• Texas Instruments Incorporated v. Greenthread, LLCInstituted
  PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,421,195
• Mara Renewables Corporation v. DSM IP Assets, B.V.Institution denied
  PTAB · Apr 18, 2024 · IPR2024-00070 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–15 were anticipated by Radianingtyas or obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “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 term “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.; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (holding that the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application”). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide a definition of the level of ordinary skill in the art. See Prelim. Resp. 19. Patent Owner also states that any differences between the parties’ proposed definition of the skill level would not impact its arguments. Id. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “triglyceride, DHA, and heptadecanoic acid content recited therein. In order to anticipate a claim, a prior art 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.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (quotation marks omitted). A reference, however, can anticipate a claim “even if it does not expressly spell out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would at once envisage the claimed arrangement or combination.” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017) (quotation marks and brackets omitted). As explained below, here, Petitioner has not shown Radianingtyas discloses a microbial oil comprising the required triglyceride, DHA and heptadecanoic acid content. Specifically, although the exemplified strain ONC-T18 produces oil that meets the claimed triglyceride fraction and heptadecanoic acid level, Petitioner has not shown the same oil contains the recited DHA level.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,207,363
• Mara Renewables Corporation v. DSM IP Assets, B.V.Institution denied
  PTAB · Feb 23, 2024 · IPR2023-01342 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was anticipated or obvious over the asserted references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’959 patent. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that, as of the earliest claimed priority date of the ’959 patent, an ordinarily skilled artisan “would have had a Master of Science degree in an academic discipline emphasizing chemistry, chemical engineering, or biochemistry, in combination with training or at least two to three years of related work experience with lipid chemistry technologies, including but not limited to lipid extraction technologies.” Pet. 6 (citing Ex. 1003 ¶¶ 63–64). Alternatively, Petitioner proposes that an ordinarily skilled artisan “could have also had a Doctorate degree in a relevant academic discipline with one to two years of related work experience in the same discipline.” Id. Petitioner argues that an ordinarily skilled artisan “would have been familiar with microbial oils” and “would have understood the benefits of polyunsaturated fats (PUFAs), microbial sources for obtaining them, and methods for culturing and extracting oils from those microbial sources.” Id. (citing Ex. 1003 ¶¶ 36–48, 64). Patent Owner does not provide a definition of the level of ordinary skill in the art, but “reserves its right to proffer what it contends to be the appropriate level of ordinary skill in the art should the Board institute review.” Prelim. Resp. 15. Patent Owner asserts, however, that a person of ordinary skill in the art would have a detailed understanding of the information provided in its Technology Background section, including “the expected impact of cellular biomass growth characteristics on the proportion of triglycerides and phospholipids produced during a microbial fermentation.” Id. For purposes of this Decision, we adopt Petitioner’s definition of the skill level of an ordinarily skilled artisan as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). As to the background knowledge possessed by the ordinarily skilled artisan, we agree that such an artisan would have been aware of methods for culturing and extracting oils from microbial sources, including the impact of growth characteristics on the proportions of triglycerides and phospholipids produced during microbial fermentation. Pet. 6; Prelim. Resp. 15.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that all claim terms of the ’959 patent “should be given their plain and ordinary meaning.” Pet. 3. Patent Owner does not contend that any claim terms require construction. Prelim. Resp. 14–15. For purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “3. Analysis In order to anticipate a claim, a prior art 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.’” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Radianingtyas discloses microbial oils with various levels of DHA and arachidonic acid. There is no disclosure of an individual microbial oil, however, that contains at least 45% DHA and 1.5% or less arachidonic acid by weight as required by claim 1. With respect to the level of DHA, although Radianingtyas might be interpreted to disclose that some microorganisms can produce up to 60% DHA,8 Radianingtyas discloses that the DHA content of ONC-T18 is “typical[ly]” 35% of the total intracellular fatty acids, and in each experiment disclosed in Radianingtyas DHA was produced by ONC-T18 at 8 Radianingtyas discloses that “the oil producing microbe can produce a lipid composition comprising from about 25% to about 40% of an omega-3 fatty acid, such as n-3 DHA.” Ex. 1007, 26:31–33. It then gives examples that include 15%, 20%, 45%, 50%, 55%, and 60%, which are outside of the disclosed range. Id. at 26:33–34. Dr. Curtis contends the disclosure as a whole should be read as “from about 15% to about 60% of an omega-3 fatty acid, such as n-3 DHA.” Ex. 1003, 39 n.1. Dr. Curtis identifies no microbe in Radianingtyas, however, that is shown to produce more than 40% DHA, and Radianingtyas expressly notes that the typical DHA content produced by ONC-T18 is 35%. Thus, we question Dr. Curtis’ conclusions regarding the DHA content disclosure of Radianingtyas. levels less than “at least 45%.”9 Ex. 1007, 32:21–25 (noting that the “typical composition of fatty acids” produced by ONC-T18 includes 25% DHA), 34:4–37:14 (noting that the control microorganism produced 13.54%, 19.98%, 18.77%, 18.77%, 21.48%, 28.48%, and 14.13% DHA) (Figure 12), 91 (Table 5) (noting that total DHA produced by ONC-T18 was from 24- 34.2%), 99:22–24 (“Of particular interest is ONC-T18 which produces up to 90% of its C20 to C22 content as DHA which is approximately 35% of the total intracellular fatty acids.”). Thus, we are not persuaded that Radianingtyas discloses microbial oils produced by ONC-T18 that have a DHA content of “at least 45%.” As noted by Petitioner, Radianingtyas provides a definition of “purify” and “purifying,” and notes that when these terms are used, it means that a composition could be, for example, 90% pure. Pet. 11; Ex. 1007, 7:26–8:2. As an example of how the term “purified” may be used, Radianingtyas states “[f]or example, if a disclosed eukaryotic microorganism, for example, produces 35% DHA, this could be further ‘purified’ such that the final lipid composition was greater than 90% DHA.” Id. at 8:2–4. We are directed to no actual microbial oil in Radianingtyas, however, that was purified to have increased levels of DHA. Rather, Petitioner only proffers what Radianingtyas might say if such an oil existed or had been purified to increase levels of DHA.10” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,757,959
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCInstitution denied
  PTAB · May 24, 2023 · IPR2022-01415 · APJ John D Hamann · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10, 13, or 14 were unpatentable over any asserted ground.

  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 under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’629 patent would have had “at least a Bachelor’s level college degree in Mechanical Engineering, Electrical Engineering, Physics, Computer Science or a related field, and at least two years of training or experience in the design of inkjet printheads.” Pet. 14–15 (citing Ex. 1007 ¶ 45). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’629 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 42–43. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt the recitals of “at least” as that language is vague and openended. Pet. 14–15. This definition is consistent with the ’629 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The parties both argue that we should construe “non-contiguous hybrid arrangement” to mean “[a]n arrangement in which the first set of logic cells are interleaved or interlaced with the second set of logic cells.” Pet. 15; Prelim. Resp. 43. Petitioner supports its argument by pointing to the claim construction order from the HP litigation, which provides this construction for this term. Pet. 15 (citing Ex. 1010, 4 (construing non-contiguous hybrid arrangement)). Patent Owner supports its argument by citing to the written description and figures of the ’629 patent. Prelim. Resp. 43–46 (citations omitted). For example, Patent Owner cites Figure 4 of the challenged patent, and its accompanying text, and argues that Figure 4 illustrates that the “logic cells [are] interleaved in a manner that minimizes the space between heater arrays by forming a single linear array.” Id. at 44 (citing Ex. 1001, Fig. 4). The accompanying text teaches that “the magenta logic cells 440a–n may be interleaved between the cyan logic cells 420a–n in an alternating manner to form a single, linear hybrid cyan/magenta P-logic array 302.” Ex. 1001, 5:67–6:4; Prelim. Resp. 45 (citing same). The ’629 patent adds that “[b]ecause of this interlacing of cyan P-registers 420a–n and magenta P-registers 440a–n, neither the cyan P-registers 420a–n nor the magenta P-registers 440a–n remain contiguous,” and that “[f]or example, in F[igure] 4, the cyan logic cell 420b is followed by the magenta logic cell 440a instead of the next cyan logic cell 420c.” Ex. 1001, 6:10–15; Prelim. Resp. 45 (citing same). We have reviewed the parties’ arguments, and we adopt the parties’ proposed construction for this term. In addition, we determine that no express construction is needed for any other term for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “However, we agree with Patent Owner that Hayasaki does not disclose that AND circuit array 5M’ and AND circuit array 5Y are arranged in a non-contiguous hybrid arrangement. Prelim. Resp. 51–52, 54–63. Rather, Hayasaki’s AND gates are arranged in a grid, with each magenta 6 Petitioner argues that “‘a first and a second set of logic cells’ is indefinite because it is unclear if this requires (i) a first set of logic cells and a second set of logic cells, (ii) first and second sets of logic cells, or (iii) a set of first logic cells and second logic cells.” Pet. 30 n.5. We disagree. The plain reading of this limitation corresponds to a first set of logic cells and a second set of logic cells, which is in accord with the interpretation Petitioner applies in this proceeding. Id. AND gate of AND circuit array 5M’ located directly aligned with the corresponding yellow AND gate of AND circuit array 5Y—they are not interleaved or interlaced. Ex. 1004, Fig. 9. Put differently, Hayasaki teaches that AND circuit array 5M’ and AND circuit array 5Y comprise two separate columns of logic cells that are not interleaved or interlaced. See Ex. 1004, Fig. 9, ¶ 93. Thus, Hayasaki does not teach sets of logic cells in a non-contiguous hybrid arrangement.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,559,629
• Beckman Coulter, Inc. v. Sirigen II LimitedInstitution denied
  PTAB · Jan 6, 2023 · IPR2022-01208 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” For the reasons stated below, we determine that Petitioner does not establish a reasonable likelihood that it would prevail with respect to at least one claim of the ’303 patent. Thus, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “1 Because we deny the Petition on the merits, we do not address the parties’ arguments related to discretionary denial.” slip op. at 2

  • Skill levelOther

    “Petitioner asserts that a person having ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See, e.g., id. at 10 (noting that the arguments and conclusions reached in the Preliminary Response “would not change” if Petitioner’s definition of the ordinarily skilled artisan were applied).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “structure of Formula (Ia),” including specific MU, L1 and L2, G1 and G2, n, and a, b, c, and d (which define the mol % of each unit within the structure) constituents, wherein each R group must be a “[n]on-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1006, 239:29–240:56. The ’303 patent expressly defines the phrase “[n]on-ionic side groups capable of imparting solubility in water” to refer to “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solutions with no visible particulates.” Id. at 54:31–34. In view of structure of claim 1 and the express definition provided in the ’303 patent, we agree with Patent Owner that claim 1 requires that the non-ionic side group R must be capable of imparting solubility to the claimed conjugated polymer (having constituents that satisfy the claimed variables noted above) in excess of 10 mg/mL. Prelim. Resp. 13. On this record, it is not sufficient to show that a particular R group is capable of” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,575,303
• Autostore System Inc. v. Ocado Innovation LimitedInstitution denied
  PTAB · Oct 8, 2021 · IPR2021-00798 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “storage locations, but that this grid is defined by a structural framework. Ex. 1001, 14:5–6. Thus, we agree with Patent Owner that the language of claims 1 and 23 strongly suggests that the structural framework defines the grid of storage locations, and not merely that the structural framework provides open areas within which storage containers could be arranged in a grid-like pattern.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “After considering the parties’ arguments and evidence, for the reasons set forth below, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As discussed in Section II.A.2 above, we construe “a structural framework defining a grid of storage locations,” as recited in claims 1 and 23, to require that a “structural framework” define the grid of storage locations, as opposed to these locations being defined merely by the orientation or location of stacked containers. Petitioner identifies no Accordingly, we are not persuaded that Petitioner demonstrates a reasonable likelihood that independent claims 1 and 23 are anticipated by Lert.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “would have been obvious over Lert. Pet. 21–53. Petitioner’s obviousness arguments with respect to these claims do not resolve the issues noted above with respect to independent claims 1, 13, and 23. In particular, Petitioner provides no persuasive argument that one of ordinary skill in the art would have modified Lert to have a structural framework that defines the storage locations or to have delivery containers stored within storage containers and delivered to picking workstations. Accordingly, Petitioner has not shown a reasonable likelihood that claims 1–8, 13–20, and 23 would have been obvious over the disclosures of Lert.” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,796,080
• BASF Corporation v. Ingevity South Carolina, LLCRehearing denied
  PTAB · Oct 17, 2019 · IPR2019-00202 · APJ Christopher L Crumbley · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because BASF did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “when rehearing a decision on a petition to institute trial the Board “will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006) (quoting Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In our Decision, we reviewed BASF’s arguments and submitted evidence, and concluded that the record lacked sufficient support for these three links in BASF’s logical chain. First, we found that BASF had not provided evidence “why a person of skill in the art would have been led by Park’s strength requirement for an air intake system to select Formulation D” for the evaporative emissions systems that are the focus of the ’844 patent. Dec. 17–18. Second, we found no reason to conclude that, even if a person of ordinary skill in the art would have selected Park’s Formulation D to use in an evaporative emissions system, the resulting honeycomb would have the 73.8% voidages that Park considers desirable. Id. at 18–19. Finally, we found unsupported Mr. Lyons’ testimony that BAX 1500 carbon was the highest-capacity carbon known in the art at the time of the invention. Id. at 19–20. Each of these independent findings was sufficient to lead us to conclude that BASF had not shown that a system resulting from the use of Park’s honeycomb filter in an evaporative emissions system would necessarily have an IAC below 35 g/L, as required by the claims. Id. at 20–21. As such, we found that BASF had not established a reasonable likelihood that any claim of the ’844 patent was unpatentable.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “insufficient to support a reasonable likelihood of inherency on this record. To justify a conclusion of inherency in an obviousness inquiry, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). In other words, even were we to accept BASF’s contentions that a person of ordinary skill would have formed a filter using Park’s Formulation D and having 73.8% voidages, we would also have to conclude that the artisan would have had reason to select a carbon that necessarily would result in an IAC below 35 g/L. And, as we stated in our Decision, the reason for selecting a particular carbon cannot be based on the very IAC property that is allegedly inherent. Dec. 14 (“properties that are inherent—and, therefore, possibly unknown—cannot be used as the basis for this motivation unless they were expected.”) (citing Honeywell Int’l v. Mexichem Amanco Holding, 865 F.3d 1348 (Fed. Cir. 2017)). BASF’s Petition discussed two available carbons, BAX 1100 and BAX 1500, because they were referenced in the specification of the ’844 patent. Pet. 23. But there is insufficient evidence in the record why these were the two carbons that a person of ordinary skill in the art would have found it obvious to select from among the carbons that were available at the time of the invention, and the record is silent as to whether other carbons, if selected, would have necessarily resulted in the same IAC or lower. As we observed in our Decision, all that BASF presented on this point was the unsupported testimony of its expert that BAX 1500 had “the highest possible IAC known at the time of the ’844 patent.” Dec. 19–20 (citing Ex. 1003 ¶ 111). Again, BASF cites our rules, contending that we erred by not viewing a disputed issue of material fact in the light most favorable to it. Req. Reh’g 14. In particular, BASF notes our statement in the Decision acknowledging that “BAX 1500 certainly has the highest IAC of any carbon disclosed in the ’844 patent,” and argues that this alone is “evidence in the record that BAX-1500 was the highest-capacity carbon available at the time.” Id. (citing Dec. 20). But the disclosure of two particular carbons in the record says nothing about the existence—or lack thereof—of other carbons. In other words, as we stated in the Decision, “on this record we cannot extrapolate beyond [the] disclosure to all activated carbons known at the time of the invention.” Dec. 20. The issue is not one of viewing a disputed issue of fact in the light most favorable in BASF; rather, it is an issue of BASF asking us to conclude from the disclosure of two carbons in the ’844 patent that these are the carbons that a person of ordinary skill in the art, upon reading Park, would have selected. The record is insufficient to reach such a conclusion, and we did not err in deciding so.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “would have selected Park’s Formulation D when creating a filter for use as a subsequent adsorption volume, BASF contends that we misapprehended its evidence supporting such a selection. Id. at 9–12. BASF notes its argument was that a person of ordinary skill in the art would have selected Formulation D “because it is the only formulation that meets Park’s explicit requirements for the air intake application: a carbon content of 25–35% by weight and an axial crushing strength from 1200–1600 psi.” Id. at 10 (citing Pet. 33–34). But BASF’s argument misses the point of our conclusion in the Decision, which was that the record contained no evidence that the requirements of an air intake application, as discussed by Park, were the same as the requirements of the evaporative emissions application that is the focus of the ’844 patent and the primary prior art references in each combination. In other words, while a person of ordinary skill in the art might have been led to Formulation D if trying to create a filter for an air intake system, the record contains no persuasive evidence that the same is true of the artisan creating an evaporative emissions system. Indeed, as we noted in the Decision, the only evidence on this point is to the contrary, and comes from Ingevity’s expert witness Dr. Ritter. As we noted, “Dr. Ritter testifies that evaporative emission systems and air intake systems are designed for use with different vapor concentrations and, more importantly, different flow rates.” Dec. 17 (citing Ex. 2001 ¶¶ 43–44).” slip op. at 5

  § 102 anticipation§ 103 obviousness
• Nitro Fluids, L.L.C. v. Cameron International CorporationRehearing denied
  PTAB · Oct 15, 2019 · IPR2019-00804 · APJ Jon B Tornquist · IPR · Rehearing

  The Board denied the rehearing request and maintained denial of institution for claims 1–15 under § 325(d) based on Kajaria and Guidry.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential in relevant part) and determined that the balance of these factors favored denial of the Petition under 35 U.S.C. § 325(d). Dec. 11–23. As part of this analysis, we determined that: Kajaria was previously presented to the office during prosecution and was the basis for a rejection by the Examiner; Petitioner and the Examiner relied on the same disclosures of Kajaria to support their arguments; Petitioner did not sufficiently point out how the Examiner erred in his evaluation of Kajaria; and the declaration testimony of Mr. Ely did not warrant reconsideration of the prior art previously analyzed by the Examiner. Id. at 12–22.” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other

    “fracturing tree, wherein the single outlet is coupled to the fracturing tree by a single fluid conduit that is the only fluid conduit connecting the skid apparatus in fluid communication with the well at which the one fracturing tree is positioned. Ex. 1001, 7:6–30.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successOther

    “obviousness ground relies solely on modification of distribution modules 42. Req. Reh’g 14. According to Petitioner, the Petition specifically alleges that “it would have been obvious to modify any module, including specifically module 40, to use a single manifold, to support only a single valve group, for delivery of fluid to a single well, via a single fluid conduit.” Id. (citing Pet. 35–42, 49–52, 56–57; Ex. 1002 ¶¶ 92, 96, 99, 102, 103, 122, 124–126, 128, 138). We did not misunderstand or misapprehend this argument; indeed, we noted its logical appeal. Dec. 21 n.10. We instead declined to credit the inference underpinning this argument, i.e., that a single-manifold embodiment would use a single fluid conduit, because the only reference of record having a single distribution module coupled to a single manifold had two fluid conduits extending from the distribution module to the well. Id. Accordingly, we are not persuaded that we misunderstood or overlooked Petitioner’s obviousness arguments.” slip op. at 11

  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,903,190
• Saudi Arabian Oil Company v. SK Innovation Co., Ltd.All claims unpatentable
  PTAB · May 9, 2019 · IPR2018-00159 · APJ Monté T Squire · IPR · Final written decision

  Claim 2 was held unpatentable as anticipated by Novomer 1; the contingent motion to amend was granted, substituting claim 5.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we granted Petitioner’s request and instituted an inter partes review for challenged claim 2. Paper 9 (“Institution Dec.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s assessment regarding the level of ordinary skill in the art. Mot. Amend 7. We determine the level of ordinary skill proposed by Petitioner is consistent with the ’979 patent and the asserted prior art, and we adopt that level in construing and deciding the patentability of claim 2.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In the Institution Decision, we determined that the phrase “A poly(alkylene carbonate) represented by Formula 10” did not require construction at that stage. Institution Dec. 9; see also id. at 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms which are in controversy need be construed and only to the extent necessary to resolve the controversy)). Neither party has argued post-institution that this phrase of claim 2 needs be construed. See PO Resp. 2; Pet. Reply 1–3. We conclude that no further construction of this phrase is necessary.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In the Institution Decision, we agreed with Petitioner that the variable construction of the phrase “each independently” is the broadest reasonable interpretation in light of the specification, and construed the phrase to mean that “each variable R81, R82, R83, and R84 is independent from one instance to another throughout the polymer.” Institution Dec. 13–14. Based on that construction, we also determined in the Institution Decision that claim 2 encompasses the following genera: (1) “Genus A,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (Pet. 24); (2) “Genus B,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 25–26); (3) “Genus C,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (id. at 26); and (4) “Genus D,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 27). Institution Dec. 12–13. Neither party opposes adopting the variable construction of the phrase “each independently” and the determination that, under the variable construction, claim 2 encompasses Genus A, Genus B, Genus C, and Genus D. PO Resp. 2; Pet. Reply 1–3. We maintain the variable construction of the phrase “each independently” on the complete record.” slip op. at 11

  Patent outcomesUS 9,023,979 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,023,979
• Guangdong Alison Hi-Tech Co., Ltd. v. Aspen Aerogels, Inc.Institution denied
  PTAB · Jun 8, 2017 · IPR2017-00413 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 5–7, 9, or 49 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “model of glass wool, Corning model 3950, is resilient. Ex. 1003 ¶¶ 95–101 (testing a sample of Corning model 3950 for compressibility and resilience). This does not support Dr. Scherer’s or Petitioner’s conclusion, however, that all types of glass wool are resilient. Nor does it, at least on this record, support the conclusion that the glass wool disclosed in Ramamurthi is resilient. Ramamurthi’s glass wool is described as “pyrex glass wool (Corning SiO2 fibers, 8 μm diameter).” Ex. 1004, 7:20–21. Much of this description matches the description of Corning model 3950. Ex. 1018, 1 (describing Corning model 3950 as “Glass Wool, PYREX” and having a “[f]iber diameter” of “0.008 mm”). But Ramamurthi describes its glass as constituting individual fibers laid down “in a thin layer,” which does not match the product tested by Dr. Scherer. Ex. 1004, 7:34–36. The fact that it would be possible to rearrange Ramamurthi’s glass wool fibers into a configuration or arrangement similar to that represented by Corning model 3950, which is resilient, is not sufficient to demonstrate the inherency of such resiliency in the material disclosed by Ramamurthi. “Inherency . . . 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.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “obvious to a person of ordinary skill in the art given the teachings of Sonoda and either Ramamurthi or Ryu. Pet. 53–55. Claim 7 depends from claim 1. Ex. 1001, 14:63–64. Accordingly, claim 7 incorporates all the limitations of claim 1. 37 C.F.R. § 1.75(c). Petitioner’s obviousness argument rests on the assertion that “Sonoda discloses all the limitations of claim 1.” Pet. 53. As discussed above, however, we determine that Petitioner has not shown sufficiently that Sonoda discloses the “lofty fibrous batting sheet” that is recited in claim 1. Petitioner does not argue that Ramamurthi or Ryu remedies this deficiency. Even if Petitioner had so argued, as discussed above, we determine that Petitioner has not shown sufficiently that either Ramamurthi or Ryu discloses the “lofty fibrous batting sheet” that is recited in claim 1. Because Petitioner’s argument for the obviousness of claim 7 relies on Sonoda anticipating claim 1, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the obviousness of claim 7 over the combination of Sonoda and either Ramamurthi or Ryu.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the determination that Ramamurthi’s glass wool inherently possesses both bulk and resilience. First, Dr. Scherer testifies that all glass wool shows these properties. Ex. 1003 ¶ 94 (“Glass wool (and materials like it) are compressible and resilient enough to re-expand back to their original shape. Glass wool may also have low thermal conductivity and low density, qualities that contribute to the ‘loftiness’ of the fibrous material.”). Dr. Scherer does not provide an explanation supporting this conclusion for all types of glass wool or all “materials like it.” Id. Accordingly, this testimony “is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,078,359

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.