- PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016), 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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“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.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - PTAB · Sep 25, 2023 · IPR2023-00531 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1, 3–9, and 20 because Petitioner showed a reasonable likelihood that Flore anticipates them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1, 3–9, and 20 of the ’988 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’988 patent. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1, 3–9, and 20 of the ’988 patent is instituted with respect to the ground set forth in the Petition; and” slip op. at 33
- BurdenDecided for petitioner
“We have reviewed the evidence and find that, at this stage, Petitioner sufficiently shows on this record that Flore teaches “routing the communication from the first DMA gateway [Inter-AS Anchor 152] to the target device [UE 110] by relaying the communication from the first DMA gateway [Inter-AS Anchor 152] to the second DMA gateway [SGSN 142] via the DMA gateway communications network [via a Gn interface].” Given that we find, at this stage, that Petitioner sufficiently shows that Flore teaches every limitation in the claim, on this record, Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claim 1 of the ’988 patent is anticipated by Flore.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this time, we decline to adopt a construction of the claim term “DMA server” that would limit its scope to include a P2P connection with other DMA servers. The claims do not include a limitation calling for the “DMA server” to be connected to other DMA servers via a P2P connection. There is a single mention of “a DMA server” in the claim and its scope is not limited so as to be connected to other DMA servers via a P2P connection. See, e.g., Ex. 1001, claim 1[b]: “a DMA server.” Nor does the present record sufficiently support the view that a POSITA would have understood the claim term “DMA server” to be necessarily limited to one that it is connected to other DMA servers via a P2P connection.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“II. ANALYSIS A. Principles of Law To “demonstrate anticipation, the proponent must show ‘that the four corners of a single, prior art document describe every element of the claimed 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 102. Because the challenged claims of the ’988 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 102 throughout this Decision. invention.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006)). The prior-art document “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.’” Id. (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Hence, a patent challenger cannot rely on portions from different, unrelated embodiments in a prior-art document to demonstrate anticipation. See id. at 1369, 1371. The “disclosure of a limited number of combination possibilities” may anticipate a claim. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017). Hence, a reference may anticipate “if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). The “dispositive question regarding anticipation [is] whether one skilled in the art would reasonably understand or infer from the [reference’s] teaching” that it discloses every claim element arranged as in the claim. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991); see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003).” slip op. at 7
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,855,988 - PTAB · May 23, 2023 · IPR2023-00198 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–19 and all petitioned grounds, finding a reasonable likelihood of success on Ground I’s Burton obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“However, if Petitioner has provided a Sotera4 stipulation, we will not discretionarily deny institution under § 314(a) in view of a District Court Action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director Memo”), at 3, 7, 9. Petitioner argues: the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition (i.e., a “Sotera stipulation”). In that regard, the Petition provided this stipulation: Petitioner[] want to make clear they are consenting to a full Sotera stipulation and Petitioner will not pursue in the parallel district court litigation or other parallel proceedings the same grounds as raised in this Petition or any grounds that Petitioners could have reasonably raised before the PTAB. Petitioners agree to not pursue any of the grounds raised in this Petition, any grounds raised within Petitioners’ invalidity contentions, or any grounds Petitioners could have reasonably raised before the PTAB in the parallel district court litigation or any parallel proceeding.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments are new ones because no arguments during prosecution were presented for a first and second reflector. Therefore, there is no overlap between the arguments made during examination and the manner in which Petitioner relies on Burton, Schuknect, and Baek. Cf. Becton, Dickinson factor (d). Relying on materially-different references not before the Examiner, that is, Burton, Schuknecht, and Baek, Petitioner presents arguments addressing the now-claimed first and second reflector limitations that the Examiner did not examine. See Pet. 21–23 (Burton); 45–48 (Schuknecht); and, 73–75 (Baek). For the reasons discussed related to Becton, Dickinson factors (a), (b), and (d), we find the art and arguments are not the same or substantially the same as was previously presented to the Office. 2. Second step of the framework Because the same or substantially the same art or arguments were not previously presented to the Office, we do not consider whether Petitioner has demonstrated a material error by the Office. See Advanced Bionics, Paper 6 at 9–11.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 6. Upon consideration of the arguments and evidence presented by Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–19 of the ’114 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“reasoning Petitioner provides for why the claimed device would have been obvious to one of ordinary skill in the art over the combination of Schuknecht, Hsu, Leong, and the knowledge of a POSITA is insufficient. Obviousness requires showing that a POSITA would have had a motivation to combine Schuknecht, Hsu, Leong, and the knowledge of a POSITA in the way required to achieve the claimed device and would have had a reasonable expectation of success in doing so. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (emphasis added). Rather than explaining why one would have included LEDs in Schuknecht’s device with a reasonable expectation of success at arriving at the claimed device, Petitioner explains why a POSITA could have generally substituted fluorescent bulbs for LEDs. Schuknecht is directed to an air flow management specifically designed for vent chambers containing high wattage lamps such as fluorescent lamps. See Ex. 1041 ¶¶ 2 (“The devices presented here are directed to a compact fluorescent lamp (‘CFL’) type lighting fixture that has improved cooling capability.”), 7 (The invention “is primarily, but not exclusively, directed at CFL fixtures where the sum of wattage of all of the lamps in the fixture exceeds 200 watts.”). We agree with Patent Owner that Petitioners do not provide any argument that an optimal temperature of an LED bulb matches that of a CFL fixture. Nor do Petitioners provide any argument that an LED bulb, as disclosed by Hsu, might generate output in excess of 200 watts/fixture, as required by Schuknecht. Prelim. Resp. 38 (citing Ex. 1041 ¶¶ 4–7). Petitioner does not address why a POSITA would have modified Schuknecht’s vent chamber that is specifically designed for managing heat associated with using fluorescent bulbs to manage heat from LEDs, if any, with a reasonable expectation of success in arriving at the claimed illumination device. For that reason, a reasonable likelihood of prevailing in demonstrating that claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of Schuknecht, Hsu, Leong, and the knowledge of a POSITA on this record has not been demonstrated.” slip op. at 47
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,721,114 - Fanduel, Inc. v. Winview Inc.InstitutedPTAB · Jan 31, 2023 · IPR2022-01307 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1, 2, 9, 14–16, 20, 21, 23, 24, 26, 27, 31–33, 40, 41, 43, and 49 on all asserted grounds, finding a reasonable likelihood of anticipation by Vänskä.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. Principles of Law 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.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). When evaluating a single prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (second and third alteration in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). We analyze this asserted ground based on anticipation with the principles stated above in mind.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“1. Principles of Law 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.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). When evaluating a single prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (second and third alteration in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). We analyze this asserted ground based on anticipation with the principles stated above in mind.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the 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 active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (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. at 696–97. For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Rubin, FanDuel argues that “a person of ordinary skill in the art . . . as of June 20, 2005 [(the filing date of the ’356 application)], would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development.” Pet. 13 (citing Ex. 1003 ¶¶ 20, 21). To the extent necessary, we adopt FanDuel’s assessment of the level of skill in the art as it appears consistent with the ’543 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“FanDuel contends that, “[f]or purposes of this proceeding only, [FanDuel] does not believe any claim construction is necessary to resolve this [unpatentability] analysis.” Pet. 12 (citing Ex. 1003 ¶ 41). As we note above, WinView elected not to file a Preliminary Response. Based on the preliminary record, there is no controversy between the parties that requires us to construe any claim terms at this time. 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’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim construction§ 102 anticipationPatents in suitUS 10,721,543 - PTAB · Sep 23, 2022 · PGR2022-00030 · APJ James J Mayberry · PGR · Institution
Instituted PGR on claims 1–20 after finding it more likely than not that at least one challenged claim is unpatentable, including because Bucco anticipates claims 1, 2, 4–16, and 18–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, 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) (2011). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the Challenged Claims is unpatentable. Accordingly, we institute a post-grant review of the Challenged Claims of the ’486 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art. We determine that Petitioner’s definition is more consistent with the prior art of record, and the skill reflected in the Specification of the ’486 patent, based on our review of the limited record. Specifically, we preliminarily find that the field of “consumer products,” as proposed by Patent Owner, is too broad, based on our review of the limited record before us, including the prior art of record, which is directed to razors and personal grooming devices. See Exs. 1003; 1005–1007; 1010; 1011; 2003–2007; 2010–2015. We note, however, that our conclusions in this Decision would not change if we applied Patent Owner’s definition of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regardless of the parties’ proposed constructions, the parties do not dispute that the pivot member placement terms encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. See, e.g., Pet. 30–31 (“All . . . claims [other than claims 3 and 17] are necessarily broad enough to encompass a handle that includes the two opposed legs.”); Prelim. Resp. 49 (depicting embodiment where the two opposing legs are on a clevis attached to the handle). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Accordingly, for the purposes of this Decision, we construe the pivot member placement terms to encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. We also determine, on the current record, that we need not construe any other claim term to resolve the parties’ dispute at this stage of the proceeding. See Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“Like in SunModo, the grandparent application expressly discloses the opposed legs attached to the cartridge and the pivot member attached to the arm of the handle only. The grandparent application does not describe the opposed legs as part of the handle. Nor does the application state that the position of the opposed legs and pivot member are flexible, such that they could be reversed. On the limited record before us, the lack of any disclosure in support of Patent Owner’s reversal of parts embodiment is fatal to Patent Owner’s position. Cf. SunModo, 890 F.3d at 1052 (“The lack of any disclosure of an assembly with a washer below the flashing, or statement on the flexibility of the position of the washer, is fatal to D Three’s argument.”). We have considered Patent Owner’s arguments and determine, on the current record, that they do not demonstrate a deficiency in Petitioner’s position. First, Patent Owner’s argument that reversal of parts is generally common practice within the level of ordinary skill goes to the obviousness of rearranging parts to reach what is now claimed, rather than the adequacy of the written description of what is now claimed. Cf. Lockwood, 107 F.3d at 1572: The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. . . . One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Tellingly, Patent Owner relies, at least in part, on MPEP Section 2144.04. But this section is part of the MPEP directed to obviousness, not written description. See MPEP § 2144 (“Supporting a Rejection Under 35 U.S.C. 103”). Patent Owner’s reliance on the MPEP’s examining guidelines for written description is also unavailing. See Prelim. Resp. 50–51 (citing MPEP § 2163(II)(A)(3)(a), and quoting “If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met.”). We preliminarily find that reversing the locations of the pivot member and opposed legs from those locations disclosed in the only embodiment described in detail in the specification represents more than a “nuance” of the claims. Instead, it represents a departure from the disclosed embodiment of Figure 1, a departure with no support in the actual written description in the grandparent application.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialPatents in suitUS 11,235,486 - PTAB · Sep 2, 2022 · IPR2022-00698 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on all grounds challenging claims 1–19, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). C. Level of Ordinary Skill in the Art slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person having ordinary skill in the field at the time of the purported invention of the ’257 patent would have at least a bachelor’s degree in mechanical engineering, architectural engineering or other similar type of engineering degree, combined with at least two years of experience in the field of control systems or relevant systems design experience. Pet. 15 (citing Henze Decl. ¶¶ 34–36). Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp., generally. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“b. Motivation to Combine McIntosh and Tsuyoshi In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent and would have had a reasonable expectation of success in doing so. KSR, 550 U.S. at 406. “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’).” Id. at 418.” slip op. at 35
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“There are [t]wo separate tests defin[ing] the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 32
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,394,257 - PTAB · Sep 2, 2022 · IPR2022-00692 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–19 and 21–30 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–19 and 21–30 of the ’666 patent. B. Related Proceedings” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the field at the time of the purported invention of the ’666 Patent would have at least a bachelor’s degree in mechanical engineering, architectural engineering or other similar type of engineering degree, combined with at least two years of experience in the field of control systems or relevant systems design experience. Pet. 15 (citing Ex. 1003 ¶¶ 34–36). Patent Owner does not, at this time, dispute Petitioner’s proposed definition. See Prelim. Resp., generally. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Furthermore, according to the Henze Declaration, a person of ordinary skill in the art would have been motivated to select a flow sensor having a static measurement principle [i.e., Shen] , which avoids moving parts and their associated risk of failure and need for maintenance as well as reduces the pressure drop and energy waste caused by the flowmeter [and a] POSITA would have also understood that using an ultrasonic sensor helps avoid any fouling of the sensing elements and provides high measurement accuracy. Ex. 1003 ¶ 105; Pet. 37 Given this, Petitioner appears to have sufficiently shown at this stage that a person of ordinary skill in the art would have had sufficient reason to combine the teachings of McIntosh and Shen and thereby reach a “flow sensor” having “a static measurement principle based on a wave propagating in the liquid” as claimed.” slip op. at 44
- BurdenDecided for petitioner
“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 Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). C. Level of Ordinary Skill in the Art slip op. at 12
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,823,666 - PTAB · Apr 8, 2022 · IPR2022-00017 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1–5 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends: A POSA in February of 2005 would have at least a bachelor’s degree in biomechanics or engineering (or equivalent) and about five years or more industry experience or equivalent experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field. A POSA could substitute directly relevant additional education for experience, e.g., substituting an advanced degree relating to the design of cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or biomechanics (or equivalent), for industry experience in a related field, and vice versa, substituting additional industry experience for a formal degree in a relevant field. Sargeant-328 ¶¶52-53. Pet. 4. Patent Owner states that “the Petition essentially repeats the same proposed standard [as in the District Court Action]. As such, there appears to be no significant dispute over the level of skill in the art possessed by a POSA.” Prelim. Resp. 11. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When read in the context of the entirety of the first paragraph, the phrase “direct drive or fixed gear configuration” suggests that the two configurations are alternatives but it does not necessarily indicate that they equate to each other. When read in the context of the entirety of the second paragraph, the phrase “direct drive (fixed gear)” also does not necessarily suggest that they equate to each other. The entire phrase is “direct drive (fixed gear) and/or non direct drive e.g., freewheeling configuration.” Ex. 1002, 3:13–14; cited at Pet. Prelim. Reply 7. In other words, “direct drive (fixed gear)” configurations are not non–direct drive configurations, such as freewheeling configurations. Other than indicating that they are not non–direct drive configurations, there is insufficient additional indication that “direct drive” and fixed gear mechanisms equate to each other. Accordingly, the evidence at this stage more strongly supports Patent Owner’s argument that the ’328 patent does not disclose that “direct drive” configurations equate to fixed gear configurations. Given no other evidence at this stage to show that one of ordinary skill in the art would understand the ’328 patent’s disclosure of “direct drive (fixed gear)” (Ex. 1002, 3:13) and “a direct drive or fixed gear configuration” (id. at 2:10) to mean that 4 Warner (Ex. 1009). “direct drive” equates to fixed gear, Petitioner has not sufficiently shown that the ’328 patent equates “direct drive” to fixed gear configurations.” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–5 of the ’328 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’328 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds based on Rice, Warner, Sotokoshi, and Baudhuin–429. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–5 of the ’328 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 70
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,137,328 - PTAB · Apr 8, 2022 · IPR2022-00016 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–13, 16, and 17 on all petitioned grounds after finding a reasonable likelihood of success on at least one claim; claims 14 and 15 were disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Adverse judgmentAdverse judgmentOther
“Based on our review of the Disclaimer and Office public records, we conclude that a disclaimer of claims 14 and 15 of the ’240 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of February 22, 2022. Accordingly, claims 14 and 15 have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a). As a result, no inter partes review shall be instituted as to claims 14 and 15. 37 C.F.R. § 42.107(e); Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01248, Paper 7 at 2 n.1, 9–10 (PTAB Feb. 7, 2019) (discussing interplay of a disclaimed claim, Federal Circuit precedent, and our governing statutes and rules); Daikin Indus. Ltd. v. The Chemours Co., IPR2018-00993, Paper 12 at 5–7 (PTAB Nov. 13, 2018) (noting that adverse judgment following partial disclaimer was not appropriate at least because the nondisclaimed claims “ha[d] yet to be ‘decided.’”); cf. General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (declining to institute inter partes review when all challenged claims were disclaimed under 35 U.S.C. § 253(a)). Accordingly, we treat claims 14 and 15 as having never been part of” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–13, 16 and 17 of the ’240 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’240 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds based on Rice, Warner, Sotokoshi, and Baudhuin–429. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–13, 16 and 17 of the ’240 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 78
- Skill levelSkill level petitioner adoptedOther
“A POSA in February of 2005 would have at least a bachelor’s degree in biomechanics or engineering (or equivalent) and about five years or more industry experience or equivalent experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field. A POSA could substitute directly relevant additional education for experience, e.g., substituting an advanced degree relating to the design of cardiovascular exercise. Pet. 3–4 (citing Sargeant–240 Decl. ¶¶ 50–54). Patent Owner states that “the Petition essentially repeats the same proposed standard [as in the District Court Action]. As such, there appears to be no significant dispute over the level of skill in the art possessed by a POSA.” Prelim. Resp. 14. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,694,240
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.