- PTAB · Jul 12, 2023 · IPR2023-00369 · APJ Kristina M Kalan · IPR · Institution
The Board instituted review on all asserted grounds, finding a reasonable likelihood that TSMC would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“to deny institution where a petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure at 7. Here, Petitioner’s stipulation uses this language but is further limited “to the patent claim subject to the instituted IPR.” Pet. 84. We agree with Patent Owner that this stipulation is “narrower” than the stipulation “that was considered by the Board in Sotera,” because it adds further limiting language to the model Sotera stipulation. Prelim. Resp. 10. Accordingly, we do not find that this stipulation implicates the Interim Procedure’s prohibition against discretionary denial where a Sotera-type stipulation is presented. We do not agree with Patent Owner that the stipulation must be filed in district court. All the Interim Procedure requires is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Interim Procedure at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court. Thus, although Petitioner’s stipulation does not track the language of the model Sotera stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, in which all claims of the ’169 patent are challenged in the Petition. Accordingly, the fourth factor weighs against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’169 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art “would have been a person having a Master’s degree in electrical engineering, material science, physics, or other related disciplines with at least three years of industry experience in integrated circuit design, layout, packaging or fabrication” and that a “greater level of experience may compensate for less education and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 66–68). Patent Owner “reserves the right to dispute Petitioner’s definition of a POSA if an IPR is instituted.” Prelim. Resp. 7. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner “does not believe the claim terms need to be construed to resolve the prior art issues presented in [the] Petition.” Pet. 10 (citing Ex. 1003 ¶ 70). Patent Owner “reserves the right to advance its own construction for any claim term should an IPR be instituted.” Prelim. Resp. 7. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,356,169 - PTAB · Jul 12, 2023 · IPR2023-00373 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, including claims 15–18 despite finding no reasonable likelihood of prevailing on those grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“argument. The Guidance Memo provides that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding [the relevant grounds].” Guidance Memo 3. This is because, “[w]hen a petitioner stipulates not to pursue in a parallel district court proceeding [the relevant grounds], it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. All the Guidance Memo requires, therefore, is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Id. at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We are not persuaded that Petitioner sufficiently shows a reason to combine the teachings of Lee with those of Nagai. Petitioner directs us to the testimony of Dr. Giapis to support the argument that a person of ordinary skill in the art would have seen a benefit in constructing Lee’s image sensor using Nagai’s hydrogen diffusion control techniques. Pet. 69–70 (citing Ex. 1020 ¶ 151). Specifically, Dr. Giapis testifies that Lee’s image “sensors must store accumulated charge until it is read [and] hydrogen diffusion from the back-end processes will have an adverse effect on the front end, in particular on the sensor’s ability to retain charges.” Ex. 1020 ¶ 151. This testimony cites no sources or technical reasoning in support, and it replicates the Petition essentially word-for-word. Compare id. with Pet. 69–70. Thus, it is entitled to little or no weight. Xerox Corp. v. ByteMark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); 37 C.F.R. 42.65(a). Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the teachings of Lee with those of Nagai. Accordingly, Petitioner does not show a reasonable likelihood of prevailing on its argument that claim 15 would have been obvious in light of Nagai and Lee.” slip op. at 35
- Expert testimonyPetitioner expert discountedDecided for patent owner
“combine the teachings of Lee with those of Nagai. Petitioner directs us to the testimony of Dr. Giapis to support the argument that a person of ordinary skill in the art would have seen a benefit in constructing Lee’s image sensor using Nagai’s hydrogen diffusion control techniques. Pet. 69–70 (citing Ex. 1020 ¶ 151). Specifically, Dr. Giapis testifies that Lee’s image “sensors must store accumulated charge until it is read [and] hydrogen diffusion from the back-end processes will have an adverse effect on the front end, in particular on the sensor’s ability to retain charges.” Ex. 1020 ¶ 151. This testimony cites no sources or technical reasoning in support, and it replicates the Petition essentially word-for-word. Compare id. with Pet. 69–70. Thus, it is entitled to little or no weight. Xerox Corp. v. ByteMark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); 37 C.F.R. 42.65(a). Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the teachings of Lee with those of Nagai. Accordingly, Petitioner does not show a reasonable likelihood of prevailing on its argument that claim 15 would have been obvious in light of Nagai and Lee.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,431,455 - Motif Foodworks, Inc. v. Impossible Foods, Inc.Institution deniedPTAB · Jun 16, 2023 · IPR2023-00209 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “(i) a Bachelor of Science degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 5. Petitioner also asserts that a person of ordinary skill in the art could be “part of a team of food scientists, including flavor chemists.” Pet. 5 (citing Ex. 1003 ¶¶ 34–36; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶ 39). Patent Owner does not challenge Petitioner’s definition or offer its own. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’306 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the preamble of the challenged claims should not be found limiting, that the term “thereby imparting a beef-like aroma to the meat replica matrix” should not be limiting, and that the term “matrix” should be given its plain and ordinary meaning. Pet. 9–11. Petitioner also states that “[i]n parallel litigation, [Patent Owner] asserts that ‘no animal products’ covers bovine myoglobin, which is native to an animal (Bos taurus (cow)), even when produced in engineered yeast.” Pet. 11 (citing Ex. 1116 if the Board adopts Patent Owner’s infringement interpretation advanced in the parallel litigation. Pet. 11. Patent Owner disagrees that the preamble of the challenged claims and the term “thereby imparting a beef-like aroma to the meat replica matrix” are not limiting. PO Resp. 5–7. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“record, we are not persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have added Mottram’s precursors (e.g., cysteine/ribose) to Conrad’s grain/wheat meat in order to improve the “meaty flavor” and enhance the “meat-like” qualities of Conrad’s products. Conrad already addresses concerns regarding taste improvement of its grain/wheat meat by adding animal blood/hemoglobin to its product. Ex. 1013, 4:14–16. In addition, Conrad’s grain/wheat meat is intended to be mixed with actual meat, which, as Petitioner acknowledges, already contains cysteine and ribose. Ex. 1013, code (57), 1:32–40, 4:45–49, 5:23–41; Pet. 21. It is undisputed that these components present in actual meat enhance the meat-like aroma of products. Pet. 21; Prelim. Resp. 14. These facts undermine Petitioner’s assertion that a person of ordinary skill in the art would have looked to a different reference (i.e., Mottram) to add these same precursors to Conrad’s products. Furthermore, we agree with Patent Owner that Petitioner’s motivation to combine Mottram and Conrad is driven by hindsight. As Petitioner acknowledges, Conrad teaches that a suspended aqueous phase containing soluble proteins, salts, and sugars, is separated from its grain/wheat meat during manufacturing. Pet. 22–23; Ex. 1013, 2:1–46. Conrad explains that “[t]he suspended aqueous phase of starch granules can be used directly in the production of glue or in the production of sugars by hydrolysis in a way known per se.” Ex. 1013, 2:21–24. Conrad does not disclose adding the suspended aqueous phase, or any of its components, back into the grain/wheat meat. Nevertheless, Petitioner argues that a person of ordinary skill in the art would have added materials similar to those that were just removed from Conrad’s product back into it. This approach is the fact that the materials Petitioner suggests adding back into Conrad’s products correspond to the specific compounds recited in the claim further demonstrates that hindsight is driving Petitioner’s arguments. For all of these reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1, 14, and 27. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1, 14, and 27 are unpatentable as obvious in view of Conrad and Mottram, further in view of Crane or Proulx.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,039,306 - Motif Food Works, Inc. v. Impossible Foods, Inc.Institution deniedPTAB · Jun 16, 2023 · IPR2023-00208 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1 and 13. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1 and 13 are unpatentable as obvious in view of Conrad and Mottram, and further in view of Crane or Proulx. b) Dependent Claims 3–12 and 15–23 Claims 3–12 depend from independent claim 1, and claims 15–23 depend from independent claim 13. For its challenges of these claims, Petitioner relies on the arguments presented for independent claims 1 and 13. See, e.g., Pet. 30 (reciting “As explained above (claim 1)” in its analysis of claims 3 and 15), 44. Nothing in Petitioner’s analysis of the additional references relied upon for its challenges of the dependent claims cures the deficiencies discussed above regarding the proposed combination of Conrad and Mottram. Therefore, for the same reasons discussed above for independent claims 1 and 13, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 3–12 and 15–23 are unpatentable as obvious in view of Conrad and Mottram, further in view of Crane, Proulx, and Boye.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “(i) a Bachelor of Science degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 5. Petitioner also asserts that a person of ordinary skill in the could be “part of a team of food scientists, including flavor chemists.” Id. (citing Ex. 1003 ¶¶ 34–36; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶ 39). Patent Owner does not challenge Petitioner’s definition or offer its own. Prelim. Resp. 1–61. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’250 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’250 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“record, we are not persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have added Mottram’s precursors (e.g., cysteine/ribose) to Conrad’s grain/wheat meat in order to improve the “meaty flavor” and enhance the “meat-like” qualities of Conrad’s products. Conrad already addresses concerns regarding taste improvement of its grain/wheat meat by adding animal blood/hemoglobin to its product. Ex. 1013, 4:14–16. In addition, Conrad’s grain/wheat meat is intended to be mixed with actual meat, which, as Petitioner acknowledges, already contains cysteine and ribose. Ex. 1013, code (57), 1:32–40, 4:45–49, 5:23–41; Pet. 19. It is undisputed that these components present in actual meat enhance the meat-like aroma of products. Id.; Prelim. Resp. 14. These facts undermine Petitioner’s assertion that a person of ordinary skill in the art would have looked to a different reference (i.e., Mottram) to add these same precursors to Conrad’s products. Furthermore, we agree with Patent Owner that Petitioner’s motivation to combine Mottram and Conrad is driven by hindsight. As Petitioner acknowledges, Conrad teaches that a suspended aqueous phase containing soluble proteins, salts, and sugars, is separated from its grain/wheat meat during manufacturing. Pet. 20; Ex. 1013, 2:1–46. Conrad explains the “[t]he suspended aqueous phase of starch granules can be used directly in the production of glue or in the production of sugars by hydrolysis in a way known per se.” Ex. 1013, 2:21–24. Conrad does not disclose adding the suspended aqueous phase, or any of its components, back into the grain/wheat meat. Nevertheless, Petitioner argues that a person of ordinary skill in the art would have added the materials that were just removed from Conrad’s product back into it. This approach is counterintuitive and indicative of reasoning based on hindsight. Moreover, the fact that the materials Petitioner suggests adding back into Conrad’s products correspond to the specific compounds recited in the claim further demonstrates that hindsight is driving Petitioner’s arguments. For all of these reasons, we are not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had reason to combine the teachings of Conrad and Mottram to arrive at the invention recited in independent claims 1 and 13. Accordingly, we determine Petitioner has failed to establish a reasonable likelihood of prevailing on its challenge that claims 1 and 13 are unpatentable as obvious in view of Conrad and Mottram, and further in view of Crane or Proulx.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,013,250 - Motif Food Works, Inc. v. Impossible Foods, Inc.Institution deniedPTAB · Jun 16, 2023 · IPR2023-00207 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “(i) a B.S. degree in food sciences, biology, chemistry, microbiology, or a related discipline, and (ii) a Master’s degree or Ph.D. in food science or at least three years of experience working as a food scientist.” Pet. 12. Petitioner also asserts that a person of ordinary skill in the could be “part of a team of food scientists, including flavor chemists.” Id. at 12–13 (citing Ex. 1003 ¶ 37; Ex. 1005 ¶¶ 82–83; Ex. 1007 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s definition or offer its own. Prelim. Resp. 1–52. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’241 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’241 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“begin with, Petitioner’s argument that “Brown invites a [person of ordinary skill in the art] to modify its composition to add ‘amino acids’ which result in ‘[c]haracteristic flavor and fragrance components . . . similar[] to meat’” is incorrect. Id. at 30. Brown does teach that “[c]haracteristic flavor and fragrance components are mostly produced during the cooking process by chemical reactions [between] molecules including amino acids.” Ex. 1012 ¶ 295. But Brown does not teach adding amino acids to its composition. Instead, it teaches that amino acids and other molecules are present in its composition, allowing its composition to produce “flavor and fragrance components . . . during the cooking process” in a way that is “similar[] to meat.” Id.; see id. ¶ 362 (“in some embodiments, the characteristic flavor and fragrance components are produced during the cooking process by chemical reactions involving amino acids”).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,224,241 - PTAB · Jun 16, 2023 · IPR2023-00206 · APJ Donna M Praiss · IPR · Institution
The Board instituted inter partes review of claims 1–12 and 14–24 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Brown and obviousness over Giacino and Brown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’096 patent, and we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In assessing whether to exercise the Board’s authority to deny institution under § 325(d), the Board considers a two-part analysis. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8–9 (Feb. 13, 2020) (precedential). First, the Board considers whether “the same or substantially the same” art or arguments were previously presented to the Office. Id. at 8. If either is met, the Board then considers whether the petition demonstrates that the Office “erred in a manner material to the patentability of the challenged claims.” Id. In applying the two-part framework, the Board considers several nonexclusive factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).12” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have (i) a Bachelor of Science degree in food science, biology, chemistry, microbiology, or a related discipline, and (ii) a Master of Science degree or Ph.D. in food science or at least three years of experience working as a food scientist” and “could also be part of a team of food scientists, including flavor chemists.” Pet. 5 (citing Ex. 1003 ¶¶ 42–47). Patent Owner does not offer an alternative definition of a person of ordinary skill in the art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states “[t]he terms of the challenged claims do not require express construction in order to reach a decision denying institution.” Prelim. Resp. 4. Nevertheless, Patent Owner asserts that Petitioner relies on an erroneous construction of “food flavor additive composition” to mean “each and every food item of every kind simply because it will have some flavor” and “any component of a food product . . . [that] has flavor and is added to the food product.” Id. at 4–5, 6. Patent Owner asserts “a food flavor additive composition is an additive that varies or adjusts the flavor and/or aroma profile present in a consumable food product.” Id. at 7. Patent Owner contends “the ’096 patent describes food flavor additives that are added to replica products to change the product’s flavor and aroma profile ‘before, during, or after cooking of the consumable food product.’” Id. (quoting Ex. 1001, 3:54–56). On the present record, it is not clear to us what distinction Patent Owner seeks to make between an “additive that varies or adjusts the flavor . . . in a consumable food product” and a “component of a food product . . . [that] has flavor and is added to the food product.” We determine we need not explicitly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375. We invite the parties to address the construction of “food flavor additive composition,” as necessary, during the course of this proceeding.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,943,096 - PTAB · Jun 15, 2023 · IPR2023-00214 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.11 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date12 of the challenged patent.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Conclusion Factor one weighs strongly against exercising our discretion to deny institution, factor three weighs against exercising our discretion to deny institution or is neutral, factors six and seven are neutral or weakly favor discretionary denial, and the remaining factors are neutral. The balance of the General Plastic factors thus weighs against exercising our discretion under § 314(a) to deny institution. Accordingly, we decline to exercise our discretion to deny institution based on the General Plastic factors.” slip op. at 24
- Parallel petitionsDecided for petitioner
“Here, we decline to exercise discretion to deny this Petition based upon multiple Petitions for three reasons. First, as we explain in Section III(H) of this decision, the Petition is strong on the merits, and Patent Owner has, at this stage, offered little argument refuting the merits. Second, Patent Owner’s burden to respond to both petitions is lessened by Patent Owner’s familiarity with much of the prior art at issue. As Patent Owner emphasizes, all or nearly all of the art in the Petitions was previously raised either during prior examination or in other inter partes reviews. Indeed, it seems likely that, if the Cree IPR (or related follow on IPRs) proceeds to a decision on the merits, there may be little left unresolved for the instant Petition. Institution here, however, provides Petitioner an opportunity to challenge the ’961 patent based on Krames in the event that the IPR based on Cree does not reach a decision on the merits. Third, while the two petitions present different invalidity grounds (addressing the same claims) and, as explained above, are not wholly redundant, the two parallel petitions have a great deal of overlap. Prelim. Resp. 26 (arguing that the two petitions are “redundant”). Because portions of the petitions are similar, this also reduces Patent Owner’s burden to respond. Thus, based on the totality of specific circumstances unique to these two petitions, we decline to exercise discretion to deny institution based on parallel petitions.” slip op. at 25
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 21, 25–29, 36, 40–43, 47– 49, and 52–57 of the ’961 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 of the ’961 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - PTAB · Jun 15, 2023 · IPR2023-00213 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds, finding a reasonable likelihood of success on the §103 obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion as to claim 21 Based on the evidence in the present record, we determine that Petitioner has shown sufficiently for purposes of this Decision that the combination of Begemann, Bogner, and Sugiura teaches or suggests all elements of claim 21 and that Petitioner sufficiently shows that a person of ordinary skill in the art would have had reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine Petitioner has established a reasonable likelihood of prevailing in showing that claim 21 is unpatentable over the combination of Begemann, Bogner, and Sugiura. b. Dependent Claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 Petitioner accounts for the limitations recited in claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 (which depend from claim 21). Pet. 6, 51–71. Petitioner shows sufficiently for purposes of this Decision that each element of claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 is taught or suggested by the combined teachings of Begemann, Bogner, and Sugiura and shows reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine that Petitioner has sufficiently established a reasonable likelihood of establishing claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 are obvious in view of Begemann, Bogner, and Sugiura.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We do not agree, however, that Petitioner fails to show material error. Rather, Petitioner shows sufficiently that the outcome of the reexamination hinged on Patent Owner’s representation that the prior art did not teach LED chips “configured to output light at greater than about 40 milliwatts.” Pet. 19 (quoting Ex. 1014, 238–239 (Patent Owner’s statement in file history); see also Ex. 1014, 159 (examiner explaining that claims are found patentable based on Patent Owner’s argument that the “greater than about 40 milliwatts” recitation is not “taught or suggested by any reference currently relied on”). Petitioner then explains in detail why Patent Owner’s representation, and the Examiner’s resulting conclusion, was in error. Pet. 20–24. Petitioner’s explanation as to why Begemann, the cited art, actually taught the “greater than about 40 milliwatts” recitation is supported by the evidence of record sufficiently to demonstrate a reasonable likelihood of success at trial. See, e.g., Ex. 1002 ¶¶ 85–93, 141–144 (Petitioner’s witness, Dr. Jokerst, explaining why the references suggest the “greater than about 40 milliwatts” recitation when a correct calculation is applied).” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the presently cited art at the time a different petitioner filed the Cree IPR. Prelim. Resp. 27. We note, however, that this factor also includes considering whether the prior art relied on in the later petition “could have been found with reasonable diligence.” General Plastic, slip op. at 20. Although the cited references easily could have been found by reviewing the ’961 patent’s file history, it is less clear that the key alleged error in Patent Owner’s representations concerning the teachings of those references would have been readily apparent. As such, this factor is neutral. 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; Patent Owner argues that Petitioner used the Board’s institution decision (instituting trial) in the Cree IPR as a roadmap for its petitions. Prelim. Resp. 27–28. Patent Owner, however, presents no factual evidence merely result from the strength of references raised in prior reexamination rather than copying from one petition to another. The record lacks evidence directly establishing how or why Petitioner came to select the evidence the Petition relies upon, and we decline to speculate. to support this point, for example, instances in the Petition that facially support a finding that the arguments presented in the Petition track the analysis in the Board’s prior institution decision. Moreover, we agree with Petitioner that the road-mapping concern is either not relevant or is less relevant when the earlier IPR was instituted. Reply 1–2; see also General Plastic, slip op. at 17–18 (explaining that factor 3 is directed to road-mapping concerns). This is not a multiple-bites-of-an-apple situation where the second bite is modified after the first bite fails. This factor weighs against discretionary denial or is neutral.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. The indicia also suggest that the paper was published by an established publisher—SPIE (the international society for optics and photonics). As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.10 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date11 of the challenged patent.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · May 12, 2023 · IPR2023-00122 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable on the proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1016, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Id. at 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery, and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5 (citing Ex. 1003 ¶¶ 39–41). Petitioner further 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Petitioner argues, and Patent Owner does not contest, that the pre- AIA statutory provisions apply to this case. See Pet. 5 n.1. Neither party indicates the result would change based on which version of the statute the Board applies for purposes of deciding whether to institute review. 2 Brown, US 3,748,182, issued July 24, 1973 (Ex. 1016). 3 Higuchi, Chinese Patent App. Pub. CN101286572 A, published October 15, 2008 (Exs. 1009 (English translation), 1010 (original Chinese)). 4 Okochi, EP 0829105 B1, published May 21, 2003 (Ex. 1013). 5 Brenner, DE 102005058132 A1, published June 6, 2007 (Ex. 1014, with English translation). 6 Kubota, US 5,654,114, issued August 5, 1997 (Ex. 1015). of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 5
- Expert testimonyPetitioner expert discountedOther
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,258,092 - PTAB · May 12, 2023 · IPR2023-00121 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR of claims 1–22 on all asserted grounds, finding a reasonable likelihood that the Higuchi, Kobayashi, and Okochi combination renders at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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 determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’092 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–22 of the ’092 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Prelim. Resp. 11–19. Petitioner asserts (Prelim. Reply 1) that it stipulated that “if the IPRs of [the ’092 patent] are instituted, it will not assert invalidity in the parallel district court proceedings based on grounds that were raised or reasonably could have been raised in the instituted IPRs.” Ex. 1018. We are bound by the guidance in the Memorandum, which states that the Board “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Memorandum, 7.” slip op. at 8
- 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson9 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). the uncontested assessment offered by Petitioner.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,258,092
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.