- Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01287 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on claims 12–16 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon considering the Petition and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we institute inter partes review of all claims and all grounds asserted in the Petition.1 A.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “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 then only to the extent necessary to resolve the controversy.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art For the purpose of this Decision, we accept Petitioner’s undisputed contention that a person of ordinary skill in the art “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems” or “could have also obtained similar knowledge and experience through other means.” Pet. 4. The level of ordinary skill in the art is further demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C.” slip op. at 6
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,256,770 - Sunspec Alliance v. Tigo Energy, Inc.InstitutedPTAB · Jan 28, 2022 · IPR2021-01286 · APJ Julia Heaney · IPR · Institution
Instituted IPR of claims 1, 5–7, 12, and 13 on all petitioned grounds; Moine anticipation of claims 1, 6, 7, 12, and 13 established the required likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction Petitioner contends the claim term “the location controller,” as recited in claim 1 of the ’321 patent, should be construed to mean “the local controller,” because the term “location controller” has no apparent antecedent basis in the claim and does not appear anywhere in the 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed before March 16, 2013, we apply the pre-AIA versions of the statutory bases for unpatentability. 4 FR Patent Application Publication No. 2894401 A1 to Moine, published June 8, 2007 (Ex. 1005). 5 US Patent No. 5,054,023 to Kronberg, issued October 1, 1991 (Ex. 1006). 6 US Patent No. 8,531,055 B2 to Adest et al., issued September 10, 2013 (Ex. 1007). specification of the ’321 patent, and further in light of the fact that claim 1 first recites “a local controller.” Pet. 10–11. Other than the aforementioned claim term, Petitioner states no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims. Id. at 9 (citing Ex. 1002 ¶ 35). Having considered Petitioner’s argument, we can reach a determination of the reasonable likelihood of proving unpatentability of the challenged claims without explicitly construing any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems.” Pet. 3–4 (citing Ex. 1002 ¶ 17). For purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’321 patent and the asserted prior art, we determine that Petitioner’s definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’321 patent and prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having reviewed Petitioner’s undisputed evidence and argument regarding claim 1, we find that Petitioner has demonstrated sufficiently that Moine discloses all of the limitations of claim 1. Thus, we are persuaded Petitioner has established a reasonable likelihood of prevailing on its anticipation challenge with respect to claim 1.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,933,321 - PTAB · Jan 25, 2022 · IPR2021-01295 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that at least one challenged claim is unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We determine, on the current record, that Petitioner has standing to bring this proceeding. Here, as was the case in Cardiovascular Sys., the record does not include any evidence that, at the time the Petition was filed, Petitioner actually owned the ’276 patent. In fact, the parties do not dispute that Patent Owner is the current registered owner of the ’276 patent, and was the owner when Petitioner filed the Petition. See Prelim. Reply 1; Prelim. Resp. 1. Notably, although Petitioner did assert ownership in the district court, Patent Owner disputed that assertion, claiming to be “the sole owner, by assignment, of all right, title and interest in and to the ’276 [p]atent.” Prelim. Reply 1 (quoting Ex. 1032 ¶ 55); see also Ex. 3001 (showing the assignment record for the ’276 patent, indicating that Patent Owner is the recorded owner of the patent); 35 U.S.C. § 261 (“Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.”); 37 CFR § 3.73(a) (“The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.”). Patent Owner does not direct us Petitioner. To the contrary, Petitioner directs us to Patent Owner’s argument in the district court proceeding that Patent Owner did not assign its interest to Petitioner. Prelim. Reply 1 (citing Ex. 1033, 9–15). The record evidence therefore indicates that Patent Owner is the owner of the ’276 patent. Accordingly, because Petitioner is not the owner of the ’276 patent, Petitioner has standing to file the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denialDenied
“Patent Owner asks us, in the alternative, to exercise our discretion to deny the Petition. Prelim. Resp. 15. Patent Owner does not explain on what basis we would exercise this discretion, other than “based upon the undisputed factual circumstances detailed above.” Id. Because Patent Owner fails to adequately develop this argument, we do not exercise discretion to deny the Petition.” slip op. at 12
- Skill levelSkill level board ownDecided for petitioner
“For the purposes of this Decision, based on the limited record before us, we preliminarily agree with aspects of both parties’ characterizations, and disagree with other aspects. We focus on the experience aspect of Petitioner’s characterization. Although we agree with Patent Owner that, in the abstract, a trained mechanical engineer may not have the requisite knowledge to be a person of ordinary skill and a chemist may have the requisite knowledge, Petitioner’s characterization goes further, and requires three years of experience in blending polymer resins—the main technological aspect of not only the ’276 patent, but of Harris, Thomas, and Starita. See, e.g., Ex. 1001, 1:41–58 (disclosing that the composition is a blend of polymers); Ex. 1003, code (57) (stating that the disclosed composition is a melt blend of resins); Ex. 1005, 13 (indicating that Phase 2 is directed at blends of virgin and recycled resins); Ex. 1006, code (57) (indicating that it discloses melt blended HDPE). As we will discuss in greater detail below, in connection with our claim construction analysis, and analysis of Patent Owner’s arguments directed to the merits of Petitioner’s obviousness positions, we do not agree with Patent Owner that the ’276 patent requires extensive experience in working with granular resins. Also, Patent Owner and Mr. Thomas’s distinctions based on what constitutes a polyethylene supplier and Petitioner’s characterization of the required experience is deficient. See Prelim Resp. 17–19; Ex. 2002 ¶¶ 54–56. A person having ordinary skill in the art is a hypothetical person, not an actual person working at a specific type of facility. See, e.g., In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains.”). Accordingly, based on our review of the current record, including the ’276 patent and the prior art of record, we preliminarily determine that a person having ordinary skill in the art would have had a bachelor’s degree in chemical engineering or related engineering field, or chemistry, and three years of experience in blending polymer resins.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We determine that we need not expressly construe this claim term to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,570,276 - Sealed Air Corporation v. Ranpak Corp.All claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01249 · APJ Wesley B Derrick · IPR · Final written decision
Claims 13–15 are unpatentable as obvious over Kirkpatrick; the Board did not reach the alternative grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner fails to cite any authority to support its argument that we should, in effect, disregard Mr. Klass’ testimony as to the level of ordinary skill in the art because he is not a person of ordinary skill in what Patent Owner contends is the relevant field. See PO Resp.; PO Sur-Reply. Patent Owner’s counsel similarly was unable to identify any such authority at the hearing. Tr. 42:9–15. Further, Mr. Klass’ testimony was not that he is not a person of ordinary skill in the art, but rather that his opinions set forth in his earlier declaration would not be different under the level of ordinary skill as defined by Mr. May. Ex. 1028 ¶¶ 4–5. On this record, we find Mr. Klass’ testimony well-supported as it pertains to relevant issues and see no reason to summarily disregard it. See Exs. 1002, 1028. Complete overlap between a witness’ technical qualifications in the field of the invention is not necessary for the witness’ testimony to be admissible. See SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“CTPG”)5 at 34 (“There is . . . no requirement of a perfect match between the expert’s experience and the relevant field.”). Nor must they themselves be a person of ordinary skill in the art, but only that they are “qualified in the pertinent art.” CTPG at 34 (citing Sundance, Inc. v. DelMonte Fabricating Ltd., 550 F.3d 1356, 136364 (Fed. Cir. 2008)). Mr. Klass’ education includes a minor in Pulp & Paper Technology (Ex. 1006) and his lengthy experience in the pulp and paper industry includes work—as a process engineer—involving splicing and corrugators (Ex. 1002 ¶ 8). Mr. Klass has the “knowledge, skill, experience, training, [and] education” of a “specialized” nature that is likely to “assist the trier of fact to understand the evidence.” Fed. R. Evid. 702. Accordingly, we find Mr. Klass has sufficient relevant technical expertise to consider and weigh his testimony as we have in this decision. See SEB S.A., 594 F.3d at 1373.” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“On this record, we determine that a person of ordinary skill in the relevant art would have included those with a bachelor’s degree in mechanical or paper engineering with at least a year’s experience relating to producing cushioning materials, dunnage pads, and other protective packaging. As admitted by Patent Owner, production of such materials using kraft paper stock was known. PO Resp. 14. As to the use of double-sided adhesive, we do not agree with Patent Owner that it was unknown to the person of ordinary skill in the art because using double-sided tape to join rolls of sheet stock was known in the wider field of paper processing and we find that field reasonably includes producing paper cushioning products, and that such related knowledge reasonably would also have been within the knowledge of a skilled artisan in the “cushioning conversion machine” field as the same or similar paper cushioning products are produced. Moreover, regardless of whether double-sided tape was used in what Patent Owner contends is the “cushioning conversion machine” field, Mr. May’s testimony is limited to it not being used in that field, not that double-sided tape itself was not known to one of ordinary skill in the art in the field. Ex. 2001 ¶¶ 53–57. It reasonably follows that a person having knowledge of double-sided tape would also have knowledge of joining together sheets of paper or other stock using double-sided tape. Further, to the extent that Patent Owner and Mr. May rely on “cushioning conversion machines” differing from paper processing machines that produce paper cushioning products, on this record, there is insufficient evidence of a meaningful difference in their complexity, size, or operation. For example, Patent Owner relies heavily on the paper processing machines including machinery to allow splicing on the fly, but the prior art also teaches that non-continuous roll-to-roll splicing can be used. See Ex. 1010, 1:13–16 (disclosing that a splicing tape system “is applicable both to systems in which the splice is made on the fly and to systems in which the splice is made while the running web is stationary”); Ex.1017, 1:15–19 (disclosing that “[t]he splicing operation can be performed in a static or a dynamic mode.”). As to size, similarly, Patent Owner relies on the machinery for paper making or producing corrugated cardboard being larger than “cushioning conversion machines,” but there is no clear distinction between the two as to size, as discussed below. Also, there is no evidence that paper processing machines forming paper cushioning products from paper itself do not do so in the same general manner as the ’096 patent. Accordingly, finding no meaningful distinction to “cushioning conversion machines,” we discern no meaningful difference in the knowledge of the skilled artisan as it relates to the challenged claims. Moreover, to the extent that there would be a narrower “cushioning conversion machine” field that did not include the use of double-sided tape, as Patent Owner contends, there would be no difference in the outcome of this case. As to obviousness, the scope of analogous prior art is not limited to the field of inventor’s endeavor, but also includes references that are “still reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As discussed below, we find Kirkpatrick reasonably pertinent to the particular problem with which the inventor is involved.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“On this record, we determine that the preamble’s recitation of “sheet stock material for use in a cushioning conversion machine” is a statement of intended use and does not constitute a limitation. In doing so, we must construe the meaning of the term “cushioning conversion machine.” In construing “cushioning conversion machine,” we note there is no guidance elsewhere in the remaining claim language as to its meaning, including in other claims, and so turn to the specification of the ’096 patent. See Phillips, 415 F.3d at 1312–13, 1315. The ’096 patent states that “[c]ushioning conversion machines convert [paper] sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). The ’096 patent also identifies its “invention [as] relat[ing] to machines for converting sheet stock material into a dunnage product.” Id. at 1:15–16 (Field of the Invention). Figures 1 and 2 are identified as top plan and side elevational views of a cushioning conversion machine. Id. at 3:57–63. The ’096 patent discloses that the “operation of the [cushioning] conversion machine 10 may be controlled by a controller, also in a well-known manner” (emphasis added). Id. at 6:42–44. The ’096 patent provides no disclosure as to the size of the cushioning conversion machine or the sheet stock material that it converts into cushioning dunnage product. See Ex. 1001.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, Mr. May’s testimony of what “cushioning conversion machine” means in the field of paper dunnage machines fails to bear the weight required to limit the term as Patent Owner proposes. The ’096 patent identifies “cushioning conversion machines” to be machines that “convert sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). This is in effect the plain and ordinary meaning of the words themselves identifying a machine that converts feedstock into cushioning. Further, we find it consistent with the ’096 patent as a whole. Mr. May’s contrary testimony, as discussed above, lacks sufficient evidentiary basis to support Patent Owner’s contended construction over the plain and ordinary meaning. In effect, the basis for Mr. May’s testimony is limited to a showing that the meaning of the term encompasses a machine such as shown in the ’096 patent’s Figure 1 and 2. Mr. May’s testimony as to the PadPak machine being a “popular cushioning conversion machine[]” only goes to establishing that “cushioning conversion machine” encompasses similar machines, not that the term would be understood to be limited to the PadPak machine. Ex. 2001 ¶¶ 65–66. As to “cushioning conversion machines” being stop/start machines, the ’096 patent’s states that “the conversion machine 10 may be controlled by a controller” (emphasis 7 Elsewhere Patent Owner cites a number of its patents for using the term “cushioning conversion machine,” but this only supports that Patent Owner uses the term. See PO Resp. 27. added), not that it must be. Ex. 1001, 6:42–43. As to size, as discussed above, the ’096 patent provides no limitation as to the size of the apparatus or the sheet stock material. Petitioner highlights that another of Patent Owner’s patents, U.S. Patent No. 6,200,251 B1 (Ex. 1026, “the ’251 patent”), discloses “that in a ‘preferred cushioning conversion machine, the stock supply assembly is adapted to supply stock material which is between 25 to 35 inches wide’” (emphasis added). Pet. Reply 14 (citing Ex. 1026, 2:56–59). Petitioner also highlights that the ’251 patent was filed before the ’096 patent’s priority date and names the ’096 patent’s inventor among its inventors. Id.; compare Ex. 1026, codes (22), (75), with Ex. 1001, codes (22), (75). Such disclosure of a preferred embodiment in this circumstance is reasonable evidence that a skilled artisan would understand that a “cushioning conversion machine” included those “adapted to supply stock material . . . between 25 and 35 inches wide,” but not that such machines were limited to using such widths. The relevance of this is that the sheet stock material used is not manifestly distinct from the sheet stock material used for corrugators, ranging from 35 to 110 inches in width, where Patent Owner contends corrugators are distinct from “cushioning conversion machines.” See Ex. 2003, 95:22–96:6 (Mr. Klass testifying that the “width of commercial corrugators could be anywhere from 35 to 110 inches.”); PO Resp. 33–34 (relying on Mr. Klass’ testimony). Similarly, there is no persuasive evidence of a clear distinction in weight. Patent Owner and Mr. May rely on Mr. Klass’ testimony as to the weight of paper rolls for corrugators, focusing solely on testimony as to the weight of large rolls and ignoring that the testimony also set forth that “[s]ome corrugators use smaller rolls.” PO Resp. 34; Ex. 2001 ¶¶ 77–79; Pet. Reply 14–15; see also Ex. 1028 ¶¶ 21–22 (Mr. Klass’ testimony that “web feed rolls at the lower end of that range would be especially well suited for use in a cushioning conversion machine, even under [Patent Owner’s] narrow definition of such a machine” and that “my testimony certainly was not that Kirkpatrick’s web feed rolls would weigh tons.”). In sum, on this record, we determine that “cushioning conversion” slip op. at 22
Patent outcomesUS 6,756,096 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,756,096 - Gamber-Johnson LLC v. National Products Inc.Institution deniedPTAB · Jan 3, 2022 · IPR2021-01159 · APJ Wesley B Derrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim, relying on the same-structure mapping and unsupported obviousness theories.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008))). D. Asserted Anticipation by Woud slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner neither contests Petitioner’s proposed definition nor proposes its own definition. See Prelim. Resp. On this record, we find Petitioner’s definition of the level of ordinary skill reasonable and, therefore, adopt it for the purposes of this Decision, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus preclude a meaningful indication of the level of ordinary skill in the art. B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“support surface” (emphasis added). The structure Petitioner relies on as meeting the recited “female connector,” however, encompasses the entirety of the structure relied on as meeting the recited “docking support surface.” Compare Pet. 34–36, with id. at 33–34. As highlighted by Patent Owner, this raises a significant issue. See Prelim Resp. 24, 26–27. Our reviewing court explains that, [w]here a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct component[s]” of the patented invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”). There is nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”). Becton Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Therefore, a single structure in Woud cannot be both the recited female connector and the recited docking support surface, nor meet the requirement that the female connector is disposed within the docking support surface where the entirety of structure relied on as the docking support surface is also the structure relied on as the female connector, as Petitioner contends. Petitioner offers no explanation or elements set forth in the claim. See Pet. Because we find Petitioner relies on the same structure for two distinct components of claim 1, Petitioner fails to establish a reasonable likelihood that it will establish by a preponderance that claim 1 is anticipated by Woud.5” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,026 - PTAB · Nov 19, 2021 · IPR2021-00857 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR on claims 1–35 and all petitioned grounds, including anticipation by Birnboim and obviousness over the listed combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Burden of Proof “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that one of the challenged claims is unpatentable. Additionally, the Supreme Court held that a decision to institute under 35 U.S.C. § 314(b) may not institute review on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with USPTO Guidance, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” See Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner contends that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Ex. 1002, ¶¶37–38. Pet. 9. At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 7. For the purposes of this Decision on Institution, we agree with Petitioner’s proposed level of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to comport with the teachings of the ’399 patent and asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner contends that we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use.” Pet. 7. Patent Owner does not dispute Petitioner’s definition of “stock solution” nor request that we construe any other claim at this time, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock solution” as Petitioner proposes. We note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). Furthermore, where “the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Patent Owner does not at this time directly dispute Petitioner’s contention that Birnboim discloses a stock solution of an aqueous composition, but does dispute that Birnboim discloses the aqueous composition as claimed. See Prelim. Resp. 8. Based on the current record, which shows that the Birnboim discloses a “stock solution of an aqueous composition,” we are satisfied Petitioner has shown that Birnboim meets the preamble to the extent it is limiting. slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,212,399 - PTAB · Nov 18, 2021 · IPR2021-00854 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–35 and all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows that there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–35 of the ’240 patent on all grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A person of ordinary skill in the art . . . would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid 10 Koller, WO 91/02740, published Mar. 7, 1991. Ex. 1016. 11 Robert E. Farrell, Jr., Ph.D., “RNA Methodologies: A Laboratory Guide for Isolation and Characterization,” (3rd Ed., 2005). Ex. 1026. extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 7 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition at this stage. Prelim. Resp. 7. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’240 patent. Cf. 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)). B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner offer any position on the construction of any claim term. See Pet.; Prelim. Resp. 7. On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution. C. Principles of Law” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“and particularly claim 1. Petitioner provides a detailed analysis of where each element of claim 1 is found in Birnboim. Pet. 13–19. Specifically, Petitioner asserts that Birnboim’s Example 3 discloses an aqueous composition comprising the one or more chaotropes, one or more detergents, one or more reducing agents, one or more chelators, and one or more buffers, as recited in the claim. Id. at 13–18. Petitioner also asserts that “Birnboim’s reagents are present in an amount sufficient to perform the claimed functions.” Id. at 18–23 (heading capitalization normalized and underlining omitted).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,669,240 - PTAB · Nov 12, 2021 · IPR2021-00860 · APJ Robert A Pollock · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Birnboim, Mori, and Farrell, Petitioner provides a detailed analysis of where each claim element is found in the cited references and discusses why one of ordinary skill in the art would have been motivated to combine those elements with a reasonable expectation of success. See e.g., Pet. 34–42 (discussing motivation to combine and reasonable expectation of success with respect to claim 1). For the purpose of institution, we focus on independent claim 1.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner asserts that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 10 citing Ex. 1002, ¶¶34–35. Patent Owner presently does not dispute Petitioner’s proposed definition. Prelim. Resp. 6. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’256 patent. Cf. 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)). C. Claim Construction” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionPlain and ordinary meaningDecided for petitioner
“According to Petitioner, we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use,” which, in the context of the instant claims, refers to “the aqueous composition before it is mixed with a sample.” Pet. 8 (citing Ex. 1029; Ex. 1002 ¶ 38). Patent Owner neither contests Petitioner’s definition of “stock solution” nor requests that we construe any other claim term, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock” solution as Petitioner proposes. In section II.D.4, below, we note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning. D. Ground 1: Obviousness in View of Birnboim, Mori, and Farrell” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner provides reasoned bases for why one of ordinary skill in the art would have combined the cited references to arrive at the claimed invention. See Pet. 34–42 (citations omitted). Summarizing its arguments, Petitioner concludes that one of ordinary skill in the art would have been motivated to prepare solutions comprising a chaotrope, a detergent, a reducing agent, a chelator, a shortchain alkanol, and a buffer (with the associated acid and base) at a pH of 5–7 with a reasonable expectation that, when combined with a biological sample, the solution would denature proteins, inactivate nucleases, and kill pathogens, all without degrading nucleic acids of the sample. Ex. 1002, ¶151. The POSA would have been motivated to use Mori’s surfactants or defoaming agents along with Farrell’s nuclease-free water in Birnboim’s stock solution and would have had a reasonable expectation of success in doing so. Ex. 1002, ¶¶137–152.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,683,256 - PTAB · Nov 12, 2021 · IPR2021-00850 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–42 and all asserted grounds after finding a reasonable likelihood that Birnboim anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–42 of the ’467 patent on all grounds.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties do not propose any claim construction. See Prelim. Resp. 5. On this record and for purposes of this Decision, we see no need to construe any term expressly.7 See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, and at this stage of the proceeding, Petitioner has shown sufficiently Birnboim discloses each limitation of claim 1. See Pet. 14–15 (showing Birnboim discloses the preamble); 18–19 (table showing “Birnboim Example 3 discloses using each of claim 1’s recited ingredients together in an aqueous composition”), 19–20, 23, 24 (relying on Birnboim’s Examples 4–6 for confirming the amounts of the compounds used in the composition in Example 3 perform the claimed functions, and disclosing the “contacting” and “detecting” steps). We address below Patent Owner’s counterarguments, which do not undermine the adequacy of Petitioner’s showing for purposes of trial institution.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“2. Analysis “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (internal quotation marks omitted). But “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. In an obviousness inquiry, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. On this record, we find Petitioner has not shown sufficiently “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,293,467 - PTAB · Oct 21, 2021 · IPR2021-00767 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 7–11, and 14–18 were unpatentable on any asserted ground.
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, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had either “a Bachelor’s Degree in mechanical engineering or a related discipline and at least two years of experience in the design or development of interlocking products (e.g. docking cradles and adapters for portable electronic devices),” or “five years or more of experience in the design or development of interlocking products.” Pet. 10. At this stage of the definition, nor provides a definition of its own. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition, which is undisputed on this record, except that we delete the qualifiers “at least” and “or more” to eliminate vagueness as to the amount of practical experience. The qualifier, if not deleted, expands the range indefinitely without an upper bound, and thus would preclude a meaningful indication of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.2 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 2 Petitioner incorrectly states that claims in an inter partes review are to be construed using the broadest reasonable construction standard, which applied to proceedings filed prior to November 13, 2018. Pet. 10–11; see also 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018) (adopting “the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny”). See Prelim. Resp.; Pet. 10–11. For purposes of this Decision, based on the record before us, we determine that none of the claim terms requires an explicit construction.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“Claim 1 requires that (1) the adapter comprises a contactor and male positioning interface; (2) the contactor comprises a contactor surface and a plurality of contacts exposed and arranged on the surface that are electrically coupleable to the electronic device; (3) the male positioning interface defines a rim surrounding, and in contact with, a perimeter of the contactor surface of the contactor of the adapter; and (4) the rim guides the proper mating of the contactor of the adapter to the external connector. Ex. 1001, 34:3–13. Petitioner identifies components in the images of the Flex 8 taken from GPS 1 that it purports to be an adapter comprising a contactor with contacts, but does not explain why or how those identified components meet GPS 1 from which we can identify, or discern the function of, any component of the device identified in those images. See Pet. 16–18 (Petitioner’s contentions regarding the adapter limitation of claim 1); see also Ex. 1003 (GPS 1, nowhere identifying any feature of the device by reference to the images). Additionally, Petitioner does not identify anything in the images corresponding to the recited “male positioning interface” or “rim surrounding, and in contact with, a perimeter of the contactor surface . . . to guide proper mating of the contactor of the adapter to the external connector” limitations of claim 1. 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, the Petition does not identify sufficiently where each element of claim 1 is found in GPS 1, and does not include a detailed explanation of the significance of the evidence. Specifically, Petitioner fails to explain with any particularity how or why the images reproduced above support its view that GPS 1 discloses “an adapter coupleable to a portable electronic device for mating with an states that “[u]nder PO’s theories of infringement, GPS 1 discloses these recitations” and provides the annotated images reproduced above. Id. Patent Owner’s infringement contentions, however, are directed to a different product (the ATMOS Temperature Controlling Cradle Kit for Samsung Galaxy TAB A 8" Product), and Petitioner does not explain how that product relates, if at all, to the Flex 8 depicted in GPS 1. Moreover, Petitioner’s citation to Patent Owner’s infringement contentions to support conclusory statements not otherwise supported in the Petition amounts to an improper incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Petition, therefore, falls short of adequately establishing the identity or function of any component in the images of the Flex 8 from GPS 1. Petitioner states that, although the Petition primarily focuses on GPS 1 because “webpages are most easily reproduced” therein, “the same analysis applies to each of the AP Publications.” Pet. 16. As was the case with Petitioner’s challenge based on GPS 1, the Petition fails to explain with any particularity how the products depicted in GPS 2, GPS 3, and GPS 4 support its view that GPS 2, GPS 3, and GPS 4 each discloses “an adapter coupleable to a portable electronic device for mating with an external connector” as recited in claim 1. Pet. 18–21. Petitioner provides two still images from each of GPS 2, GPS 3, and GPS 4, which appear to show the Flex 8, without annotations or further explanation. Id. The Petition, therefore, also does not identify sufficiently where each element of claim 1 is found in GPS 2, GPS 3, and GPS 4. establishes that any of the AP Publications discloses the recitations of claim 1 directed to “an adapter coupleable to a portable electronic device for mating with an external connector.” Accordingly, we determine that the Petition does not establish a reasonable likelihood that Petitioner will prevail in showing that claim 1, and claims 2, 3, and 7–9 that depend directly or indirectly therefrom, are anticipated by the AP Publications.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,630,334
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.