• Google LLC v. Ecofactor Inc.Some claims unpatentable
  PTAB · Nov 17, 2022 · IPR2021-00982 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–7 and 10–19 are unpatentable: claims 1–7 and 11–19 as obvious over Wedekind and Ehlers, and claim 10 as obvious over Wedekind, Ehlers, and Jenkins; claims 20–30 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We note that the parties agree on the educational background of a person of ordinary skill in the art. And although the parties offer different levels of experience for a person of ordinary skill in the art, there is some overlap, as both parties require experience with HVAC systems. Pet. 15 (requiring experience with “building energy management”); PO Resp. 5–6 (requiring experience with HVAC controls, and acknowledging that “building energy management” includes controlling HVAC systems). Accordingly, we do not consider the difference between the parties’ proposals to be material. Moreover, neither party asserts that its positions or the outcome depends on which definition we apply in this proceeding.” slip op. at 10

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

    “B. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “Reply ignore the express statement in the Petition characterizing sensors 36 in Wedekind as “a source external to the building.” Sur-reply 2 (quoting Pet. 28), 3. Patent Owner also argues this is a new argument that we should disregard. Sur-Reply 2. We disagree. Although Patent Owner is correct that Petitioner contends Wedekind’s outside air temperature sensors 36 are a source external to the building, that is not the only argument Petitioner presents. In the Petition, Petitioner contends more generally that Wedekind’s outside air temperature sensors 36 “measure the outside air temperature.” Pet. 28. Petitioner also argues that Ehlers provides weather data including outside temperatures, and that the source of the data is a weather service provider that is external to the building. Pet. 32 (citing Ex. 1008, 9:53–54, 35:13–17). Petitioner further argues that it would have been obvious “to replace Wedekind’s outside temperature sensors 36 with receiving outside temperature data from a network connection,” as Ehlers teaches. Pet. 32. In view of this, we agree with, and are persuaded by, Petitioner’s argument that it does not rely only on Wedekind to meet the limitation that “the second data from the network connection is collected from a source external to the building.” Reply 10. Additionally, the presence of these arguments in the Petition undermines Patent Owner’s assertion that Petitioner is attempting to present new arguments in the Reply. Similarly, Petitioner acknowledges in the Petition that Wedekind does not expressly teach the second data is received from a network connection, and, therefore, relies on Ehlers’ disclosure of receiving data from a network connection. Pet. 30; Reply 11. Patent Owner does not dispute that Ehlers discloses receiving weather data from a network connection. See PO Resp. 15–28; Sur-reply 3–8. In view of the foregoing, Petitioner has demonstrated persuasively that the combined disclosures of Wedekind and Ehlers teach or suggest “the one or more processors further configured to receive a second data from a network connection, wherein the second data from the network connection is collected from a source external to the building” claim 1 requires.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find Petitioner’s arguments to be persuasive. Petitioner presents undisputed evidence, based on the disclosure of Wedekind and Ehlers, that obtaining outside temperatures either from local sensors or over a network was known in the art. Pet. 28–32; Ex. 1006, 4:45–47; Ex. 1008, 9:50–63. Petitioner also directs us to evidence, including in Ehlers itself, supporting Petitioner’s reasoning that replacing Wedekind’s outside air temperature sensors with a network-based weather data service would have saved the cost and effort of installing multiple sensors. Pet. 32; Ex. 1002 ¶ 103; Ex. 1008, 39:54–57; Reply 13. As Petitioner points out, Patent Owner does not directly challenge Petitioner’s argument and evidence that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers to avoid the cost and effort of installing multiple sensors. Reply 13.5 Indeed, Patent Owner acknowledges that Wedekind “expressly indicates that there must be multiple sensors of outdoor temperature for sufficient accuracy in Wedekind’s complex computational model.” PO Resp. 26; Ex. 1006, 3:62–67. The need for multiple sensors in Wedekind 5 We recognize Patent Owner argues that a person of ordinary skill in the art would not have been motivated to connect Wedekind’s outside air temperature sensors 36 to a network because it would “increase costs.” PO Resp. 23–24. Patent Owner, however, presents this argument before it addresses Petitioner’s proposed combination of Wedekind and Ehlers. See PO Resp. 23–24 (referring to cost increases first, and addressing the proposed combination of Wedekind and Ehlers in the next paragraph). Thus, Patent Owner’s cost argument does not appear to address Petitioner’s assertion regarding cost savings in view of the proposed combination. Nor does Patent Owner present evidence regarding, or explain adequately, what costs it is referring to, or how those costs would increase. PO Resp. 23–24; Ex. 2005 ¶ 61. By way of contrast, Petitioner’s arguments regarding cost savings are supported by the disclosure of Ehlers itself. Ex. 1008, 39:54–57. strengthens Petitioner’s argument that a person of ordinary skill in the art, in view of Ehlers’ teaching regarding avoiding the cost and effort of installing multiple sensors, would have had reason to modify Wedekind in view of Ehlers. Additionally, Patent Owner’s own declarant characterized Ehlers’ discussion of “lowering the cost of installation and ongoing maintenance” as “teach[ing] away from external sensors.” Ex. 1023, 58:7–18. These arguments and evidence undermine Patent Owner’s assertion that Petitioner failed to provide any analysis as to why a person of ordinary skill in the art would have modified Wedekind in view of Ehlers. Sur-reply 3–4; PO Resp. 25–28. Petitioner also argues, and provides evidence in the form of testimony from Dr. Shah demonstrating, that a person of ordinary skill in the art would have been able to modify Wedekind’s system by connecting Wedekind’s processing means to a network connection such as Ehlers’ phone input or communications link, and would have obtained predictable results. Pet. 33; Ex. 1002 ¶ 104. Patent Owner does not dispute this evidence. To the contrary, Patent Owner appears to concede that the proposed combination would work, although not as reliably as Wedekind’s hardwired system. PO Resp. 25–26. As a result, and in the absence of any evidence or argument suggesting otherwise, we credit Dr. Shah’s testimony. Furthermore, Ehlers teaches, in connection with providing data obtained from a weather service provider over a network, that “[t]he data may be provided at regular intervals and be sufficiently localized for acceptable accuracy.” Ex. 1008, 9:58–60. This statement from Ehlers itself undermines Patent Owner’s arguments regarding alleged problems with transmitting data over networks and insufficient accuracy, including Patent Owner’s argument that Wedekind teaches away from the approach used by Ehlers. PO Resp. 25–28. Nevertheless, even if we were to give Patent Owner the full credit of its arguments regarding unreliable transmission of data over networks and data obtained from weather service providers being less useful than data obtained from sensors at a specific structure, obviousness “does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). As discussed above, Petitioner’s evidence and arguments demonstrate that using Ehlers’ network to transmit temperature data was at least a suitable option. For all of the foregoing reasons, we determine Petitioner has demonstrated persuasively that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers, and would have had a reasonable expectation of success in doing so. iii.” slip op. at 25

  Patent outcomesUS 10,612,983 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,612,983
• Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentable
  PTAB · Aug 17, 2022 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Final written decision

  The Board found that Tennant did not prove claims 13, 14, and 17–27 unpatentable because the asserted references did not establish the claimed microbubbles and nanobubbles, and the obviousness combinations were inadequately supported.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states, for “purposes of this proceeding, PO does not challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 12

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

    “Because patentee has acted as its own lexicographer, and because Petitioner agrees that the definition provided in the specification is the preferred construction, we adopt the construction of “nanobubble” provided in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). Namely, we construe “nanobubble” as “a bubble with a diameter less than that necessary to break the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any additional language to our construction, as proposed by Petitioner, because the additional quoted sentence in the specification appears to describe an effect of nanobubbles on the appearance of water when nanobubbles are present, rather than define the nanobubbles themselves. On this record, we determine that no other claim terms require express construction.” slip op. at 14

  • BurdenDecided for patent owner

    “We disagree that our Institution Decision established a prima facie case that Petitioner met its burden at the Final Written Decision stage. An affirmative decision on institution is a determination that Petitioner has shown, on the record at that stage in the proceeding, that Petitioner has a reasonable likelihood of prevailing on its arguments as to at least one challenged claim. Dec. 40; 35 U.S.C. § 314(a). To prevail in an instituted inter partes review, however, 35 U.S.C. § 316(e) requires Petitioner to meet “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“[T]here is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial . . . . The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.”). To state that our Institution Decision established a prima facie case that Petitioner was correct would be erroneous, as such a position conflates different burdens required of Petitioner and, in doing so, would have us improperly give Petitioner an advantage in the actual trial culminating in a final written decision. Fan Duel, 966 F.3d at 1341–42.” slip op. at 25

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

    “On this complete record, we find that Petitioner’s testing does not sufficiently demonstrate that Wikey inherently discloses nanobubbles. Pet. 22–29. Petitioner apparently had the ability to test for the express disclosure of nanobubbles in its Wikey-based apparatus, but did not do so. Sur-Reply 2–3. Patent Owner points out that nanobubbles, which Petitioner’s expert indicated were on the order of 0.1 microns, are detectable using available technology that Petitioner knew of and had used in the past. Id. However, Petitioner’s expert acknowledged that he did not do any testing that would determine whether nanobubbles were formed. Id. at 7 (citing Ex. 2172, 70:1–4). Petitioner’s reliance on milkiness and supersaturation to demonstrate the presence of nanobubbles is also unsupported. Petitioner argues that milky appearance equals supersaturation (Reply 9 (citing Ex. 1101, 9:38– 50)), and also that milky appearance equals nanobubbles (id. (citing Ex. 1101, 4:14–15)); the inference Petitioner apparently wants us to draw is that supersaturation equals nanobubbles. Patent Owner, however, persuasively argues that dissolved oxygen content over 100% does not prove the water is milky. PO Resp. 25–26; Sur-Reply 6–7; see also Tr. 13:24–26 (Petitioner’s counsel agreeing that “you can have supersaturation without milkiness”). Patent Owner also demonstrates that supersaturation does not necessarily mean that nanobubbles are present. PO Resp. 26; Sur-Reply 7; Ex. 2172, 76:9–14, 77:23–78:21. Thus, Petitioner’s argument based on supersaturation equaling nanobubbles because milkiness equals both breaks down because milkiness does not necessarily equal either. Accordingly, we determine that Petitioner’s arguments and testing fail to show that Wikey inherently discloses nanobubbles.” slip op. at 28

  Patent outcomesUS RE45,415 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00415 · APJ Wesley B Derrick · IPR · Final written decision

  Claims 1–5, 11, 12, and 14–19 are unpatentable as obvious over Finegan and Tipton; the Board did not reach the remaining instituted grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because both Petitioner’s and Patent Owner’s proposed level of skill are grounded on a relevant engineering degree and/or significant experience designing food service equipment, both of which reasonably also indicate some understanding of heat transfer concepts.9 Accordingly, we adopt Patent Owner’s proposed definition, which overlaps that proposed by Petitioner, particularly that of a person with a mechanical engineering degree and/or four years of experience designing food service equipment who also has an understanding of heat transfer concepts. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. Cf. Okajima, 261 F.3d at 1355 (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself 9 We note that neither Patent Owner nor Dr. Mayor provide any particular definition of an understanding of heat transfer concepts, and it is not apparent that more than a rudimentary understanding is required.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Mayor’s testimony as to the meaning of “well” (Ex. 2027 ¶¶ 29– 32) is entitled to little weight because it fails to explain how the cited portions of the specification and file history support his position, and it is not otherwise apparent that it does. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). In sum, we determine that the meaning of “well,” as used in the ’253 patent, includes the interior walls and exterior walls (if present).” slip op. at 15

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

    “On this record, we determine that “well” includes at least the well bottom (or floor), the interior well walls, and the exterior well walls (if present). The specification discloses that “[w]ell 18 may comprise generally vertically-extending interior walls 22 connected by bottom or floor 26 . . . [that] [w]ell 18 additionally may comprise four exterior walls 30,” and that “well 18 preferably . . . is formed of stainless steel,” which by the plain meaning of the words indicates that the bottom (or floor), the interior walls, and the exterior walls are part of the well. See Ex. 1201, 4:3–17. Further, the disclosure that “well 18 preferably . . . is formed of stainless steel” indicates that a well includes physical structure(s), such as the walls and the bottom (or floor). Id. at 4:15–17. Also, each independent claim requires” slip op. at 14

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

    “Further, as depicted in the figures, including Figures 1 and 4, the exterior walls are not shown to be in contact, as there is no well structure depicted in the region spanned by D1, despite Figure 5, depicting a cross-sectional view of the same embodiment, showing an exterior wall 30. In sum, the depicted structure in the relied-on figures appears wholly consistent with D1 being the distance between the exterior walls 30 of adjacent wells 18, where wells are defined as including the interior walls 22 and exterior walls 30. Having a space D1 between exterior walls 30 of adjacent wells 18 is also consistent with claim 1 reciting “at least one exterior wall of one well is spaced an insulative distance from an exterior wall of an adjacent well.” Ex. 1201, 5:46–48. inconsistencies identified above between their positions and what is actually disclosed and depicted in the ’253 patent. Having considered the parties’ arguments and evidence, as well as the related District Court proceeding and Federal Circuit proceeding,14 we adopt Petitioner’s construction of “adjacent” as “next to.” We are not directed to anything in the record that requires the wells to be “immediately next to or abutting,” as Patent Owner contends. Rather, as the ’253 patent discloses a distance D1 between wells, the proper meaning is simply “next to.”” slip op. at 18

  Patent outcomesUS 9,795,253 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,795,253
• Jupiter Research, LLC v. VPR Brands, L.P.Institution denied
  PTAB · Jul 12, 2022 · IPR2022-00299 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–18 were unpatentable over the asserted prior-art grounds.

  RulingsInstitution decision

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

    “It is the petitioner’s burden from the outset to show with particularity why a challenged claim is unpatentable. Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). In that regard, a petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Here, Petitioner contends that the “airflow sensor having elements (401), (403), (404), (405), and (406)” is “electronic at least in that it includes contact piece (404) and piece (403) that is connected to the integrated circuit board (3),” but does not provide a detailed explanation of the significance of the location of contact pieces 403 and 404, or how elements 401, 403, 404, 405, and 406 form an electric airflow sensor. Pet. 47–48 (citing Ex. 1009, 8), 54–55 (same). Zhu teaches that “integrated circuit board 3 is provided with two fixed contact pieces 403 and 404 that extend toward the elastic ring 401.” Ex. 1009, 8. Zhu further teaches that elastic ring 401 is fixed in plastic base 405, and that “fixed contact pieces 403 and 404 are fixed outside the plastic base 405.” Id. Considering the disclosures in Zhu regarding the arrangement and operation of these elements, Petitioner’s conclusory statement that Zhu teaches an electric airflow sensor simply because contact” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, or a closely related field and one to two years of experience working in the consumer electronics or computer industry in the capacity of a design, application, customer marketing or technical marketing engineer.” Pet. 11 (citing Ex. 1004 ¶ 58). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See generally, Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’622 patent, and we adopt it for purposes of this Decision. 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 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “The parties stipulated to the construction of many claim terms in their related litigation currently pending in the District of Arizona. Pet. 11–12; Prelim. Resp. 12; Ex. 1006. Based on the parties’ apparent agreement, and considering the record before us, we adopt the parties agreed-upon claim constructions for purposes of this Decision. See Ex. 1006 (stipulated claim construction proposed in the district court). We provide the constructions of “electric airflow sensor” and “detecting an airflow,” which are of particular relevance to this Decision, below. “electric airflow sensor” an electric sensor to detect air movement generated by a user’s inhaling or puffing act “detecting an airflow” determining that a user is inducing airflow into or out of the device Ex. 1006, 2, 3.” slip op. at 7

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

    “To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Here, Petitioner neither directs us to an express disclosure in Cox that air flow detecting device 51 is an electric airflow sensor as required by claim 13, nor adequately explains that a person of ordinary skill in the art would have understood Cox as disclosing an electric airflow sensor, and could have combined Cox’s disclosures with their own knowledge to make the claimed invention. See Helifix Ltd. v. Bloc-Loc, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000) (A reference that does not expressly disclose a claimed limitation “might nevertheless be anticipating if a person of ordinary skill in the art would understand [the reference] as disclosing [the limitation] and if such a person could have combined the [reference’s] description of the invention with his own knowledge to make the claimed invention.”). We also do not understand Petitioner to be arguing that Cox inherently discloses an electric airflow sensor. See In re Montgomery, 667 F.3d 1375, 1379 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). For these reasons, we are not persuaded that Petitioner sufficiently establishes that Cox discloses “an electric air flow sensor that is used to turn on and off the electric power source by way of detecting an airflow” as recited in independent claim 13. Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 13, and claims 14 and 15 that depend therefrom, are anticipated by Cox.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,205,622
• Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentable
  PTAB · Jul 6, 2022 · IPR2021-00414 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–26 are unpatentable: claims 1, 6, 7, 10, 12, 14, 16–20, and 22–26 as anticipated by Finegan; claims 1–26 as obvious over Finegan, Safyan, and Hansen; and claims 3–5 as obvious over Finegan and …

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill both Petitioner and Patent Owner set forth are based on an engineering degree and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “On this record, we determine that the control system limitations sufficiently connote structure and are not subject to means-plus-function construction. See Williamson, 792 F.3d at 1349 (stating the determination of whether a limitation is a means-plus-function term “subject to the strictures of § 112, para. 6” is not based merely on the presence or absence of the word “means” but on whether “the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure”). As to Petitioner’s argument that Patent Owner only demonstrates support for “controls” and “controllers” being known in the art and not for a “system,” as the claims recite (Reply 11–12), we determine that there is no meaningful distinction because the controls or controllers disclosed in the ’970 patent are necessarily included in systems with other known elements to control temperature. Further, the disclosure of exemplary apparatus in the specification, including disclosure incorporated by reference (Ex. 1101, 1:58–61), supports that temperature control systems are known structures/apparatuses, and Petitioner fails to establish that they are not (see generally Pet.; Reply). In sum, we determine the control system limitations are terms that persons of ordinary skill in the art would have understood to have a sufficiently definite meaning as the name for structures of a broad category of systems known to those of skill in the art. The breadth and diversity of the structures/apparatuses ordinarily skilled artisans would have understood to be included within the meaning of the terms do not subject the terms to means-plus-function construction. Further construction of the terms is not necessary.” slip op. at 19

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

    “Regarding Patent Owner’s first argument, we find that Finegan sufficiently discloses thermally isolated wells and insulative gaps. Finegan’s wells are either thermally isolated as a result of their relative orientation (Pet. 31 (citing annotated Finegan Fig. 7)), or as a result of the insulation or insulative air gap (Pet. 29–31 (citing annotated Finegan Figs. 4, 7)). Finegan’s flanges, whether frosted or not, are “part of the well and must themselves be thermally isolated from their surroundings to facilitate frost formation,” and “the inclusion of the flanges does not defeat the well’s thermal isolation.” Reply 13; Ex. 1103 ¶¶ 294–297 (Dr. Homan’s testimony). Petitioner also demonstrates that Finegan’s insulation material would reduce heat transfer. Ex. 1149 ¶¶ 84–85 (Dr. Homan’s testimony that Finegan’s insulation material and insulation tape reduce heat transfer). Finegan’s insulation “extends over most of the well and the thermally-conductive material (38), to insulate the well.” Reply 13 (citing Ex. 1149 ¶ 84; Ex. 1105, 7:22–26, Fig. 4). Although we agree with Patent Owner that Finegan states that there is a “need to provide for a food service table or buffet that employs a shallow pan for use in both hot and cold service conditions while still providing sufficient frosting of the top surface” (Ex. 1105, 2:11–13), Petitioner has demonstrated that Finegan’s thermal isolation and insulation would not defeat this objective. Reply 13–14. Regarding Patent Owner’s second argument, we refer to our claim construction to find that Finegan teaches wells in a single frame. Because, under our construction, a well includes at least the interior well walls and exterior well walls (if present), and a frame refers to a “rigid supporting structure,” we find that Petitioner persuasively demonstrates that Finegan teaches wells in a single frame. Pet. 26–27, 29–31. We disagree that “skilled artisans would view the two apparatuses (10) in Figure 7 of Finegan to be independent pieces of equipment and thus not a module with wells bound by a single frame” and that “Finegan does not teach wells in a single frame” because the pans are separated by what Patent Owner argues is an “indeterminate distance of countertop.” PO Resp. 32. As discussed above, we decline to adopt Patent Owner’s claim construction for “a frame.” Accordingly, we find that, under our claim constructions, Petitioner demonstrates that Finegan’s countertop 14 and side walls housing its wells 18 meet the limitations of the challenged claims, particularly those that require an arrangement between the frame and the wells (i.e. claims 14, 23, and 25). Reply 14–15, 17 (citing Ex. 1105, annotated Figs. 1, 7; Ex. 1149 ¶ 101); see also Ex. 2050, 10–11 (finding unfounded the district court’s determination “that Finegan’s Figure 7 only discloses a single pan in each of two separate modules” and determining that Figure 7 “discloses a single ‘apparatus 10’ with two wells 18A and 18B . . . . Those wells are shown within a single countertop 14.”). Additionally, we disagree with Patent Owner’s characterization of Dr. Homan’s testimony as admitting that Finegan’s pans/wells are separate modules. PO Resp. 30–32 (citing Ex. 1130, 241:24–242:3, 217:20–24, 240:5–14). A fair reading of Dr. Homan’s testimony indicates that he was referring to “wells,” despite counsel using the term “modules,” ultimately supporting Petitioner’s position that Finegan discloses two wells in a single frame. Reply 15–16 (citing Ex. 1130, 241:15–242:2). Regarding Patent Owner’s third argument, and referring to our claim construction, we find that Finegan teaches the control system limitations. Although we do not find these terms to be subject to means-plus-function construction, we nevertheless find sufficient Petitioner’s mapping of these limitations to the structures in Finegan performing the functions of the control system limitations. See, e.g., Pet. 31–32 (regarding claim 1.c.1, referring to Finegan Fig. 7 to map PLC 80 connected to heating elements 78 (via switches 94) and valving 90 for controlling refrigerant flow from condensing unit 118 to cooling coils 32, and using user interface 96 and temperature sensors 82A). Petitioner persuasively argues that Finegan’s PLC (programmable logic controller) 80 and user interface 96 meet the control system limitations: “Both Finegan’s global control and the ‘970 patent’s individual controls perform this function [of independently controlling the wells’ temperatures] in the same way, by connecting the electrical resistance heating elements to an electrical power source and by operating valving to control the flow of refrigerant.” Reply 20 (citing Ex. 1101: 4:49–52, 4:56–63; Ex. 1105, 9:27–11:28); Pet. 32–33.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “sufficiently discloses insulative gaps. The Petition shows that Finegan’s wells are “individually insulated and thermally isolated by thermal insulation (40) between exterior and interior wall (44, 20 (identifiable by opposed surfaces (36, 46))).” Pet. 50 (citing Ex. 1103 ¶ 273; Ex. 1105, Fig. 4). Safyan teaches air gaps (i.e., an unfilled insulating space) as an alternative to foam. Id. at 51 (citing Ex. 1103 ¶¶ 276–277, Ex. 1106, Fig. 2, 4:36–46). Petitioner argues with evidentiary support that one of ordinary skill in the art would have had reasons to omit Finegan’s insulating material to leave an insulative gap, as in Safyan, to reduce material and labor costs, as a matter of simple substitution, with a reasonable expectation of success. Id. at 52 (citing Ex. 1103 ¶¶ 279–282). Patent Owner’s argument that Finegan does not disclose an insulative gap and that its insulation does not meet the limitations of the challenged claims argues against Finegan individually, rather than against the Finegan-Safyan combination. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Petitioner also provides adequate motivation to combine Finegan and Safyan, not limited to arguing that the two references are in the same field of endeavor. Pet. 51–53 (relying on Ex. 1103 ¶¶ 276–282); Reply 22–23. Regarding claim 9, we find that Petitioner provides adequate motivation as to why one of ordinary skill in the art “would have minimized the distance between wells.” Pet. 53–54; Ex. 1149 ¶ 124–126. We credit Petitioner’s reliance on references and evidence supporting its assertion that one of ordinary skill in the art “would have located Finegan’s wells as close together as needed (e.g., three inches or less)” to “meet size restrictions for a compact space-saving design.” Pet. 56 (citing Ex. 1103 ¶¶ 298–299). We disagree that “Finegan’s frost top would be destroyed” (PO Resp. 43) by this combination, because spacing “as small as a fraction of an inch between the flanges of adjacent wells would ensure thermal isolation of the wells and that a cooled flange would form frost.” Pet. 56 (citing Ex. 1103 ¶297).” slip op. at 36

  Patent outcomesUS 8,661,970 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,661,970
• Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentable
  PTAB · Jul 6, 2022 · IPR2021-00413 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–4 and 9–16 are unpatentable as obvious over Finegan and Safyan; claims 17 and 18 are unpatentable as obvious over Finegan, Safyan, and Tipton.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “have had “a mechanical engineering or equivalent degree and/or approximately four years of experience designing food service equipment,” as well as “an understanding of heat transfer concepts.” PO Resp. 10 (citing Ex. 2027 ¶ 71) Patent Owner also contends: “Additional education may substitute for experience and significant experience in the food service equipment industry may substitute for formal education.” Id. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill both Petitioner and Patent Owner set forth are based on an engineering degree and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [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 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only 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).” slip op. at 9

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

    “The parties did not provide us with an express claim construction of “adjacent” from the district court (see Ex. 2019, 10 (district court expressly construing only the term “insulative air gap”)), but the Federal Circuit’s opinion characterized the district court’s understanding of “adjacent” as follows: “the district court appeared to understand the claims as requiring Finegan, for anticipation purposes, to teach ‘two immediately adjacent pans within a single module that can be maintained at different temperatures.’” Ex. 2050, 10. As such, the Federal Circuit explained, “both parties state that the district court adopted [Patent Owner’s] argument that the adjacency limitation requires the wells to touch.” Id. The Federal Circuit determined that the district court “clearly erred” in finding no substantial merit as to whether Finegan discloses the adjacent wells limitation because, in part, the district court relied on an “overly narrow understanding of ‘adjacent.’” Id.; see also id. at 2 (“the district court relied on an erroneous claim construction and misread the Finegan reference”). The Federal Circuit also did not explicitly construe the term “adjacent,” but stated that the district court’s “constricted understanding of ‘adjacent’ is at odds with the patents’ disclosure, which describes a ‘distance D1’ ‘between adjacent wells,’ ‘with D1 preferably being approximately three inches.’” Id. at 10 (citing Ex. 1001, 3:46–52). “Given the specification explicitly states that adjacent wells preferably have a distance between them,” the Federal Circuit held that the district court’s “finding that Finegan’s pans 18A and 18B are not adjacent, or next to, each other” “cannot be sustained.” Id. (citing Ex. 1001, 3:46–52). Having considered the parties’ arguments and evidence, the district court’s approach, and the Federal Circuit opinion, we adopt Petitioner’s construction of “adjacent” as “next to.” Patent Owner’s position is grounded in part on a calculation that “only works if the space between adjacent wells is measured from the interior walls of adjacent wells, and the exterior walls of the adjacent wells are abutting.” PO Resp. 20–21. As discussed above, the meaning of “wells” in the context of the ’761 patent includes both interior walls 22 and, if present, exterior walls 30. Patent Owner does not direct us to anything in the record that requires the wells to be “immediately next to or abutting” as Patent Owner urges. Sur-Reply 3. Rather, we find persuasive the specification’s disclosure of a distance D1 between adjacent wells as supporting a construction of “adjacent” as “next to.” Ex. 1001, 3:46–52; see Ex. 2050, 10.” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “On this record, we determine that the recited “temperature-control system” or “temperature-controlling system” sufficiently connotes structure and is not subject to means-plus-function construction. See Williamson, 792 F.3d at 1349 (stating the determination of whether a limitation is a means-plus-function term “subject to the strictures of § 112, para. 6” is not based merely on the presence or absence of the word “means” but on whether “the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure”). Further, the disclosure of exemplary apparatus in the specification, including disclosure incorporated by reference (Ex. 1001, 1:51–54), supports that temperature control systems are known structures/apparatuses, and Petitioner fails to establish that they are not (see generally Pet.; Reply). In sum, we determine the terms “temperature-control system” or “temperature-controlling system” are terms that persons of ordinary skill in the art would have understood to have a sufficiently definite meaning as the name for structures of a broad category of systems known to those of skill in the art. The breadth and diversity of the structures/apparatuses ordinarily skilled artisans would have understood to be included within the meaning of the terms do not subject the terms to means-plus-function construction. Further construction of the terms is not necessary.” slip op. at 21

  Patent outcomesUS 8,307,761 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,307,761
• Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentable
  PTAB · Apr 18, 2022 · IPR2021-01052 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious under § 103(a) over Geadelmann and Ehlers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded that Petitioner’s formulation, supported by the testimony of Mr. Shah, except for the qualifier “at least,” is correct.9 On the one hand, Dr. Palmer’s formulation is conclusory and does not provide any reasoning or underlying supporting facts. See Ex. 2013 ¶ 27; 37 C.F.R. § 42.65(a) (2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On the other hand, Mr. Shah bases his opinion on the field of the invention of the challenged ’382 patent and its claims. Ex. 1002 ¶ 27. Because Mr. Shah’s testimony is anchored by an identified factual predicate, we give it some weight.10” slip op. at 9

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

    “evidence does not contradict the meaning otherwise apparent from the intrinsic record.’” Collabo Innovations, Inv. v. Sony Corp., 778 F. App’x 954, 958 (Fed. Cir. 2019) (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)); see also Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, 415 F.3d at 1322, do not preclude the use of general dictionary definitions as an aid to claim construction.”). We therefore turn to the Dictionary of Information Technology, which defines “remote” as: “Not in the immediate vicinity, as a computer or other device located in another place (room, building, or city) and accessible through some type of cable or communications link.” Ex. 1029, 441. Under this definition, devices located in different rooms, but within the same building, can be considered remote. See id. That definition is neither inconsistent with nor contradicted by the specification and the words of the claims. Although Patent Owner argues we should ignore a portion of that definition, it offers no evidence in support of that argument. See PO Sur-reply 7. Therefore, we decline to do so. Accordingly, “remotely located” as used in the ’382 patent does not require the first processor and the memory to be located in different buildings. Based on the arguments of the parties, no further construction is necessary.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “f) Reason to Combine Geadelmann and Ehlers Petitioner argues that a person having ordinary skill in the art would have combined the relevant teachings of Ehlers and Geadelmann. See Pet. 18–21. For example, Petitioner argues that although Geadelmann teaches using an occupancy sensor, it does not expressly link the occupancy sensor to determining if a space is occupied. Id. at 18–20. According to Petitioner, it would have been obvious to a person having ordinary skill in the art to combine Ehlers’ teaching of using an occupancy sensor to determine occupancy so that Geadelmann’s system would know when to switch modes. Id. at 19. Petitioner also argues that a person having ordinary skill in the art would have had a reasonable expectation of success when combining the relevant teachings. Id. at 21. Based on the undisputed evidence before us and the reasons set forth in the Petition, including the Shah Declaration, which are not addressed by Patent Owner (see PO Resp.), we find that Petitioner has shown that a person having ordinary skill in the art would have had reason to combine the relevant teachings from Geadelmann and Ehlers and would have had a reasonable expectation of success in doing so.” slip op. at 43

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “in the Petition, including the Shah Declaration, which are not addressed by Patent Owner (see PO Resp.), we find that Petitioner has shown that a person having ordinary skill in the art would have had reason to combine the relevant teachings from Geadelmann and Ehlers and would have had a reasonable expectation of success in doing so. g) Conclusion on Obviousness We have considered the entirety of the evidence submitted by the parties and determine that Petitioner has shown by a preponderance of the evidence that claim 1 of the ’382 patent would have been obvious over Geadelmann and Ehlers.” slip op. at 43

  Patent outcomesUS 10,534,382 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,534,382
• Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentable
  PTAB · Apr 18, 2022 · IPR2021-00054 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Geadelmann and Ehlers under § 103(a).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded that Petitioner’s formulation, supported by the testimony of Mr. Shah, except for the qualifier “at least,” is correct.9 On the one hand, Dr. Palmer’s formulation is conclusory and does not provide any reasoning or underlying supporting facts. See Ex. 2013 ¶ 27; 37 C.F.R. § 42.65(a) (2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On the other hand, Mr. Shah bases his opinion on the field of the invention of the challenged ’382 patent and its claims. Ex. 1002 ¶ 27. Because Mr. Shah’s testimony is anchored by an identified factual predicate, we give it some weight.10” slip op. at 9

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

    “evidence does not contradict the meaning otherwise apparent from the intrinsic record.’” Collabo Innovations, Inv. v. Sony Corp., 778 F. App’x 954, 958 (Fed. Cir. 2019) (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)); see also Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, 415 F.3d at 1322, do not preclude the use of general dictionary definitions as an aid to claim construction.”). We therefore turn to the Dictionary of Information Technology, which defines “remote” as: “Not in the immediate vicinity, as a computer or other device located in another place (room, building, or city) and accessible through some type of cable or communications link.” Ex. 1029, 441. Under this definition, devices located in different rooms, but within the same building, can be considered remote. See id. That definition is neither inconsistent with nor contradicted by the specification and the words of the claims.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “On the one hand, Dr. Palmer’s formulation is conclusory and does not provide any reasoning or underlying supporting facts. See Ex. 2013 ¶ 27; 37 C.F.R. § 42.65(a) (2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On the other hand, Mr. Shah bases his opinion on the field of the invention of the challenged ’382 patent and its claims. Ex. 1002 ¶ 27. Because Mr. Shah’s testimony is anchored by an identified factual predicate, we give it some weight.10” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “f) Reason to Combine Geadelmann and Ehlers Petitioner argues that a person having ordinary skill in the art would have combined the relevant teachings of Ehlers and Geadelmann. See Pet. 18–21. For example, Petitioner argues that although Geadelmann teaches using an occupancy sensor, it does not expressly link the occupancy sensor to determining if a space is occupied. Id. at 18–20. According to Petitioner, it would have been obvious to a person having ordinary skill in the art to combine Ehlers’ teaching of using an occupancy sensor to determine occupancy so that Geadelmann’s system would know when to switch modes. Id. at 19. Petitioner also argues that a person having ordinary skill in the art would have had a reasonable expectation of success when combining the relevant teachings. Id. at 21. Based on the undisputed evidence before us and the reasons set forth in the Petition, including the Shah Declaration, which are not addressed by Patent Owner (see PO Resp.), we find that Petitioner has shown that a person having ordinary skill in the art would have had reason to combine the relevant teachings from Geadelmann and Ehlers and would have had a reasonable expectation of success in doing so.” slip op. at 43

  Patent outcomesUS 10,534,382 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,534,382
• Amperex Technology Limited v. Maxell, Ltd.Instituted
  PTAB · Apr 8, 2022 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Institution

  The Board instituted IPR of claims 1–5 because Petitioner showed a reasonable likelihood of prevailing on both asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. We have considered Patent Owner’s arguments in light of the Fintiv factors, together with Petitioner’s opposition, and we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 11

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . 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). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it will prevail with respect to at least one claim challenged in the Petition, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in chemistry, chemical engineering, or materials science, as well as five or more years of experience in the field of batteries and battery materials.” Pet. 8 (citing Ex. 1003 ¶ 11). Petitioner adds that “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education.” Id. Petitioner states that “[a]dditional education might substitute for some experience, and substantial experience might substitute for some educational background.” Id. at 8–9.” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,350,019
• Amperex Technology Limited v. Maxell, Ltd.Instituted
  PTAB · Apr 8, 2022 · IPR2021-01440 · APJ Elizabeth M Roesel · IPR · Institution

  The Board instituted inter partes review of claims 1–5 on both asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “and (2) Koshiishi and Abe. Pet. 1. It is undisputed that neither Choi nor Koshiishi was presented to the Office during examination, and there is no suggestion that either reference is cumulative of the art presented to the Office during examination. See Prelim. Resp. Petitioner asserts that “the only difference between Choi and the ’446 Patent claims is the inclusion of a compound with two nitrile groups in the electrolyte.” Pet. 12. Petitioner makes the same assertion about Koshiishi. Pet. 42. Petitioner contends that Choi and Koshiishi each teach all limitations of the challenged claims, except for the limitations requiring that the electrolyte contain a dinitrile compound. Pet. 13–38, 42–62. In view of the importance of Choi and Koshiishi to Petitioner’s grounds of unpatentability, we determine that the art presented in the Petition is not the same or substantially the same as the art previously presented to the Office during examination.” slip op. at 13

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

    “Preliminary Response, we determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to at least one of claims 1–5 of the ’446 Patent based on Choi and Kim.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding, Patent Owner does not dispute Petitioner’s definition of a POSITA. See Prelim. Resp. We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’446 Patent and the asserted prior art, and we apply Petitioner’s definition for purposes of this Decision, with the caveat that the phrases “at least” and “or more” should not be construed as requiring a significantly greater level of education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,691,446

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.