- PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016), 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Brycer, LLC / Brycer Management, Inc. v. Tegris, Inc.All claims unpatentablePTAB · Jan 16, 2025 · IPR2023-01196 · APJ Hubert C Lorin · IPR · Final written decision
Claims 8–16 are unpatentable under §103 over Key, Chauhan, Sweeney, and McKinney; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“patentable weight. See II.C.4.b. Accordingly, it is sufficient that Petitioner has shown that Key discloses a management software that meets the claim but for processing information about, for example, pressure vessels rather than fire hydrants. Ex. 1005 ¶ 15. Even if we assume arguendo that “fire hydrant” should be given patentable weight, Petitioner shows that Chauhan discloses software for managing information about assets such as fire hydrants. “Chauhan discloses a ‘UtilityCenterTM [that] is an integrated GIS [geographic information system] suite of applications that manages information across the entire utility.’” Pet. 24 (citing Ex. 1016 ¶¶ 39–42, Fig. 1; Ex. 1003 ¶¶ 84–86, 128–129) (alterations in original). Petitioner contends that Chauhan is intended for “‘fire hydrant inspections’” and that there is a “‘HYDRANT Theme’ that allows an inspector to ‘edit and view inspection fields.’” Id. at 24–25 (citing Ex. 1016 ¶ 207; Ex. 1003 ¶¶ 85, 127). According to Petitioner, “Chauhan discloses that its UtilityCenter has wide applicability and that the ‘same technology’ can be used for various other assets and applications including . . . ‘fire and police departments . . . .’” Id. at 25 (citing Ex. 1016 ¶¶ 42, 218; Ex. 1003 ¶¶ 114–115, 130). According to Petitioner, this renders obvious the use of management software to manage information concerning fire hydrant assets. This discussion sufficiently addresses the “fire hydrant management software” limitation consistent with Petitioner’s (and our) view that the phrase “fire hydrant” relates to the content of the data the software processes. See supra § II.C.4.a. In regards to Chauhan, Patent Owner argues that it “relates to a different technical field.” PO Resp. 49. While Mr. MacInnes notes Chauhan states that the same technology “has been tailored to the specific needs of public agencies, such as fire and police departments” (see EX1003, ¶130), Chauhan nowhere explains the needs of the fire department or how the utility outage management system was modified, or why a fire department would need a power outage management system, as described in Chauhan. Id. at 49–50. We are unpersuaded. Given that Key and Chauhan both teach” slip op. at 54
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“Accordingly, we do not apply a presumption of nexus that the ’966 patent’s claims are linked to the objective indicia of nonobviousness, because Patent Owner has not shown that TegrisFire and Brycer products embody and are coextensive with the claims. Nexus may still be shown if the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention. See Fox Factory, 944 F.3d at 1373–74 (“[T]he patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention.” (emphasis added)). However, for the following reasons, that, too, has not been sufficiently established. 2. Unexpected Results Regarding unexpected results, Patent Owner relies on two case studies, one of Lynwood, WA Fire Department (Ex. 2004) and the other of Richland, WA Fire Department (Ex. 2025). According to Patent Owner a number of benefits were seen from using the TegrisFire product, such as the number of licensed inspectors increased. Ex. 2004 (9 (“147.5%”)); Ex. 2025 (9 (“200%)”). Other improvements were seen in the decreased number of impaired assets and in the increased communication between owners and inspectors. PO Resp. 63–64 (citing Ex. 2004, 9–11; Ex. 2015 ¶ 128; Ex. 2025; Ex. 2015 ¶ 155). But there is insufficient evidence suggesting that any of these” slip op. at 72
- ExcludeMotion to exclude, deniedDenied
“We have not discussed the provisional applications from which the ‘966 patent claims priority and therefore have not relied Mr. MacInnes’s testimony about said priority. For the foregoing reasons, the Motion to Exclude is denied.” slip op. at 85
Patent outcomesUS 11,126,966 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,126,966 - PTAB · Dec 13, 2024 · IPR2024-00990 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–23 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we grant Petitioner’s request and institute an inter partes review of claims 1–12 and 14–23 of the ’007 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“near the heel in a 5,000-feet horizontal wellbore, than the shunt tubes in the lower-pressure side.” Id. (citing Ex. 1005, 28:17–24, 30:16–20; Ex. 1003 ¶ 292). Petitioner points out that Yeh “express disclos[es] that a ‘certain surrounding wall thickness is required’ ‘to stay within the burst, bending, and collapse ratings.” Id. at 42 (quoting Ex. 1005, 28:20–23; citing Ex. 1017, 24 (Equation (14) showing burst pressure roughly directly proportional to wall thickness), Ex. 1003 ¶ 295). Mr. Chambers provides support, explaining that Yeh “expressly taught that ‘to maintain the mechanical integrity (that is, to stay within the burst, bending, and collapse ratings) of the secondary flow paths, a certain surrounding wall thickness is required.’” Ex. 1003 ¶ 291 (quoting Ex. 1005, 28:20–24). According to Mr. Chambers, “a POSITA understood that containing internal pressure within tubing required a certain wall thickness, wall thickness being one of three parameters (wall thickness, tubing material, and tubing outside diameter) that could be adjusted to meet pressure containment requirements.” Id. “[A] POSITA would understand that the tubing wall thickness in the eccentric screens would be less than the tubing wall thickness in the concentric screens due to the lower pressure requirement.” Id. at ¶ 295. Given said disclosures and supporting testimony, at this stage, Petitioner sufficiently shows on this record that Yeh suggests limitation 1[e].” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: [at] the time of the alleged invention in 2018, a POSITA[3] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also, additional education in a relevant technical discipline could compensate for less experience in the relevant field, and vice versa. Pet. 31–32 (citing Ex. 1003 ¶¶ 36–40). Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 10
§ 103 obviousnesscites GrahamPatents in suitUS 11,333,007 - Dental Imaging Technologies Corporation v. 3shape A/SInstitution deniedPTAB · Oct 29, 2024 · IPR2024-00849 · APJ James J Mayberry · IPR · Institution
The Board denied institution of review for claims 1, 2, 4, 5, 9, 10, and 12–17 under General Plastic discretion and denied joinder; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“g. Summary and Conclusion In summary, we determine that factors 1, 3, and 6 weigh in favor of discretionary denial, factors 2, and 4 weigh against discretionary denial, and factors 5 and 7 are neutral. Considering these factors as a whole, and on this record, we determine that the facts here weigh in favor of exercising discretion under 35 U.S.C. § 314(a) to deny institution. Significant to our analysis is that the similarities in the facts in the instant proceeding and Uniloc outweigh the differences. Specifically, the primary difference between the facts here and the facts in Uniloc is that Petitioner explained its knowledge of the prior art and, as to Lehmann II, Petitioner demonstrated that it was not aware of Lehmann II prior to filing the first petition. In Uniloc, Apple made no such showing. As we discuss above, however, the significance of Lehmann II in this proceeding may be limited, given our initial determination of the merits of Patent Owner’s arguments against Lehmann II in the Medit IPR. As such, the lack of knowledge of Lehmann II is insufficient to counter the similarities between this proceeding and Uniloc.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Merits Analysis Having decided to exercise discretion to deny institution, we need not turn to the merits of the Petition and Motion. III. CONCLUSION We determine that exercising our discretion to not institute this proceeding is warranted based on our precedential decisions in General Plastic and Uniloc. Accordingly, the Petition and Motion are denied.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. “To join a party to an instituted [inter partes review (IPR)], the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First, the statute requires that the Director (or the Board acting through a delegation of authority) . . . determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise h[er] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. As the moving party, Petitioner bears the burden of proving that it is entitled to joinder. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 14
Discretionary denialPatents in suitUS 10,695,151 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentablePTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision
Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15
Patent outcomesUS 11,373,058 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · GrahamPatents in suitUS 11,373,058 - Mito Red Light, Inc. v. Joovv, Inc.Institution deniedPTAB · Sep 19, 2024 · IPR2024-00621 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 3, 9, 10, 11, 16, 17, and 19 were unpatentable under either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For at least the foregoing reasons, Petitioner has not met its burden of showing, with particularity, that Dijkstra teaches a plurality of lights as claimed. The evidence Petitioner presents does not sufficiently support Petitioner’s contention that Dijkstra shows a light therapy device comprising a plurality of lights as claimed. Furthermore, Petitioner provides no discussion as to why it would have been obvious to one of ordinary skill in the art, given Dijkstra, to provide a light therapy device with a plurality of lights with reasonable expectation of success. Pet. 8–10. Accordingly, the Petition does not establish a reasonable likelihood that independent claim 1 is unpatentable over Dijkstra.” slip op. at 18
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“A reference qualifies as prior art for an obviousness determination under 35 U.S.C. § 103 only when it is analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also Innovention Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed or (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Klein, 647 F.3d at 1348.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the above, and on this record, the parties do not assert terms that are in controversy. Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Therefore, we determine that no express construction of any term is necessary. C. Level of Ordinary Skill in the Art” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s proposed definition of the level of ordinary skill. Prelim. Resp. 14 (citing Ex. 2014 ¶¶ 40–42). We apply Petitioner’s description of the qualifications of a POSITA in our analysis as it appears consistent with the problems addressed in the ’719 patent and the prior art. D. Overview of the Prior Art References” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,253,719 - 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution deniedPTAB · Aug 19, 2024 · IPR2024-00549 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
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 and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–20 of the ’798 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’798 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’798 patent would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. 4 U.S. Patent Application Publication No. 2012/0062701 A1, published Mar. 15, 2012 (Ex. 1010) (“Dillon”). 5 A. Johnson, “Spin-images: A Representation for 3-D Surface Matching,” Ph.D. Dissertation, The Robotics Institute, Carnegie Mellon University, August 1997 (Ex. 1011) (“Johnson”). Pet. 7–8 (emphasis added). Patent Owner counters that a POSITA at the time of the invention of the ’798 patent would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning including 3D imaging systems and 3D modeling techniques. Additional education reduces the threshold for years of experience in the field, and vice versa. Prelim. Resp. 5 For purposes of this Decision, the level of ordinary skill in the art is” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner notes there are proposed constructions of terms in the related litigation, including constructions for “‘contiguous scan’” and “‘occlusal surface.’” Pet. 8–9. Here, Petitioner further contends that the term “‘occlusal surface’” means “‘the biting surface of a patient’s teeth’” and that “‘contiguous scan’” means “‘a scan of an/the occlusal surface made in a single, uninterrupted motion of the scanning wand.’” Id. at 8. Nonetheless, Petitioner contends also that “resolution of this Petition does not depend on which constructions are used because these features of the claims are disclosed by the prior art regardless of the construction.” Id. at 9. Patent Owner disagrees that no claim terms need construction. Prelim. Resp. 6. According to Patent Owner, “3Shape has not adequately addressed how numerous elements of the challenged claims are disclosed or suggested by the prior art under 3Shape’s proposed construction of the phrase ‘contiguous scan of an occlusal surface.’” Id. Based on our review of the parties’ arguments and evidence, no construction is necessary to resolve the parties’ disputes. 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 12
- BurdenNot shown unpatentable
“As described, we understand Babayoff to teach that data entities IS′1, IS′2, . . . IS′n are stitched together after identifying and removing soft tissue data from the unstitched data sub-entities. Our understanding of Babayoff is consistent with Figure 15, where Babayoff teaches that the entities IS1, IS2, . . . ISn) are provided in step 1210 “to be stitched,” but are not stitched until step 1240. Ex. 1008, Fig. 15. Babayoff further discloses that the images are stitched together after soft tissue identification and/or removal: [i]n the next step 1230 of the method, the modified entities (IS'1, IS'2, ... IS'n) are then manipulated in a similar manner in which the original entities (I1, I2, ... In.) are manipulated in the prior art, mutatis mutandis, to register and then stitch the various modified entities (IS'1, IS'2, ... IS'n) together to provide a composite entity I’ that comprises the data points corresponding at least to the hard tissues. Id. at 24:41–47 (emphases added). As such, in Babayoff, the soft tissue is removed prior to stitching and generating the composite entity I’. Babayoff further teaches that “[b]y eliminating the data associated with the soft tissues, and proceeding with stitching only the hard tissues using the color data, the quality of the stitching procedure is significantly better than when using the full intra-oral data for the stitching procedure.” Id. at 5:12–16 (emphases added). Given at least this disclosure, we agree with Patent Owner that Petitioner has not sufficiently explained how Zhang combined with Babayoff discloses claim limitations [1.3], [1.9], [1.10], and [1.11]. More specifically, Petitioner relies upon Babayoff to disclose the removal of soft tissue data from the generated contiguous scan, but does not explain how Babayoff teaches this removal from the contiguous scan that has been generated by stitching images together prior to soft tissue data removal.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,234,798 - 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution deniedPTAB · Aug 19, 2024 · IPR2024-00548 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show that the cited art taught multiple successful bite registrations, as required by challenged claims 1–21.
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 has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the Federal Circuit has noted, it is not within our statutory authority to determine questions of indefiniteness of issued claims within a inter partes review proceeding. Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1350 (Fed. Cir. 2020). As such, we make no findings as to any alleged indefiniteness. The Federal Circuit, however, also has stated that “[t]he indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.” Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (emphasis added). Here, we are presented with a circumstance in which our determinations in this proceeding are not precluded by the allegations of indefiniteness. Thus, we will not deny the Petition based on Petitioner’s failure to identity corresponding structure for the purported means-plus-function terms of claim 13. Further, based on the record before us, we see no need for express construction of any term at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“D. Asserted Obviousness Each of the independent claims, 1, 13, 18, 20, and 21, recite, in relevant part, obtaining at least two successful bite registrations corresponding to different displayed bite surfaces. Ex. 1001, 9:50–52 (claim 1), 11:13–15 (claim 13), 12:5–6 (claim 18), 12:31–32 (claim 20), 12:53–55 (claim 21). Patent Owner argues, and we agree, that “[b]y its plain language, this limitation requires obtaining multiple successful bite registrations.” Prelim. Resp. 20. In each of the asserted grounds, Petitioner relies on Sommer alone or with Malfliet to teach this limitation in each of the independent claims. Pet. 19–20 (claim 1), 55 (claim 13), 58 (claim 18), 63 (claim 20), 37 (claim 21). We are not persuaded that Petitioner has shown sufficiently that the art teaches this limitation.” slip op. at 13
- Skill levelOther
“Petitioner asserts that a person of ordinary skill in the art would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. Pet. 9 (citing Ex. 1009 ¶¶ 32–33). Patent Owner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning, including 3D imaging systems and 3D modeling techniques.” Prelim. Resp. 5. Patent Owner adds that “[a]dditional education reduces the threshold for years of experience in the field, and vice versa.” Id. For purposes of this Decision, the level of ordinary skill in the art is not dispositive and our determination would be the same under either party’s proposal. See Prelim. Resp. 5 (“Patent Owner’s arguments herein apply regardless of which definition of a POSITA is adopted.”). Nonetheless, we note that Petitioner’s proposal is reasonable and consistent with the prior art, and is further supported by Dr. Saber’s testimony. Ex. 1003 ¶ 33; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,076,391 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00129 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 1–30 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstitution denied
“Petitioner, however, does not explain how Agrawal’s web advertising system for identifying illegitimate advertising link request activity would have enhanced the reach of Oliver’s promotions. Oliver’s lead generation tool presents promotions to users via passive entities such as QR codes and enables users to respond to these promotions via text message. As Petitioner notes, Oliver discloses that its “passive entities can be incorporated into advertising” and “can be incorporated into ‘electronic visual media’ on the Internet.” Pet. 29 (citing Ex. 1011 ¶ 34). Petitioner does not adequately explain why Agrawal’s web advertising system is better that Oliver’s use of passive entities. Pet 28 (citing Ex. 1005, 5:45–63; Ex. 1002 ¶ 92). Petitioner argues that Agrawal “allows ads to be targeted at users likely to find the subject matter appealing.” Id. at 28–29. Yet the fact that Agrawal discloses retrieving advertising links relevant to a user’s search query, does not explain how or why that user is more “targeted” than another user who scans a passive entity such as a QR code as in Oliver. See Ex. 1005, 5:57– 58 (Agrawal discloses “using the keyword to select the appropriate advertising links.”), see also Ex. 1011 (Oliver teaching to “create a passive entity, such as a QR code or NFC tag associated with a promotion.”). In addition, Petitioner does not adequately explain how Agrawal’s method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are responding to passive entities in advertisements for those products by opting in.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundInstitution denied
“d) Conclusion Re Petitioner’s Reasoning in Support of the Proposed Combination For the reasons discussed above, we determine that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Khanna as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,553,074 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00069 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 15–30 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Molinet as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . result[ing] in inaccurate fees being charged for advertising services.”). Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the server-based software techniques of Oliver and Molinet at Agrawal’s Advertising System 120” “to obtain the benefits of each system.” Pet. 31 (citing Ex. 1002 ¶ 95). Petitioner’s reasoning does not adequately explain why a person of ordinary skill in the art would make the proposed modifications and instead appears to be based on improper hindsight reasoning. Specifically, Petitioner does not adequately address which benefits of each system a person of skill in the art would be motivated to combine and what the advantages of combining functionalities of the references into a single server would be.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,897
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.