. Anticipation and Obviousness Challenges Petitioner argues that House anticipates claims 1–5, 8, 10–14, and 16, and that the combination of House and Goss renders those same claims obvious. Pet. 3, 22–69. For both challenges, Petitioner relies solely on House as disclosing the “removably clumpable” limitation. See id. at 53–55, 63. Petitioner’s obviousness challenge assumes that House does not anticipate because House does not disclose “sodium bentonite” and “wherein sodium bentonite comprises at least 47% of the total external surface area of the mixture” based on the particle size distributions provided in House. Id. at 63. Petitioner does not argue that the claims would have been obvious even if House fails to disclose the “removably clumpable” limitation, or otherwise argue that the combination of House and Goss discloses the limitation even if House alone fails to do so. Id. Accordingly, Petitioner’s challenges turn on whether House alone expressly discloses the “removably clumpable” limitation.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,439,393 - Askeladden L.L.C. v. Aml IP LLCInstitution deniedPTAB · May 11, 2022 · IPR2022-00319 · APJ Michael L Woods · IPR · Institution
The Board denied institution on all grounds and claims 1–13 because the Petition did not show a reasonable likelihood that Armes, alone or with Steury or Maritzen, rendered the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to satisfy both the “bridge computer” and at least one “service provider computer,” we do not see how the method steps recited in limitations B, Ci, and Cii are satisfied. Petitioner’s attempt to satisfy these steps with Armes’s card provider 3 computer (i.e., as the “bridge computer”) raises multiple questions that persuade us Petitioner has not demonstrated by a reasonable likelihood that these limitations are satisfied. For example, to satisfy the recited “service providers,” Petitioner relies on “incentive rewards [or MR] companies.” Pet. 25 (citing Ex. 1005 ¶¶ 52, 59, 87); see also id. at 40 (relying on MR company to satisfy limitation B); see also id. at 41 (relying on MR company to satisfy limitation Ci); see also id. at 43 (relying on MR company to satisfy limitation Cii). Petitioner also cites to the testimony of Mr. Zatkovich. See, e.g., id. at 39– 41 (citing Ex. 1002 ¶¶ 120–124). The Petition does not clearly explain how Armes’s “bridge computer” (i.e., the card provider’s computer system) makes a “determin[ation] from among the plurality of service providers,” however, when the card provider itself is a service provider. The testimony of Mr. Zatkovich does not relieve our confusion. Mr. Zatkovich’s testimony merely parrots, verbatim, that which is in the Petition. Compare Ex. 1002 ¶¶ 120–124, with Pet. 39–41. Although Petitioner and Mr. Zatkovich cite to Armes, the citations are to disjointed disclosure whose relevance is not clearly apparent. See Fritch, 972 F.2d 1266 (“one cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art”); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”). For instance, Mr. Zatkovich cites to both Armes’s back end application service 8 and STN system 18 for performing the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider.” See Ex. 1002 ¶¶ 122, 124; see also Pet. 40; see also supra § I.D. It is not clear to us, however, how “STN system 18” and “backend application service 8”—both acting as the “bridge computer”—perform the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider,” as recited in claim 1. In support of his assertions, Mr. Zatkovich quotes Armes’s disclosure that “CAS 7 recognizes the transaction as involving a STN 15, and forwards the request to the STN system 18” (Ex. 1002 ¶ 122, citing Ex. 1005 ¶ 109)) and “backend application service 8, upon receiving a STN 15, recognizes the associated PPC originated with another card issuer 92” (Ex. 1002 ¶ 124 (citing Ex. 1005 ¶ 95)). Even if “CAS 7 recognizes the transaction as involving a STN 15,” for example, we do not see this as performing the step of “determining whether the given vendor is associated with the same service provider,” as Petitioner asserts. See Pet. 40. As explained above, Armes uses STNs to improve credit card security (supra § II.D.1), and the computer system’s mere recognition that “the transaction [] involve[es] a STN” is not a determination of “whether the given vendor is associated with the same service provider.”” slip op. at 36
- Skill levelSkill level board ownDecided for patent owner
“We are not persuaded that a POSITA “would have at least one or two years of experience with payment or credit systems,” as Petitioner proposes (see Pet. 17), or “would have at least a Master of Science [] Degree . . . or equivalent work experience in the field of computer networks,” as Patent Owner proposes. See Prelim. Resp. 6. Rather, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed level of skill. For purposes of this Decision, we find that a POSITA at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study along with knowledge of the general structure of payment or credit systems, its hardware and software components.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“Both parties acknowledge and agree with the final Claim Construction Order. See Pet. 14; see also Prelim. Resp. 4. We further note that the claims of the ’979 patent “shall be construed using the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021). For purposes of this Decision, we consider and adopt the District Court’s claim construction of “bridge computer” in our analysis. Id. (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). 2. “service provider” In the Claim Construction Order, the court concluded that the term “service provider” shall mean “a business that provides internet-related services to customers.” Ex. 1017, 1. Petitioner does not propose a construction of this term. See Pet. 11– 16. Patent Owner, on the other hand, expounds upon the District Court’s claim construction, submitting that there are two different types of “service providers”: (1) “A service provider of [the] type may maintain a virtual presence on the web in the form of a web site”; and (2) one that “may offer on-line access to customers (e.g., broadband or dial-up Internet access using an Internet account associated with the service).” See Prelim. Resp. 4–5. Patent Owner does not dispute the District Court’s interpretation, however, and acknowledges that “[t]hese different types of service providers are referred to collectively herein as ‘service providers’ or ‘Internet service providers’.” Id. 5. For purposes of this Decision, we consider and adopt the District Court’s claim construction of “service provider” in our analysis. 37 C.F.R. § 42.100(b).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Specifically, we agree with Patent Owner that Petitioner improperly uses hindsight “to pick and choose among isolated disclosures in [Armes] to deprecate the claimed invention.” Prelim. Resp. 28 (quoting In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988))); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”).” slip op. at 34
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,876,979 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01173 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Weiss-based grounds teach or suggest the claimed residual marine fuel oil.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 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.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 12–31. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum 10 Petitioner defines “HSFO” as being a “high-sulfur HMFO” and “LSFO” as being a “low-sulfur HMFO.” Pet. 1. product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974 or obvious over the combination of Weiss ’974 and Weiss ’515.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,584,287 - Lti Flexible Products, Inc. D/B/A Boyd Corporation v. The Regents Of The University Of CaliforniaInstitutedPTAB · Jan 11, 2022 · IPR2021-01189 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that MacDonald anticipates claims 1–13 and that MacDonald with Ding renders claims 2, 3, and 7 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition, Preliminary Response, Reply, and Sur-reply and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–13 of the ’728 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“figures and substantively identical specifications. See Pet. 16, 26; Prelim. Resp. 21; Ex. 1012 ¶¶ 75–76. We agree with Petitioner that the Specifications of the parent applications, MacDonald, and the ’728 patent (“the common Specification”) do not disclose expressly the claimed pitch range of 5–500 microns. We also agree with Petitioner that the pitch range must be derived from the disclosed values of diameter of the pillars and spacing between pillars. Pet. 3, 18–22; Ex. 1012 ¶¶ 98–112, 123–129. We further agree with Petitioner that none of the derived pitch ranges aligns perfectly with the claimed pitch range. Pet. 21, 23; Ex. 1012 ¶ 120. Petitioner presents sufficient argument and evidence that the common Specification may not provide sufficient “blaze marks” for the claimed pitch range and that the derived pitch ranges may not reasonably convey to one of ordinary skill in the art the claimed pitch range. Pet. 17–26; Ex. 1012 ¶¶ 92– 140. Patent Owner disputes, at least, whether the common Specification provides adequate “blaze marks” and whether the derived pitch ranges would reasonably convey the claimed pitch range. Prelim. Resp. 11–18. The parties’ dispute presents a factual issue that would benefit from a fuller record developed at trial. Gen. Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1371 (2018) (“Sufficiency of written description is a question of fact.”).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artOther
“Petitioner contends that MacDonald is prior art under § 102(a)(1) because MacDonald was published a year before the filing date of the application that issued as the ’728 patent. Pet. 7. If the ’728 patent is entitled to the benefit of the filing dates of the PCT and ’111 applications (collectively, “the parent applications”), then MacDonald would not qualify as prior art, as argued by Patent Owner. Prelim. Resp. 27–28.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“3. Claims 1–13 Petitioner argues with citations to MacDonald and declarant testimony that, because MacDonald has the same figures and substantively same Specification, MacDonald anticipates independent claims 1 and 9. Pet. 26– 37, 53–58. In particular, for the claimed pitch range, Petitioner argues that, because MacDonald discloses pillar spacings between 1–500 microns and pillar diameters between 5–500 microns, MacDonald discloses, at least, two pitches of 6 microns and 253.5 microns, both of which are in the claimed pitch range. Id. at 36 (citing Ex. 1012 ¶¶ 176–178). For dependent claims 2–8 and 10–13, Petitioner argues with citations to MacDonald and declarant testimony that MacDonald discloses all their limitations. Id. at 37–53, 58– 62. Other than the arguments discussed above regarding written description and effective filing date, Patent Owner does not argue that Petitioner fails to show that MacDonald discloses the limitations of claims 1 and 9. See generally Prelim. Resp. Patent Owner also does not provide separate arguments for the challenged dependent claims. See generally id. Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its anticipation challenge of dependent claims 1– 13.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,309,728 - Machinex Industries, Inc. v. JJG IP Holdings, LLCAll claims unpatentablePTAB · Oct 4, 2021 · IPR2020-00899 · APJ Michael L Woods · IPR · Final written decision
Claims 1–16 are unpatentable under the asserted §103 grounds, including combinations based on Carlsohn and Arleth.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). citations will be to the exhibits’ page numbers, rather than the native page numbers. 4 By e-mail communication from the Board on June 25, 2020, we authorized Petitioner to file a corrected Exhibit 1008. Our reference to Exhibit 1008 is to the corrected, second-filed exhibit, filed on July 7, 2020. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we determined that a person having” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“plain and ordinary meaning, and determined that the plain and ordinary meaning of “proximate” is “nearby. Inst. Dec. 18. Accordingly, we construed “disposed proximate to a visible or infrared source,” as recited in Limitation 1(c), to mean “disposed nearby” the visible or infrared source. See id. We further note that during prosecution of the ’346 patent, the applicant acknowledged that the term “‘proximate’ is broad in its scope.” See Ex. 1020, 70 (emphasis added).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. Relevant Law Petitioner bears the burden of establishing by a preponderance of the” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Independent Claim 1 We address the claim limitations using Petitioner’s nomenclature as” slip op. at 41
Patent outcomesUS 9,950,346 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,950,346 - PTAB · Sep 24, 2021 · IPR2021-00646 · APJ Michelle N Ankenbrand · IPR · Institution
The Board instituted IPR on claim 20 based on a reasonable likelihood that Ter-Hovhannisyan anticipates or renders it obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect claim 20. Accordingly, we institute an inter partes review.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“After the Petition was filed, Patent Owner disclaimed claims 1–19 of the ’816 patent. See Prelim. Resp. 3; Ex. 2001. Thus, this decision addresses only claim 20 of the challenged patent. 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) . . . disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’816 patent would have [had] at least a bachelor’s degree in an engineering discipline and approximately three years of experience working on LED lighting technology and designs, including experience with thermal design and heat dissipation.” Pet. 7 (citing Ex. 1003 ¶ 53). Petitioner further asserts that “[r]elevant work experience could substitute for formal education and post-graduate education could substitute for work experience.” Id. (citing Ex. 1003 ¶ 53).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ter-Hovhannisyan discloses the annulus limitation, we consider claim 20’s remaining limitations. Petitioner asserts that Ter-Hovhannisyan discloses or would have rendered obvious claim 20’s remaining limitations. Pet. 43–44, 46 (citing Pet. 12, 20–28, 40–42 (Petitioner’s analysis for similar claim limitations recited in claim 1)). At this stage of the proceeding, Patent Owner does not separately address these limitations. We have reviewed Petitioner’s arguments (in the context of claim 20) and Dr. Bretschneider’s testimony and find that Petitioner shows sufficiently that Ter-Hovhannisyan anticipates or would have rendered obvious claim 20. Thus, Petitioner demonstrates a reasonable likelihood of prevailing in its challenge.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,985,816 - Louisiana-Pacific Corporation v. Huber Engineered Woods LLCNo claims unpatentablePTAB · Oct 5, 2020 · IPR2019-00919 · APJ Michael L Woods · IPR · Final written decision
Claims 1–20 were not shown unpatentable: APA does not disclose the claimed panel-joint sealant, and the proposed combinations fail to establish the required limitations or motivation to combine.
RulingsFinal written decision- BurdenNot shown unpatentable
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 32
- Skill levelSkill level board ownOther
“In our Decision to Institute, we determined that a POSITA “would have had a degree in civil engineering, building, material, wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein.” Inst. Dec. 14. We further determined, “Additional education, such as an advanced degree, could offset less work experience, and additional work experience could offset less education or coursework.” Id. Patent Owner adopts the level of a POSITA set forth in our Decision to Institute. PO Resp. 13 (“HEW adopts the Board’s definition of a POSA.”). Petitioner does not address our definition in its Reply. See generally Pet. Reply. We maintain the level of a POSITA that we provided in our Decision to Institute.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1. Claim 11 Independent claim 11 recites the step of “positioning” wall panels, where each panel comprises a “barrier layer.” Ex. 1001, 22:49–63. The claim further requires the separate step of “fastening” each panel assembly to a building structure. Id. As a matter of logic, the panels cannot be fastened onto the structure until they have first been positioned. See Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398– 99 (Fed. Cir. 2014) (“[A] claim ‘requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires’ an order of steps.”). Accordingly, claim 11’s step of “positioning at least two wall panel assemblies” occurs before the step of “fastening each panel assembly to the structure.” Id.; see also Ex. 1001, 3:59–61, Fig. 10 (depicting a flow diagram of the steps included in the manufacture of a panel for roof or wall sheathing). Furthermore, because the “positioning” step of the claim requires each of its panels to have “a barrier layer secured to the outer surface of each panel,” it logically follows that the panels have barrier layers before the panels are fastened to the structure. For the foregoing reason, we interpret claim 11 to require the “adjacent structural wall panels” to each have a “barrier layer secured to the outer surface of each panel” before the panels are fastened to the structure, and before the joint between the edges of the adjacent panels are sealed.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Despite the disagreement between Patent Owner and Petitioner regarding the meaning of the claimed “barrier layer secured to the outer surface of each panel,” construing this claim phrase is not necessary for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’” (internal citation omitted)). Rather, we determine that the only claim that requires construction is method claim 11.” slip op. at 11
Patent outcomesUS 9,546,479 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,546,479
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.