- Innoscience America, Inc. v. Infineon Technologies Austria AGInstitution deniedPTAB · Dec 11, 2024 · IPR2024-00975 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“possessed at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design.” Pet. 1. Petitioner also asserts that “[a]dditional education could substitute for professional experience and vice versa.” Id. On the present record, Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 1–78. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’481 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the present record, neither party proposes any claim terms for construction. Pet. 3; Prelim. Resp. 1–78. As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. 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 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“‘run[ning] generally parallel to the lateral extent of a semiconductor material or semiconductor carrier’” and that “[t]he ’481 patent . . . describes a device that ‘has a lateral drift path.’” Pet. 24 (quoting Ex. 1001, 3:14–18, 4:37–38). Patent Owner directs us to a statement in the prosecution history that “[a] lateral transistor is a transistor in which current flows across ‘in the direction parallel to’ the device surface,” as opposed to “a vertical transistor,” in which “[c]urrent ‘flows in the direction normal to’ the device surface.” Prelim. Resp. 8 (quoting Ex. 1002, 33–34). Thus, the parties generally agree that a lateral transistor is a transistor in which current flows in a direction parallel to the surface of the transistor. Petitioner argues that Nega teaches or suggests a transistor in which current flows parallel to the surface because Nega’s source, gate, and drain electrodes “are spread laterally in a lateral drift path, instead of vertically stacked.” Pet. 24–25 (citing Ex. 1005, Fig. 2). Patent Owner argues to the contrary that the placement of source, gate, and drain electrodes in the same lateral plane, rather than in a vertical stack, does not necessarily indicate that the current flow within the transistor is parallel to the surface. Prelim. Resp. 47–48 (citing Ex. 2002, 7–8, Figs. 1.7a, 1.7c). According to Patent Owner, transistors with electrodes in the same horizontal plane can have either lateral or vertical current flow. Id. Thus, Patent Owner argues, the lateral placement of the source, gate, and drain electrodes in Nega does not mean that Nega teaches or suggests a lateral transistor. On the present record, we agree with Patent Owner that Petitioner has not shown sufficiently that Nega teaches a transistor in which current flows in a direction parallel to the surface, rather than in a direction normal to the surface. Transistors with current flow in either direction can have electrodes located on a common horizontal plane, with the direction of the current flow depending on the configuration of doped semiconductor regions located below the electrodes. Ex. 2002, Figs. 1.7a, 1.7c. Because Petitioner relies on the location of Nega’s electrodes, rather than on any particular configuration of doped semiconductor regions in Nega, Petitioner does not show sufficiently that Nega teaches a lateral transistor.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,899,481 - Commscope Technologies LLC v. Belden, Inc.No claims unpatentablePTAB · Dec 11, 2024 · IPR2023-01056 · APJ Kimberly Mcgraw · IPR · Final written decision
CommScope did not prove claims 1–3, 9–14, and 16–18 unpatentable; the asserted anticipation and obviousness grounds failed on the barrier tape’s conductive material extending to the lateral edges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Prior to institution, Patent Owner’s declarant asserted that a POSITA would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry and disagreed that industry experience specifically with respect to twisted-pair data cables was necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner stated, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. In our Decision on Institution, we adopted Petitioner’s proposal of a person of ordinary skill in the art (POSITA) as someone that “would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Inst. Dec. 7–8. During the trial, neither party disputed our definition of a POSITA nor argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Reply; PO Resp. 12 n.4 (agreeing the POSITA definition does not impact analysis of issues presented). Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 10
- Expert testimonyDecided for patent owner
“Petitioner’s arguments are not persuasive. Mr. Cornelison’s testimony that a POSITA would understand that the tape shown in Figure 13C “has three layers aligned along the side edges” is not credible. See, e.g., Ex. 1006 ¶ 138. Mr. Cornelison’s testimony that Figure 13C is only “intended to identify and illustrate the three different layers of the multi-layer tape,” not to show the relative positions of the layers relative to each other (id. ¶ 137), is belied by his own testimony, in which he states that Figure 13C shows “metallic layer 133 extends to the front edges of dielectric layers 135 and 137 (id. ¶ 136). Additionally, neither Petitioner nor Mr. Cornelison provide persuasive evidence to support the contention that it would take “much more time and be more complex to make all three layers” in Figure 13C offset from each other or that it would be more costly to make than using the customary slitting processes. See Ex. 1006 ¶ 138. Although Mr. Cornelison provides evidence as to how the slitting process can be used to manufacture barrier tape, he does not provide any evidence to support his contention that the proposed slitting processes is in fact less expensive or complex than other methods. See Ex. 1006 ¶ 138. Indeed, Mr. Cornelison does not address the particular methods disclosed in Glew to manufacture the disclosed multi-layer tapes nor persuasively explain why these disclosed methods would be more costly or complex as compared to the “slitting” process. Ex. 1008 ¶¶ 199–201 (stating the multi-layer tapes can be manufactured in a “variety of ways” including bonding the various layers using adhesive or other bonding agents,” mechanically affixing or bonding the layers, needlepunching, thermal bonding, ultrasonic welding, or calendar bonding). We determine that this portion of Mr. Cornelison’s testimony is conclusory and unsupported and is entitled to little weight. Accordingly, Petitioner has not sufficiently shown that Glew discloses conductive material that extends to the lateral edges of the dielectric material as required by claims 1 and 18. As such, Petitioner has not shown a by a preponderance of the evidence that Glew anticipates independent claims 1 or 18 or the challenged claims that depend therefrom.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Thus, although the Specification does not use the term “lateral edge,” the Specification and figures of the ’030 patent make clear, that in the embodiments having a conductive layer that extends to the edges of the dielectric layers of the tape, the referred to “edge” is the edge of the “long side” of the tape that extends in the longitudinal direction. See, e.g., Ex. 1001, 7:49–51 (stating in some embodiments conductive layer 302 may not extend to the edge of tape 110), 8:1–25 (stating, inter alia, pairs 102 could electrically couple to the corresponding edge 306 resulting in increased ANEXT), 8:41–46, 10:30–36 (stating that the tape edge lies over a pair of conducts and the pair generates more ANEXT). Our construction of term “lateral edge” is supported by Roberts, which also refers to the edges of the long side of the tape extending in the longitudinal direction as the “lateral edges.” See, e.g., Ex. 1009, 2:20–24 (“a shield made from a plurality of tapes helically disposed, the lateral edges of which overlap adjacently lying tapes”), 2:42–46 (“a shield composed of a plurality of …, the lateral edges of which overlap adjacently disposed tapes”), 4:27–33 (“the plastic-coated metal foil shield (15) [FIG. 2] has lateral edges that overlap,” “the lateral edges of the shield overlapping one another”), 4:34–40 (“The lateral edges of the helically disposed tapes [of FIG. 3] overlap adjacently lying tapes.”), 5:65-75 (“the shield (15) [of FIG. 10] is made up of a plurality of tapes, the lateral edges of which overlap adjacently disposed like tapes”), Figs. 2, 3, 10. We credit Dr. Eldering’s testimony that these disclosures of Roberts shows that a POSITA would understand that a tape’s “lateral edges” are the edges running along the sides of the tape parallel to the longitudinal direction. See Ex. 2001 ¶¶ 64–65; see also Thales Visionix, Inc. v. United States, 415 F.3d 1335, 1348 (Fed. Cir. 2020) (considering whether the proposed claim construction is “consistent with the prior art’s usage of that term”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“contentions set forth in its Petition are insufficient to show that Cook discloses a barrier tape having a conductive material contained between two layers of dielectric material where the conductive material extends to each lateral edge of the two layers of the dielectric material, as required by claims 1 and 18, and further that the conductive material be continuous as required by claim 1. We agree with Patent Owner that Petitioner relies on multiple disparate embodiments of Cook for each of these limitations without sufficiently articulating how a single embodiment satisfies the requirements of claim 1 or 18 or articulating how the disparate embodiments may be combined to arrive at claim 1 or 18. See, e.g., PO Resp. 18–25; Pet. 18–21; see also NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (stating in order to establish anticipation, “it is not enough that the prior art reference . . . include multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention” and that the “reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”).” slip op. at 29
Patent outcomesUS 9,991,030 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,991,030 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitutedPTAB · Nov 22, 2024 · IPR2024-00948 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR on claims 1–3, 7–10, 12, 13, and 19 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on the Hanisch-Dunagan combinations with added references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in demonstrating that claim 1 is unpatentable as obvious over Hanisch in view of Dunagan and Hayashi, Meador, or Shin. 5. Claims 2, 3, and 7–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’097 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends that one of ordinary skill in the art “would have had at least a master’s degree in chemical engineering, mechanical engineering, materials science/engineering, or a related field, and three to five years of experience in design and implementation of battery recycling processes.” Pet. 15–16. Patent Owner argues to the contrary that a person of ordinary skill in the art “would have [had] at least a Bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithium-ion batteries.” Prelim. Resp. 13. On the present record, neither party argues that the result would be any different should we adopt a different definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Patent Owner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner argues that “[t]he ’097 Patent expressly defines ‘drying’ to mean ‘the removal of at least one solvent in the conducting salt.’” Pet. 16 (quoting Ex. 1001, 2:23–25). Petitioner also argues that “[a]ll other terms should be given their plain and ordinary meaning under Philips and do not need further construction for the purposes of this Petition.” Id. Patent Owner argues that “[n]o claim terms require express construction to determine that the Petition does not establish a reasonable likelihood of unpatentability of any claim and, thus, deny institution.” Prelim. Resp. 13. Based on the present record, we need not expressly construe any claim terms at this time.6 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 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“On the present record, we do not find the relationship between URT and Petitioner to be significant to the degree that raises concerns under Valve and General Plastic. In Valve, two factors affected the determination that there was a significant relationship between the two petitioners at issue: “Valve and HTC were co-defendants in the District Court litigation,” and “the petitions . . . challenge[d] the same claims of the [challenged] patent.” IPR2019-00062, Paper 11, 10. Here, one of these factors is absent, and the other is not entirely present. URT and Petitioner are not co-defendants in the related infringement lawsuit, which accuses only Petitioner. Ex. 2014, 1. As for the claims challenged in the two petitions, Patent Owner is correct that all claims challenged in the present proceeding are also challenged in IPR2024-00887, but the reverse is not true. The petition in IPR2024-00887 challenges claims 15–17 of the ’097 patent, none of which is challenged here. Compare Pet. 3, with IPR2024-00887, Paper 2, 4–5. Thus, there is a significant difference between the present situation and that in Valve.” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - PTAB · Nov 20, 2024 · IPR2024-00887 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–3, 7–10, 12, 13, and 15–19 on all asserted grounds, finding a reasonable likelihood that claim 12 is anticipated by LithoRec.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with 1 In the Introduction and section headings of the Petition, Petitioner identifies claims 1–3, 7–9, 12, 13, and 15–19 as the challenged claims. Pet. i–ii. In the substantive content of the Petition, however, Petitioner includes claim 10 as a challenged claim as well. Id. at 34–35. respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a B.S. degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry [experience] in the recycling or processing of lithiumion batteries.” Pet. 14. On the present record, Patent Owner does not contest Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[n]o claim construction is needed,” because “[t]he claims are unpatentable under any reasonable interpretation.” Pet. 15. That said, Petitioner directs us to alleged definitions of several terms in the specification or prosecution history of the ’097 patent. Id. at 15–17. Patent Owner argues that “[c]laim construction is not required to deny the Petition.” Prelim. Resp. 26. Based on the present record, we agree with both parties that we need not expressly construe any claim terms at this time.6 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 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). In addition, “[a]n anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1381 (Fed. Cir. 2003). slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00874 · APJ Erica A Franklin · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show Bansal's claimed light intensity arrangement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016)). Obviousness grounds must be supported with “articulated reasoning with some rational underpinning” and not by “mere conclusory statements.” See KSR Int’l Co., 550 U.S at 418. slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“agree with Patent Owner that Petitioner has not sufficiently shown for institution that Bansal teaches or suggests arranging light sources “such that a higher intensity of light is emitted proximate the second edges compared to the intensity of light emitted not proximate the second edges,” as required by the challenged claims. Instead, Petitioner demonstrates how Bansal describes varying the density of light source distribution throughout the array to provide a higher density of light in the entire peripheral area of the array, which includes the areas proximal to both the first and second edges, as compared to the central area of the array. See Pet. 36–37; Ex. 1005 ¶ 25. In this regard, Petitioner relies on Bansal’s Figure 9b, asserting that it “shows one embodiment where more light sources are placed near the edges of the panel compared to the light sources in the center.” Pet. 36–37. The comparison of Bansal’s light density between the entire periphery and the central area of the array is insufficient. What is missing from Petitioner’s argument and discussion of Bansal is how Bansal teaches or suggests a configuration that provides a higher density of light proximate to the second shorter edges of the periphery in comparison to the remaining areas of the array, which includes the first longer edges of the periphery. Without that discussion, we find that Petitioner has not shown sufficient for institution that Bansal is persuasively relied upon for the light source arrangement limitation of the challenged claims. likelihood of prevailing in its obviousness challenge of independent claims 1, 5, 16, 20, or 21, or dependent claims 2, 4, 6–8, and 17–19 over Larsen, Bansal, and Jones.” slip op. at 17
- Skill levelOther
“would have had at least a Bachelor of Science in electrical engineering, physics, biomedical engineering, computer engineering, chemical engineering, material science, or a related scientific or engineering field, and at least one year of work or research experience in optics, optoelectronics, radiometry, photometry, photodynamic diagnosis (PD), photodynamic therapy (PDT), phototherapy (PT), or a related field. Pet. 8. Petitioner asserts that, alternatively, a “POSITA in the relevant time frame would have had at least four years of industry or academic experience in optics, optoelectronics, radiometry, photometry, PD, PDT, PT, or a related field.” Id. (citing Ex. 1003 ¶ 37). According to Patent Owner, a person of ordinary skill in the art at the time the application for the ’028 patent was filed, “would have had a M.D. and/or a Ph.D. in an electrical engineering, physics, optical sciences, optical engineering, or a related scientific or engineering field, and at least one to two years of work or research experience in optical engineering, optics, optoelectronics, phototherapy (‘PT’), PDT, or a related field.” Prelim. Resp. 16. Patent Owner asserts that, “[a]lternatively, a POSITA could have a Bachelor’s degree in one of the above areas and at least three to four years of work or research experience in that area.” Id. (citing Ex. 2001 ¶¶ 30–31). We note that the parties’ proposed definitions are largely similar. To the extent that the proposed definitions differ, we do not need to resolve those differences as our findings and conclusion in this Decision would be the same under any of the proposed definitions.” slip op. at 9
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,697,028 - PTAB · Nov 8, 2024 · IPR2024-00834 · APJ Tawen Chang · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial under §§ 325(d) and 314.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (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). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“anticipated by Sonti. Pet. 3. To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims to find anticipation. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). In evaluating anticipation, it is permissible to take into account not only the literal teachings of the prior art reference, but also the inferences the skilled artisan would draw from it. Eli Lilly and Co. v. Los Angeles Biomedical Res. Inst. At Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017) (holding that the “dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference”). As such, “a reference 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.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (internal quotation and alteration marks omitted).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“b. Reasonable Expectation of Success Petitioner asserts that an ordinarily skilled artisan would have been motivated, with a reasonable expectation of success, to topically administer 1% tapinarof composition once a day to treat mild to severe plaque psoriasis in view of Sonti’s teaching to apply its compositions (including 1% tapinarof compositions) in various application frequencies (including once daily) to treat moderate to severe plaque psoriasis. Pet. 29–30 (citing, e.g., Ex. 1003 ¶¶ 182–184, 187–188; Ex. 1005 Abstract, ¶¶ 55, 196, 288, 387).” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerationsInstituted
“d. Objective Indicia of Non-obviousness Patent Owner asserts that, although the “Petition notes the patent’s ‘surprising[] and unexpected[]’ finding that once daily application of 1% tapinarof cream was just effective as twice daily application, . . . the Petition does not analyze, as the law requires, this surprising, unexpected finding in its obviousness arguments.” Prelim. Resp. 52. We are not persuaded by this argument. Immediately after the Petition’s acknowledgement that “[t]he specification [of the ’088 patent] contends that it was ‘surprisingly’ found that once daily application was just as effective as twice daily,” the Petition notes that, “[h]owever, during prosecution the examiner cited a set of prior art by Chen et al. disclosing treating plaque psoriasis by topically applying a composition containing 1% tapinarof once a day.” Pet. 1 (footnote omitted). Indeed, Patent Owner acknowledges that Petitioner counters “Applicant’s surprising and unexpected findings” by referring to the Chen references cited during prosecution, but asserts that “Chen . . . does not undermine Applicant’s surprising and unexpected findings” because “Chen discloses applying a composition containing 1% mixture of cis and trans 3,5-dihydroxy-4-isopropylstilbene, and not one containing 1% tapinarof (3,5-dihydroxy-4-isopropyl-trans-stilbene).” Prelim. Resp. 52–53.16 As 16 Patent Owner refers to its earlier discussion on this issue. Prelim. Resp. 53 (“As already discussed . . .”). That earlier discussion is with respect to the Chen references cited in Sonti (i.e., Exs. 1012 & 1013), not the Chen 40” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,590,088 - Fusion Orthopedics, LLC v. Extremity Medical, LLCSome claims unpatentablePTAB · Nov 4, 2024 · IPR2023-00894 · APJ Robert A Pollock · IPR · Final written decision
Claims 1–10 and 12–15 are unpatentable; claim 11 was not shown unpatentable. Substitute claims 16–25 and 27–30 are unpatentable over Mazur; claim 26 was not reached.
RulingsFinal written decision- BurdenMixed
“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). Here, however, not until its Reply does Petitioner belatedly suggest that Ferrante’s disclosure of bone screws with self-tapping ends equally meets the limitation of claim 10 (with respect to the first member) as with claim 11 (with respect to the second member), and that both claims are obvious in light of “evidence” from Ferrante “that it was well known to equip bone screws with self-tapping ends.” Reply 26–27. We do not discern these arguments in the Petition, and consider them waived. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371,1377 (Fed. Cir. 2023) (“While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made.”). In sum, Petitioner’s error in failing to first address limitations of claim 10 in the Petition specific to the Cognet/Ferrante combination indicates a failure to meet the particularity requirements for what must be in the petition and cannot be left to be filled in on reply. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2) (requiring, among other things, “a detailed explanation of the significance of the evidence”), 42.104(b)(4)–(5) (requiring that petition “specify where each element of the claim is found in the prior art patents or printed publication relied upon” and, regarding submitted evidence, state “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge”). Microsoft, 2022 WL 989403, at *6. Accordingly, Petitioner has not shown persuasively that claim 11 would have been obvious in light of Cognet and Ferrante for the reasons set forth in the Petition. slip op. at 41
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also find persuasive Mr. Dominguez’s explanation that one of ordinary skill in the art would have understood “bore” as including stepped diameter holes, sometimes described as a bore having a counterbore. See generally Ex. 1018 ¶¶ 4–29; Reply 3–10. Three of Mr. Dominguez’s illustrative examples are reproduced in the annotated figures below. The above figures show Mr. Dominguez’s annotated illustrations from the Jackson (Ex. 1019, Fig. 3), Brånemark (Ex. 1021, Fig. 4), and Ray (Ex. 1025, Fig. 1) references as discussed at paragraphs 10, 12, and 13, respectively, of Mr. Dominguez’s Second Declaration. With reference to the above figures, Mr. Dominguez testifies that “Jackson describes a bone repair set screw in which ‘[t]he bore 27 comprises a first bore section 31, a second bore section 32,’ etc. delineated by shoulders 41, 42, etc. (Ex. 1019, 5:24– 43)” (Ex. 1018 ¶ 10); “Brånemark describes an osseous implantation device having body 1ʺ with first and second holding portions 21ʺ, 31ʺ and ‘an inner through bore with a first portion 4ʺ in the first holding portion and a second portion 5ʺ in the second holding portion.’” Ex. 1021, 4:44–46” (id. ¶ 12); and Ray discloses surgical calipers including “handle 12 having ‘stepped cylindrical bore 14,’” wherein “[c]ollar 20 of a shaft inserted in the bore ‘rests against a step of the bore 14’ (2:14–15)” (id. ¶ 13). Patent Owner responds that Mr. Dominguez’s examples “that allegedly show a single bore encompassing two or more stepped-diameter holes or a counterbore . . . . are specific to these references and divorced from the disclosures of the ’166 patent.” Sur-Reply 7. Insofar as the ’166 patent makes no mention of the term “bore” outside the claims, and Mr. Dominguez’s examples are all taken from the field of orthopedic surgery, we do not find this argument persuasive. Patent Owner further appears to contend that exemplary references to a “cylindrical stepped down bore” or a “stepped cylindrical bore” are too specific to be within the scope of the term “bore.” Sur-Reply 7–8. As these terms merely describe species within a larger genus, and Patent Owner presents no cogent reason to exclude them, we do not find this argument availing. Relatedly, we are also not persuaded by Patent Owner’s argument that “the prior art treats a ‘bore’ as an element that is distinct from a ‘counterbore.’” Id. at 8. Rather, we credit Mr. Dominguez’s testimony that “[a] counterbore is not a structure unto itself, a counterbore is part of a larger structure” as exemplified by numerous examples including Laps (Ex. 1028 ¶ 33 (sensor assembly wherein “bore 16 includes a counterbore 18”)); Martinez (Ex. 1029, 3:61 (surgical cutting instrument wherein “bore 56 has a counterbore 64”)); Zang (Ex. 1030, 2:49 (bone anchor having a “bore [that] includes a counterbore”)); Ledet (Ex. 1022, 29:3–5 (vertebral fixation plate having “through holes . . . . countersunk, or counterbored to accommodate the head of a bone screw”)); Seo (Ex. 1031, 3:45 (chair leg employing “counterbored bore 23”)); and Exner (Ex. 1032, 2:16 (extrusion press including “counterbored axial bore 6”)). Ex. 1018 ¶¶ 17–23. That a reference may refer to a figure as showing “bore 103” with “counterbore 105 . . . formed on one end” does not indicate that they are distinct structures as Patent Owner contends, but merely that the focus of each term is directed to the entire bore or to a particular aspect of the bore, i.e., its counterbore. See” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner subsequently proposed an alternative definition, as a person having “[a] Bachelor’s Degree in biomedical and/or mechanical engineering or similar training and . . . at least three years of experience with implant devices used for internal fixation of bones.” POR 5 (citing Ex. 2012 ¶¶ 32–33). According to Patent Owner, “[t]his hypothetical person would be capable of performing various design tasks and would understand the basic mechanical features and operation of orthopaedic implant devices [and] have an appreciation for orthopaedic fusion techniques and the medical issues and concerns faced by a doctor/surgeon charged when performing operations to implant orthopaedic devices.” Id. Despite some differences in wording, Patent Owner asserts (and Petitioner does not contest) that any “distinction between the parties’ proposed definitions of a POSITA does not affect the arguments set forth herein.” Id. (citing Ex. 2012 ¶ 34). Consistent with this view, we find the parties’ constructions equally applicable in light of the prior art of record and the disclosure of the ’166 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We adopt, for convenience, Petitioner’s definition, but our analysis does not change depending on which of the two articulations are applied here. H.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“one of ordinary skill in the art would understand that “bore,” as used in the context of claims 1 and 12, encompasses a multi-diameter passage, and in particular, one having stepped longitudinal cross sections such as that shown in Cognet’s Figure 1. See generally DI 11–13. For the reasons that follow, we conclude that one of ordinary skill in the art would have understood “bore” as such. Relying on the testimony of Mr. Dominguez, Petitioner initially proposed a construction of “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool.” Pet. 16 (citing Ex. 1002 ¶ 58). Petitioner’s proposal relied on Mr. Dominguez’s testimony that “[a] bore is a cylindrical hole made by the spinning rotation of a twist drill cutting tool. It is typically made by removing material from a solid or hollow object, similar to a tunnel or orifice.” Ex. 1002 ¶ 58. Pointing to its annotation of Cognet’s Figure 1, above, Patent Owner argued that that the term “bore” excludes a tunnel made by “two adjacent bores.” See Prelim. Resp. 21–25. In view of the then-available evidence, we provisionally construed “bore” as a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have cylindrical lateral cross-sections, and which do not exclude holes or passages having tapered or stepped longitudinal cross-sections. DI 13.” slip op. at 19
Patent outcomesUS 11,298,166 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,298,166 - Symrise AG / Symrise Inc. v. Inolex Investment CorporationAll claims unpatentablePTAB · Nov 1, 2024 · IPR2023-01035 · APJ Tina E Hulse · IPR · Final written decision
The Board granted cancellation of claims 1–6, 8–10, and 22–28, and denied substitute claims 29–44 because Wright ’451 rendered them obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSA” or “POSITA”) would have had “a bachelor’s degree and two or more years of experience or a master’s degree in organic synthesis or chemical engineering, with education substituting for experience and vice versa.” Pet. 15 (citing Ex. 1002 ¶ 16). Patent Owner took no position on the level of ordinary skill in the art in its Preliminary Response. Prelim. Resp. 8. In our Institution Decision, we adopted Petitioner’s definition. Dec. Inst. 6–7. In its Motion to Amend, Patent Owner states that it accepts the Board’s definition for purposes of this proceeding. MTA 24. We, therefore, see no reason to disturb our definition of the level of ordinary skill in the art as it appears to be consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although neither party expressly proposes a construction for the term “conversion,” the parties appear to differ in their interpretations of that term. Petitioner interprets “conversion” to mean the percent conversion of the 1- alcohol. See Pet. Opp. RMTA 6–7 (interpreting “conversion” as percentage of remaining 1-alcohol); Ex. 1040, 109:2–11. Patent Owner, on the other hand, interprets “conversion” to mean the total percentage of alkenes that have been produced. Ex. 2010 ¶ 123 (interpreting “conversion” as percentage of total alkenes). During oral argument, counsel for Patent Owner conceded that “conversion can mean either.” Tr. 27:18–28:13. Without the benefit of briefing by the parties, we decline to expressly construe the term “conversion,” as our Decision would be the same under either interpretation, as discussed further below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (finding only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy). Moreover, we do not find it necessary to expressly construe any other claim terms for purposes of this Decision. Id.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Analysis A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said claimed invention pertains. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Objective evidence of nonobviousness may include” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“We are not persuaded. “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). We must, therefore, first consider what results were expected to determine what a POSA would have considered to be unexpected. Id. As seen by the table below, Wright ’451’s disclosure fully encompasses the temperature ranges and purported unexpected results recited by substitute claim 29 and shown in Table 2 of the ’048 Patent: Reference Reaction Calcination Conversion Regioselectivity Rate13 Temperature Temperature Wright ’451 about 220 °C about 200 °C greater than about 90% to to about to 600 °C about 95% about 99% 440 °C Substitute 240 °C to about 420 °C at least 95% to about Claim 29” slip op. at 23
Patent outcomesUS 10,995,048 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,995,048 - PTAB · Oct 23, 2024 · IPR2024-00679 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 28, 38, 39, 41–43, 53, 56–59, 61–63, and 65–68 on all asserted grounds after finding a reasonable likelihood that claim 28 was obvious over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Based on the present record, we agree with Patent Owner that the recited “reconfiguring the communication port” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfiguring the communication port” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we find Petitioner’s rationale sufficient for institution. Petitioner points to Krantz’s alleged goals of security and automation. Pet. 19. Petitioner (id.) and Dr. Houh (Ex. 1503 ¶ 64) both cite paragraph 19 of Krantz, which states that “[i]f credentials do not authorize full access . . . the server can respond by sending a notification . . . includ[ing] conditions (e.g., signup, renewal etc.) a user must satisfy to become authorized for []full access to resources.” Ex. 1505 ¶ 19. We are persuaded preliminarily that an ordinarily skilled artisan considering Krantz’s teachings of such conditions for full access would have had reason to apply Herrmann’s technique for checking a client’s antivirus security policy in the manner suggested by Petitioner. See, e.g., Ex. 1503 ¶ 64; Ex. 1506 ¶ 68. Krantz’s express teaching of conditions for a client to fully access a network (Ex. 1505 ¶ 19) also undermines Patent Owner’s argument about impermissible hindsight and Patent Owner’s suggestion that Krantz is limited to user authentication. Finally, we are persuaded that Petitioner has shown sufficiently, for purposes of instituting review, that an ordinarily skilled artisan would have expected success in making the combination because it would only require software modifications to Krantz’s system. See, e.g., Ex. 1503 ¶ 64.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00675 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–6, 11–13, 15–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of success at least on obviousness over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Krantz and Herrmann. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 5. Claims 2–6, 11–13, 15–19, and 23–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’484 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 22
- Parallel petitionsDecided for petitioner
“III. PARALLEL PETITIONS As noted above, Petitioner challenges the ’484 patent both in this proceeding and in IPR2024-00679. Petitioner argues that we should institute review in both proceedings because “the analysis of all 33 challenged claims . . . of the 484 Patent could not reasonably fit within the word limit for a single petition.” Paper 4, 2. Petitioner notes further that “addressing different sets of independent claims in each petition was most efficient given the differences between independent claim 1 (Petition 1 - IPR2024-00675) and independent claims 28, 41, 56, and 57 (Petition 2 - IPR2024-00679).” Id. Patent Owner does not argue that we should deny institution either in this proceeding or in IPR2024-00679 due to Petitioner’s having filed parallel petitions challenging the ’484 patent. Prelim. Resp. 1–44. Given Patent Owner’s acquiescence and Petitioner’s arguments, we do not exercise our discretion to deny institution due to the parallel petitions.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the present record, we agree with Patent Owner that the recited “reconfigur[ing] the communication device” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfigur[ing] the communication device” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture. Based on the present record, we need not expressly construe any other claim terms.3 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 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484
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.