• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Jan 18, 2023 · IPR2022-01431 · APJ Sheldon M Mcgee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “III. ANALYSIS We have authority to institute an inter partes review only where “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). Our findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “The question of whether the prior art references are in the same field of endeavor is merely a threshold issue that must be satisfied before an obviousness determination can be made. See K-Tec, Inc. v. Vita-Mix, Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either in the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). In other words, once it is determined that the prior art is analogous to the claimed invention, it is then necessary to show that it would have been obvious for the skilled artisan to select and combine the teachings of the prior art in the manner claimed. Thus, we agree with Patent Owner that the Petition needs to set forth specific reasoning as to why an ordinarily skilled artisan would have been motivated to combine these references even if they are in the same or similar fields. Prelim. Resp. 31. Petitioner fails to do so on this record. The absence of such reasoning is particularly noteworthy here in view of Ma’s numerous teachings which appear to discredit the “passive” method of pulling the composite strand from the extruder as recited in claim 4, which is challenged in each of Grounds 2 and 3. Patent Owner identifies no fewer than eight disclosures within Ma that seemingly disparage the passive “pulling” method and discuss benefits of the active “pushing” method. Prelim. Resp. 16–19 (citing Ex. 1007, 53, 95–96, 98–107, 143–147, 149, 167–168). In the absence of any explanation from Petitioner on this point, we are not persuaded that the skilled artisan would have ignored those teachings and selected Ma’s pulling method.” slip op. at 19

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “explained why the ordinarily skilled artisan would have combined the non-precoating embodiment of Lipsker’s Figure 2 and the precoating embodiment of Lipsker’s Figure 5, much less with a reasonable expectation of successfully arriving at the subject matter of challenged claims 1–3. Prelim. Resp. 22–23. As Patent Owner correctly observes (id.), Petitioner’s general assertion that “Lipsker discloses that combinations of disclosed embodiments and features are possible and proper” (Pet. 20) does not constitute a reasoned explanation regarding why the skilled artisan would have combined Lipsker’s precoating and non-precoating actuator embodiments to arrive at the claimed subject matter. Moreover, Dr. Rosen’s declaration testimony on this point is entitled to little to no weight as it merely parrots the Petition. Compare Pet. 20, with Ex. 1002 ¶ 69. 37 C.F.R. § 42.65(a).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references. In any event, for the reasons explained below, even under Petitioner’s definition, Petitioner fails to establish a reasonable likelihood of prevailing at trial with respect to any challenged claim based on the grounds of unpatentability advanced in the Petition.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,173,660
• Markforged Inc. v. Continuous Composites, Inc.Institution denied
  PTAB · Jan 11, 2023 · IPR2022-01218 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including because Ma taught against pulling, combinations lacked adequate motivation, and Wohrl did not disclose the claimed …

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a master’s degree in mechanical engineering, materials science, or a related degree, and at least 3–5 years of experience in composite materials or additive manufacturing,” or a bachelor’s degree in the same fields and at least 5–6 years of experience. Pet. 12–13 (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 . . . . Regardless of what level of skill is applied, however, the Petition does not show a reasonable likelihood to prevail.” Prelim. Resp. 3. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. at 3–4 (“Patent Owner reserves the right to propose a level of ordinary skill in the art in this proceeding should it be instituted, 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))). A more specific definition is not necessary for purposes of deciding whether to institute review.” slip op. at 6

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

    “Petitioner asserts that the “claim terms should be given their plain and ordinary meaning because, to the extent certain claim terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 13 (footnote omitted). Patent Owner does not address claim construction at this stage of the proceeding. See generally Prelim. Resp. We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentableMotivation not foundNot shown unpatentable

    “Ma distinguishes between these two methods, noting that with the “active” method, “the forming quality of a previous layer does not influence the forming of the current layer,” while with the “passive” method, “the quality of a previous layer has a profound effect on the forming quality of the current layer.” Ex. 1007, 53. Ma sets forth other problems with using the “passive” method. See, e.g., id. at 95–96, 98–107, 143, 145–147, 149. For example, Ma teaches that during deposition using the “passive” method, “it is possible to make a big error, especially when the nozzle makes a big-angle turn” (id. at 98), and that “[a] toolpath error could be generated if an anchoring point is not formed properly” when using the “passive” method (id. at 143). Ma also discloses that forming speed is an issue with the “passive” method, (id. at 146), but discloses “[o]ne of the advantages [of the ‘active’ method] is that the forming speed is not limited by the solidification condition of the towpreg during the forming process” (id. at 168). 2. Analysis Claim 1 recites, inter alia, “moving the nozzle away from the anchor during discharging to pull the path of the composite material out of the nozzle.” Ex. 1001, 10:61–63. Petitioner contends that Ma teaches this limitation because “Ma discloses that ‘when the object moves relative to the nozzle during the forming process, the towpreg is pulled out by the object instead of being pushed out by nozzle pressure” and “the anchor points are used to pull the towpreg (‘the path of the composite material’) out of the nozzle during discharging.” Pet. 33 (citing Ex. 1007, 38, 72)(emphasis omitted). controlled layer manufacturing: an “active” method that pushes the composite material from an extruder’s orifice, and a self-anchoring or “passive” method, wherein the composite material is pulled out by the object. Ex. 1007, 7–8, 52–54. Here, Petitioner relies on Ma’s disclosures relating to the passive method. Petitioner, however, fails to provide a persuasive explanation as to why a POSITA would have selected Ma’s passive pulling method over Ma’s active pushing method for further development or improvement. Petitioner’s failure to do so is particularly noteworthy here, because Ma includes numerous teachings against the passive method of pulling the composite material through the nozzle. Indeed, Patent Owner identifies no fewer than eight disclosures within Ma that seemingly disparage the passive pulling method and discuss the benefits of the active pushing method. Prelim. Resp. 7–10 (citing Ex. 1007, 53, 95– 96, 98–107, 143–147, 149, 167–168). We also agree with Patent Owner that Petitioner has not sufficiently explained why the ordinarily skilled artisan would have combined Ma’s active and passive methods, much less with a reasonable expectation of successfully arriving at the subject matter of claim 1. Id. at 11–14. In the absence of any explanation from Petitioner, we are not persuaded that a POSITA would have ignored Ma’s teachings against the passive pulling method and selected Ma’s pulling method over Ma’s active pushing method for further development and improvement. Accordingly, Petitioner has not demonstrated a reasonable likelihood that claim 1 would have been obvious over Ma.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,987,798
• Nanofiber Solutions, LLC v. Acera Surgical, Inc.Some claims unpatentable
  PTAB · Dec 13, 2022 · IPR2021-01016 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 2, 4–7, and 13 are unpatentable: claims 1, 2, 4, 5, and 13 as anticipated by Johnson, and claims 6 and 7 as obvious over Johnson and Johnson–Liu, respectively.

  RulingsFinal written decision

  • Skill levelOther

    “Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of filing the ‘228 Patent would have been a person having a bachelor's degree in science or engineering, for example in the fields of chemistry, chemical engineering, or biomedical engineering, with undergraduate research experience, coupled with at least three years of industry experience, that linked the fabrication of fibrous polymeric materials to performance requirements for scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues. Pet. 11–12 (citing Ex. 1002 ¶¶ 112–116). In response, Patent Owner notes that all challenged claims recite electrospun fibers but that Petitioner’s proposed level of skill “requires (1) no coursework, training or experience with electrospinning and (2) improperly focuses on scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues.” PO Resp. 7 (citing Ex. 2001, ¶¶ 38–39). But Patent Owner then concedes that this “difference is immaterial to deciding the issues raised by the Petition.” Id. at 8.” slip op. at 9

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

    “construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Furthermore, we expressly construe the claims only to the extent necessary to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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))). The parties agree that the terms of the challenged claims should be given their “plain and ordinary meaning” and that no express claim construction is necessary to address Petitioner’s challenges. Pet. 12; PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Upon review, we are unpersuaded that Petitioner has improperly mixed and matched disclosures from Johnson to arrive at an anticipatory reference. Patent Owner is correct that Petitioner primarily relies on Example 1 as evidence for the method by which its scaffold is made. But the disclosure found in paragraph 98 is not a “distinct” teaching of the type described in Net MoneyIN; rather, it is a general description of the structures that may be created by Johnson’s method: “A scaffold may comprise any number of layers, including about 1 layer, about 2 layers, about 3 layers, about 4 layers, about 5 layers, and so on.” Ex. 1009 ¶ 98. Patent Owner has not directed us to anything in the disclosure of Johnson that indicates that this is a “distinct” teaching or embodiment, instead of a general description of the types of scaffolds that Johnson encompasses. We see no reason why the general disclosures regarding Johnson’s scaffolds should be limited to specific embodiments, or precluded from applying to the method of Example 1.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “We are unconvinced by Petitioner’s arguments and evidence. While we recognize that the range of claim 3 is very broad, and it is possible that scaffolds having fiber diameters as set forth in Johnson could have a mean pore size falling within the range, inherency “may not be established by probabilities or possibilities.” Par Pharm., Inc. v. Twi Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). Nor does Petitioner sufficiently explain why a person of ordinary skill in the art would have understood the process of Example 1 to necessarily result in the claimed mean pore size. We are also persuaded by Patent Owner’s argument that Boland 2005’s disclosure of a fiber diameter similar to Johnson’s that nevertheless falls outside the claimed mean pore size range. We note that Petitioner never addresses Boland 2005 in its Reply. 4. Conclusion as to Anticipation For these reasons, we find that Petitioner has met its burden of showing that claims 1, 2, 4, 5, and 13 are anticipated by Johnson, but has failed to meet its burden as to claim 3.” slip op. at 18

  Patent outcomesUS 10,632,228 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,632,228
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentable
  PTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12

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

    “The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15

  Patent outcomesUS 10,749,060 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,749,060
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.All claims unpatentable
  PTAB · Dec 9, 2022 · IPR2021-00988 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 11, and 13 are unpatentable as obvious over Huang and Wu; claims 1, 2, and 4 are also anticipated by Zhang.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless technical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1001, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself. We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of (a) experience designing, developing, and/or researching in the field or 7 Our analysis is constrained to the extent neither party addresses the Best Medical factors with particularity. For example, the briefing does not address the educational level of the inventor. patent’s field.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We next assess whether or not Dr. Kimball’s testimony properly qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of a person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12

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

    “Patent Owner argues, however, that where claim 4 recites “the first and second solar cell series are coupled with the bypass diode of the first solar cell unit via a first cross-connector, and the third and fourth solar series are coupled with the bypass diode of the second solar cell unit via a second cross-connector,” the word “a” means “one.” PO Resp. 13–14. In particular, Patent Owner argues that a person of ordinary skill in the art via one or more cross-connectors” and that “a” meaning “one” in claim 4 is necessary for claim 4 to further limit claim 1. Id. Petitioner argues that “a” means “one or more.” Pet. Reply 2–4. We agree with Petitioner. The ’040 patent explicitly defines “a” consistently with Petitioner’s position by stating that “it should be noted that the term ‘comprising’ does not exclude other elements or steps and the ‘a’ or ‘an’ does not exclude a plurality.” Ex. 1001, 7:62–63. The ’040 patent’s explicit definition is consistent with typical usage of “a” in this patent law context. See, e.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (explaining that “a” in patent parlance means “one or more” for open-ended claims reciting the transitional phrase “comprising”). Patent Owner’s argument regarding claim construction is unpersuasive because Claim 4 further limits claim 1 by explicitly requiring first and second crossconnectors; claim 1 does not recite a “cross-connector.” Ex. 1001, 8:2–22. Thus, we construe “a” in this context as meaning “one or more.”” slip op. at 15

  Patent outcomesUS 10,749,060 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,749,060
• Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.No claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-01053 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1 and 2 were not shown unpatentable: Grounds 2 and 4 lacked motivation and a reasonable expectation of success, while Grounds 1 and 3 relied on a rejected construction.

  RulingsFinal written decision

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

    “under which “the ‘curvature of the focal plane’ must ‘track the natural curvature of the lens.’” Pet. 12. Petitioner asserts that this second “construction is the basis for Grounds 2 and 4 in [the] Petition.” Id. Petitioner’s second proposed construction repeats, word-for-word, language that appears in claim 1. Compare id. (“‘curvature of the focal plane’ must ‘track the natural curvature of the lens’”), with Ex. 1001, 12:17–18 (“curvature of the focal plane” will “track the natural curvature of the lens”). That suggests to us that Petitioner, in advancing this alternative construction, agrees with Patent Owner that those words can, and should, “be given their plain and ordinary meaning.” Resp. 19. We agree with the parties’ suggestions that those words, as they appear in the full claim limitation at hand, are clear and unambiguous. The challenged claims require multiple “layers of photodisrupted bubbles,” which “form a regular array of cells in the target region” defining “cell boundaries,” and wherein those “layers are created by scanning the pulsed laser with the optics module according to a curvature of the focal plane of the optics module to track the natural curvature of the lens.” Ex. 1001, 12:13–18 (Board’s emphasis). Where the same word, “curvature,” appears in two phrases within claim 1, namely, “curvature of the focal plane” and “curvature of the lens,” we determine that the phrases relate to one another and that the word should be assigned a single, cohesive meaning. Id. Read fairly, this limitation indicates that the layers of photodisrupted bubbles that form the cell boundaries are generated by scanning a pulsed laser according to a single curvature – a curvature that characterizes both the focal plane of the optics module and the natural bend of the lens. Id. Accordingly, on this record, we determine that the “curvature of the focal plane” itself must “track the natural curvature of the lens.” Id. Other evidence of record supports that determination. Most notably, the record of examination includes this unequivocal statement: “It was Applicant’s inventive idea to design the laser surgical system such that the curvature of its focal plane tracks the curvature of the eye.” Ex. 1002, 133.7” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “The problem of mismatch simply “is not present in flat-field corrected systems that are imaging a flat surface because there is no mismatch. As a result, Frey and Blumenkranz do not have the blurriness problem Koschmieder describes.” Resp. 15 (citing Ex. 2030, 88:21–89:7; Ex. 2033 ¶ 104). Furthermore, the proposed modification of Frey’s system would have been expected to “cause blurring or defocusing” to occur “when used with a pulsed laser source” system, such as Frey’s, that employs a laser-shot-by-laser-shot scan pattern to generate, point-by-point, layers of photodisrupted tissue in the eye. Ex. 2033 ¶ 122. Accordingly, on this record, we find that an ordinarily skilled artisan would not “have been motivated to modify Frey with Koschmieder’s solution to address a problem of laser focus that is nonexistent in Frey.” Id.” slip op. at 38

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “opinions regarding whether there would have been a reasonable expectation of success for Petitioner’s combination” of prior art references. Sur-reply 8 (citing cases). We agree with Patent Owner that, based on the record presented, Dr. Bentley “has no experience designing laser-based systems for eye surgery” and, further, that a question arises as to whether Dr. Bentley “even understand[s] what photodisruption is” within the context of claim 1. Id. at 7–8 (and citations therein to Exs. 1004, 1046, 1047, and 2051). Although Dr. Bentley possesses excellent credentials in optics generally, this witness reports no experience with surgical optics, much less optics for laser surgery of the eye. Ex. 1046 ¶¶ 3–9; see generally Ex. 1047 (curriculum vitae). Dr. Bentley currently advises students working on optics for “microscope objectives, digital and film camera lenses, zoom lenses, fisheye lens, riflescopes,” and other devices––but none, on this record, is 6 The record also includes a declaration of Edward A. DeHoog, Ph.D. (Ex. 2001), which Patent Owner filed with the Preliminary Response but does not advance in the Response. See generally Resp. demonstrated by Petitioner as applicable to laser surgery, much less a method of laser surgery whereby layers of photodisrupted bubbles are generated within eye tissue. Ex. 1047, 1; see Ex. 2051, 45:8–21 (Dr. Bentley’s deposition transcript). Dr. Bentley’s prior experience includes, for example, working on optics related to “broadband zoom lens for cancer screening, several high-resolution broadband infrared cameras,” and “a multi-photon endoscope objective,” but includes no work, on this record, that relates to optics for laser surgery of the eye. Id. We recognize that Dr. Bentley is named on four patents and frequently lectures and publishes articles on optical imaging in general, but the list of patents and publications persuades us that Dr. Bentley possesses little, if any, experience with surgical optics. Id. ¶¶ 3, 5–9. We agree with Patent Owner, moreover, that during Dr. Bentley’s deposition, it became clear that this witness “is not an expert in laser-based systems for photodisrupted surgery” and has no experience with, or specific knowledge about, optics that perform “photodisruption” of lens tissue. Sur-reply 8 (citing Ex. 2051, 61:17–62:17, 65:12–17, 66:18–68:21, 72:4–72:20, 73:10– 73:19, 75:11–76:13, 80:9–16, 81:13–83:25, 85:13–86:3, 89:25–92:7, 94:25– 95:23, 121:3–121:12 (deposition transcript)). By contrast, Patent Owner’s witness, Dr. Dhalla, has “many years of” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’356 patent. Pet. 10 (Petitioner’s asserted definition of the ordinarily skilled artisan). Neither party, however, advances information explaining how or why the result in this case would change based on the definition selected by the Board.” slip op. at 12

  Patent outcomesUS 9,427,356 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,356
• Stmicroelectronics, Inc. v. The Trustees Of Purdue UniversityInstitution denied
  PTAB · Nov 8, 2022 · IPR2022-00723 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution because Petitioner did not show that Ryu disclosed or suggested the claimed current spreading layer, defeating the sole obviousness ground for claims 1–8 and 12–15.

  RulingsInstitution decision

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

    “III. ANALYSIS We have authority to institute an inter partes review only where “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). The findings and conclusions set forth in this Decision are provided solely for the purpose of explaining our determination that Petitioner has not met that standard on this record.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner directs us to Dr. Subramanian’s opinion that a person of ordinary skill in the relevant technical field at the time of the invention “would have had the equivalent of a Bachelor’s [D]egree in electrical engineering or a related subject and two or more years of experience in the field of semiconductor devices.” Pet. 3; Ex. 1035 ¶ 23. In Petitioner’s and Dr. Subramanian’s further view, “Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa.” Pet. 3; Ex. 1035 ¶ 23. Patent Owner counters, “Petitioner’s asserted level of skill in the art is absurdly low given the silicon carbide technology” that is the subject of the ’633 patent. Prelim. Resp. 17. In Patent Owner’s view, the ordinarily skilled artisan would have possessed a Master’s Degree in electrical engineering or a related field “with a concentration in design and fabrication of silicon carbide power semiconductor devices” or a Bachelor’s Degree in electrical engineering or a related field combined with “two years of experience in design and fabrication of silicon carbide power semiconductor devices.” Id. at 18–19. Patent Owner directs us to evidence that “[t]his level of ordinary skill is consistent with the specialized nature of the field of silicon carbide power semiconductor devices.” Id. at 19; Ex. 2004, x. Patent Owner further advances evidence that the ’633 patent inventors, as well as a “few others who were active in the highly specialized field of silicon carbide power devices,” possessed backgrounds consistent with Patent Owner’s proposed narrower definition of the level of ordinary skill. Prelim. Resp. 20; Ex. 2007, 1–2, 19; Ex. 2017, 1; Ex. 2018, 1; Ex. 2019, 1–2. 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) (“the prior art itself” may “reflect[] 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))). A more specific definition is not necessary, for purposes of deciding whether to institute review, at least because neither party explains how the result would change based on our selection of a definition. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition, which is consistent with the disclosures of the asserted prior art. In any event, even under Petitioner’s broader definition, Petitioner fails to establish a reasonable likelihood of prevailing at trial with respect to any challenged claim based on the grounds of unpatentability advanced in the Petition.” slip op. at 8

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

    “C. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We agree with the parties that no claim term requires express construction for purposes of this Decision. Pet. 34–35; Prelim. Resp. 21–22. To the extent that the scope of a term requires discussion, however, we provide it in the following analysis of the challenge.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “Petitioner, however, further argues that an ordinarily skilled artisan “would have understood Ryu’s regions 26a and the strip to be a ‘current spreading layer’ both because . . . current spreads laterally within it and Ryu forms that layer in the same way as the ’633 patent forms its current spreading layer.” Pet. 40 (text shading omitted) (citing Ex. 1035 ¶ 85). On that point, we agree with Patent Owner that this is an inherency argument. Prelim. Resp. 49; see id. at 53 (further distinguishing the process of Ryu from the process disclosed in the ’633 patent). Inherency “is a high bar that requires the missing element be ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Prelim. Resp. 49 (citation omitted; Patent Owner’s emphasis). Although Petitioner points out that both Ryu and the ’633 patent involve p-wells that are “implanted” (Ex. 1003 ¶¶ 41–42 (Ryu)) or formed by “ion implantation” (Ex. 1001, 5:57–60), Petitioner does not explain adequately why that asserted similarity supports a conclusion that Ryu’s process necessarily produces a MOSFET having a current spreading layer as claimed in the ’633 patent. Pet. 48–49. Petitioner, therefore, does not meet that “high bar” in the Petition. See Pet. 48–49 (inadequate analysis). In a nutshell, Petitioner does not explain adequately why an ordinarily skilled artisan would have distinguished two structural components from the single component––JFET region 21––that is illustrated in Ryu’s Figure 2A. Petitioner’s rationale is insufficient to support trial institution because it is not tethered adequately to any intrinsic disclosure within the four corners of the reference. Pet. 40. Petitioner relies largely on extrinsic opinion testimony and background publications. Id. at 43–48. We detect in this exercise the taint of impermissible hindsight reconstruction.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,498,633
• Sandoz Inc. v. Boehringer Ingelheim International GmbHInstitution denied
  PTAB · Nov 7, 2022 · PGR2022-00037 · APJ Devon Zastrow Newman · PGR · Institution

  The Board denied institution because Petitioner did not show that the patent was eligible for post-grant review; the challenged claims were entitled to the pre-AIA priority date.

  RulingsInstitution decision

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

    “Accordingly, we find that Petitioner has not identified any challenged claim that has an effective filing date on or after March 16, 2013. For this reason, we find that Petitioner has not shown sufficiently that the ’265 patent is eligible for post-grant review. IV. CONCLUSION After considering the evidence and arguments presently before us, we determine Petitioner has not shown that the ’265 patent is eligible for post-grant review. Accordingly, we do not institute a post-grant review. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(d), the Petition is denied.” slip op. at 29

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

    “To interpret “stable,” we begin with how the term is used in independent claims 7 and 19. Both terms recite “stable” in relation to the pharmaceutical formulation as a whole by reciting “wherein the formulation is stable.” Ex. 1001, 189:62–190:27. From this, we conclude that the ordinary artisan, as defined above to have a relevant advanced degree and at least two years of experience in development or manufacture of therapeutic protein formulations, would have understood that the components of a “stable” formulation would maintain their integrity and desired function following preparation, including when stored as described. This meaning is supported by the following language in the specification pertaining to the disclosed pharmaceutical compositions: Pharmaceutical compositions according to the present invention are described in further details hereinbelow. In one aspect, the pharmaceutical compositions disclosed herein are physico-chemically stable and maintain the integrity of an antibody comprised in said pharmaceutical composition, for example when stored for 8 weeks at 40° C. as shown hereinbelow. Ex. 1001, 84:20–26. We also note, as Petitioner argued, that the prosecution history supports that the formulation components needed to remain functional during storage, and that Patent Owner cited to formulation integrity after a storage period of 8 weeks at 40° C as evidence of such integrity. Ex. 1004, 7380. As disclosed in the ’265 patent, Examples 9 and 12 measure function and identity of the components following storage to confirm formulation stability.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “burden of showing that claim 7 or 14 lacks written description support in the priority application, which Petitioner has conceded provides the same support as the ’265 patent specification. In this regard, we agree that the reasoning in Fresenius likewise applies: there is no legal requirement that a patent specification must include test results or working examples demonstrating stability for every possible composition that is covered by the claims. Fresenius at 13, citing Ariad Pharms., 598 F.3d at 1352 (stating that “the written description requirement does not demand either examples or an actual reduction to practice”). Formulations 2 and 3, disclosed in the ’265 patent specification, which Petitioner acknowledges falls within the scope of claims 7 and 14 (Pet. 26–27 (citing Ex. 1002 ¶¶ 134, 135)), were shown to be stable for 8 weeks in a syringe. Moreover, the ordinary artisan was provided with guidance in making such formulations from the teachings of the specification and has additional knowledge from the art. See Ex. 1001, 85:32–94:35. Claims 7 and 14 identify specific structures (risankizumab) and required excipients within a defined pH range, which are stable as confirmed by testing results presented in the specification. Prelim. Resp. 33; Ex. 1001, 94:14–36. On this record, we conclude that the evidence presented does not establish that it is more likely than not that an ordinarily skilled artisan would not have reasonably believed that the inventors of the ’265 patent possessed the claimed subject matter, each limitation of which is demonstrated as supported in the specification. As we have interpreted the claim term “wherein the formulation is stable” to mean “wherein the formulation maintains the functional integrity of the antibody and other components, for example when stored for 8 weeks at 40° C,” the specification supports maintenance of functional integrity as shown by the stability of Formulations 2 and 3, including when stored for a period of time. For this reason, we find that Petitioner has not shown that the ordinary artisan would not have understood the inventors of the ’265 patent possessed the subject matter of claims 7 and 14 as of the filing date of the priority application.” slip op. at 23

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable

    “We acknowledge that in the Fresenius case, the extensive testing disclosed in that specification supported the ordinary artisan’s ability to formulate stable compounds using such guidance, and that the specification here discloses less testing. See, e.g., Sur-Reply. 8–9. Nevertheless, it is Petitioner’s burden on this issue, and we are not persuaded that the concerns raised by Dr. Klibanov provide sufficient evidence of actual instability to justify institution on this record. See, e.g., Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir. 1984) (finding lack of evidence that district court erred in upholding claims as enabled where defendant did not identify inoperable embodiments despite extensive testing). In particular, we are persuaded that, on this record, Petitioner’s lack of evidence of instability of any formulation falling within the limitations of claim 14 indicates that Petitioner has not established sufficiently, for purposes of trial institution, that it is more likely than not that an ordinarily skilled artisan would not have been able to practice the full scope of claim 14 invention based on the teachings of the specification.” slip op. at 28

  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 11,078,265
• Tekni-Plex, Inc. v. Converter Manufacturing, LLCAll claims unpatentable
  PTAB · Oct 20, 2022 · IPR2021-00918 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–20, 22–26, and 29 are unpatentable; Portelli anticipation and Portelli-based obviousness grounds are dispositive.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art We review the grounds of unpatentability in view of the understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “would be a person with either (1) a Bachelor of Science degree in packaging science, mechanical engineering, material science, or chemistry and two years of experience designing and manufacturing thermoformed plastic items, or (2) three years of experience designing and manufacturing thermoformed plastic items.” Pet. 7–8 (citing Ex. 1002 ¶ 35). Patent Owner states that Petitioner’s proposed level of skill “is acceptable” with a series of “clarifications,” which do not address the relevant level of skill, but instead purport to list activities a person of ordinary skill in the art can, or cannot, do “without considerable experimentation.” PO Resp. 6–7 (citing, e.g., Ex. 2007 ¶ 31). Patent Owner directs us to no authority, and we are aware of none,” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “1. “an article formed from a thermoplastic sheet” Claim 1 (and claim 24) recites, in the preamble, “[a]n article formed from a thermoplastic sheet.” Ex. 1001, 41:13. The Specification does not otherwise describe a “formed from a thermoformable sheet.” According to Patent Owner, “‘thermoformable sheet’ excludes sheets made of paperboard or sheets made by injection molding,” because during prosecution of a related application “the Applicant argued that ‘thermoplastic sheet’ excluded paperboard and injection molded material.” PO Resp. 8 (citing Ex. 2012, 8). We disagree with Patent Owner’s characterization of the relevant prosecution history, as explained below. A parent application to the ’624 patent recited “[a] method of making a container . . . the method comprising thermoforming a thermoplastic sheet to yield a precursor article.” Ex. 1046, 63. In regard to that claim, the Applicant argued that it recited “a method in which a thermoplastic sheet (i.e., not paperboard . . .) is thermoformed (i.e., not injection molded . . .) into a precursor article having a rim.” Ex. 2012, 8. “Petitioner agrees that paperboard is not a thermoplastic, but not that ‘thermoplastic sheet’ excludes injection molded materials.” Reply 1. Petitioner argues that “[t]he prosecution statements cited by [Patent Owner] have no relevance to whether the phrase ‘thermoplastic sheet,’ requires the sheet to be thermoformed because the pending claim being discussed (claim 1) already contained the limitation ‘thermoforming a thermoplastic sheet.’” Id. at 1–2. Therefore, “[t]he reference to the ‘thermoplastic sheet . . . is thermoformed,’ was to the explicit claim limitation ‘thermoforming,’ not restricting the term ‘thermoplastic’ to thermoformed materials.” Id. at 2. Petitioner also asserts that “the term ‘thermoplastic’ does not exclude items made by injection molding, since many thermoplastics are commonly injection molded.” Id. (citing Ex. 1044 ¶ 327).” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “3. Additional Claim Terms We find that no other claim term requires an express construction for” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundUnpatentable

    “PO Resp. 76. As we discussed (supra Section II.D.1.b and infra Sections II.D.6.d–e), we are not convinced that Portelli only results in failure. Further, the evidence suggests that Portelli’s figures, depicting numerous flange shapes and edges, are known alternatives and can be substituted for one another with a reasonable expectation of success. Accordingly, we find no evidence if improper hindsight reconstruction and determine that Petitioner has shown by a preponderance of the evidence that the ordinarily skilled artisan would have has reason to combine the features of Portelli, and specifically, Figures 8 and 13.” slip op. at 53

  Patent outcomesUS 10,189,624 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,189,624
• Tekni-Plex, Inc. v. Converter Manufacturing, LLCAll claims unpatentable
  PTAB · Oct 20, 2022 · IPR2021-00916 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–15, 17, 20–22, and 24–29 are unpatentable, based on anticipation by Portelli and obviousness over Portelli alone or with Long.

  RulingsFinal written decision

  • Skill levelDecided for patent owner

    “B. Level of Ordinary Skill in the Art We review the grounds of unpatentability in view of the understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “would be a person with either (1) a Bachelor of Science degree in packaging science, mechanical engineering, material science, or chemistry and two years of experience designing and manufacturing thermoformed plastic items, or (2) three years of experience designing and manufacturing thermoformed plastic items. Pet. 7–8 (citing Ex. 1002 ¶ 35). Patent Owner states that Petitioner’s proposed level of skill “is acceptable” with a series of “clarifications,” which do not address the relevant level of skill, but instead purport to list activities a person of ordinary skill in the art can, or cannot, do “without considerable experimentation.” PO Resp. 6 (emphasis omitted) (citing, e.g., Ex. 2007 ¶ 31).” slip op. at 11

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

    “1. “formed from a thermoformable sheet” Claim 1 (and claim 24) recites, in the preamble, “[a]n article formed from a thermoformable sheet.” Ex. 1001, 38:30. The Specification does not otherwise describe a “formed from a thermoformable sheet.” According to Patent Owner, “‘thermoformable sheet’ . . . excludes sheets made of paperboard or sheets made by injection molding,” because during prosecution of a related application “the Applicant argued that ‘thermoplastic sheet’ . . . excluded paperboard and injection molded material.” PO Resp. 10 (citing Ex. 2012, 8). We disagree with Patent Owner’s characterization of the relevant prosecution history, as explained below. A parent application to the ’281 patent recited “a method of making a container . . . the method comprising thermoforming a thermoplastic sheet to yield a precursor article.” Ex. 1046, 63. In regard to that claim, the Applicant argued that it recited “a method in which a thermoplastic sheet (i.e., not paperboard . . .) is thermoformed (i.e., not injection molded . . .) into a precursor article having a rim. Ex. 2012, 8. Petitioner does not address whether “thermoformable” may include paper board. See generally Reply 1–2. But, Petitioner argues that “[t]he prosecution statements cited by [Patent Owner] have no relevance to its definition of ‘thermoformable,’” as none of the amendments cited address the term “thermoformable” and instead address “thermoforming.” Reply 1– 2. Petitioner also asserts that “whether a material is thermoformed or injection molded does not dictate whether it is thermoformable, since many thermoplastics are both thermoformable and injection moldable.” Id. at 2” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. “the article has a smooth periphery” Claim 1 recites an article where “the article has a smooth periphery.” Ex. 1001, 38, 30–42. Patent Owner argues that because the claims use the word “the” to refer to the article, this “signifies that the entirety of the article has a smooth periphery, and not just a portion of the article.” PO Resp. 11. Petitioner asserts that “[i]t is unclear whether [the smooth periphery] refers to the outer periphery or to an edge that may come into contact with the overwrap film. Reply 2. Petitioner argues that Patent Owner, on one hand attempts to exclude “Long’s . . . peripheral edge—which is not at the outer periphery” as having a “smooth periphery,” but on the other hand “alleges that a tray with a nearly identical edge has a smooth periphery.” Id. at 2–3. According to Petitioner, this “will improperly allow the term to be interpreted narrowly for validity and broadly for infringement.” Id. at 4. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position,6 we determine that the identified claim term requires no express construction to resolve the issues in dispute in this proceeding. 3. Additional Claim Terms We find that no other claim term requires an express construction for” slip op. at 16

  • ExcludeMotion to exclude, deniedDenied

    “Quarterly, third quarter 2016, discussing the K-Show in Germany where certain samples were displayed and distributed to customers. Ex. 2070, 125:24–134:5. Furthermore, the OMV images Mr. May provides purport to originate from a presentation given at the SPE Conference in Indianapolis in 2004 and were provided to him by individuals who attended that presentation. Id. at 212:7–213:16; 214:13–16. Mr. May testifies that he confirmed the presentation was given at the conference by discussing the presentation with conference attendees, through internet research, and his own experience with OMV and conversations with OMV personnel. Id. at 213:8–214:16, 215:20–217:5. We agree with Petitioner that experts like Mr. May would reasonable rely on materials, like those described in paragraphs 39–40, 42, 44, 46, 51–53, 116, 270–271, and 332–333 Exhibit 1044, in forming the basis of their opinions. See Fed. R. Evid. 703. Therefore, Patent Owner’s motion to strike paragraphs 39–40, 42, 44, 46, 51–53, 116, 270–271, and 332–333 of Exhibit 1044 is denied. C. Exhibit 1045” slip op. at 83

  Patent outcomesUS 9,908,281 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,908,281

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.