- PTAB · Oct 11, 2023 · IPR2023-00756 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–21 on all petitioned grounds, finding a reasonable likelihood that Samsung would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–21 of the ’545 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered” is an IDS statement. Ex. 2003; cited at Prelim Resp. 23. The IDS statement contains two sets of documents. Ex. 2003, 1–12 (first set); 15–22 (second set). The first set lists over 250 references, one of which includes Brown. Id. at 6, reference 4E. The Examiner signed the bottom of the page citing Brown on Sept. 24, 2015. Where the Examiner signed the page, it states that the Examiner “CONSIDERED” on that date (i.e., on Sept. 24, 2015). What precisely the Examiner “considered” on that date is unclear because none of the citations, including to Brown, have been initialed. This evidence which amounts to a single uninitialed citation to Brown among hundreds of other citations does not provide a sufficient basis for the Board to exercise its discretion to deny institution under § 325(d).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Lenovo ’545 IPR [i.e., IPR2019-00988 (see footnote 2)], the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Ex. 2001 at 9. [Patent Owner] agrees that this is the correct standard for a POSITA and [Petitioner] has also adopted this definition. Therefore, there is no dispute about the skill level of a POSITA. Prelim. Resp. 12. Patent Owner does not propose a definition for the level of skill in the art possessed by a POSA that is significantly different from that proposed by the Petitioner. Also, as Patent Owner indicates, Petitioner’s proposal is consistent with the one adopted in IPR2019-00988. See Ex. 2001, 9. We adopt Petitioner’s asserted level of ordinary skill in the art. E. Claim Construction” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,369,545 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15
- Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner
“Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21
Patent outcomesUS 6,634,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,634,770 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, 85–86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“In the Reply, Petitioner uses the Krames declaration (Ex. 1028) to argue, for example, that a person of ordinary skill in the art would have used a lower amperage than the 1.5 A dc that Patent Owner’s Response focuses on. Reply 8 (citing Ex. 1028 ¶ 22). This use of the Krames declaration is timely because it responds to an argument Patent Owner makes in the Patent Owner Response. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in . . . patent owner response.”). As to relevancy and whether the Krames declaration is applicable to the facts of this case, the issues at hand are (1) whether or not a person having ordinary skill would have had reason to use the Krames LED with Begemann with a reasonable expectation of success and (2) whether or not the Krames LED is capable of outputting light at greater than about 40 milliwatts. Again, we emphasize that claim 21 does not recite a method where the LED within the recited semiconductor light source actually outputs greater than about 40 milliwatts. The Krames declaration is relevant to the facts of this case because the declaration has bearing on whether or not a person of ordinary skill in the art would have combined the Krames reference’s LED with Begemann’s lightbulb design. See, e.g., Ex. 1028 ¶ 22. Patent Owner argues that evidence must be relevant to motivation to combine “an LED chip from the Krames article (operating at 1.5 amps to produce 170 milliwatts of output)” but claim 21 has no “operating at 1.5 amps to produce 170 milliwatts of output” requirement. What is relevant is that Krames discloses a single chip that has the capability of outputting more or less light depending on operating conditions. Pet. Opp. 3; see also Ex. 1008, 8 (providing that Figure 12 of the Krames reference is described as illustrating “[l]ight output vs. current characteristic of a blue … 1x1 mm2 AlGaInN LED in a power package, compared to a conventional AlGaInN LED in a 5 mm lamp a package”). Because claim 21 does not require actually running the recited LED at any particular wattage or amperage, it is appropriate for the Krames declaration to rebut Patent Owner’s argument that a person of ordinary skill would not have considered using the Krames LED with Begemann at high amperage by explaining that a person of ordinary skill in the art would have considered using the exact same Krames LED with Begemann at a low amperage instead and that at this lower amperage the Krames LED would generate an amount of heat that would be easily dissipated by Begemann’s lamp while still providing an optical output of “greater than about 40 milliwatts” as recited by claim 21. Ex. 1028 ¶¶ 23–24 (citing Ex. 1008, 8). The fact that the Krames LED is configured to run at the high amperage if desired for a different application does not negate the rationale for combining the Krames LED to run at a lower amperage.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner’s claim construction is well-supported by the record including the reasoning provided by the California and Delaware district courts. Ex. 2002, 19–21 (California district court explaining why the “reflective layers” must be distinct layers based on how claim 8 is structured and also explaining why the amount of reflection must be non-negligible); Ex. 2003, 2, 13 (Delaware district court explaining why reflection has to be more than negligible but need not reflect more light than the light absorbed or transmitted). We, thus, agree that “first and a second reflective layers . . . 10 Patent Owner’s proposed claim construction combines various statements made by the district courts into one statement. Resp. 15 (citing Ex. 2002, 19–21; Ex. 2003, 2, 13). serving to reflect light emitted by said active layer” means that the “first and second reflective layers are distinct from each other and reflect more than negligible light.” We further note that the preponderance of the evidence supports that as little as one percent light reflectance is “non-negligible” in this context. Reply 4; also Ex. 1032, 188:7–14 (Patent Owner’s witness, Dr. Shealy, testifying that reflection “on the order of one percent” would be more than negligible); see also Tr. 53 (counsel for Patent Owner agreeing that Dr. Shealy opined that “three percent reflection is enough to be non-negligible”).” slip op. at 21
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Markforged Inc. v. Continuous Composites, Inc.No claims unpatentablePTAB · Sep 26, 2023 · IPR2022-00679 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–12, 20, and 21 were not proven unpatentable; the asserted obviousness grounds failed for insufficient motivation to combine, teaching away, or missing claim limitations.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“Patent Owner statutorily disclaimed claims 13–19 on July 25, 2023, rendering Petitioner’s Grounds 4, 9, and 10 moot. Ex. 2008. Thus, our Final Written Decision does not address Petitioner’s Grounds 4, 9, and 10. The Board heard oral arguments in an in-person hearing conducted on July 27, 2023. See Paper 23.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had a master’s or bachelor’s degree in mechanical engineering, materials science, or a related degree, and either at least 3–5 years of experience (with a master’s degree), or at least 5–6 years of experience (with a bachelor’s degree), in composite materials or additive manufacturing. Pet. 13–14 (citing Ex. 1002 ¶ 36). Patent Owner states that it “does not agree that Petitioner’s proposed level of skill in the art accurately reflects the level of ordinary skill in the art as of the priority date . . . [, but r]egardless [of] the level of skill, . . . the Petition does not show the challenged claims are unpatentable.” Resp. 14–15. Patent Owner does not propose a different level of skill in the art. See id. at 15 (“Patent Owner reserves the right to propose a level of ordinary skill in the art later in this proceeding, or in other proceedings.”). On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). Although a more specific definition is not necessary, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. Neither party, however, advances information explaining how or why the result in this case would change based on the level of ordinary skill determined by the Board.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner advances no specific construction of any claim term, but rather proposes that “claim terms should be given their plain and ordinary meaning.” Pet. 14. Patent Owner asserts that the term “anchor” should be construed according to its plain and ordinary meaning, which, according to Patent Owner, is “contact to which the path of composite material is adhered to enable pulling of the path.” Resp. 15 (citing Ex. 2006, 2, 53). Petitioner responds that “[i]n the parallel litigation, the Court has construed ‘anchor point’ and ‘anchor’ as ‘a contact point to which the path is affixed and that serves as an origin point for the formation of the path.’” Reply 3. On the complete record, we determine that no claim term needs an express construction to resolve the controversy. C. GROUND 1 – ALLEGED OBVIOUSNESS OF CLAIMS 20 AND 21 OVER LIPSKER” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“combining multiple embodiments from a single prior art reference (Resp. 31), i.e., “there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). On this record, Petitioner fails to provide any such motivation to combine the embodiment in Lipsker’s Figure 2 with those of Figures 4A, 4B, 4C, and 5 to arrive at the subject matter of claim 20. Pet. 23–31. Rather, Petitioner merely points to the disparate embodiments of Figures 2, 4A, 4B, 4C, and 5 and portions of Lipsker’s disclosure pertaining to those embodiments, and asserts that Lipsker “discloses” the individual limitations recited in claim 20. See, e.g., id. at 25 (Petitioner, relying on Figure 2, asserting that “Lipsker discloses the preamble of Claim 20”), 27 (Petitioner, relying on Figure 5, asserting that “Lipsker discloses Element 20[a]”), 28 (quoting Lipsker’s descriptions of wire and adhesive dispensed separately as depicted in Figure 2, and asserting “Lipsker discloses Element 20 [c]”), 29 (pointing to Figures 4A, 4B, and 4C and asserting “Lipsker discloses Element 20[d]”). Pointing to disparate embodiments without providing a sufficient motivation to combine them is not enough to establish the obviousness of claim 20 as a whole. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that a claim “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”).” slip op. at 14
Patent outcomesUS 10,744,708 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,744,708 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Sep 13, 2023 · IPR2023-00485 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–10 on all petition grounds; Petitioner showed a reasonable likelihood that the claims would have been obvious over Yoakim, Jarisch, Rossi, and Castellani.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“second German priority application do not disclose every limitation of independent claims 1 and 7 of the ’430 patent. Figure 1 does not depict a barcode under the flange, but rather the use of raised areas on the side of the capsule that act as an identifier. Ex. 1047, Fig. 1. Figure 2, coupled with its associated description, might suggest that the barcode could be on the portion of the base element facing away from the membrane,9 but this figure does not disclose many of the other elements of the claim, including holding arms, a drop box, annular convexity and concavity, and a pump to supply water to the single-serve capsule. Pet. 41; Ex. 1047, 9:21–24, Fig. 2. We also determine that Patent Owner does not sufficiently demonstrate that Figures 16–18 of the second German priority application provide adequate disclosures showing that the inventors were in possession 9 We question whether the second German priority application supports placing a barcode under the flange. The application states that the barcode could “be provided on that side of the peripheral region of the basic element which is directed away from the membrane.” Ex. 1047, 9:21–24. This statement is rather ambiguous as to where the “peripheral region” is that is “directed away from the membrane.” The text goes on to explain, however, that “[t]his barcode,” i.e., the barcode that is “directed away from the membrane,” “is read by a detector 13,” which in Figure 2 is oriented to read a barcode on the top surface of the flange. Id. at 9:25–26, Fig. 2. This suggests that the barcode is not on the bottom side of the flange and that arrow 15 is pointing to the outer portion of the peripheral region that is not covered by the membrane, and not necessarily the bottom of the flange. First, the second German priority application describes the use of “an identifier” that is read by a “sensor/detection means” and then compared to a stored identifier. Ex. 1047, 2:29–31. In Figure 2 the identifier may be a barcode and the detection means is detector 13. Id. at 9:11–26. In Figures 16–18, however, element 2.4.2 is not an identifier, but rather a “a form-fitting and/or friction-fitting means and/or a detection means.” Id. at 12:22– 24 (emphasis added). As such, it is unclear how this disclosure would demonstrate possession of the disputed claim limitation, when combined with the other limitations of claims 1 and 7 as a whole. Second, it is not evident that the toothed rings of Figures 16–18 are on the underside of the flange, as asserted by Patent Owner. Prelim. Resp. 42 (asserting that a barcode “could be located on the bottom side of the flange instead of the toothed ring”); Prelim. Sur-reply 4. The second German priority application states that the “form-fitting and/or friction-fitting means and/or detection means 2.4.2” is located in the “outer region” of the peripheral region 2.4. Ex. 1047, 12:22–24. We are directed to no evidence that this “outer region” is on the bottom of the flange, and Figures 16–18 each appear to depict means 2.4.2 on, or forming, the outer circumference of the flange.11 Id. at Figs. 16–18, 6:8–11 (noting that the toothed ring is provided “on the outer circumference of the periphery”). 10 The parties dispute whether Figure 16 of the second German priority application discloses annular convexity and concavity. Pet. 42–43; Prelim. Resp. 45–46; Prelim. Reply 4–5; Prelim. Sur-reply 4. At most, the parties identify a material issue of fact with respect to these two claim elements that is best resolved on a full trial record. 11 At first blush, Figure 17A appears to show means 2.4.2 under a portion of element 27 of the capsule. Ex. 1047, Fig. 17A; Prelim. Sur-reply 4 depicted in Figures 16–18, which rely on toothed rings physically interacting with either the chamber, retaining arms, or a pinion. Ex. 1047, 12:22–31, 13:8–18. The second German priority application explains that means 2.4.2 physically interacts with retaining arms 30 (embodiments of Figures 16 and 17) or a pinon (embodiment of Figure 18), and if means 2.4.2 were not present in these embodiments, the capsule would either “drop through into a waste container” or could not be inserted through the insertion shaft. Id. at 12:22–27, 13:9–12, 13:16–35 (noting that in the embodiment disclosed in Figure 18 a pinon interacts with means 2.4.2 and only when means 2.4.2 “is formed complementary to the teeth of the means” can the capsule be inserted). Patent Owner does not sufficiently explain how a barcode could replace means 2.4.2 in these embodiments and still retain the capsule within the device or allow the capsule to enter the insertion shaft.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“First, Yoakim expressly states that the capsule may use a “barcode,” and the plain and ordinary meaning of this term is a code that satisfies the construction adopted by the district court. To the extent Patent Owner has reason to believe that Yoakim does not apply the plain and ordinary meaning of the term “barcode,” and that one of ordinary skill in the art would have understood this fact, it is encouraged to present such evidence during trial. Second, in this obviousness inquiry the question is not whether a person of ordinary skill in the art is more likely to adopt a barcode or a bitcode, but whether one of ordinary skill in the art would have seen a benefit to applying the “barcode” of Yoakim under the flange of the capsule. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“Our case law is clear. It’s not necessary to show that a combination is ‘the best option, only that it is a suitable option.’”). On that point, Jarisch expressly discloses the benefits of doing so. Ex. 1005 ¶ 22 (noting that applying the code at the bottom of the rim lowers the risk of the code becoming unreadable). As such, we determine that Petitioner sufficiently identifies where Yoakim discloses a barcode and explains why one of ordinary skill in the art would have placed such a “barcode” on the bottom of the capsule’s flange.” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Information Disclosure Statement (IDS) during prosecution of the ’430 patent and that Rossi and Castellani were mentioned in the inter partes reviews that were cited on the IDS. Pet. 19; Prelim. Resp. 23. We need not determine whether Part 1 of the Advanced Bionics framework is satisfied based on these disclosures, however, as Part 2 of the analysis, which we address below, is dispositive. a) Factor (c)—the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for a rejection The Examiner did not issue any rejections during prosecution of the ’430 patent. Ex. 1002, 232–234. As the reasons for allowance, the Examiner stated: [A]llowance of claims 1 and 21–29 is indicated as none of the cited prior art discloses or suggests the flange comprising a top side and an opposing bottom side; a cover that is fastened to the top side of the flange to close the cavity; and an identifier provided on the bottom side of the flange, the identifier being a barcode, wherein the beverage machine, by reading or detecting the identifier with the sensor/detector, is configured to determine if the single-serve capsule belongs to a group of single serve capsules operable for use with the beverage machine, and only if the beverage machine determines that the single-serve capsule belongs to the group of single serve capsules operable for use with the beverage machine is the pump controlled to push the water into the single-serve capsule. Id. at 233. In arriving at this conclusion, the Examiner did not cite or discuss the disclosures of Yoakim, Jarisch, Rossi, or Castellani. Id. at 232–234. Yet, these references appear, based on the current record, to expressly teach or allowance, including a “flange comprising a top side and an opposing bottom side” (Ex. 1004 ¶ 197, Fig. 6); “a cover that is fastened to the top side of the flange to close the cavity” (Ex. 1004 ¶¶ 128–129, 197, 414); “an identifier provided on the bottom side of the flange” (Ex. 1005 ¶ 22) that is “a barcode” (Ex. 1004 ¶¶ 496, 525); and “reading or detecting the identifier with the sensor/detector . . . to determine if the single-serve capsule belongs to a group of single serve capsules operable for use with the beverage machine” (Ex. 1004 ¶¶ 25, 192, 477, 494–496, 525; Ex. 1005 ¶ 82; Ex. 1041, 3, 11). As such, to the extent the asserted combination of prior art references was evaluated during prosecution of the application that matured into the ’430 patent, we determine that such evaluation was minimal.” slip op. at 37
- Other 314aDecided for petitioner
“B. 35 U.S.C. § 314(a) Patent Owner contends that “[t]he parties have been embroiled in disputes involving substantive claims for infringement for both the ’430 Patent and the Jarisch 929 reference,” and “it is unnecessary to open up yet another front in this dispute.” Prelim. Resp. 68–69. As such, Patent Owner requests that we deny institution under 35 U.S.C. § 314(a). Id. Patent Owner directs our attention to no case in which the Director has exercised discretion to deny a petition merely because the same patent was the subject of a co-pending district court infringement action. Indeed, 35 U.S.C. § 315(b) specifically contemplates such a scenario. Accordingly, we decline to exercise discretion to deny the Petition under 35 U.S.C. § 314(a).” slip op. at 40
§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 11,230,430 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Sep 13, 2023 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted IPR on claims 1–16 because Petitioner showed a reasonable likelihood that the claims would have been obvious over Yoakim, Jarisch, and Rapparini.
RulingsInstitution decision- 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) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to claims 1–16 of the ’923 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). One may show support for the claims of a later application by showing that a single, earlier application provides written description support for the claims. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); Studiengesellschaft Kohle, MBH v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997) (noting that a patentee “cannot distinct previous applications”). Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“7. Analysis: Reasons to Combine the References Petitioner shows sufficiently that Yoakim, Jarisch and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/espresso machines.” Pet. 43. “Yoakim and Jarisch both improve the optimization of beverage parameters in a single-serve brewing system, and use optical codes read by the machine to achieve this.” Id. “Rapparini further improves the the wall of the capsule body like those used in Yoakim and Jarisch.” Id. at 43–44; see id. at 50–51, 53–54 (Petitioner’s further argument that Rapparini discloses “an optimized capsule structure that is stiffer and more stable” by virtue of radially spaced and vertically oriented ribs and grooves, where the vertically oriented grooves are free from extending entirely to the bottom region of the capsule). Petitioner directs us to additional evidence tending to establish that an ordinarily skilled artisan would have been prompted to modify Yoakim’s device, to include the code placement of Jarisch and the grooves and ribs of Rapparini, to arrive at the claimed invention with an expectation of success. Id. at 44–48.” slip op. at 27
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,994,923 - Gce Gas Control Equipment Inc. v. Vbox, Inc.Institution deniedPTAB · Sep 1, 2023 · IPR2023-00527 · APJ Jane E Inglese · IPR · Institution
The Board denied institution because the petition did not show that Deane disclosed or suggested the claimed removal direction for claims 1–23.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, when addressing Ground 1 in the Petition, the Petitioner contends that Berntson (in addition to Deane) teaches a separation cartridge selectively removable from a receptacle, but contends that Deane alone renders obvious a separation cartridge selectively removable from a receptacle “by movement relative to the receptacle in a first direction.” Pet. 54–55, 82. For the first time in the Reply, however, the Petitioner contends that “applying Berntson’s basic teachings to Deane . . . would result in a cartridge removable through the POC bottom.” Reply 4; see also id. at 1 (describing Petitioner’s Scenario A). In neither the Petition nor the Reply, however, does the Petitioner identify with any degree of specificity the “basic teachings” of Berntson that a POSITA would have applied to Deane, nor without relying on impermissible hindsight, how the combined teachings of Deane and Berntson would have led the POSITA to the claimed subject matter. In particular, the Petitioner does not describe how or why Berntson would have led a POSITA to modify Deane’s gas fractionalization apparatus, much less describe any specific modifications that would have resulted in a separation cartridge removable through the bottom of Deane’s gas fractionation apparatus. Equally importantly, the Petitioner does not provide a sufficient rationale for combining the prior art teachings. The Petitioner does not explain why one of ordinary skill in the art would have considered any modifications of Deane’s apparatus in view of Berntson. The Petitioner, therefore, does not provide sufficient information to establish that combining Berntson with Deane would remedy the deficiencies of the Petitioner’s contentions based on Deane alone, discussed above.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“would be used to construe the claims in a civil action held under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“E. Discretion under 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 28–29; Prelim. Resp. 45–57.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,357,628 - PTAB · Jun 28, 2023 · IPR2023-00326 · APJ Jane E Inglese · IPR · Institution
The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the totality of the information presented in the record before us, we conclude that the Petitioner has shown a reasonable likelihood of prevailing in its challenge to the patentability of claim 12.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Considering the totality of the information on the record before us, we determine that Deane, Dubois, and Hill previously were presented to the Examiner during prosecution, and Berntson is cumulative to Cole, which previously was presented to the Examiner during prosecution. 2. Advanced Bionics Part 2: Becton, Dickinson factors (c), (e), and (f) Having determined that the same or substantially the same art previously was presented to the Office, we turn to the second part of the Advanced Bionics framework and consider Becton, Dickinson factors (c), (e), and (f) to determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10.” slip op. at 40
- Skill levelSkill level board ownOther
“The Petitioner proposes that a person of ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent degree, in mechanical engineering, chemical engineering, or a related field, and 2–3 years of experience in the research, design, or development of portable oxygen concentrators and related hardware, software, and firmware, or equivalent experience.” Pet. 21 (citing Ex. 1003 ¶¶ 226–229). The Petitioner further proposes that “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. At this stage of the proceeding, the Patent Owner does not dispute the Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 14. We find, at this stage, that the asserted prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply the Petitioner’s unopposed definition for purposes of determining whether to institute review, because it is consistent, on this record, with the disclosures of the asserted prior art references.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petitioner presents express constructions for three claim terms: “separation cartridge,” “receptacle,” and “selectively removable.” Pet. 21– 26. Although the Patent Owner contests the Petitioner’s proposed constructions of these terms, the Patent Owner proposes an alternative construction of only the term “separation cartridge.” Prelim. Resp. 14–23, particularly 20. Nonetheless, the Patent Owner further indicates that construction of “separation cartridge,” “receptacle,” and “selectively removable” is not needed at this stage because the Petitioner’s proposed constructions are “not related to any controversy in this IPR proceeding.” Prelim. Resp. 14–23, particularly 16. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,389,614
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.