- Zhuhai Cosmx Battery Co., Ltd. v. Ninge Amperex Technology LimitedInstitution deniedPTAB · Aug 20, 2025 · IPR2025-00385 · APJ Debra L Dennett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were anticipated by Nishikawa or obvious over the asserted combinations.
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); 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 and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that A person of ordinary skill in the relevant art would typically hold an advanced degree in chemistry, material science, and/or a related discipline, and have at least two years of experience with designing and/or fabricating battery separators or have an equivalent level of education, training, and experience. Pet. 5. Patent Owner “adopts the definition proposed by Petitioner” for the purposes of the Preliminary Response. Prelim. Resp. 22. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s unopposed definition because it is consistent with the specification. We note that neither party indicated that the result would change under any different definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Absolute plastic deformation rate” and “relative plastic deformation rate” are the only claim terms disputed in this proceeding, and are clearly defined in the Specification and in claim 1. See Spec. 4:22–27, 4:47–54; 25:31–37. Because we determine that claim construction is not necessary to decide whether to institute, we do 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 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s arguments are unconvincing. Petitioner points to nothing in Nishikawa that allows a POSITA to determine L2 (defined as “a length of 4 Tensile strength is measured as force per units area, such as MPa or psi. One MPa equals one N/mm2. Nishikawa Table 1 discloses tensile strength in N/cm. Ex. 1004 Table 1. Petitioner makes calculations to convert the reported N/cm into N/m2 and then to GPa, but provides no explanation for why tensile strength is reported in N/cm or how it was measured. See Pet. 31. the porous substrate after the porous substrate is stretched to breakage and docked along the fracture caused by the breakage and flattened”) or L2 – L0. See generally Pet., Ex. 1004. Petitioner and its expert, Dr. Pecht, fail to adequately explain why tensile strength divided by Young’s modulus is “a proxy for L1 – L2” or why such a proxy is sufficient to disclose the limitation as stated. Instead, we are required to rely on “approximations” and “estimates” with insufficient explanation of why such they are appropriate or adequate. See Pet. 26, 30, 32; see also Ex. 1003 ¶¶ 97, 105–108, 111.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,964,927 - 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 - PTAB · May 9, 2024 · IPR2024-00084 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–3 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’484 patent, and we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Here, in an email to Patent Owner, Petitioner “stipulates that if the PTAB institutes IPR, Structural Wrap will not pursue in [the Florida Litigation] the same grounds asserted in the petition, or any grounds that could have reasonably been raised in the petition.” Ex. 1022, 1.” slip op. at 12
- Adverse judgmentDecided for petitioner
“Patent Owner’s argument is not persuasive because the cited discussion in the prosecution history does not relate to the challenged claims in this proceeding. Pages 25–26 of Exhibit 2008 correspond to the Declaration of Christopher Mouriz (“Mouriz Declaration”). The Mouriz Declaration relates to claim language that “recites attaching the construction material to a specific component of a roof, namely, the vertical, outward facing [fascias] of the eaves of the roof.” Ex. 2008, 25 ¶ 7. The Mouriz Declaration explains that “the roof component to which a waterproofing membrane is attached is not recognized as a particular parameter that can be experimented with, in order to increase or optimize the waterproofing process in a structural waterproofing system.” Id. at 26 ¶ 8. Thus, the claim language discussed in the Mouriz Declaration relates to attaching construction material specifically to “vertical, outward facing facias of the eaves of the roof.” Id. at 25 ¶ 7. There is no discussion of wrapping battens. Pages 40–41 of Exhibit 2008 correspond to a Response to Office Action wherein the applicant distinguishes the ’554 application claims over prior art references cited by the Examiner, namely, Lennox and Wiki. Ex. 2008, 40–41. The applicant argues that “neither Lennox nor Wiki discloses attaching the construction material that was rolled in the end of the strip to the vertical, outward-facing fascia of the eaves of the roof, as claimed by Applicant.” Ex. 2008, 41 (emphasis original). Again, the claim limitation at issue, which Patent Owner directs us to, relates to the location for attaching construction material, namely, vertical outward-facing fascia. We see no similar limitation in the challenged claims. We also note that Petitioner does not rely on Lennox and Wiki in this proceeding. Accordingly, we are not persuaded that Petitioner should be estopped from arguing that the challenged claims of the ’484 patent are obvious based on arguments presented to the Office concerning claims and references that are not involved in this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not explicitly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375. We encourage the parties to further discuss an express construction for “sheet” during trial if they choose.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,168,484 - PTAB · Mar 26, 2024 · IPR2023-01424 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–16 and 18–20, finding a reasonable likelihood of prevailing on the asserted grounds, including anticipation by Ueda and obviousness over Plante and Cho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any argument not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at 1 Petitioner identifies itself as the real party in interest. Pet. 1. In addition, Petitioner notes that Spectrum Holdco LLC is its parent company and that Spectrum Holdco LLC and Spectrum Intermediate LLC “have a financial interest in, or could be substantially affected by the outcome of, this proceeding.” Id. 2 Patent Owner identifies itself as the real party in interest and notes that it is a wholly owned subsidiary of OraSure Technologies, Inc. Paper 4, 2. least one claim. We hereby institute an inter partes review as to claims 1–16 and 18–20 of the ’632 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We decline to exercise our discretion here. As pointed out by Petitioner, the same or substantially the same art or arguments were not previously presented with respect to the ’632 patent. Pet. 123–24. Petitioner challenges the ’632 patent on grounds that were not asserted against the ’646 patent, namely the grounds based on Ueda. Id. at 71–123. In addition, we found Petitioner’s arguments based on Plante sufficiently persuasive and determined that the challenged ’646 patent claims are unpatentable. IPR2022-01347, Paper 43 (Feb. 7, 2024). For these reasons, we do not exercise our discretion to deny institution.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(POSITA) “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or similar technical degree and at least 3 years of experience in the medical device industry, including experience with containers and valves used in disposable medical devices.” Pet. 8 (citing Ex. 1002 ¶¶ 51–52). Petitioner further asserts that such a person would have collaborated with a team member with training and experience in the biological aspects of the invention and education and experience relating to the collection of biological samples. Id. (citing Ex. 1002 ¶¶ 51– 52). Patent Owner does not offer an alternative definition of a person of ordinary skill in the art at this time. See generally Prelim. Resp. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary for us to construe “biological sample” or “annular valve” at this stage of the proceeding because neither party contends that construing either term is material to deciding whether to institute a trial on the asserted grounds in the Petition. See Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,536,632 - Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology LimitedInstitution deniedPTAB · Sep 22, 2023 · IPR2023-00587 · APJ Donna M Praiss · IPR · Institution
The Board denied institution for claims 1–17 under § 314(a), finding the parallel litigation favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel proceeding the grounds advanced in the petition. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 11–12, 12 n.5 (June 16, 2020) (informative). “The PTAB will not discretionarily deny institution of an IPR . . . 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.” Fintiv Memo, 7–8 (emphasis added); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A). Here, Petitioner’s stipulation extends to the same grounds raised in the Petition, but does not extend to any ground “that could have been reasonably raised,” pursuant to Sotera. Patent Owner points to the narrowness of the proffered stipulation in the Sur-Reply and asserts this factor “only marginally weighs in favor of institution.” Sur-Reply 3. Because Petitioner’s stipulation obviates some potential for duplication or redundancy with respect to the patentability of the challenged claims (albeit not to the extent a full Sotera-type stipulation would have) and the parallel litigation does not include claims 10–16, we determine that the fourth Fintiv factor weighs against denial of institution.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“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.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)). “[T]he 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 slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable
“As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Fintiv Memo 4. While the Petition and Dr. Gido provide an explanation for the full range in which Iwai’s D90 necessarily would be found, the Petition and Dr. Gido identify only a single value for the adhesive porous layer thickness of Iwai’s Example 7 and Comparative Example 2. Pet. 48, 51; Ex. 1003 ¶¶ 165, 174. The Petition and Dr. Gido direct us to the average thickness “a” of Iwai’s adhesive porous layer without taking into account Iwai’s disclosure of the ratio of the average thickness layer “a” to the volume average particle diameter “r.” Iwai describes the volume average particle diameter “r” being “projected at a proper height . . . formed on a surface of the adhesive porous layer.” Ex. 1006 ¶ 43. Thus, the evidence of record purportedly mapping claim 1’s recited “thickness of the porous layer” to Iwai does not plainly lead to a conclusion that Iwai necessarily discloses to a POSA the claimed “ratio of Dv90 of the inorganic particles to the thickness of the porous layer is in a range from 0.3 to 3.0.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as anticipated by Iwai.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“In addition to the lack of support in the record for the Petition and Dr. Gido’s assumption that the porous layer thicknesses of Examples 4 and 5 are the same as the porous layer thickness of Example 1 discussed above in connection with the anticipation challenge of claim 1, the cited record does not plainly support Petitioner’s assertion that Nishikawa teaches or suggests claim 10’s recited “uniform coating solution.” The Petition acknowledges that Nishikawa teaches a mixed solvent containing DMAc and TPG to provide a coating slurry. Pet. 31; Ex. 1003 ¶ 64; Ex. 1005, 22:26–33 (Example 4), 22:46–51 (Example 5). Nishikawa teaches that the solvent mixture includes a polar solvent (DMAc preferred) and a poor solvent (such as TPG) that “induces a microscopic phase separation structure to facilitate formation of pores upon providing the heat resistant porous layer.” Ex. 1005, 11:1–5. The Petition does not sufficiently explain why such a phase separation structure produced by Nishikawa’s mixed solvent meets claim 10’s recited “uniform coating solution.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 10 as obvious over Nishikawa’s teachings.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,964,987 - Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00476 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–11 unpatentable, principally failing to establish distinct lead wiring lines.
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 an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that 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). We deny inter partes review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). For the reasons discussed below, we deny institution of inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“display electrodes” and “a plurality of lead wiring lines provided on the extending portion and that are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:40‒44. Separately listing “wiring lines” and “a plurality of lead wiring lines” clearly implies that wiring lines Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation omitted) (“Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404‒05 (Fed. Cir. 1996) (concluding that two separately recited elements could not be the same element because it would contradict the plain language of the patent and “they logically cannot be one and the same”). Here, the claim language identifies wiring lines and lead wiring lines as separate elements in that the “lead wiring lines . . . are led from one of the sides of the wiring lines to the extending portion.” Ex. 1001, 16:42‒ 44. Here also, the ’913 patent’s specification separately identifies and describes both lead wiring lines 103a and wiring lines 105 in a single embodiment. See, e.g., id. at Fig. 1, 7:42‒46 (“In FIG. 1, . . . [t]he wiring lines 105 are relayed on the upper side of the frame light-shielding film 53 so as to connect the two scanning line driving circuits 104.”), 8:26‒29 (“the data line driving circuit 101a is connected to the plurality of external connecting terminals 102a through the lead wiring lines 103a at both ends of the extending portion 201” (referring to the embodiment depicted in Figure 1)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). 7 Yoneda, JP2000267590A, published Mar. 19, 1999. Ex. 1011. 8 Tanaka, JP2004094020A, published Mar. 25, 2004, with exhibit including certified English language translation. Ex. 1012. 9 Hirosue, US 2003/0189686 A1, published Oct. 9, 2003. Ex. 1013. have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 5 (citing Ex. 1002 ¶¶ 41‒44). Patent Owner, “[f]or purposes of th[e] Preliminary Response . . . does not dispute the level of skill for a person of ordinary skill in the art.” Prelim. Resp. 7. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,335,913 - Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution
Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,116,390 - Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Ltd.Institution deniedPTAB · Aug 18, 2023 · IPR2023-00586 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Hong disclosed claim 1’s required propyl propionate proportion or that claims 2–12 overcame that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On the present record, we are not persuaded that Petitioner has shown sufficiently that Hong discloses all of the elements of independent claim 1. We agree with Patent Owner that the Petition does not adequately support how Hong’s disclosure of solvent containing 25% PP satisfies claim 1’s required ratio of trinitrile to PP (Y/Z). The Petition itself acknowledges that Hong’s disclosure of the amount of PP in the solvent is not a disclosure of how much PP is present in the electrolyte because the solvent is only one component of Hong’s electrolyte. Pet. 19. The Petition also acknowledges that assumptions are required to compute an amount of PP present in the electrolyte. Id. Thus, the assumptions have a bearing on how much PP is present in Hong’s electrolyte. We agree with Patent Owner that the assumptions underlying the asserted PP content of Hong’s electrolyte do not adequately support the conclusions drawn therefrom because the record does not support the factual basis for the assumptions made. We also agree with Patent Owner that the Petition relies on a computational methodology involving serial calculations based on guesswork that is not adequately explained. Accordingly, we determine Petitioner does not have a reasonable likelihood of prevailing on the anticipation challenge to claim 1 based on this record. We discuss in detail each of the assumptions relied upon by Petitioner, below.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“On the present record, we are not persuaded that Petitioner has shown sufficiently that Hong discloses all of the elements of independent claim 1. We agree with Patent Owner that the Petition does not adequately support how Hong’s disclosure of solvent containing 25% PP satisfies claim 1’s required ratio of trinitrile to PP (Y/Z). The Petition itself acknowledges that Hong’s disclosure of the amount of PP in the solvent is not a disclosure of how much PP is present in the electrolyte because the solvent is only one component of Hong’s electrolyte. Pet. 19. The Petition also acknowledges that assumptions are required to compute an amount of PP present in the electrolyte. Id. Thus, the assumptions have a bearing on how much PP is present in Hong’s electrolyte. We agree with Patent Owner that the assumptions underlying the asserted PP content of Hong’s electrolyte do not adequately support the conclusions drawn therefrom because the record does not support the factual basis for the assumptions made. We also agree with Patent Owner that the Petition relies on a computational methodology involving serial calculations based on guesswork that is not adequately explained. Accordingly, we determine Petitioner does not have a reasonable likelihood of prevailing on the anticipation challenge to claim 1 based on this record. We discuss in detail each of the assumptions relied upon by Petitioner, below.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“liquid components does not meaningfully change after mixing. Pet. 19; Ex. 1003 ¶¶ 110–111. According to Dr. Anderman, the polarity of the liquid components in Embodiments 2, 18, 25, and Comparison Case 6 are “similar,” therefore it is “unlikely that there will be a meaningful change in volume in comparison to adding the individual volumes.” Ex. 1003 ¶ 110 (emphasis added). As Patent Owner notes, however, neither the Petition nor Dr. Anderman provide a basis for what is meant by “similar” or “meaningful” in terms of a threshold that would impact the calculations for Formula (3). Prelim. Resp. 37; Ex. 2001 ¶ 71. Further, the Petition’s assertion that Hong’s liquid components (to which the Petition includes Hong’s solvents listed in Hong’s Table 3 excerpted above as EC, PP, DEC, and PC) have similar polarity is unsupported by the record. Patent Owner demonstrates that Hong’s solvents have widely varying dielectric constants, which Dr. Koch explains is a measure of polarity. Prelim. Resp. 38; Ex. 2001 ¶ 77 (stating that “[t]he higher the dielectric constant of a solvent, the more polar it is”). Patent Owner asserts that there is a 34-fold difference in polarity between EC and DEC and a 20-fold difference in polarity between EC and PP based on dielectric constants reported for these solvents. Prelim. Resp. 38; Ex. 2001 ¶¶ 77–78; Ex. 1025, Table 2 (reporting a dielectric constant of 95.3 at 25°C for EC); Ex. 2004, 13 (reporting a dielectric constant of 2.82 at 68°F for DEC); Ex. 2005, 1 (reporting a dielectric constant of 64.9 at 20°C for PC), Ex. 2004, 34 (reporting a dielectric constant of 4.7 at 68°F for PP). Based on the information presented by Patent Owner, we credit Dr. Koch’s testimony that Dr. Anderman’s assumption that all of Hong’s liquid components have similar properties is not correct. Ex. 2001 ¶ 78.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSA”) “would have a Ph.D. or a similar advanced degree in chemistry, chemical engineering, materials science, or a related field, and two or more years of experience related to . . . electrochemical energy storage devices” with more experience compensating for less formal education. Pet. 12 (citing Ex. 1003 ¶¶ 24–25). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. See Prelim. Resp. 16. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 6
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,833,363 - PTAB · Jun 16, 2023 · IPR2023-00206 · APJ Donna M Praiss · IPR · Institution
The Board instituted inter partes review of claims 1–12 and 14–24 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Brown and obviousness over Giacino and Brown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’096 patent, and we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In assessing whether to exercise the Board’s authority to deny institution under § 325(d), the Board considers a two-part analysis. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8–9 (Feb. 13, 2020) (precedential). First, the Board considers whether “the same or substantially the same” art or arguments were previously presented to the Office. Id. at 8. If either is met, the Board then considers whether the petition demonstrates that the Office “erred in a manner material to the patentability of the challenged claims.” Id. In applying the two-part framework, the Board considers several nonexclusive factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).12” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have (i) a Bachelor of Science degree in food science, biology, chemistry, microbiology, or a related discipline, and (ii) a Master of Science degree or Ph.D. in food science or at least three years of experience working as a food scientist” and “could also be part of a team of food scientists, including flavor chemists.” Pet. 5 (citing Ex. 1003 ¶¶ 42–47). Patent Owner does not offer an alternative definition of a person of ordinary skill in the art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states “[t]he terms of the challenged claims do not require express construction in order to reach a decision denying institution.” Prelim. Resp. 4. Nevertheless, Patent Owner asserts that Petitioner relies on an erroneous construction of “food flavor additive composition” to mean “each and every food item of every kind simply because it will have some flavor” and “any component of a food product . . . [that] has flavor and is added to the food product.” Id. at 4–5, 6. Patent Owner asserts “a food flavor additive composition is an additive that varies or adjusts the flavor and/or aroma profile present in a consumable food product.” Id. at 7. Patent Owner contends “the ’096 patent describes food flavor additives that are added to replica products to change the product’s flavor and aroma profile ‘before, during, or after cooking of the consumable food product.’” Id. (quoting Ex. 1001, 3:54–56). On the present record, it is not clear to us what distinction Patent Owner seeks to make between an “additive that varies or adjusts the flavor . . . in a consumable food product” and a “component of a food product . . . [that] has flavor and is added to the food product.” We determine we need not explicitly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375. We invite the parties to address the construction of “food flavor additive composition,” as necessary, during the course of this proceeding.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,943,096 - 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
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.