- Azurity Pharmaceuticals, Inc. v. Exelixis Inc.Institution deniedPTAB · Jun 4, 2025 · IPR2025-00210 · APJ Jeffrey N Fredman · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving claims 1–3 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that on the current record Petitioner has not shown that the combination of Brown, Kubo, and Remington would inherently result in less than 200 ppm impurity and Petitioner has not shown that it has a reasonable likelihood that it would prevail on the obviousness ground.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“Here, there is no dispute that the ’349 patent and Wilson, which issued from a patent application from which priority was claimed for the ’349 patent, share the identical disclosure of a pharmaceutical composition comprising Compound IA or IB; one or more fillers; one or more disintegrants; one or more glidants; and one or more lubricants. In this embodiment, the filler comprises microcrystalline cellulose. In this embodiment, the disintegrant comprises croscarmellose sodium. In this embodiment, the disintegrant comprises croscarmellose sodium and sodium starch glycolate. In this embodiment, the glidant comprises fumed silica. In this embodiment, the lubricant comprises stearic acid. Ex. 1001, 21:1–12; Ex. 1002, 20:51–62. There is express ipsis verbis disclosure of the elements recited in claim 1 of the ’349 patent.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“1. Reason to reduce contaminant levels We agree with Patent Owner that Petitioner identifies no teaching in the prior art providing any reason to reduce levels of 6,7-dimethoxy-quinoline-4-ol specifically. And while Brown does teach a desire to form “substantially pure” compounds, Brown focuses on “at least about 90 wt.%” of the compound, then lists specifically “about 90, about 91, about 92, about 93, about 94, about 95, about 96, about 97, about 98, about 99 and about 100% wt. %.” Ex. 1003 ¶ 97. This permits a range of concentration for contaminants from about 0 to 10%.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“to modify Brown’s process with Kubo to eliminate the added step. See, e.g., Id. ¶ 73. But even with that combination, Dr. Dichtel states only that a “POSA would have expected there to be a decrease in the amount of 6,7- dimethoxy-quinoline-4-ol at the end of cabozantinib (L)-malate’s synthesis that was attributable to hydrolytic degradation of the 4- (nitrophenoxy)quinoline intermediate by avoiding its use in the synthesis.” Id. ¶ 78. That is not, however, the standard for inherency. It must be the necessary result, not a possible expected result. The Federal Circuit in Par explained that: Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,298,349 - PTAB · Feb 26, 2025 · IPR2024-01199 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim based on the preliminary record.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a). 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 [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, Reply, Sur-reply, and evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Director review) (precedential). Here, we determine that Fintiv factor 1 is neutral, factors 2 through 4 all weigh against exercising our discretion to deny institution, and factor 5 weighs in favor of discretionary denial. Accordingly, when considered in combination, Fintiv factors 1–5 do not favor discretionary denial, and we do not consider the question of compelling merits. 7. summary We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6; Guidance Memorandum. On this record, after weighing all of the factors and taking a holistic view, we determine that the facts presented weigh against exercising our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’053 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’053 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need 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 Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,878,053 - PTAB · Feb 26, 2025 · IPR2024-01203 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–12 on all petitioned grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a). 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 [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, Reply, Sur-reply, and evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential). Here, we determine that Fintiv factor 1 is neutral, factors 2 through 4 all weigh against exercising our discretion to deny institution, and factor 5 weighs in favor of discretionary denial. Accordingly, when considered in combination, Fintiv factors 1–5 do not favor discretionary denial, and we do not consider the question of compelling merits. 7. summary We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6; Guidance Memorandum. On this record, after weighing all of the factors and taking a holistic view, we determine that the facts presented weigh against exercising our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this record, we disagree and determine that Petitioner has established a reasonable likelihood that the skilled artisan would have modified Froitzheim in view of Gan’s teachings. Petitioner may rely on Gan 14 Jon-Yiew Gan, Polysilicon Emitters for Silicon Concentrator Solar Cells (July, 1990) (Ph.D. dissertation, Stanford University) (Ex. 2003, “the Gan Thesis”). for all that it teaches to show obviousness, which is “consistent with the longstanding principle that the prior art must be considered for all its teachings, not selectively.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d. 1324, 1332 (Fed. Cir. 2019). Here, Gan appears to broadly suggest that replacing a diffused-emitter with a polysilicon emitter improves solar cell performance. For example, Gan states that “[t]he cell performance can be improved if the diffused-emitter is replaced with the polysilicon emitter, of which the Jo is less than 4.5 x 10-13 A/cm2 and the pc is low enough.” Ex. 1005, 1. Patent Owner does not direct us to anything in Gan that suggests its teachings are inapplicable to conventional solar cells. See generally Prelim. Resp. In contrast, Gan’s introduction states that “[p]olysilicon emitters, because of their important applications in high speed bipolar transistors, have been widely studied,” which indicates broad applicability. Ex. 1005, 245. Further, Dr. Holman testifies that “although Gan references a concentrator solar cell—a category of solar cells that uses lenses, mirrors, and other components to focus (i.e., concentrate) sunlight on a cell (Ex.1016-Komp, 56–58)—a person of ordinary skill in the art would have understood that Gan’s teachings are equally applicable to non-concentrator solar cells.” Ex. 1003 ¶ 131. Dr. Holman declares that Gan’s “polysilicon emitter and oxide layer structure is ‘useful for silicon solar cells’” and “[p]ersons of ordinary skill in the art frequently looked at various solar cell designs and related technologies when evaluating how to improve a solar cell’s efficiency, which is exactly what Gan did when evaluating how to improve a cell’s design.” Id.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner also states that “[f]or purposes of this Preliminary Response, [Patent Owner] applies [Petitioner’s] level of ordinary skill.” Prelim. Resp. 6. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’516 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’516 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,222,516 - Posco Future M Co., Ltd. v. Camx Power LLCInstitution deniedPTAB · Feb 5, 2025 · IPR2024-01229 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was anticipated or obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“First, we look to the words of the claims themselves . . . to define the scope of the patented invention.”). Claim 1 recites a particle that comprises (1) a plurality of crystallites comprising (a) a first composition (i) having a layered α- NaFeO2-type structure and (ii) comprising lithium, nickel, and oxygen; and (2) a grain boundary between adjacent crystallites of the plurality of crystallites and comprising (a) a second composition (i) having the layered α-NaFeO2-type structure, a cubic structure, or a combination thereof, and (ii) a concentration of cobalt in the grain boundary greater than a concentration of cobalt in the crystallites. The plain language of claim 1 thus indicates that the grain boundary has a composition (i.e., a “second composition”) distinct from that of the adjacent crystallites (i.e., a “first composition”), and that the grain boundary may have the same structure (i.e., a layered α-NaFeO2-type structure) or a different structure (i.e., a cubic structure, or a combination of a cubic structure and a layered α-NaFeO2-type structure) than the adjacent crystallites. The plain language of claim 1 thus structurally distinguishes the grain boundary from the adjacent crystallites by specifying that the grain boundary has a concentration of cobalt greater than that of the concentration of cobalt in the crystallites.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable
“Petitioner, however, does not provide any evidence to establish that any such identity of empirical formulas means that Lampe-Onnerud’s cathode material necessarily has the same microstructure as the particle of claim 1. In particular, even if the empirical formula of Lampe-Onnerud’s core material is the same as that of the ’317 patent’s first composition, Petitioner does not provide evidence establishing that it necessarily follows that Lampe-Onnerud’s core is a polycrystalline material having a plurality of crystallites separated by grain boundaries between adjacent crystallites. Nor does Petitioner provide evidence establishing that it necessarily follows from any identity between the empirical formula of Lampe-Onnerud’s coating material and the ’317 patent’s second composition that Lampe-Onnerud’s coating material necessarily is present in grain boundaries at a higher concentration than in crystallites, assuming that Lampe-Onnerud’s material is comprised of a plurality of crystallites having grain boundaries between adjacent crystallites. Furthermore, although Petitioner’s declarant, Dr. Aurbach, indicates that Lampe-Onnerud’s process “begins with a conventional lithium nickel oxide-base material . . . known to be comprised of secondary articles having agglomerated primary particles and grain boundaries,” Dr. Aurbach does not provide any objective evidence to substantiate this asserted knowledge in the art. Ex. 1002 ¶ 110. We, therefore, accord little weight to Dr. Aurbach’s opinion on this issue. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Furthermore, although Petitioner’s declarant, Dr. Aurbach, indicates that Lampe-Onnerud’s process “begins with a conventional lithium nickel oxide-base material . . . known to be comprised of secondary articles having agglomerated primary particles and grain boundaries,” Dr. Aurbach does not provide any objective evidence to substantiate this asserted knowledge in the art. Ex. 1002 ¶ 110. We, therefore, accord little weight to Dr. Aurbach’s opinion on this issue. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,391,317 - PTAB · Oct 16, 2024 · IPR2023-01218 · APJ Avelyn M Ross · IPR · Director review
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Astera and Edwards anticipate or render the claims obvious.
RulingsDirector review decision- Director reviewOther
“under 35 U.S.C. § 314(a), to deny the Petition because it challenges a patent that was previously challenged before the Board. Paper 9; see generally IPR2022-00099 (challenging the ’944 patent). On April 19, 2024, the Director of the United States Patent and Trademark Office granted Director Review, vacated our prior decision, and remanded the case for further proceedings. Paper 12. We have authority to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, we institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any claim terms for construction.5 See Pet. 10; Prelim. Resp. 3–4. 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 Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 10. Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See generally Prelim. Resp. On this record, Petitioner’s proposed definition appears consistent with the prior art of record and we apply it for purposes of this Decision.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims is anticipated by or would have been obvious over the asserted prior art.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,845,044 - Voltage, LLC v. Shoals Technologies Group, LLCInstitution deniedPTAB · Sep 30, 2024 · PGR2024-00022 · APJ Michael G Mcmanus · PGR · Institution
The Board denied institution on claims 1–24 because Voltage did not show that any challenged claim was more likely than not unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute a post-grant review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). A post-grant review may not be instituted “unless. . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that Petitioner has not demonstrated that the ’153 patent is eligible for post-grant review. Accordingly, we decline to institute a post-grant review of claims 1–24 based on the grounds articulated in the Petition.” slip op. at 2
- Skill levelOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, for purposes of this institution decision, and on the present record, we determine that the adoption of either party’s proposal regarding requisite work experience would not change our analysis or conclusions. C. Claim Construction” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The parties put forward several terms for construction. Pet. 14–17; Prelim. Resp. 9–12. With respect to Grounds I through VII, we have determined that no claim constructions are required in order to address the points at issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy” (internal citation omitted)). Claim construction is required to resolve certain issues arising in connection with Ground VIII. Accordingly, we construe certain terms in our discussion of that ground, infra.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“through the undermold.” The term “aperture only partially extending through said undermold” was added to the claims of the ’254 parent application by amendment. Ex. 1021, 103–105; Ex. 1020, 6:60–8:47. With this amendment, the claims of the ’254 patent align with Figure 7, reproduced below. Figure 7 of the ’254 Patent (Figure 7 of the ’153 patent is identical to Figure 7 of the ’254 patent except for minor stylistic changes). As can be seen, the aperture occupied by drop line 12 extends partially through the undermold to compression lug 20 while the aperture occupied by feeder cable 14 extends completely through the undermold. This suggests a construction of “aperture extending partially through the undermold” where such aperture does not extend completely through the undermold. Such a construction of “aperture extending partially through the undermold” is consistent with the plain meaning of “extending partially.”” slip op. at 62
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,689,153 - Tesla, Inc. v. Relink US LLCInstitution deniedPTAB · Jul 16, 2024 · IPR2024-00389 · APJ Jane E Inglese · IPR · Institution
The Board denied institution on all grounds because neither Serban nor Somani sufficiently showed the claimed inverter and controller functionality.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that Petitioner does not provide a sufficient showing to establish that Serban discloses a current-source inverter and a controller, each configured as required by the challenged independent claims. Our reasoning is two-fold. First, Petitioner does not directly address the claim requirement that the current-source inverter is configured to adjust an output power as a function of a frequency of the alternating current voltage source. Second, Petitioner’s characterization of select disclosures from Serban is inconsistent with Serban’s disclosure as a whole. We address these shortcomings below.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“(“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revisions to 35 U.S.C. § 100 et seq., because its earliest effective filing date is July 28, 2015. Ex. 1001, code (22). “[U]nder the AIA, a reference patent document need only meet the ‘ministerial requirements’ of §§ 119 and 120, and the Provisional or other earlier application(s) to which the reference patent document claims a right of priority must ‘describe[] the subject matter’ relied upon in the reference patent document as prior art. 35 U.S.C. § 102(d)(2).” Penumbra, Inc. v. RapidPulse, Inc., IPR2022-00608, Paper 34 at 29–31 (PTAB Mar. 10, 2023) (designated precedential in relevant part (§ II.E.3)).” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“held at least a bachelor’s degree and a master’s degree in electrical engineering or a related degree, as well as possessing at least two years of experience with grid-tied power supplies having electric energy sources including photovoltaic and battery systems.” Pet. 15 (citing Ex. 1003 ¶ 23). Petitioner further asserts that a “POSA [person of ordinary skill in the art] would have been familiar with the admitted prior-art systems of Figures 1 and 2 [of the ’755 patent] and associated descriptions of those systems.” Id. (citing Ex. 1001, 1:28–36, 1:66–2:2, 5:42–47).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner states that it “applied plain and ordinary meanings to all claim terms and no express constructions are required here.” Pet. 15 (citing Ex. 1003 ¶ 101). Patent Owner does not address claim construction. See generally Prelim. Resp. Taking into consideration the arguments and information Petitioner and Patent Owner present, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,793,755 - Motif Foodworks, Inc. v. Impossible Foods, Inc.All claims unpatentablePTAB · Jun 12, 2024 · IPR2023-00206 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–12 and 14–24 are unpatentable as obvious over Giacino, Proulx, and Conrad, with Perret or MacLeod for certain dependent claims; the Board did not reach other grounds.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“The District Court’s claim construction for the term “compound” is shown below. Ex. 2016, 8–11. Claim Term District Court Construction The “sulfur compound” limitation must be satisfied by a compound that is present compound10 separately from a protein; “compound” will not be construed as being limited to compounds used as flavor precursors The District Court’s claim construction order cites to U.S. Patent 11,013,250 (the ’250 patent”) as representative of the ’096 patent and other related patents involved in the District Court litigation. See Ex. 2016, 7 (“Claim 1 of the ʼ250 patent claims is generally representative for purposes of the parties’ dispute.”). The District Court determined that plant proteins 10 Ex. 2016, 9, 11 (citing Ex. 1001, 15:26–27).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“24. Pet. 20–26. Focusing on independent claim 1’s limitation “a compound selected from cysteine, cystine, thiamin, methionine, and mixtures of two or more thereof,” Petitioner asserts Brown’s disclosure of “pea flour” meets this limitation because “pea flour contains cystine, thiamine, and methionine.” Id. at 22–23 (citing Ex. 1012 (Brown) ¶ 364; Ex. 1003 (Tarte) ¶¶ 121–125; Ex. 1050/Ex. 1059 (Jahreis), 39, 41, 86; Ex. 1106, 3, 6–7). Petitioner qualifies that its mapping of “pea flour” to this claim limitation is based on the interpretation of “compound” as “not . . . limited to free compounds.” Id. at 22 n.7. Specifically, Petitioner states that the mapping is based on Brown’s “pea flour, which contains proteins having the claimed sugar and sulfur compounds.” Id. at 12; see Ex. 1003 ¶ 105 (reiterating this statement). Brown states, in pertinent part, “[a] muscle replica comprising pea flour, sunflower oil, and glucose.” Ex. 1012 ¶ 364. Dr. Tarté states in his declaration that a person of ordinary skill “would have understood that pea flour includes cystine, methionine, and thiamine.” Ex. 1003 ¶¶ 121–125. On cross-examination, Dr. Tarté stated that this mapping to the claim is based on an understanding that Brown’s proteins satisfy the sulfur compound limitation. Ex. 2032, 33:19–34:12; 98:11–99.9 (“[I]n as much as . . . Patent Owner considers proteins to satisfy the sulfur compound claim, then . . . the pea protein flour of Brown also satisfies the [sulfur] compound claim.”), 117:9–118:8. Patent Owner asserts that the Petition’s anticipation ground must fail if the claimed compound limitation does not extend to proteins. PO Resp. 13. Because we adopt the District Court’s construction of the claim term “compound,” Petitioner’s contention that Brown anticipates the ’096 patent necessarily fails. See Verdegaal Bros., 814 F.2d at 631 (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). Petitioner concedes that the viability of this ground depends on construing the term “compound” to include whole proteins, and has failed to present evidence in this proceeding that Brown discloses a sulfur compound that is separate from a protein. Tr. 50:21–52:13 (Petitioner’s counsel conceding that the anticipation ground is not viable under the District Court’s claim construction for “compound”). Thus, Petitioner has not shown by a preponderance of the evidence that claim 1 is unpatentable as anticipated by Brown.” slip op. at 19
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“The analogous-art test requires a showing that a reference is either in the field of endeavor of the challenged patent or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for unpatentability. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Patent Owner argues that Petitioner fails to establish Crane as analogous art under this legal framework. PO Resp. 36–40; PO Sur-Reply 1–2. First, Patent Owner asserts Crane is not “from the same field of endeavor” as the ’096 patent. Id. at 37 (citing Ex. 2030 (Qian Decl.) ¶ 86). Based on this record, the ’096 patent is directed to food products while Crane, on the other hand, relates to “methods for producing recombinant functional heme-binding proteins.” Ex. 1001, 1:22–25; Ex. 1014, code (57). As Patent Owner points out, Crane does not even mention food products or any flavor functionality of heme-binding proteins. PO Resp. 37. Petitioner does not address Crane’s field of endeavor in its Petition or Reply. See Pet. 36–50; Pet. Reply 1 (“Petitioner . . . relies on the arguments made in the Petition for Ground 1 and 3A-3D”). We agree with Patent Owner that Crane is not from the same field of endeavor as the ’096 patent. Next, Patent Owner asserts the Petition fails to explain how Crane’s recombinant heme-binding protein is pertinent to the problem addressed by the ’096 patent inventors. According to Patent Owner, the problem solved by the inventors was “to provide meat-like-food products that overcome the limitations of prior-art meat substitutes.” PO Resp. 38. Crane, however, is directed to producing recombinant heme-binding proteins with complete heme incorporation. Ex. 1014 ¶¶ 3–5; Ex. 2030 ¶ 87. Neither Crane nor the Petition addresses how this is relevant to improving meat-associated flavors or aromas in food flavor additives. See generally, Ex. 1014; Pet. 36–50. The Petition asserts that Crane’s recombinant heme-binding protein, if used in place of Conrad’s blood/hemoglobin, which is added to improve taste, “would have produced the proteins with a high degree of purity.” Pet. 47–48. The Petition asserts that the benefit of high purity is greater control over the amount added and consistency in the end product. Id. at 48.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“argument at trial, we do not agree with Patent Owner that Petitioner’s basis for improving the nutritional content of the food product of Giacino is unsupported by the record. Proulx identifies iron deficiency as “a major nutritional problem, affecting over 2 billion people[.]” Ex. 1019, 1518; Ex. 1003 ¶ 93; see also Pet. Reply 25. Based on the evidence in this record, Giacino’s compositions lack a significant source of iron. Ex. 1003 ¶¶ 387, 407. Furthermore, like Proulx, Giacino’s composition is intended to be an additive to food products. Specifically, Giacino’s composition is intended to be added to synthetic meat fibers, that may benefit from a source of iron, by mimicking not only the “meaty flavor” or aroma of meat, but the nutritional profile of conventionally sourced beef as well. Ex. 1003 ¶ 410; Ex. 1015, 7:22–26. This reasoning is supported by Petitioner’s expert, Dr. Tarté. Ex. 1003 ¶ 410. Patent Owner acknowledges the nutritive aspect of the addition is a “bonus” to the flavor impact. PO Sur-Reply 25–26. Proulx explicitly teaches adding leghemoglobin as an additive to food (“food fortificant”), therefore a POSITA would have had a reasonable expectation of success in doing so. Ex. 1019, Abs.; see id. at 1521 (“added with tortillas”). Even if the addition of Proulx’s leghemoglobin were to produce autooxidation and impact Giacino’s meaty flavor, the benefit of Proulx’s leghemoglobin as an additive to a food composition is not disputed and supports the combination. “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”). Moreover, the evidence of record regarding the asserted negative effect on aroma and flavor due to heme proteins is that this negative impact is merely a possibility. Ex. 2030 ¶ 76 (Dr. Qian states that heme proteins have an “unpredictable effect” and refers to statements made in related patent prosecution that “fortification [with] iron has a potential negative effect on organoleptic quality of maize products, in that soluble forms of iron can cause oxidative rancidity,” quoting Ex. 1148, 2715). Based on the evidence of record, the benefit of adding heme protein taught by Proulx outweighs the potential negative effect that it may have on Giacino’s flavoring additive. Thus, the preponderance of the evidence in this record supports Petitioner’s assertion that a POSITA would have been motivated to nutritionally fortify Giacino’s meat flavoring composition by adding Proulx’s soy leghemoglobin.” slip op. at 31
Patent outcomesUS 9,943,096 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,943,096 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 15, 2024 · IPR2024-00142 · APJ John D Hamann · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–16 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’330 patent “would have had at least the equivalent of a bachelor’s degree in electrical engineering and one to two years of experience in the field of circuit design, particularly the design of circuits operating at high frequencies.” Pet. 4 (citing Ex. 1002 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’330 patent or identify any specific shortcoming in Petitioner’s definition. See Prelim. Resp. 7. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 4. This definition is consistent with the ’330 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner argues that “no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 8. However, Petitioner also cites to a Special Master Report and Recommendation on Claim Construction where “node” was construed to mean “a point of connection or intersection in an electrical circuit.” Id. at 9 (quoting Ex. 1015, 29). Patent Owner adopts this construction for purposes of this Decision on Institution. Prelim. Resp. 8. We find that this construction is consistent with the plain and ordinary meaning of the term “node.” We thus apply the construction as such to our analysis below, and we determine that we need not provide an express construction of any other claim term for purposes of this institution decision.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“[claim] limitation is found either expressly or inherently in a single prior art reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)). Moreover, “[t]o anticipate, the reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F. 3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,535,330 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 13, 2024 · IPR2024-00167 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 22
- BurdenDecided for patent owner
“For all of the foregoing reasons, Petitioner has failed to demonstrate sufficiently that Okabe discloses a semiconductor integrated circuit package with a first layer that includes “a first ground plane enabling electrical connection with low speed electronic circuitry” and a “second ground plane enabling electrical connection with high speed electronic circuitry.” Ex. 1001, 9:25–36.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a “bachelor’s degree in a field relating to the integrated circuit package manufacturing process like materials science, physics, electrical engineering, or other related subjects, and at least two to three years of experience with fabrication and packaging of integrated circuits.” Pet. 4 (citing Ex. 1002 Preliminary Response. Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s arguments are not persuasive. As Patent Owner and Dr. Bernstein point out, Petitioner does not specify the frequencies at which duplexer 45 and VCO 70 operate in Okabe. Prelim. Resp. 20; Ex. 2001 ¶ 79. Nor does Petitioner direct us to any criteria for classifying circuitry as “high speed” or “low speed.” Prelim. Resp. 20; Ex. 2001 ¶ 79. As a result, we are left with only the assertion of what a person of ordinary skill in the art would have understood about duplexer 45 and VCO 70. To support this assertion, Petitioner directs us to statements in Dr. Baker’s declaration that mirror the Petition. Pet. 26–27 (citing Ex. 1002 ¶¶ 71–73). Dr. Baker, however, does not cite to any supporting evidence or provide any technical reasoning to support his statements. Ex. 1002 ¶¶ 71–73. “Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, Petitioner has failed to demonstrate sufficiently that Okabe discloses a second layer that includes a “third ground plane configured for electrical connection with low speed electronic circuitry” and a “fourth ground plane configured for electrical connection with high speed electronic circuitry.” Ex. 1001, 9:37– 43.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,646,091
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.