- Chongqing HKC Optoelectronics Technology Co., Ltd. v. 138 East LCD Advancements LimitedInstitution deniedPTAB · Aug 28, 2023 · IPR2023-00475 · APJ Wesley B Derrick · IPR · Institution
Institution was denied because the petition did not sufficiently show that the counter-electrode potential line was one of the claimed main wiring lines coupled to peripheral driving circuits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as the evidence that supports the grounds for the challenge to each claim’”). When challenging claims based on obviousness, the Petitioner must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art “would have either a bachelor’s degree in electrical or computer engineering with three years of experience in the field of display technology or a master’s degree with one year of experience in the field of display technology.” Pet. 8 (citing Ex. 1002 ¶¶ 38‒41). Patent Owner, “[f]or purposes of th[e]” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“5. Analysis Claim 1 recites “in a peripheral region of the image display region on the element substrate, a plurality of external circuit connection terminals, a plurality of main wiring lines . . . and peripheral driving circuits.” Ex. 1001, 21:55‒60. The plain and ordinary meaning of this phrase includes that the plurality of main wiring lines and peripheral driving circuits are formed on the element substrate. Claim 1 further recites, for the main wiring lines, “each having one end coupled to each of the plurality of external circuit connection terminals, and peripheral driving circuits coupled to the other ends of the main wiring lines.” Id. at 21:57‒59. The plain and ordinary meaning of this phrase is that each main wiring line is connected at one end to an external circuit connection terminal and, at the other end, to the peripheral driving circuits; this is how Petitioner addresses “a plurality of main wiring lines” as to this portion of claim 1 in accordance with the plain and ordinary meaning. Pet. 15 (“Figure 4 shows wiring lines coupled to the external connection terminals 102 at one end and coupled to peripheral circuits, including data line driving circuit 101, and scanning line driving circuit 104, at the other.”); see also Ex. 1002 ¶ 59. Petitioner and its driving circuit 104 as peripheral circuits. Pet. 15‒16 (citing Ex. 1005 ¶¶ 1, 78‒80, Fig. 4; reproducing Fig. 4 without annotation); Ex. 1002 ¶¶ 56‒59.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner fails, however, to address the clause, “which is at least one of the plurality of main wiring lines,” and the implication that follows from the plain language of the claim. Id. Specifically, as set forth above, the “plurality of main wiring lines” are coupled at one end to peripheral circuits, and Petitioner provides no basis for the wiring 400 (LCCOM) to be coupled to any element identified by Petitioner as a peripheral circuit. Id. at 15‒17 (identifying data line driving circuit 101 and scanning line driving circuit 104 as peripheral circuits). Rather, Petitioner sets forth that wiring 400 (LCCOM) “supplies potential from the external input terminal 102 to the vertical conduction terminal 106 and then to the counter electrode 21 on the counter substrate 20.” Id. at 17 (citing Ex. 1005 ¶ 85, Figs. 3, 4; Ex. 1002 ¶¶ 63‒65). Further, to the extent Petitioner states that Muraide “discloses a counter electrode provided in the peripheral region on a counter substrate that is arranged to face the element substrate” (id. at 16 (citing Ex. 1005 ¶ 41; Ex. 1002 ¶¶ 60‒62)), Petitioner does not clearly identify the counter electrode as a peripheral circuit (id.) and, further, the counter electrode on the counter substrate is not a peripheral driving circuit on the element (“in a peripheral region of the image display region on the element substrate, . . . peripheral driving circuits” (emphasis added))). Accordingly, on this record, we determine that Petitioner fails to sufficiently establish “a counter electrode potential line that supplies counter electrode potential to the counter electrode, which is at least one of the plurality of main wiring lines.” Although Patent Owner did not clearly raise this particular issue, “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)). The burden of persuasion, whether for anticipation or for unpatentability for obviousness, never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378. Further, our role is not to remedy the deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the petitioner’s contentions, not the Director’s discretion, define the scope . . . [,]’ [i]t would thus not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory” “institut[ing] a different inter partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an argument that the Board properly “ma[de] an obviousness argument on behalf of [petitioner]” that “could have been included in a properly-drafted petition,” because “petitioner . . . bears the burden of proof”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,116,390 - PTAB · Apr 8, 2022 · IPR2021-01443 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claims 1–5 because Petitioner showed a reasonable likelihood of prevailing on both asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. We have considered Patent Owner’s arguments in light of the Fintiv factors, together with Petitioner’s opposition, and we decline to exercise our discretion to deny the Petition as explained further below.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it will prevail with respect to at least one claim challenged in the Petition, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in chemistry, chemical engineering, or materials science, as well as five or more years of experience in the field of batteries and battery materials.” Pet. 8 (citing Ex. 1003 ¶ 11). Petitioner adds that “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education.” Id. Petitioner states that “[a]dditional education might substitute for some experience, and substantial experience might substitute for some educational background.” Id. at 8–9.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,350,019 - PTAB · Apr 8, 2022 · IPR2021-01440 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–5 on both asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“and (2) Koshiishi and Abe. Pet. 1. It is undisputed that neither Choi nor Koshiishi was presented to the Office during examination, and there is no suggestion that either reference is cumulative of the art presented to the Office during examination. See Prelim. Resp. Petitioner asserts that “the only difference between Choi and the ’446 Patent claims is the inclusion of a compound with two nitrile groups in the electrolyte.” Pet. 12. Petitioner makes the same assertion about Koshiishi. Pet. 42. Petitioner contends that Choi and Koshiishi each teach all limitations of the challenged claims, except for the limitations requiring that the electrolyte contain a dinitrile compound. Pet. 13–38, 42–62. In view of the importance of Choi and Koshiishi to Petitioner’s grounds of unpatentability, we determine that the art presented in the Petition is not the same or substantially the same as the art previously presented to the Office during examination.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response, we determine that Petitioner establishes a reasonable likelihood of prevailing on its challenge to at least one of claims 1–5 of the ’446 Patent based on Choi and Kim.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not dispute Petitioner’s definition of a POSITA. See Prelim. Resp. We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’446 Patent and the asserted prior art, and we apply Petitioner’s definition for purposes of this Decision, with the caveat that the phrases “at least” and “or more” should not be construed as requiring a significantly greater level of education or experience than is explicitly set forth in Petitioner’s definition.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,691,446 - Sealed Air Corporation v. Ranpak Corp.All claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01249 · APJ Wesley B Derrick · IPR · Final written decision
Claims 13–15 are unpatentable as obvious over Kirkpatrick; the Board did not reach the alternative grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner fails to cite any authority to support its argument that we should, in effect, disregard Mr. Klass’ testimony as to the level of ordinary skill in the art because he is not a person of ordinary skill in what Patent Owner contends is the relevant field. See PO Resp.; PO Sur-Reply. Patent Owner’s counsel similarly was unable to identify any such authority at the hearing. Tr. 42:9–15. Further, Mr. Klass’ testimony was not that he is not a person of ordinary skill in the art, but rather that his opinions set forth in his earlier declaration would not be different under the level of ordinary skill as defined by Mr. May. Ex. 1028 ¶¶ 4–5. On this record, we find Mr. Klass’ testimony well-supported as it pertains to relevant issues and see no reason to summarily disregard it. See Exs. 1002, 1028. Complete overlap between a witness’ technical qualifications in the field of the invention is not necessary for the witness’ testimony to be admissible. See SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“CTPG”)5 at 34 (“There is . . . no requirement of a perfect match between the expert’s experience and the relevant field.”). Nor must they themselves be a person of ordinary skill in the art, but only that they are “qualified in the pertinent art.” CTPG at 34 (citing Sundance, Inc. v. DelMonte Fabricating Ltd., 550 F.3d 1356, 136364 (Fed. Cir. 2008)). Mr. Klass’ education includes a minor in Pulp & Paper Technology (Ex. 1006) and his lengthy experience in the pulp and paper industry includes work—as a process engineer—involving splicing and corrugators (Ex. 1002 ¶ 8). Mr. Klass has the “knowledge, skill, experience, training, [and] education” of a “specialized” nature that is likely to “assist the trier of fact to understand the evidence.” Fed. R. Evid. 702. Accordingly, we find Mr. Klass has sufficient relevant technical expertise to consider and weigh his testimony as we have in this decision. See SEB S.A., 594 F.3d at 1373.” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“On this record, we determine that a person of ordinary skill in the relevant art would have included those with a bachelor’s degree in mechanical or paper engineering with at least a year’s experience relating to producing cushioning materials, dunnage pads, and other protective packaging. As admitted by Patent Owner, production of such materials using kraft paper stock was known. PO Resp. 14. As to the use of double-sided adhesive, we do not agree with Patent Owner that it was unknown to the person of ordinary skill in the art because using double-sided tape to join rolls of sheet stock was known in the wider field of paper processing and we find that field reasonably includes producing paper cushioning products, and that such related knowledge reasonably would also have been within the knowledge of a skilled artisan in the “cushioning conversion machine” field as the same or similar paper cushioning products are produced. Moreover, regardless of whether double-sided tape was used in what Patent Owner contends is the “cushioning conversion machine” field, Mr. May’s testimony is limited to it not being used in that field, not that double-sided tape itself was not known to one of ordinary skill in the art in the field. Ex. 2001 ¶¶ 53–57. It reasonably follows that a person having knowledge of double-sided tape would also have knowledge of joining together sheets of paper or other stock using double-sided tape. Further, to the extent that Patent Owner and Mr. May rely on “cushioning conversion machines” differing from paper processing machines that produce paper cushioning products, on this record, there is insufficient evidence of a meaningful difference in their complexity, size, or operation. For example, Patent Owner relies heavily on the paper processing machines including machinery to allow splicing on the fly, but the prior art also teaches that non-continuous roll-to-roll splicing can be used. See Ex. 1010, 1:13–16 (disclosing that a splicing tape system “is applicable both to systems in which the splice is made on the fly and to systems in which the splice is made while the running web is stationary”); Ex.1017, 1:15–19 (disclosing that “[t]he splicing operation can be performed in a static or a dynamic mode.”). As to size, similarly, Patent Owner relies on the machinery for paper making or producing corrugated cardboard being larger than “cushioning conversion machines,” but there is no clear distinction between the two as to size, as discussed below. Also, there is no evidence that paper processing machines forming paper cushioning products from paper itself do not do so in the same general manner as the ’096 patent. Accordingly, finding no meaningful distinction to “cushioning conversion machines,” we discern no meaningful difference in the knowledge of the skilled artisan as it relates to the challenged claims. Moreover, to the extent that there would be a narrower “cushioning conversion machine” field that did not include the use of double-sided tape, as Patent Owner contends, there would be no difference in the outcome of this case. As to obviousness, the scope of analogous prior art is not limited to the field of inventor’s endeavor, but also includes references that are “still reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As discussed below, we find Kirkpatrick reasonably pertinent to the particular problem with which the inventor is involved.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“On this record, we determine that the preamble’s recitation of “sheet stock material for use in a cushioning conversion machine” is a statement of intended use and does not constitute a limitation. In doing so, we must construe the meaning of the term “cushioning conversion machine.” In construing “cushioning conversion machine,” we note there is no guidance elsewhere in the remaining claim language as to its meaning, including in other claims, and so turn to the specification of the ’096 patent. See Phillips, 415 F.3d at 1312–13, 1315. The ’096 patent states that “[c]ushioning conversion machines convert [paper] sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). The ’096 patent also identifies its “invention [as] relat[ing] to machines for converting sheet stock material into a dunnage product.” Id. at 1:15–16 (Field of the Invention). Figures 1 and 2 are identified as top plan and side elevational views of a cushioning conversion machine. Id. at 3:57–63. The ’096 patent discloses that the “operation of the [cushioning] conversion machine 10 may be controlled by a controller, also in a well-known manner” (emphasis added). Id. at 6:42–44. The ’096 patent provides no disclosure as to the size of the cushioning conversion machine or the sheet stock material that it converts into cushioning dunnage product. See Ex. 1001.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, Mr. May’s testimony of what “cushioning conversion machine” means in the field of paper dunnage machines fails to bear the weight required to limit the term as Patent Owner proposes. The ’096 patent identifies “cushioning conversion machines” to be machines that “convert sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). This is in effect the plain and ordinary meaning of the words themselves identifying a machine that converts feedstock into cushioning. Further, we find it consistent with the ’096 patent as a whole. Mr. May’s contrary testimony, as discussed above, lacks sufficient evidentiary basis to support Patent Owner’s contended construction over the plain and ordinary meaning. In effect, the basis for Mr. May’s testimony is limited to a showing that the meaning of the term encompasses a machine such as shown in the ’096 patent’s Figure 1 and 2. Mr. May’s testimony as to the PadPak machine being a “popular cushioning conversion machine[]” only goes to establishing that “cushioning conversion machine” encompasses similar machines, not that the term would be understood to be limited to the PadPak machine. Ex. 2001 ¶¶ 65–66. As to “cushioning conversion machines” being stop/start machines, the ’096 patent’s states that “the conversion machine 10 may be controlled by a controller” (emphasis 7 Elsewhere Patent Owner cites a number of its patents for using the term “cushioning conversion machine,” but this only supports that Patent Owner uses the term. See PO Resp. 27. added), not that it must be. Ex. 1001, 6:42–43. As to size, as discussed above, the ’096 patent provides no limitation as to the size of the apparatus or the sheet stock material. Petitioner highlights that another of Patent Owner’s patents, U.S. Patent No. 6,200,251 B1 (Ex. 1026, “the ’251 patent”), discloses “that in a ‘preferred cushioning conversion machine, the stock supply assembly is adapted to supply stock material which is between 25 to 35 inches wide’” (emphasis added). Pet. Reply 14 (citing Ex. 1026, 2:56–59). Petitioner also highlights that the ’251 patent was filed before the ’096 patent’s priority date and names the ’096 patent’s inventor among its inventors. Id.; compare Ex. 1026, codes (22), (75), with Ex. 1001, codes (22), (75). Such disclosure of a preferred embodiment in this circumstance is reasonable evidence that a skilled artisan would understand that a “cushioning conversion machine” included those “adapted to supply stock material . . . between 25 and 35 inches wide,” but not that such machines were limited to using such widths. The relevance of this is that the sheet stock material used is not manifestly distinct from the sheet stock material used for corrugators, ranging from 35 to 110 inches in width, where Patent Owner contends corrugators are distinct from “cushioning conversion machines.” See Ex. 2003, 95:22–96:6 (Mr. Klass testifying that the “width of commercial corrugators could be anywhere from 35 to 110 inches.”); PO Resp. 33–34 (relying on Mr. Klass’ testimony). Similarly, there is no persuasive evidence of a clear distinction in weight. Patent Owner and Mr. May rely on Mr. Klass’ testimony as to the weight of paper rolls for corrugators, focusing solely on testimony as to the weight of large rolls and ignoring that the testimony also set forth that “[s]ome corrugators use smaller rolls.” PO Resp. 34; Ex. 2001 ¶¶ 77–79; Pet. Reply 14–15; see also Ex. 1028 ¶¶ 21–22 (Mr. Klass’ testimony that “web feed rolls at the lower end of that range would be especially well suited for use in a cushioning conversion machine, even under [Patent Owner’s] narrow definition of such a machine” and that “my testimony certainly was not that Kirkpatrick’s web feed rolls would weigh tons.”). In sum, on this record, we determine that “cushioning conversion” slip op. at 22
Patent outcomesUS 6,756,096 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,756,096 - PTAB · Nov 18, 2021 · IPR2021-00854 · APJ Wesley B Derrick · IPR · Institution
The Board instituted IPR on claims 1–35 and all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Birnboim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows that there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Federal Circuit has interpreted the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Thus, based on the information presented, we institute an inter partes review of claims 1–35 of the ’240 patent on all grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A person of ordinary skill in the art . . . would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid 10 Koller, WO 91/02740, published Mar. 7, 1991. Ex. 1016. 11 Robert E. Farrell, Jr., Ph.D., “RNA Methodologies: A Laboratory Guide for Isolation and Characterization,” (3rd Ed., 2005). Ex. 1026. extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 7 (citing Ex. 1002 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition at this stage. Prelim. Resp. 7. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’240 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner offer any position on the construction of any claim term. See Pet.; Prelim. Resp. 7. On this record, and for purposes of this Decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution. C. Principles of Law” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“and particularly claim 1. Petitioner provides a detailed analysis of where each element of claim 1 is found in Birnboim. Pet. 13–19. Specifically, Petitioner asserts that Birnboim’s Example 3 discloses an aqueous composition comprising the one or more chaotropes, one or more detergents, one or more reducing agents, one or more chelators, and one or more buffers, as recited in the claim. Id. at 13–18. Petitioner also asserts that “Birnboim’s reagents are present in an amount sufficient to perform the claimed functions.” Id. at 18–23 (heading capitalization normalized and underlining omitted).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,669,240 - PTAB · Nov 12, 2021 · IPR2021-00860 · APJ Robert A Pollock · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Birnboim, Mori, and Farrell, Petitioner provides a detailed analysis of where each claim element is found in the cited references and discusses why one of ordinary skill in the art would have been motivated to combine those elements with a reasonable expectation of success. See e.g., Pet. 34–42 (discussing motivation to combine and reasonable expectation of success with respect to claim 1). For the purpose of institution, we focus on independent claim 1.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Taylor, Petitioner asserts that A person of ordinary skill in the art (“POSA”) would have had (1) a Ph.D. in microbiology, molecular biology, biochemistry, or related discipline; (2) at least two years of post-graduate experience in the area of nucleic acid extraction and analysis; and (3) experience with the development or use of nucleic acid extraction formulations, and the literature concerning nucleic acid extraction and analysis. Pet. 10 citing Ex. 1002, ¶¶34–35. Patent Owner presently does not dispute Petitioner’s proposed definition. Prelim. Resp. 6. For purposes of this Decision, at this stage of the proceeding, we accept Petitioner’s proposed definition of the person of ordinary skill in the art, which is not substantively opposed by Patent Owner and appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’256 patent. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C. Claim Construction” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionPlain and ordinary meaningDecided for petitioner
“According to Petitioner, we should apply the plain and ordinary meaning of “stock solution” as meaning “a formulated supply of solution for future use,” which, in the context of the instant claims, refers to “the aqueous composition before it is mixed with a sample.” Pet. 8 (citing Ex. 1029; Ex. 1002 ¶ 38). Patent Owner neither contests Petitioner’s definition of “stock solution” nor requests that we construe any other claim term, but reserves its right to do so. Prelim. Resp. 7. At this stage of the proceeding, we apply the plain and ordinary meaning of “stock” solution as Petitioner proposes. In section II.D.4, below, we note that Patent Owner implicitly relies on narrow constructions of “kills pathogens” and “without degrading nucleic acids.” As these terms may be critical to our final determination but have not been briefed by either party, we provisionally apply their plain and ordinary meaning. D. Ground 1: Obviousness in View of Birnboim, Mori, and Farrell” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner provides reasoned bases for why one of ordinary skill in the art would have combined the cited references to arrive at the claimed invention. See Pet. 34–42 (citations omitted). Summarizing its arguments, Petitioner concludes that one of ordinary skill in the art would have been motivated to prepare solutions comprising a chaotrope, a detergent, a reducing agent, a chelator, a shortchain alkanol, and a buffer (with the associated acid and base) at a pH of 5–7 with a reasonable expectation that, when combined with a biological sample, the solution would denature proteins, inactivate nucleases, and kill pathogens, all without degrading nucleic acids of the sample. Ex. 1002, ¶151. The POSA would have been motivated to use Mori’s surfactants or defoaming agents along with Farrell’s nuclease-free water in Birnboim’s stock solution and would have had a reasonable expectation of success in doing so. Ex. 1002, ¶¶137–152.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,683,256 - Neosales Corp LP v. Allan WendlingInstitution deniedPTAB · Sep 14, 2021 · PGR2021-00058 · APJ Wesley B Derrick · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable on the asserted obviousness or written-description grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 324. The standard set forth in 35 U.S.C. § 324(a) requires Petitioner to demonstrate that it is more likely than not that at least one challenged patent claim is unpatentable. Petitioner has not met that standard and, accordingly, we do not institute a post grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had at least a High School Diploma with 5 years of experience in the flooring industry” and that they “would also understand that there is a requirement that many accessible surfaces must be slip resistant to minimize hazards to users of the surface.” Pet. 13–14 (citing Ex. 1003 ¶¶ 21–26). On this record, for purposes of this decision, we agree that a person of ordinary skill in the art would have had at least the qualifications set forth in Patent Owner and appears, on this record, to be consistent with the disclosures of the ’285 patent and the asserted prior art references. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is not “directed to, or has been shown reasonably to affect, the determination of obviousness”). accordance with their ordinary meaning except for “laminate structure” and “laminated.” Pet. 14–15 (citing Ex. 1003 ¶¶ 36–41). As to these terms, the Petition relies on a quotation, describing what is shown in Figure 3, that includes the term “laminate structure” from the ’285 patent.5 Id. at 15 (“As best shown in FIG. 3, the body is a laminate structure and comprises a bottom elastomeric layer 24 of an elastomeric material . . . floor surface 26.”); Ex. 1001, 2:16–20, Fig. 3. Petitioner also relies on Merriam- Webster’s definition of “laminate” as ‘a product made by laminating,’” where “laminating” means “to unite (layers of material) by an adhesive or other means.” Pet. 15 (quoting Ex. 1013) (citing Ex. 1011 [sic] Ex. 1013). Petitioner contends that “the term ‘laminate structure’ should be construed to mean a ‘body having an adhered elastomeric material’” and that “the term ‘laminated’ should be construed as ‘adhered.’” Id. On this record, and for purposes of this decision, we decline to construe any claim terms beyond the limited extent we do so below in our analysis, because it is not necessary to do so in reaching our decision on institution.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“On this record, Petitioner fails to establish a basis for the recited “sticky polyurethane gel layer.” Although it is evident that Haas’ “bonding layer 2” can itself be formed of an adhesive material (see, e.g., Ex. 1009, 5:48–50), it can also be formed of material that is not adhesive (or sticky) (see, e.g., id. at 5:61–63). Petitioner offers no support for Haas’ polyurethane foam layer itself being an adhesive or sticky material. Pet. 21– 24. Further, the disclosure relating to Haas’ polyurethane layer is contrary to the polyurethane being an adhesive or sticky material because Haas teaches applying an adhesive to the polyurethane layer. See, e.g., Ex. 1009, 8:36–38, 11:32–12:43 (Examples I–IV). Likewise, Petitioner offers no support for the polyurethane foam being a polyurethane gel. See, e.g., Pet. 21–24. Petitioner rather merely asserts that its “augmented carpet-to-floor contact system would produce the same effect claimed by a ‘sticky [bonding] polyurethane gel [foam] layer,’” which falls short of establishing that the polyurethane foam meets the limitation requiring gel. Pet. 24. The Phillips Declaration essentially repeats arguments set forth in the Petition, including as to the “sticky polyurethane gel layer that includes a Compare Ex. 1003 ¶¶ 61–67, with Pet. 20–24. The cited testimony, thus, lacks the necessary objective evidence to support the opinions expressed as to Haas teaching or suggesting a “sticky polyurethane gel layer.” See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,806,285
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.