- PTAB · Sep 24, 2021 · IPR2021-00646 · APJ Michelle N Ankenbrand · IPR · Institution
The Board instituted IPR on claim 20 based on a reasonable likelihood that Ter-Hovhannisyan anticipates or renders it obvious.
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) (2019). 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, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect claim 20. Accordingly, we institute an inter partes review.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“After the Petition was filed, Patent Owner disclaimed claims 1–19 of the ’816 patent. See Prelim. Resp. 3; Ex. 2001. Thus, this decision addresses only claim 20 of the challenged patent. 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) . . . disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’816 patent would have [had] at least a bachelor’s degree in an engineering discipline and approximately three years of experience working on LED lighting technology and designs, including experience with thermal design and heat dissipation.” Pet. 7 (citing Ex. 1003 ¶ 53). Petitioner further asserts that “[r]elevant work experience could substitute for formal education and post-graduate education could substitute for work experience.” Id. (citing Ex. 1003 ¶ 53).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ter-Hovhannisyan discloses the annulus limitation, we consider claim 20’s remaining limitations. Petitioner asserts that Ter-Hovhannisyan discloses or would have rendered obvious claim 20’s remaining limitations. Pet. 43–44, 46 (citing Pet. 12, 20–28, 40–42 (Petitioner’s analysis for similar claim limitations recited in claim 1)). At this stage of the proceeding, Patent Owner does not separately address these limitations. We have reviewed Petitioner’s arguments (in the context of claim 20) and Dr. Bretschneider’s testimony and find that Petitioner shows sufficiently that Ter-Hovhannisyan anticipates or would have rendered obvious claim 20. Thus, Petitioner demonstrates a reasonable likelihood of prevailing in its challenge.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,985,816
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.